CERTAIN PORTIONS OF THIS EXHIBIT WHICH ARE INDICATED BY “XXX” HAVE BEEN OMITTED BASED UPON A REQUEST FOR CONFIDENTIAL TREATMENT AND SUCH PORTIONS HAVE BEEN FILED SEPARATELY WITH THE COMMISSION BIOFINING MASTER LICENSE AGREEMENT
Exhibit 10.61
CERTAIN PORTIONS OF THIS EXHIBIT WHICH ARE INDICATED BY “XXX”
HAVE BEEN OMITTED BASED UPON A REQUEST FOR CONFIDENTIAL
TREATMENT AND SUCH PORTIONS HAVE BEEN FILED SEPARATELY WITH
THE COMMISSION
HAVE BEEN OMITTED BASED UPON A REQUEST FOR CONFIDENTIAL
TREATMENT AND SUCH PORTIONS HAVE BEEN FILED SEPARATELY WITH
THE COMMISSION
BIOFINING
THIS MASTER LICENSE AGREEMENT is made and entered into as of this 22nd day of June, 2007 by
and between Syntroleum Corporation (“Syntroleum”), a Delaware corporation having its principal
place of business at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and Dynamic
Fuels, LLC (“Licensee”), a Delaware limited liability company. The parties agree as follows:
Except as otherwise expressly provided in this Agreement or unless the context in this
Agreement requires otherwise, the terms described in Exhibit A when used in this Agreement
will have the respective meanings assigned to them in Exhibit A (such meanings to be
equally applicable to the singular and plural forms thereof). Each exhibit hereto is attached and
incorporated into this Agreement.
| 2.01 | At the written request of Licensee Syntroleum will execute a Site License Agreement in favor
of Licensee for Licensee’s use of the Syntroleum Biofining Technology to produce Biofined
Renewable Fuels in one or more Licensed Plants at specific locations within the Licensed
Territory in accordance with the terms of this Agreement. Notwithstanding the above, Licensee
will not request more than one Site License Agreement in any twelve (12) month period unless
Licensee has made a good faith decision to review the development of each additional Licensed
Plant. If Licensee requests more than one Site License Agreement in any twelve (12) month
period, each such request will be subject to Syntroleum having adequate staff time to
reasonably review and handle such request. |
|
| 2.02 | The Site License Agreement will be in substantially the same form as Exhibit B. |
| 2.03 | During the term of this Agreement, unless otherwise consented to in writing by Licensee, for
a period of ten years from the Effective Date, Syntroleum will not license the rights to use
the Syntroleum Biofining Technology to any Person in the Licensed Territory. Subject to
Section 9.04, the exclusivity terms and conditions of the preceding sentence will immediately
cease on the occurrence of any of the following: |
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| (a) | if Licensee has not requested the first Site License Agreement under
Section 2.01 of this Agreement within six (6) months after the Effective Date; |
| (b) | if Licensee or the owner of the first Licensed Plant has not advised Syntroleum
in writing that it desires for Syntroleum to proceed with the development of the
process design package for the first Licensed Plant within twelve (12) months after
Syntroleum provides the cost estimate required by the Site License Agreement for the
first Licensed Plant to develop the process design package; or |
| (c) | if Licensee or the owner of the first Licensed Plant has not commenced
construction of the first Licensed Plant within eighteen (18) months after delivery by
Syntroleum of the process design package for such Licensed Plant; or |
| (d) | if a period of forty-eight (48) months lapses after the execution date or
effective date, whichever is earlier, of the Site License Agreement for the first
Licensed Plant under this Agreement without (i) commencement of construction by
Licensee or any individual Owner of Licensee or an Affiliate of such Owner under a
second Site License Agreement, (ii) commencement of construction by Licensee of a plant
located outside the Licensed Territory to produce Biofined Renewable Fuels, (iii)
commencement of construction by the Owners of Licensee or their Affiliates of a
biomass to liquids plant utilizing Syntroleum ▇▇▇▇▇▇-Tropsch technology, or (iv) either
of the Owners of Licensee having proposed for a vote of the Members of Licensee the
construction of a second Licensed Plant within the Licensed Territory or if proposed
the Owners of Licensee having mutually agreed to not build a second Licensed Plant
within the Licensed Territory; or |
| (e) | if a period of forty-eight (48) months lapses after the execution date or
effective date, whichever is earlier, of any Site License Agreement and the Owners of
Licensee have given notice to Syntroleum that they no longer intend to build any
further Licensed Plants. |
| 2.04 | Notwithstanding anything to the contrary contained in this Agreement, no assignment, deed,
sale or other transfer of the Syntroleum Biofining Technology is made to Licensee by execution
of this Agreement. |
| 3.01 | In accordance with the terms and conditions of each Site License Agreement, Syntroleum agrees
to disclose and make available to Licensee as part of this Agreement, upon the reasonable
request of Licensee, any and all Inventions and Improvements developed by Syntroleum or its
Affiliates relating to the Syntroleum Biofining Technology. |
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| 3.02 | Except as provided under Sections 3.01 and 3.03 of this Agreement, Syntroleum will
provide any and all Technical Services for the Licensed Plant to Licensee under the Services
Agreement. |
| 3.03 | Syntroleum will provide to Licensee Technical Services free of charge for the one (1) year
period immediately after the commissioning of the first Licensed Plant, subject to the
following: |
| (a) | such Technical Services will be limited to 1,920 man hours per year consisting
of Syntroleum personnel having the requisite skills to effectively and efficiently
provide the required Technical Services; |
| (b) | such Technical Services will be limited to matters covered by the scope of the
first Site License Agreement as applicable to Syntroleum; |
| (c) | such Technical Services will not include any third party costs or travel costs.
