EXHIBIT 10.5
EXECUTION COPY
WHENEVER CONFIDENTIAL INFORMATION IS OMITTED HEREIN (SUCH OMISSIONS ARE DENOTED
BY AN ASTERISK*), SUCH CONFIDENTIAL INFORMATION HAS BEEN SUBMITTED SEPARATELY TO
THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT.
COMMERCIAL ALLIANCE AGREEMENT
This Commercial Alliance Agreement (the "Agreement") dated as of July 12,
2006 (the "Effective Date") is entered into by and among ADM Polymer
Corporation, a corporation duly incorporated and validly existing under the laws
of the State of Delaware, with headquarters located at 0000 Xxxxxx Xxxxxxx,
Xxxxxxx, XX 00000 ("ADM Sub"), Metabolix, Inc., a corporation duly incorporated
and validly existing under the laws of the State of Delaware, with headquarters
located at 00 Xxxx Xxxxxx, Xxxxxxxxx, XX 00000-0000 ("MBX") and ADM / Metabolix
Sales Company, LLC, a limited liability company duly formed and validly existing
under the laws of the State of Delaware, with headquarters located at 00 Xxxx
Xxxxxx, Xxxxxxxxx, XX 00000-0000 (the "Joint Sales Company") (MBX, ADM Sub, and
the Joint Sales Company are each a "Party" and are collectively, the "Parties").
RECITALS
WHEREAS, ADM Sub is a wholly owned subsidiary of Xxxxxx-Xxxxxxx-Midland
Company ("ADM");
WHEREAS, MBX and ADM Sub are parties to that certain Technology Alliance
and Option Agreement dated November 3, 2004 (the "Technology Alliance and Option
Agreement") pursuant to which the Parties conducted a mutual assessment of the
technical and commercial feasibility of commercializing PHA Material (as defined
below);
WHEREAS, MBX granted to ADM Sub the option (the "Commercial Alliance
Option"), on the terms and conditions set forth in the Technology Alliance and
Option Agreement, to enter into a broader commercial alliance as set forth
herein and in the Commercial Alliance Agreements (as defined below) regarding
the manufacture, use and sale of PHA Material;
WHEREAS, the conditions to ADM Sub's exercise of the Commercial Alliance
Option have been satisfied and ADM Sub has exercised the Commercial Alliance
Option in accordance with the Technology Alliance and Option Agreement; and
WHEREAS, as a result of ADM Sub's exercise of the Commercial Alliance
Option, MBX and ADM Sub are, as of the date hereof, forming the Joint Sales
Company to assist in the commercialization of the PHA Material and PHA
Formulations, enter into this Agreement and the remaining Commercial Alliance
Agreements in order to establish and begin operation of the broader commercial
alliance, all on the terms and conditions set forth herein and in the remaining
Commercial Alliance Agreements.
NOW, THEREFORE, in consideration of the recitals and the mutual covenants
and promises contained herein, and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the Parties hereto
do hereby agree as follows.
* CONFIDENTIAL TREATMENT REQUESTED
ARTICLE 1
DEFINITIONS
"ADM SUB ALLIANCE TECHNOLOGY" means any Technology developed, conceived or
reduced to practice during the course of performance of the Commercial Alliance,
solely by employees of, or consultants to, ADM Sub or its Affiliates, including
without limitation, employees of ADM Sub or its Affiliates who are providing
services to the Joint Sales Company under any of the Commercial Alliance
Agreements (alone or jointly with a Third Party), with or without the material
use of any MBX Technology or Joint Alliance Technology. Technology that is
within the meaning of the term "ADM Program Technology" (as that term is defined
in the Technology Alliance and Option Agreement) is hereby deemed to be included
within the term "ADM Sub Alliance Technology." For the purposes of this
definition, employees of or consultants to the Joint Sales Company (other than
employees of ADM Sub or its Affiliates who are providing services to the Joint
Sales Company under any of the Commercial Alliance Agreements) will be deemed to
be employees of both ADM Sub and MBX. Notwithstanding the foregoing, Unfunded
Technology shall not be included as part of the ADM Sub Alliance Technology.
"ADM SUB BACKGROUND TECHNOLOGY" means any Technology that is Controlled by
ADM Sub: (i) as of the Effective Date or (ii) developed, conceived or reduced to
practice solely by employees of, or consultants to, ADM Sub or its Affiliates in
the conduct of activities outside of the Commercial Alliance, without the
material use of any MBX Technology or Alliance Technology. Technology that is
within the meaning of the term "ADM Program Technology" (as that term is defined
in the Technology Alliance and Option Agreement) is hereby deemed not to be
included within the term "ADM Sub Background Technology."
"ADM SUB CONSTRUCTION MASTER PLAN AND BUDGET" shall have the meaning set
forth in the Technology Alliance and Option Agreement.
"ADM SUB FORMULATION ENGINEER" shall have the meaning set forth in Section
4.3.3.
"ADM SUB MANUFACTURING AGREEMENT" shall have the meaning set forth in
Section 2.1.1.
"ADM SUB MANUFACTURING FACILITY" shall have the meaning set forth in
Section 4.1.
"ADM SUB PATENT RIGHTS" means any Patent Rights Controlled by ADM Sub and
claiming or covering the ADM Technology.
"ADM SUB PROPRIETARY MATERIALS" means any Proprietary Materials Controlled
by ADM Sub and used by ADM Sub, provided by ADM Sub for use, or necessary or
useful in the Commercial Alliance.
