Exhibit 10.20
LICENSE AGREEMENT
This License Agreement (the "Agreement") is made as of October 23, 2006
between Xxxxxx X. Xxxxxx and Xxxxxxx Xxxxxx, as licensors (separately and
together, "Licensors") and Xxxxxx International, Ltd., a Delaware corporation
("Licensee"). This Agreement shall become effective as of the Effective Date, as
defined herein.
Recitals:
1. Licensors and Licensee are parties to a license agreement, dated
December 22, 1997 (Exhibit A), and Xxxxxx X. Xxxxxx and Licensee are
parties to a license agreement, dated November 10, 2005 (Exhibit B)
(together, the "Prior License Agreements").
2. Licensee intends to sell additional shares of its common stock to
certain purchasers. As a precondition thereof the placement agent is
requiring that the Prior License Agreements be amended and restated, and
employment agreements, in the form of Exhibit C and Exhibit D be signed
with Xxxxxx X. Xxxxxx and Xxxxxxx Xxxxxx, respectively (the "Employment
Agreements"), and Licensors acknowledge that they will benefit therefrom.
NOW THEREFORE, for this and other valuable consideration, the receipt of
which is hereby acknowledged, and intending to be legally bound, the parties
agree as follows:
1. DEFINITIONS:
"Additional Licensed Intellectual Property Rights" means Intellectual
Property Rights (not including the Licensed Intellectual Property Rights)
and any related inventions that (i) do not relate to the CSRV and (ii)
that are invented or developed by one of both Licensors or as to which a
Licensor acquires the right to license or sublicense during the period of
time that the applicable Licensor is employed by, or a consultant to, the
Licensee and a period of five years thereafter.
"Cause" - with respect to each Licensor shall have the meaning ascribed to
such term is such Licensor's Employment Agreement.
"Commitment Period" - with respect to each Licensor shall have the meaning
ascribed to such term in such Licensor's Employment Agreement.
"CSRV" means the spherical rotary valve system developed by Licensors as
it may be improved or modified from time to time.
"CSRV Engine" shall mean an internal combustion engine which incorporates
the CSRV.
"Effective Date" means the closing by the Company of an equity investment
of at least $10,000,000 (the "Investment") provided that such investment
occurs on or before December 31, 2006.
"Field of Use" shall mean the development, manufacturing, sale and/or
distribution of CSRV Engines.
"Good Reason" - with respect to each Licensor shall have the meaning
ascribed to such term is such Licensor's Employment Agreement.
"Intellectual Property Rights" means patent rights, copyright rights
(including, but not limited to, moral rights), Know-how, license rights,
and any other intellectual property rights (other than trademarks)
recognized by the law of any applicable jurisdiction.
"Know-How" means trade secrets (including trade secrets as defined in the
United States Uniform Trade Secrets Act and under corresponding foreign
statutory law and common law), concepts, knowledge, technical information,
and data including, but not limited to, algorithms, engineering,
scientific and practical information and formulae, equipment designs,
information or materials and commercial sources thereof, technical
information recorded in reports, on drawings, in specifications and in
other writings, irrespective of the form of expression or media upon or in
which it is recorded, or transmitted.
"Letter Agreement" shall mean a certain letter agreement dated July 7,
2006 by and between Licensee and WWE, a copy of which is attached hereto
as Exhibit E.
"Licensed Intellectual Property Rights" shall mean (a) the patents and
patent applications listed on Appendix 1.1 hereto, (b) any patents that
shall issue on any of the patent applications listed on Appendix 1.1, (c)
any patents derived from continuation, continuation-in-part, divisional,
reissue or reexamination applications based on the patents and patent
applications referred to in clauses (a) or (b) above to the extent related
to the same subject matter, (d) foreign counterparts to any of the
foregoing, and (e) any other patents or patent applications, in each case
owned by one or both Licensors or as to which a Licensor has the right to
license or sublicense that relate to the CSRV, Licensed Intellectual
Property Rights shall include any Intellectual Property Rights relating to
the CSRV invented or developed by one of both Licensors or as to which a
Licensor acquires the right to license or sublicense during the period of
time that the applicable Licensor is employed by, or a consultant to, the
Licensee and a period of five years thereafter.