Any third party costs or travel costs will be invoiced to Licensee in accordance with
the fee schedule set forth in the first Site License Agreement. |
| 4.01 | Licensee will disclose and make available to Syntroleum as part of this Agreement, upon the
reasonable request of Syntroleum, any and all Inventions or Improvements developed by Licensee
or its Affiliates relating to the production of Biofined Renewable Fuels. |
| 4.02 | Subject to the terms and conditions of this Agreement, Licensee grants to Syntroleum a
limited, non-exclusive, irrevocable, royalty free, world-wide right and license under Licensee
Patent Rights and Licensee Technical Information for the design, construction, operation and
maintenance (including modification, debottlenecking and replacement but excluding expansion)
of facilities producing Biofined Renewable Fuels, together with the right to grant
corresponding sublicenses of Licensee Patent Rights and Licensee Technical Information to
other licensees of the Syntroleum Biofining Technology for use at a licensed plant producing
Biofined Renewable Fuels, provided that any such licensee to whom a sublicense is to be
granted will have granted reciprocal rights to Syntroleum to use and grant sublicenses under
such licensee’s patent rights and technical information for the benefit of Licensee and
Syntroleum will have granted such sublicenses to Licensee. Licensee will have the right to
charge Syntroleum a reasonable fee for any training with respect to Licensee Patent Rights and
Licensee Technical Information as may be agreed with Syntroleum on a case by case basis. Any
intellectual property or similar asset developed by Licensee other than Licensee Patent Rights
and Licensee Technical Information are not included in such license. |
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| 4.03 | Should Licensee, during the term of this Agreement, make any patentable Inventions or
Improvements, Licensee may, at its sole discretion, file patent applications, whether in the
U.S., Patent Cooperation Treaty and/or another jurisdiction, with respect to such Inventions
or Improvements in its own name and at its own expense, and take such other steps as are
necessary, in the sole judgment of Licensee, to protect its rights in such Inventions or
Improvements. In the event Licensee declines to file any patent application with respect to
any Inventions or Improvements, it will notify Syntroleum within thirty (30) days of its
decision not to file such application and will allow Syntroleum, at its sole discretion, to
file such patent application at its sole expense and to take such other steps as are
necessary, in Syntroleum’s sole judgment, to protect any patent rights in such Inventions or
Improvements. Subject to Licensee’s obligation to account to any third parties pertaining to
the patentable Inventions or Improvements, if Syntroleum elects to pursue such patent
application, Licensee will assign to Syntroleum all of Licensee’s right, title and interest in
and to the patentable Inventions or Improvements. |
| 4.04 | In the event Licensee files an application on any Invention or Improvements in any
jurisdiction and later decides to terminate prosecution of such application, Licensee will
notify Syntroleum of such decision within a reasonable time prior to allowing such application
to lapse or become abandoned. In such event, Syntroleum, in its own and sole discretion, may
continue prosecution of such application, with all title to such patent application assigned
to Syntroleum. |
| 4.05 | Syntroleum and Licensee each agree that they will take all actions and execute all documents
and will cause their employees, agents and contractors to take all actions and execute all
documents as are necessary or appropriate to carry out the provisions of this Article
4 or to assist each other in the preparation, filing and prosecution of patent
applications or securing such protection referenced in this Article 4 when so
requested. |
| 4.06 | Licensee hereby grants to Syntroleum the right to reasonably inspect, at mutually convenient
times, the operating procedures, process conditions, material balances, energy consumption,
catalyst performance, and analyses of the Biofined Renewable Fuels which are applicable to
Licensee’s Inventions or Improvements at any plant incorporating such Inventions or
Improvements. Syntroleum hereby grants to Licensee the right to reasonably inspect, at
mutually convenient times, the operating procedures, process conditions, material balances,
energy consumption, catalyst performance, and analyses of the Biofined Renewable Fuels which
are applicable to Licensee’s Inventions or Improvements at plants owned by Syntroleum. |
| 4.07 | Licensee will provide safe access to Syntroleum, from time to time and upon request by
Syntroleum, to collect and remove samples of intermediate streams and the Biofined Renewable
Fuels as they are produced by each Licensed Plant, in reasonable amounts in number and
quantity as necessary to verify compliance with this Agreement. Syntroleum’s cost to collect,
remove and analyze samples will be born by Syntroleum. |
| 4.08 | Licensee will allow Syntroleum and its representatives the right to access each Licensed
Plant at reasonable and convenient times to observe the construction, start-up and ongoing plant operations over the service life of such Licensed Plant and to train third party
licensees. |
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| 4.09 | No grant, transfer or use by Syntroleum or any Syntroleum sub-licensee of any Licensee Patent
Rights or Licensee Technical Information will imply or result in any indemnity, warranty,
liability or obligation by Licensee with respect to such rights or information, it being
understood that Licensee is not in the business of developing intellectual property rights,
and that all such rights and information will be transferred by Licensee as is, where is and
without any express or implied warranty or representation of any kind to Syntroleum, any
Syntroleum sub-licensee or any other person, including as to title, merchantability or
usefulness for a particular purpose. |
| 5.01 | Licensee agrees to pay all fees and royalties to Syntroleum in accordance with each Site
License Agreement executed pursuant to this Agreement. |
| 5.02 | So long as Syntroleum owns an ownership interest in Licensee, there will not be any upfront
fee in any Site License Agreement. So long as Syntroleum owns an ownership interest in
Licensee, each Site License Agreement will contain a mutually acceptable running royalty on
produced products as specified in the form of the Site License attached to this Agreement. If
Syntroleum no longer owns an ownership interest in Licensee, Licensee and Syntroleum will
negotiate in good faith an upfront royalty fee for the second and any subsequent Site License
Agreements to be entered into pursuant to this Agreement which upfront fee will be calculated
utilizing the lesser of (i) a commercially reasonable royalty fee per gallon and (ii) $XXX per
gallon of Biofined Renewable Fuels produced at the Licensed Plant adjusted annually for
inflation using the BLS. |
| 5.03 | All amounts payable under this Agreement will be paid by Licensee to Syntroleum at
Syntroleum’s address specified in Section 10.08, or to an account at a bank specified
by Syntroleum, in dollars of the United States of America. |
| 5.04 | In the event Licensee is required to withhold any taxes from amounts payable to Syntroleum
under this Agreement, Licensee agrees to provide Syntroleum at the time of such withholding
with a receipt or other evidence, if any, issued by the appropriate governmental agency
reflecting the deposit of such taxes with such agency. |
| 6.01 | Syntroleum represents and warrants that it is a corporation duly organized, validly existing,
and in good standing under the laws of the State of Delaware, United States of America, and
has full power and authority to enter into and perform its obligations under this Agreement,
including, without limitation, the right to grant all licenses and provide the services set
forth in this Agreement. The execution, delivery and performance of this Agreement and all
documents relating hereto by Syntroleum have been duly and validly authorized by all
requisite corporate action and constitute valid and binding obligations of Syntroleum
enforceable in accordance with their respective terms. |
|
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| 6.02 | Licensee represents and warrants that it is a limited liability company duly organized,
validly existing, and in good standing under the laws of the State of Delaware, and has full
power and authority to enter into and perform its obligations under this Agreement including
the right to grant the rights and licenses as set forth in Article 4 of this
Agreement. The execution, delivery and performance of this Agreement and all documents
relating hereto by Licensee have been duly and validly authorized by all requisite limited
liability company action and constitute valid and binding obligations of Licensee enforceable
in accordance with their respective terms. |
| 6.03 | Except as otherwise expressly set forth in this Agreement, SYNTROLEUM MAKES NO AND HEREBY
DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTIES OR REPRESENTATIONS OF ANY KIND, INCLUDING ANY
WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR ANY OTHER WARRANTIES OR
REPRESENTATIONS OF ANY KIND TO LICENSEE, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OR
REPRESENTATION WITH RESPECT TO USE OF THE SYNTROLEUM BIOFINING TECHNOLOGY AS AUTHORIZED
HEREUNDER. |
| 6.04 | IN NO EVENT WILL A PARTY BE LIABLE TO THE OTHER FOR ANY SPECIAL, INDIRECT, INCIDENTAL,
PUNITIVE, CONSEQUENTIAL OR EXEMPLARY DAMAGES, INCLUDING WITHOUT LIMITATION, LOST PROFITS OR
SAVINGS, REGARDLESS OF THE FORM OF ACTION GIVING RISE TO SUCH A CLAIM FOR SUCH DAMAGES,
WHETHER IN CONTRACT OR TORT INCLUDING NEGLIGENCE, EVEN IF SYNTROLEUM OR LICENSEE HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. BUT IF A PARTY IS FOUND LIABLE, DESPITE THE ABOVE
LANGUAGE, TO THE OTHER PARTY FOR SPECIAL, INDIRECT, CONSEQUENTIAL, INCIDENTAL, PUNITIVE, OR
EXEMPLARY DAMAGES THEN THE MAXIMUM LIMIT OF SUCH DAMAGES IS AGREED TO BE $50,000. ANY DAMAGES
RESULTING FROM UNAUTHORIZED DISCLOSURE OR USE OF CONFIDENTIAL INFORMATION OR UNAUTHORIZED USE
OF THE SYNTROLEUM BIOFINING PATENT RIGHTS OR THE LICENSEE PATENT RIGHTS UNDER THIS AGREEMENT
SHALL BE DEEMED TO BE DIRECT DAMAGES. SPECIAL, INDIRECT, CONSEQUENTIAL, INCIDENTAL, PUNITIVE,
OR EXEMPLARY DAMAGES RECOVERED FROM A PARTY BY A THIRD PARTY WITH RESPECT TO WHICH THE OTHER
PARTY IS REQUIRED TO PROVIDE INDEMNIFICATION PURSUANT TO THIS AGREEMENT SHALL BE DEEMED TO BE
DIRECT DAMAGES. |
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| 7.01 | Licensee agrees that any Confidential Information disclosed by Syntroleum or an Affiliate
directly or indirectly to Licensee during the term of this Agreement will be kept confidential
by Licensee until five (5) years after the termination of this Agreement or fifteen (15) years
from the Effective Date, whichever last occurs, with the same standard of care Licensee uses
to protect its own similar confidential information and, except as otherwise provided in this
Agreement, will not be disclosed to others or copied or duplicated (except for internal use)
and will be used by Licensee solely for purposes covered by the scope of each license granted
pursuant to this Agreement. Licensee may disclose such Confidential Information to third
parties, except competitors of Syntroleum as a technology provider (including, but not limited
to those entities listed on Exhibit E which Exhibit may be amended from time to time by the
mutual agreement of the Parties, such agreement not to be unreasonably withheld), who have
executed a confidentiality agreement with Syntroleum with confidentiality terms no less
restrictive than those set forth in this Section 7.01. To the extent reasonably
necessary to carry out the purposes of this Agreement, Licensee may disclose any of the
foregoing information to an Affiliate, provided that the Affiliate has agreed in writing to be
bound by confidentiality terms no less restrictive than those set forth in this Section
7.01. |
| 7.02 | Syntroleum agrees that any Confidential Information disclosed by Licensee or an Affiliate
directly or indirectly to Syntroleum during the term of this Agreement will be kept
confidential by Syntroleum until five (5) years after the termination of this Agreement or
fifteen (15) years from the Effective Date, whichever last occurs, with the same standard of
care Syntroleum uses to protect its own similar confidential information, and except as
otherwise provided in this Agreement will not be disclosed to others or copied or duplicated,
and will be used by Syntroleum solely in the development, marketing and licensing of Biofined
Renewable Fuels, and for no other purpose. Syntroleum may disclose such Confidential
Information to third parties who have executed a confidentiality agreement with Licensee with
confidentiality terms no less restrictive than those set forth in this Section 7.02.