"Territory" shall mean the countries comprising Xxxxx Xxxxxxx, Xxxxxxx
Xxxxxxx xxx Xxxxx Xxxxxxx and their respective territories and possessions
provided, that until the Threshold Date, "Territory" shall mean worldwide.
After the Threshold Date "Territory" shall include all countries outside
of North America, Central America and South America in which Licensee has
sold products under this Agreement through the Threshold Date aggregating
at least $5 million, but any licenses hereunder with respect to such
countries shall be non-exclusive.
"Threshold Date" shall mean the end of any four consecutive fiscal
quarters in which Licensee recognizes aggregate consolidated revenue
determined in accordance with U.S. generally accepted accounting
principles consistently applied of $200 million.
"WWE" shall mean Well to Wire Energy Inc., a Canada-based corporation.
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2. GRANT
2.1 Licensors hereby grant to Licensee a sole and exclusive, fully paid-up
and royalty-free, perpetual and irrevocable (subject to the termination of
this Agreement) license in the Territory, with the right to sublicense,
under the Licensed Intellectual Property Rights, solely in the Field of
Use, to develop, make, have made, use, sell, offer to sell, lease and
import products and to develop and perform processes that use any of the
Licensed Intellectual Property Rights.
2.2 Licensors hereby grant to Licensee a fully paid-up and royalty-free,
perpetual and irrevocable (subject to the termination of this Agreement)
license in the Territory, with the right to sublicense, under the
Additional Licensed Intellectual Property Rights, solely in the Field of
Use, to develop, make, have made, use, sell, offer to sell, lease and
import products and to develop and perform processes that use any of the
Additional Licensed Intellectual Property Rights. The license described in
this Section 2.2 shall be exclusive through the earlier of the Threshold
Date or December 31, 2009, and non-exclusive thereafter.
2.3 Licensors hereby grant to Licensee during the term of this Agreement
an exclusive license to use and display the trademarks owned by Licensors
that are listed on Appendix 2.3 (the "Marks") as necessary or appropriate
to conduct its business in the Field of Use within the Territory; provided
that Licensors may require Licensee to cease or suspend use of particular
Xxxx(s) for good cause (for example, because of Licensor's business
decision to modify or abandon a Xxxx). Each use or display of Marks by
Licensee will be in conformance with any trademark usage guidelines that
Licensors may communicate to Licensee from time to time, will be subject
to Licensor's prior written pproval, and will be accompanied by the
appropriate service xxxx symbol (either "tm" or "sm") and a legend
specifying that such Marks are trademarks or service marks of Licensors.
Licensee will provide Licensors with a copy of any materials it has
created or uses bearing any of Licensors' Marks. If Licensee's use of any
Marks, or if any material bearing such Marks, is deficient in quality, as
reasonably determined by Licensors, Licensee will promptly remedy such
deficiencies upon receipt of written notice of such deficiencies from
Licensors. Nothing herein will grant to Licensee any right, title or
interest in the Marks. All goodwill resulting from Licensee's use of the
Marks will inure solely to Licensors. Licensee will not, at any time
during or after the term of this Agreement, register, attempt to register,
claim any interest in, contest the use of, or otherwise adversely affect
the validity of any of the Marks (including, without limitation any act or
assistance to any act, which may infringe or lead to the infringement of
any such Marks).
2.4 In the event that the employment of a Licensor by Licensee is
terminated by Licensor for Cause or if a Licensor terminates his own
employment with Licensee without Good Reason prior to the Threshold Date,
then the term Territory shall be permanently defined as worldwide,
provided, however, that the license granted under Section 2.1 above shall
be exclusive within North, South and Central America and non-exclusive
elsewhere.