To the extent reasonably necessary to carry out the purposes of this Agreement, Syntroleum may
disclose any of the foregoing information to an Affiliate, provided that the Affiliate has
agreed in writing to be bound by confidentiality terms no less restrictive than those set
forth in this Section 7.02. |
| 7.03 | A Party will not be subject to the restrictions set forth in Sections 7.01 and 7.02
of this Agreement as to the disclosure, duplication or use of disclosed Confidential
Information, if the receiving Party can prove by competent evidence that such Confidential
Information (and not a general description of the subject of such Confidential Information): |
| (a) | was already known to the receiving Party or an Affiliate prior to the
disclosure thereof by the disclosing Party; |
| (b) | is or becomes part of the public knowledge or literature without breach of this
Agreement by the receiving Party but only after it becomes part of the public knowledge
or literature; |
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| (c) | will otherwise lawfully become available to the receiving Party or an Affiliate
from a third party but only after it becomes so available and provided the third party
is not under obligation of confidentiality to disclosing Party; or |
| (d) | is developed by the receiving Party or an Affiliate independently of any
disclosure by the disclosing Party to the receiving Party or an Affiliate under this
Agreement or independently of any joint research and development activities of Licensee
and Syntroleum which may occur under a separate agreement. |
| 7.04 | The receiving Party will limit access to the Confidential Information disclosed to it to
those employees of the receiving Party or an Affiliate who reasonably require the same and who
are under a legal obligation of confidentiality on the terms set forth herein. The receiving
Party will be responsible to the disclosing Party for the performance by its employees of
their confidentiality obligations. |
| 7.05 | In the event that a Party which is recipient of Confidential Information from the other Party
is requested or required by deposition, interrogatory, request for documents, subpoena, civil
investigative demand or similar process to disclose any such Confidential Information, the
receiving Party will provide the disclosing Party with prompt written notice of such request
or requirement prior to making the requested disclosure, and will cooperate with the
disclosing Party so that the disclosing Party may seek a protective order or other appropriate
remedy. In the event that such protective order or other remedy is not obtained, the receiving
Party may disclose only that portion of the Confidential Information that the receiving Party
is advised by counsel is legally required to be disclosed. |
| 7.06 | The Parties agree that they will each take all actions and execute all documents, and will
cause their employees, agents and contractors to take all actions and execute all documents as
are necessary or appropriate to carry out the provisions of this Article 7 or to
assist each other in securing protection of intellectual property and Confidential Information
referenced in this Article 7. |
| 7.07 | With respect to any Syntroleum Biofining Catalysts furnished to Licensee under any Catalyst
Sales Agreement for use by Licensee at a Licensed Plant, Licensee will not, and Licensee will
not allow any other person to, analyze, break down, reverse engineer or otherwise seek to
determine the chemical composition of any such catalyst, except that Licensee will be entitled
to: |
| (a) | perform analyses that Syntroleum may from time to time specifically authorize
in writing, to the extent required for monitoring the performance of such Licensed
Plant and for reclamation or disposal of spent catalysts, such authorization not to be
unreasonably withheld; |
| (b) | provide results of the aforementioned analyses to other parties to the extent
required for reclamation or disposal of spent catalysts, but only after such other
parties have entered into a confidentiality agreement with Syntroleum with confidentiality terms no less restrictive than those set forth in Section
7.01 of this Agreement; and |
||
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| (c) | ensure that the agent under the Catalyst Escrow Agreement the parties intend to
enter into prior to construction of the first Licensed Plant is current with all
Syntroleum Biofining Catalyst Information, including any information relating to
methods specified by Syntroleum for manufacturing catalysts for use in producing
Biofined Renewable Fuels, so as to perform their role as the agent under such Catalyst
Escrow Agreement. |
Syntroleum will be provided with a copy of all such analyses which has been approved in
writing prior to release to other parties. |
||
| 7.08 | It is recognized that public announcements of the material terms regarding this Agreement may
be necessary upon execution to comply with the rules and regulations of the U.S. Securities
and Exchange Commission, any other regulatory body or any public trading exchange. In such
instance, each Party agrees to provide written notice to the other Party of the content of any
proposed disclosure, press release, or other announcement relating to this Agreement at least
twenty-four (24) hours prior to its intended release. |
| 8.01 | Licensee will not assign its rights and obligations under this Agreement to any competitor of
Syntroleum listed on Exhibit C (which exhibit may be amended from time to time by the mutual
agreement of the Parties, such agreement not to be unreasonably withheld). Except for
assignment to a wholly-owned subsidiary, this Agreement will not be assignable by Licensee
without the prior written consent of Syntroleum which consent will not be unreasonably
withheld. Licensee will promptly notify Syntroleum in writing of any assignment to a
wholly-owned subsidiary. Except for assignment to a wholly-owned subsidiary, any attempted
assignment of this Agreement by Licensee without consent of Syntroleum will be void. |
| 8.02 | Except for assignment to a wholly-owned subsidiary, this Agreement may not be assigned by
Syntroleum without the prior written consent of Licensee which consent will not be
unreasonably withheld. Except for assignment to a wholly-owned subsidiary, any attempted
assignment of this Agreement by Syntroleum without the prior written consent of Licensee will
be void. No assignment of this Agreement to a wholly-owned subsidiary by Syntroleum will be
valid unless such subsidiary has the appropriate rights to grant the license provided under
this Agreement and the ability to perform the other obligations of Syntroleum under this
Agreement. |
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| 8.03 | Syntroleum acknowledges and agrees that Licensee may assign this Agreement as collateral to
any lender providing financing to Licensee, and Syntroleum shall execute a form of consent to
assignment reasonably requested by any such lender. |
| 9.01 | Except as provided in Section 7.01 and the following sentence, this Agreement will terminate
on the later to occur of (i) 10 years after the date of this Agreement and (ii) 2 years after
the Development Activities Completion Date. If Licensee fails to pay an Upfront Royalty (as
defined in the Site License Agreement), and Syntroleum has not otherwise agreed to a continued
Running Royalty or some other form of payment under such Site License Agreement, Syntroleum
shall have the right to terminate this Agreement by giving written notice to Licensee. The
termination of this Agreement has no effect on any issued Site License Agreement.
Notwithstanding the above, if (i) the Licensee has not commenced construction of the initial
Licensed Plant within three years of the Effective Date, which period will be extended for
Excusable Delay, or (ii) the initial Licensed Plant produces less than XXX (XXX) of the
nameplate capacity per day of renewable fuels as set forth in the Process Design Package for
such initial Licensed Plant during each day of the Performance Test and fails to meet the
Process Guarantee (as such terms are defined in the initial Licensed Plant’s Site License
Agreement) then this Agreement will terminate and neither party will have any further
obligations under the terms and conditions of this Agreement. The parties anticipate the
nameplate capacity of the Licensed Plants under Site License Agreements will be five thousand
(5000) barrels per day. If the nameplate capacity, as specified in the Process Design Package
delivered under any such Site License Agreement, is higher or lower than five thousand (5000)
barrels a day the parties agree to appropriately modify any term in the relevant Site License
to take such lower or higher nameplate capacity into account. |
| 9.02 | If a material default occurs in connection with this Agreement, the non-defaulting Party will
provide written notice to the defaulting Party. The defaulting Party must respond in writing
within thirty (30) days as to its intent to cure the material default. The actions by the
non-defaulting Party under this Article 9 will not prejudice such Party from enforcing
any claim which it may have for damages or otherwise on account of the default. |
|
| 9.03 | Termination of this Agreement will not: |
| (a) | relieve Licensee of its obligations to account for and pay all amounts due
Syntroleum under any Site License Agreement in effect arising prior to its termination; |
| (b) | affect any rights granted under Article 4 with respect to Licensee
Patent Rights and Licensee Technical Information, which will survive termination in
accordance with its terms; or |
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| (c) | affect the obligations of Syntroleum and Licensee under Articles 6 and
7, which will survive termination in accordance with their terms. |
| 9.04 | No Party to this Agreement will be in default in performing its obligations under this
Agreement, except the obligations to provide the license or pay the amounts required under
this Agreement, to the extent that performing such obligations, or any of them, is delayed or
prevented by Force Majeure. Each Party will use commercially reasonable efforts to remove the
cause of such Force Majeure. |
| 9.05 | Notwithstanding anything to the contrary set forth in this Agreement, if Licensee fails to
take any action contemplated by this Agreement within the period of time specified in this
Agreement due to Excusable Delay, then such period of time shall be extended by an amount of
time equal to the period of such Excusable Delay. |
| 9.06 | Licensee will have the right to terminate this Agreement in its sole discretion, with or
without cause, upon the delivery of written notice of termination to Syntroleum no less than
sixty (60) days prior to the date of such termination. |
| 10.01 | This Agreement embodies the entire intent of the Parties and merges all prior oral and
written agreements between the Parties hereto with respect to subject matter hereof. No
stipulation, agreement, representation or understanding of the Parties hereto will be valid or
enforceable unless contained in this Agreement or in a subsequent written agreement signed by
the Parties hereto. |
| 10.02 | This Agreement shall be governed by, and shall be enforced, construed and interpreted in
accordance with, the laws of the State of New York (without giving effect to any principle of
conflict of laws that would result in the application of the law of another jurisdiction as
the governing law of this Agreement), which shall be deemed to be the proper law of this
Agreement. Subject to Section 10.03, the parties agree that the jurisdiction governing any
disputes or interpretation of matters arising from the Agreement is the State of New York, in
New York County. Any action or proceeding which is permitted to be brought by a party against
a party to this Agreement arising out of or relating to this Agreement, whether in tort or
contract or at law or in equity, shall be brought in a federal court in the State of New York,
in New York County or, if federal court shall not have jurisdiction, state court in the State
of New York, in New York County and each party: (a) irrevocably submits to the personal
jurisdiction of such courts; (b) waives any objection to laying venue in any such action or
proceeding in such courts; (c) waives any objection that such courts are an inconvenient forum
or do not have jurisdiction over it; and (d) agrees that service of process upon it may be
effected by mailing a copy thereof by registered or certified mail (or any substantially
similar form of mail), postage prepaid, to it at its address specified in the heading of this
Agreement or as specified below. The foregoing consents to jurisdiction and service of
process shall not constitute general consents to service of process in the State of New York
for any purpose except as provided herein and shall not be deemed to confer rights on any person
other than the parties to the Agreement. Each party shall appoint an agent for service in
New York County for service of process in any dispute arising out of or relating to the
Agreement and agrees that service upon such agent shall constitute personal service upon
each such party. |
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| 10.03 | The parties agree that in the event of any dispute, controversy, or claim between the
parties arising out of or relating to this Agreement, or the alleged breach of this Agreement
(expressly including the validity, scope, and enforceability of this arbitration agreement),
the Controller of Licensee and the President of Syntroleum shall confer. If they fail within
fifteen (15) days to agree on a satisfactory resolution, then the parties agree that any such
dispute, controversy, claim or alleged breach shall be settled by final and binding
arbitration in accordance with the Commercial Arbitration Rules of the American Arbitration
Association (the “AAA”), and judgment on the award rendered by the arbitrator may be entered
by a United States District Court. The parties stipulate this Agreement involves a
transaction in interstate commerce and that the Federal Arbitration Act is fully applicable.