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2.5 The Licensors confirm that WWE is entitled to a right of first refusal
from the Licensee to market the Xxxxxx electrical generation systems
worldwide, and agree that, in the event WWE exercises such right anywhere
outside of the Territory, Licensors, as applicable, hereby grant Licensee
any additional Intellectual Property Rights, for the sole purpose of
sublicensing them to WWE, necessary for WWE to market the Xxxxxx
electrical generation systems anywhere it has acquired such marketing
rights from Licensee.
3. NEGATIVE COVENANTS:
Each of the Licensors undertakes and covenants as follows:
(a) that until the Threshold Date, he shall not sell, assign, grant any
license, lien or pledge any of the Licensed Intellectual Property Rights
either within or outside the Territory other than to Licensee.
(b) in the event that his employment with Licensee is terminated by
Licensee for Cause, or in the event he terminates his employment with
Licensee without Good Reason, in each case prior to the Threshold Date,
then such Licensor shall not sell, assign, grant any license, lien or
pledge any of the Licensed Intellectual Property Rights or the Licensed
Additional Intellectual Property Rights owned by him or under his control
for a period of five (5) years.
(c) That until the earlier of the Threshold Date or December 31, 2009, he
will not sell, assign, grant any license, lien or pledge any of the
Additional Licensed Intellectual Property Rights, and thereafter that he
will not grant any licenses to the Additional Licensed Intellectual
Property Rights that are inconsistent with the rights of Licensee under
this Agreement
(d) he shall not sell, assign, grant any license, lien or pledge with
respect to the Intellectual Property Rights or the Additional Intellectual
Property Rights that are inconsistent with the rights of the Licensee
under this Agreement or that would preclude the grant of any rights to
which the Licensee may be entitled under this Agreement. In the event that
any of the provisions of this Section 3 are inconsistent with the
provisions of Section 2, then the provision most favorable to the Licensee
shall control.
4. TERM:
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The term of this Agreement shall commence as of the Effective Date and
shall remain in effect perpetually, unless terminated in accordance with
the provisions of this Agreement.
5. PATENT PROTECTION AND INFRINGEMENT:
5.1 Licensee, during the term of this Agreement, is responsible for the
filing and the prosecution of all Patent Rights in North, Central and
South America at Licensee's expense. If Licensee determines that it is
uneconomic to file and/or prosecute any such Patent Rights in a particular
country, Licensee shall notify Licensors thereof and Licensors shall have
the right to prosecute the same subject to the terms of this Agreement.
5.2 Each party shall notify the other of any instances of infringement of
the Licensed Intellectual Property Rights of the Additional Licensed
Intellectual Property Rights. Licensee shall have the right, but not the
obligation, to bring suit at its own expense to restrain any infringement
or to recover damages. If Licensee fails to challenge an instance of
alleged infringement after notice to the Licensee's Board of Directors and
the concurrence of a majority of the independent members of the Board of
Directors, then Licensors shall have the right but not the obligation to
take such action in their own name and at their own expense.
5.3 Each party shall cooperate as is reasonably necessary in any such
action brought by the other party. The party bringing the action shall
have the sole right to control prosecution. Damages shall be retained by
the party bringing the action. In any event, no settlement, consent,
judgment or other voluntary final disposition of the suit may be entered
into without the consent of Licensor, which shall not be unreasonably
withheld.
5.4 Licensee will bear all costs and expenses incurred in connection with
the defense of any infringement claims against it or as a result of any
settlement made or judgment rendered on the basis of such claims. Licensor
will have the right, but not the obligation, to retain counsel and
participate in the defense at its expense in connection with any such
claim. 5.5 Subject to Section 2.5 above, Licensors shall have no
responsibility with respect to Licensee's own trademarks and trade name,
and Licensee in respect to the use thereof will defend, indemnify and hold
harmless Licensor against any and all third party claims.
6. INDEMNIFICATION:
Licensee shall release, indemnify and hold harmless Licensors against any
and all losses, expenses, claims, actions, lawsuits and judgments thereon
(including attorney's fees, and expenses through the appellate levels)
("Losses") which may be brought against Licensors as a result of or
arising out of (i) any negligent or intentional act or omission of
Licensee, its agents, or employees, or arising out of the use, production,
manufacture, sale, lease, consumption or advertisement by Licensee or any
third party of any of the Intellectual Property Rights licensed under this
Agreement, or (ii) third party claims of infringement which may be
asserted against Licensor or the aforementioned persons because of the
manufacture, use, sale or lease, consumption or advertisement of products
using the Intellectual Property Rights licensed under this Agreement.