Within thirty (30) days of either party delivering to the other party notice of arbitration
under this Section 10.03, each party shall select an arbitrator. The two arbitrators selected
by the parties shall, within ten (10) days of their appointment, select as chairman of the
tribunal, a third neutral arbitrator (collectively with the party-appointed arbitrators, the
“Arbitrators” and each an “Arbitrator”). If the two party-appointed Arbitrators do not agree
on a third neutral Arbitrator, the third Arbitrator shall be selected by the AAA. The
arbitration hearing shall be held in Houston, Texas before the three Arbitrators. Each of the
Arbitrators shall be unaffiliated with either party or its affiliates, shall not have any
material financial dependence on either party, and shall at all times remain neutral and
wholly impartial. The arbitration hearing shall commence within twenty (20) days of the
appointment of the third Arbitrator. The arbitrators shall have no power to modify the terms
of this Agreement or to award punitive damages. The parties hereto hereby waive any rights or
claims for punitive damages in arbitration. |
| 10.04 | This Agreement does not grant and will not be construed as granting any license,
authorization or consent, to either Party by the other Party hereto, to use any name,
trademark, service ▇▇▇▇ or slogan of the other Party. Except as required by law, a Party will
not use the other Party’s name without written consent, except for the identification of the
other Party as Syntroleum or a licensee of Syntroleum. |
| 10.05 | Failure of either Syntroleum or Licensee at any time or from time to time to exercise any of
its rights under this Agreement or to insist upon strict performance of the other Party’s
obligations hereunder will not be deemed a waiver of or to limit any of such rights or
obligations with respect to such rights or obligations or any subsequent occurrence. |
| 10.06 | The Parties may publish the existence of this Agreement but agree not to disclose, without
the prior written consent of the other Party, any of the terms of this Agreement or any
portion thereof, or any amendment concerning the same, except as required by law. |
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| 10.07 | In construing this Agreement: (i) no consideration shall be given to the captions of the
Articles, Sections, subsections or clauses, which are inserted for convenience in locating the
provisions of this Agreement and not as an aid to construction and shall not be interpreted to
limit or otherwise affect the provisions of this Agreement, (ii) no consideration shall be
given to the fact or presumption that any party had a greater or lesser hand in drafting this
Agreement, (iii) examples shall not be construed to limit, expressly or by implication, the
matter they illustrate, (iv) the word “includes” and its syntactic variants means “includes,
but is not limited to” and corresponding syntactic variant expressions, words such as
“herein,” “hereafter,” “hereof,” “hereto” and “hereunder” refer to this Agreement as a whole
and the word “and” shall be deemed to mean “and/or” where the context so requires, (v) the
plural shall be deemed to include the singular, and vice versa, (vi) each gender shall be
deemed to include the other gender, (vii) each Exhibit, Appendix, Attachment and Schedule to
this Agreement is part of this Agreement, (viii) references to a Person are also to its
permitted successors and permitted assigns and (ix) unless otherwise expressly provided
herein, any agreement, instrument or statute defined or referred to herein means such
agreement, instrument or statute as from time to time amended, modified or supplemented,
included (in the case of agreements or instruments) by waiver or consent and (in the case of
statutes) by succession of comparable successor statutes and reference to all attachments
thereto and instruments incorporated therein. |
| 10.08 | Should any part or provision of this Agreement be held unenforceable or in conflict with the
laws of the State of New York, the validity of the remaining parts or provisions will not be
affected by such holding. |
|
| 10.09 | All notices hereunder will be addressed to the Parties as follows: |
| If to Syntroleum: | If to Licensee: | |||
| Syntroleum Corporation ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇ Phone No.: (▇▇▇) ▇▇▇-▇▇▇▇ ATTN: General Counsel |
Dynamic Fuels, LLC To Be Provided In Writing |
Any notice required or permitted to be given under this Agreement by one of the Parties to
the other will be deemed to have been sufficiently given for all purposes hereof if mailed
by registered or certified mail, postage prepaid, addressed to such Party at its address
indicated above, electronically transmitted and acknowledged by the other Party or by actual
delivery of written notice to the other Party.
IN WITNESS WHEREOF, the Parties have executed this Agreement as of the date set forth above.
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| SYNTROLEUM CORPORATION |
||||
| By: | /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇, ▇▇. | |||
| Name: | ▇▇▇▇ ▇. ▇▇▇▇▇▇, ▇▇. | |||
| Title: | Chief Executive Officer | |||
| DYNAMIC FUELS, LLC |
||||
| By: | /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ | |||
| Name: | ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ | |||
| Title: | Management Committee | |||
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Exhibit A
to Biofining Master License Agreement
to Biofining Master License Agreement
DEFINITIONS
| 1. | “Affiliate” means, with respect to a Person, any Person directly or indirectly Controlling,
Controlled by or under common Control with such Person. |
| 2. | “Agreement” means the Biofining Master License Agreement to which this Exhibit A is
attached together with all exhibits thereto. |
| 3. | “Bio Feedstock” means animal fats and other feedstocks, including, but not limited to,
vegetable oils, yellow, ▇▇▇▇▇ and recycled grease, glycerin, glycerol, palm oil, soybean oil
and other bio-oils, but excluding any material or product produced from a ▇▇▇▇▇▇▇-Tropsch
synthesis process. |
| 4. | “Biofined Renewable Fuels” means renewable fuels made from Bio Feedstocks including, but not
limited to, iso-paraffinic kerosene, jet fuel, diesel, naphtha, petroleum jelly and liquefied
petroleum gas. |
| 5. | “BLS” means the factor equal to (a) the BLS Index for the calendar year in which the payment
is being made divided by (b) the BLS Index applicable as of the Effective Date. |
| 6. | “BLS Index” means the index for January of the year in question represented by the Producer
Price Index for Industrial Commodities as published by the Bureau of Labor Statistics, U.S.
Department of Labor, using the year 1982 as the base index equal to 100. If, at any time, the
above index should cease to be published, then another suitable index published by the U.S.
Government or other authoritative organization and generally recognized by the trade as
authoritative with respect to changes in the U.S. of equivalent commodity costs will be used. |
| 7. | “Confidential Information” means: |
a. the Agreement and the terms thereof; and
b. information of Syntroleum or Licensee disclosed to the other Party under the Agreement,
including any formula, pattern, compilation, program, apparatus, device, drawing, schematic,
method, technique, know-how, process or pilot plant data, and other non-public information
such as business plans, financial information or other technology that:
(i) derives economic value, actual or potential, from not being generally known to,
and not being readily ascertainable by proper means by, other persons who can obtain
economic value from its disclosure or use, and
(ii) is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy, which information will be disclosed in writing and labeled as “Confidential” or the equivalent, or if disclosed verbally or in other non-written
form, identified as such at the time of disclosure and thereafter summarized in
writing by the disclosing Party within thirty (30) days of such initial disclosure.
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Confidential Information includes, without limit, Syntroleum Biofining Catalyst Information,
Syntroleum Biofining Technical Information, and Licensee Technical Information. |
||
| 8. | “Control,” “Controlling” or “Controlled” means the possession, directly or indirectly, of the
right or power to direct or cause the direction of the management and policies of another
Person, whether through the ownership of voting securities, partnership interests, management
authority, by contract or otherwise; and without limiting the foregoing, it shall be deemed
that the ownership of more than 50% of the voting securities, partnership interests, member
interests or percentage interest of another Person shall be deemed to meet such control test. |
| 9. | “Development Activities Completion Date” means the first to occur of (i) the date which the
Owners of Licensee agree is the Development Activities Completion Date, (ii) 180 days
following the commencement of commercial operations of the last Licensed Plant developed by
the Licensee during the 10 year period commencing on the date of this Agreement and (iii) the
abandonment by the Licensee of the development of such Licensed Plant |
|
| 10. | “Effective Date” means the date set forth in the first paragraph of this Agreement. |
| 11. | “Excusable Delay” means a period of delay by the Licensee in taking any action caused by (i)
the failure of Syntroleum to perform an obligation under this Agreement or any agreement
entered into in connection with this Agreement, (ii) a decision by Licensee to delay taking
such action made with the consent of or without objection by Syntroleum or (iii) the delay of
any governmental authority, body or agency granting any permit, license or authorization so
long as Licensee is prudently and diligently pursuing the permit, license or authorization but
in no event longer than 18 months from the decision by Licensee to delay such action. |
| 12. | “Force Majeure” means a revolution, civil unrest, strike, labor disturbances, epidemic, fire,
lightening, flood, storm, earthquake, explosion, blockage or embargo, or any law,
proclamation, regulation or ordinance, or any other cause that is beyond the control and
without the fault or negligence of the Party asserting the benefit of a Force Majeure event. |
| 13. | “Inventions or Improvements” means any process, formula, composition, device, catalyst,
apparatus, technology, know-how, operating technique, improvement, modification, or
enhancement relating to the use, operation, or commercialization of any technology capable of
producing Biofined Renewable Fuels, which is discovered, made, designed, developed or acquired
by Syntroleum or Licensee, solely or with others, since the Effective Date, whether patentable
or not, including, without limitation, patents, |
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copyrights, and Confidential Information and further including the full scope and content of
the intellectual and tangible property included therein and produced therefrom, e.g.,
drawings, prints, chemical formulae, prototypes, data, computer programs and software, and
the like. Inventions or Improvements will not include any information relating to methods
of manufacturing catalysts for use in the production of Biofined Renewable Fuels. |
||
| 14. | “Licensed Plant” means a plant licensed to operate under the terms of a Site License
Agreement within the Licensed Territory with a design production capacity measured in gallons
of Biofined Renewable Fuels per day, using or designed to use the Syntroleum Biofining
Technology to produce Biofined Renewable Fuels. |
|
| 15. | “Licensed Territory” means the United States of America. |
|
| 16. | “Licensee” means Dynamic Fuels, LLC, a Delaware limited liability company. |
| 17. | “Licensee Patent Rights” means all rights with respect to patents and patent applications of