Licensee shall have the right, at its expense, to control the defense
against any such claim or action. Notwithstanding the foregoing, Licensee
shall not have any obligation under this subparagraph with respect to any
Losses that are directly related to any breach by a Licensor of this
Agreement.
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7. WARRANTIES:
LICENSORS MAKE NO WARRANTIES, EXPRESS OR IMPLIED, AND HEREBY DISCLAIM ALL
SUCH WARRANTIES, AS TO ANY MATTER WHATSOEVER, INCLUDING, WITHOUT
LIMITATION, THE CONDITION OF ANY INVENTION(S) OR PRODUCT, WHETHER TANGIBLE
OR INTANGIBLE, LICENSED UNDER THIS AGREEMENT; OR THE MERCHANTABILITY, OR
FITNESS FOR A PARTICULAR PURPOSE OF THE INVENTION OR PRODUCT; OR THAT THE
USE OF THE LICENSED PRODUCT WILL NOT INFRINGE ANY PATENT, COPYRIGHTS,
TRADEMARKS, OR OTHER RIGHTS. LICENSORS SHALL NOT BE LIABLE FOR ANY DIRECT,
CONSEQUENTIAL, OR OTHER DAMAGES SUFFERED BY ANY LICENSEE OR ANY THIRD
PARTIES RESULTING FROM THE USE, PRODUCTION, MANUFACTURE, SALE, LEASE,
CONSUMPTION, OR ADVERTISEMENT OF THE PRODUCT.
Notwithstanding the foregoing, Licensors represent and warrant to Licensee
that they have no actual knowledge of invalidity of any of the
Intellectual Property Rights licensed to Licensee under this Agreement.
Licensors further represent and warrant that they have the full power and
authority, without any conflict with the rights of others, to grant the
licenses to Licensee contained in this Agreement. Licensors will promptly
bring to the attention of the Licensee any Licensed Intellectual Property
Rights or Additional Licensed Intellectual Property Rights not theretofore
disclosed to Licensee.
8. MARKING AND STANDARDS:
Licensee agrees to xxxx Products (or their containers or labels) made,
sold, or otherwise disposed of by it under the license granted in this
Agreement with a proper patent notice as specified under the patent laws
of the United States and with a notice of the existence of this license
and a proper patent notice as specified under the patent laws of (1) the
United States; and, (11) to the extent applicable, the country, other than
the United States, where the Products are made, sold or otherwise disposed
of by Licensee.
9. ASSIGNMENT:
9.1 Licensee may assign its rights and obligations under this Agreement in
connection with the sale of its business, by merger, sale of outstanding
stock or sale or transfer of all or substantially all assets relating to
the Patent Rights and the Products. Licensee may not otherwise assign this
Agreement without the prior written consent of Licensor, which consent
shall not be unreasonably withheld or delayed.
9.2 This Agreement shall extend to and be binding upon the successors and
legal representatives and permitted assigns of Licensor and Licensee.
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10. TERMINATION:
10.1 Licensors, together, and Licensee shall have the right to terminate
this Agreement if the other party commits a material breach of an
obligation under this Agreement and continues in default for more than
sixty (60) days after receiving written notice of such default.
10.2 If any provision of this Agreement is declared invalid by a court of
last resort, or by any court, the decision of which an appeal is not taken
within the time provided by law, then and in such an event, this Agreement
will be deemed to have been terminated only as to the portion thereof
which relates to the provision invalidated by that judicial decision, but
this Agreement, in all other respects, will remain in force.
10.3 This Agreement shall terminate automatically if Licensee ceases
business operations, if Licensee files for bankruptcy or if an involuntary
petition in bankruptcy is filed against Licensee and is not dismissed
within 60 days.
10.4 Upon termination, Licensee shall have the right to dispose of CSRV
Products then in their possession and to complete existing contracts for
such CSRV products.
10.5 Any sublicenses granted by Licensee under this Agreement shall remain
in effect after the termination of this Agreement, and shall be assigned
without consideration to Licensor in the event this license terminates.
11. GOVERNING LAW:
This Agreement shall be governed in all respects, by the laws of the State
of New Jersey, including validity, interpretation and effect, without regard to
principles of conflicts of law. The parties hereto irrevocably and
unconditionally consent to submit to the exclusive jurisdiction of the state and
federal courts in the State of New Jersey for any lawsuits, actions or other
proceedings arising out of or related to this Agreement and agree not to
commence any lawsuit, action or other proceeding except in such courts. The
parties hereto further agree that service of process, summons, notice or
document by mail to their addresses set forth above shall be effective service
of process for any lawsuit, action or other proceeding brought against them in
any such court. The parties hereto irrevocably and unconditionally waive any
objection to the laying of venue of any lawsuit, action or other proceeding
arising out of or related to this Agreement in such courts, and hereby further
irrevocably and unconditionally waive and agree not to plead or claim in any
such court that any such lawsuit, action or proceeding brought in any such court
has been brought in an inconvenient forum.
12. SURVIVAL:
12.1 The provisions of Sections 5, 6 and 7 shall survive the termination
or expiration of this Agreement and shall remain in full force and effect.
12.2 The provisions of this Agreement which do not survive termination or
expiration hereof (as the case may be) shall, nonetheless, be controlling
on, and shall be used in construing and interpreting, the rights and
obligations of the parties hereto with regard to any dispute, controversy
or claim which may arise under, out of, in connection with, or relating to
this Agreement.
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13. AMENDMENT:
No amendment or modification of the terms of this Agreement shall be
binding on either party unless reduced to writing and signed by an authorized
officer of the party to be bound.
14. WAIVER:
No failure or delay on the part of a party in exercising any right
hereunder will operate as a waiver of, or impair, any such right. No single or
partial exercise of any such right will preclude any other or further exercise
thereof or the exercise of any other right. No waiver of any such right will be
deemed a waiver of any other right hereunder.
15. ENTIRE AGREEMENT:
This Agreement constitutes the entire agreement between the parties hereto
respecting the subject matter hereof, and supercedes and terminates all prior
agreements respecting the subject matter hereof, whether written or oral,
including, and not limited to, the Prior License Agreements.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their respective officers thereunto duly authorized to be effective
as of the Effective Date.
XXXXXX INTERNATIONAL LTD.
By: __________________________ _______________________
Name: Xxxxxx X. Xxxxxx
Title:
-----------------------
Xxxxxxx Xxxxxx
Xxxxxx Trust, a trust formed under the laws of the Commonwealth of the Bahamas,
having an address at Katherina Court 000, Xxxx Xxxx Xxxxx, Xxxxxx Xxxxxx, Xxxxx,
Xxxxxx, the Bahamas (the "Xxxxxx Trust"), agrees that to the extent any of the
Licensed Intellectual Property Rights or Additional Intellectual Property Rights
licensed to Licensee hereunder are owned or under the control of the Xxxxxx
Trust, the Xxxxxx Trust hereby makes the license grants contained herein as if
if were the Licensors and will perform all of the covenants of the Licensors
hereunder to the extent necessary to afford to Licensee the full benefits of
this Agreement.
XXXXXX TRUST
By:
------------------------------------
Name:
Title:
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List of Exhibits and Appendixes:
Exhibit A: License agreement, dated December 22, 1997
Exhibit B: License agreement, dated November 10, 2005
Exhibit C: Employment Agreement by and between Xxxxxx X. Xxxxxx and Licensee
Exhibit D: Employment Agreement by and between Xxxxxxx Xxxxxx and Licensee
Exhibit E: the Letter Agreement with WWE
Appendix 1.1: Patents and patent applications
Appendix 2.3: List of trademarks
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