all relevant countries to the extent that the claims cover features or aspects of Inventions
or Improvements practiced in a Licensed Plant and applicable to the production of Biofined
Renewable Fuels, in each case to the extent that, and subject to the terms and conditions
under which, Licensee has the right to grant licenses, immunities or licensing rights without
having to make payment to others. |
| 18. | “Licensee Technical Information” means all unpatented Inventions or Improvements practiced in
a Licensed Plant and applicable to the production of Biofined Renewable Fuels, in each case to
the extent that, and subject to the terms and conditions under which, Licensee has the right
to grant licenses, immunities or licensing rights without having to make payment to others. |
|
| 19. | “Owner” of Licensee means either Syntroleum or Tyson Foods, Inc individually. |
|
| 20. | “Owners” of Licensee means Syntroleum and Tyson Foods, Inc. jointly. |
|
| 21. | “Parties” means Syntroleum and Licensee. |
|
| 22. | “Party” means Syntroleum or Licensee. |
| 23. | “Person” means any natural person, corporation, joint venture, partnership, limited liability
company, firm, association, trust, government, governmental agency or any other entity, other
than the Parties. |
| 24. | “Services Agreement” means the Services Agreement dated as of June 22, 2007 between
Syntroleum and Licensee. |
| 25. | “Site License Agreement” means a certain agreement to be entered into between Syntroleum and
Licensee for the design, construction and operation of a Licensed Plant within the Licensed
Territory in substantially the same for as Exhibit B to the Agreement. |
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| 26. | “Syntroleum” means Syntroleum Corporation, a Delaware corporation having its principal place
of business at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇. |
| 27. | “Syntroleum Biofining Catalysts” means any and all catalysts proprietary to and/or provided
by Syntroleum for use in the production of Biofined Renewable Fuels. |
| 28. | “Syntroleum Biofining Catalyst Information” means, without limit, information relating to any
catalyst, catalyst formulation, conditioning procedure, start-up procedure, regeneration
procedure, or performance considered to be proprietary by and to Syntroleum or acquired by
Syntroleum which is useful in producing Biofined Renewable Fuels and which has been used
commercially or is ready for commercial use. Syntroleum Biofining Catalyst Information will
not include any information relating to methods for manufacturing catalysts for use in
producing Biofined Renewable Fuels. |
| 29. | “Syntroleum Biofining Catalyst Patent Rights” means all rights with respect to patents and
patent applications of all relevant countries to the extent that the claims cover features or
aspects of catalysts useable in producing Biofined Renewable Fuels and expressly excluding any
process operating techniques or apparatus or methods for manufacturing such catalysts, which
are acquired by Syntroleum (with right to sublicense) or are based on inventions conceived by
Syntroleum prior to termination of this Agreement; in each case to the extent that, and
subject to the terms and conditions, including the obligation to account to and/or make
payments to others, under which Syntroleum has the right to grant licenses, sublicenses,
immunities or licensing rights. |
| 30. | “Syntroleum Biofining Patent Rights” means all rights with respect to patents and patent
applications of all relevant countries to the extent that the claims cover features or aspects
of producing Biofined Renewable Fuels (including, without limitation, any operating techniques
and apparatus and expressly excluding Syntroleum Biofining Catalyst Patent Rights) which are
acquired by Syntroleum (with right to sublicense) or are based on inventions conceived by
Syntroleum prior to termination of this Agreement; in each case to the extent that, and
subject to the terms and conditions, including the obligation to account to and/or make
payments to others, under which Syntroleum has the right to grant licenses, sublicenses,
immunities or licensing rights. |
| 31. | “Syntroleum Biofining Technical Information” means all unpatented information relating to the
production of Biofined Renewable Fuels (including, without limitation, operating techniques
and apparatus for carrying out the production of Biofined Renewable Fuels and expressly
excluding Syntroleum Biofining Catalyst Information) which (a) either (i) has been
commercially used or (ii) is in a stage of development suitable for commercial use, and (b)
has been made or acquired by Syntroleum (with right to sublicense) prior to the termination of
this Agreement; in each case to the extent that, and subject to, the terms and conditions,
including the obligation to account to and/or make payments to others, under which Syntroleum
has the right to disclose and grant rights to others. |
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| 32. | “Syntroleum Biofining Technology” means Syntroleum’s proprietary technology for producing
Biofined Renewable Fuels and includes Syntroleum Biofining Technical Information, Syntroleum
Biofining Patent Rights, Syntroleum Biofining Catalyst Information and Syntroleum Biofining Catalyst Patent Rights. Syntroleum Biofining
Technology expressly excludes the right to make or sell Syntroleum Biofining Catalysts. |
|
| 33. | “Technical Services” means any of the following services pertaining to the Licensed Plant
that Syntroleum may provide to Licensee: |
a. review of any design information relating to any existing plant facilities;
b. review of any re-designs, modifications or other information prepared by Licensee’s
engineer;
c. review of any information, specifications or drawings received by Licensee from equipment
suppliers;
d. commissioning or start-up assistance of the Licensed Plant;
e. training of Licensee’s operating, maintenance, laboratory or product development
personnel;
f. preparing customized, site-specific guidelines for Licensee’s use in drafting its own
operating procedures for the Licensed Plant;
g. providing product development or customer service assistance;
h. performing tests in Syntroleum’s laboratories or production facilities;
i. trouble-shooting, maintenance and repair assistance;
j. providing any of the services listed on Exhibit C to a Site License Agreement; and
h. providing any other services necessary to transfer of the Syntroleum Biofining Technology
to Licensee.
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Exhibit C
to Biofining Master License Agreement
to Biofining Master License Agreement
List of Syntroleum Competitors
| 1. | Sasol |
|
| 2. | ExxonMobil |
|
| 3. | Rentech |
|
| 4. | Shell |
|
| 5. | UOP |
|
| 6. | Neste |
|
| 7. | British Petroleum |
|
| 8. | ConocoPhillips |
|
| 9. | Changing World Technologies |
|
| 10. | ▇▇▇ ▇▇▇▇▇▇ University |
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