"ADM SUB SERVICES AGREEMENT" shall have the meaning set forth in Section
2.1.1.
"ADM TECHNOLOGY" means, collectively, ADM Sub Proprietary Materials, ADM
Sub Background Technology and ADM Sub Alliance Technology.
"AFFILIATE" of a Person means any other Person that directly, or indirectly
through one or more intermediaries, controls, is controlled by or is under
common control with such Person. "Control" and, with correlative meanings, the
terms "controlled by" and "under common control
* CONFIDENTIAL TREATMENT REQUESTED
2
with" shall mean the power to direct or cause the direction of the management or
policies of a Person, whether through the ownership of voting securities, by
contract, resolution, regulation or otherwise. The Joint Sales Company is hereby
deemed not to be an Affiliate of ADM, ADM Sub or MBX. Tepha, Inc. is hereby
deemed not to be an Affiliate of MBX.
"ALLIANCE TECHNOLOGY" means ADM Sub Alliance Technology, Joint Alliance
Technology and MBX Alliance Technology
"BUSINESS DAY" means a day of the year on which banks are not required to
be closed in New York, New York.
"CALENDAR QUARTER" shall mean each of the following periods in each year:
(i) January 1 through March 31, (ii) April 1 through June 30, (iii) July 1
through September 30 and (iv) October 1 through December 31.
"CAPITAL CONTRIBUTION" shall have the meaning set forth in the Operating
Agreement.
"COMMERCIAL ALLIANCE" means the research, development and commercial
activities to be conducted by the Parties as set forth herein, including without
limitation, the Pilot Activities, the manufacturing, formulation, marketing,
distribution and sale of PHA Material and PHA Formulations, the planning,
construction and maintenance of the ADM Sub Manufacturing Facility and the MBX
Formulation Facility, the establishment and operation of the Joint Sales Company
and the evaluation of the Expansion Proposal and potential exercise of the Joint
Venture Option.
"COMMERCIAL ALLIANCE AGREEMENTS" means this Agreement and the ADM Sub
Manufacturing Agreement, the MBX Formulation Agreement, the Operating Agreement,
the ADM Sub Services Agreement, the MBX Services Agreement, the Consolidated
Confidentiality Agreement and the Loan and Security Agreement.
"COMMERCIAL ALLIANCE OPTION" shall have the meaning set forth in the above
recitals.
"COMMERCIAL PHASE" shall mean the period commencing upon the date of the
First Commercial Sale of a PHA Material, produced in the ADM Sub Manufacturing
Facility, to a Third Party by the Joint Sales Company, and expiring upon the
expiration or termination of this Agreement.
"COMMERCIALLY REASONABLE EFFORTS" shall mean, with respect to the efforts
to be applied by a Party in performing a referenced obligation hereunder, the
amount and quality of effort and resources that would be applied by a reasonable
manager or management team at a corporation having comparable expertise and
assets as such Party, to accomplish a task or to perform an obligation having
comparable relative importance to the success or failure of a commercial
enterprise that is comparable to the Commercial Alliance. For purposes of this
definition, a commercial enterprise would be comparable to the Commercial
Alliance if it poses similar anticipated technical and business risks or
challenges and similar anticipated financial return to the Parties as measured
at the time of the expenditure of the effort. When ADM Sub has an obligation to
use "Commercially Reasonable Efforts" herein, the following shall apply: (i) the
* CONFIDENTIAL TREATMENT REQUESTED
3
term "Commercially Reasonable Efforts" shall be defined as it is in this
definition but by reference to ADM Sub and ADM as if they were a single entity,
and (ii) in determining whether ADM Sub have satisfied its obligations, the
efforts applied by and ADM Sub and ADM shall both be taken fully into account.
"CONFIDENTIAL INFORMATION" means: (a) all tangible embodiments of
Technology produced or discovered by either Party or jointly by one or more
Parties under the Commercial Alliance Program, and all information concerning
the terms of this Agreement, and (b) with respect to a Party (the "Receiving
Party"), all information, Technology and Proprietary Materials which are
disclosed by any other Party (the "Disclosing Party") to the Receiving Party
hereunder or to any of its employees, consultants, or Affiliates; except to the
extent that the information, (i) as of the date of disclosure is demonstrably
known to the Receiving Party or its Affiliates, as shown by written
documentation, other than by virtue of a prior confidential disclosure to such
Party or its Affiliates; (ii) as of the date of disclosure is in, or
subsequently enters, the public domain, through no fault or omission of the
Receiving Party, or any of its Affiliates; (iii) is obtained from a Third Party
having a lawful right to make such disclosure free from any obligation of
confidentiality to the Disclosing Party; or (iv) is independently developed by
or for the Receiving Party without reference to or reliance upon any
Confidential Information of the Disclosing Party as demonstrated by competent
written records.
"CONSTRUCTION" AND "CONSTRUCT" shall mean, in respect to a building, the
activities, and their performance, that are usual and appropriate to create a
completed facility that: (i) is in all material respects in compliance with all
material safety, health, zoning, environmental and other regulations and laws
applicable to it whether such applicability is based on its location, physical
dimensions and attributes, its intended uses or otherwise and (ii) is designed
to enable and support state-of-the-art operations pertaining to its intended
purpose. The terms "Construction" and "Construct" shall include the following
activities and their performance with respect to a facility: planning,
designing, engineering, construction, procurement, equipping and acquiring the
necessary permits.
"CONSTRUCTION COSTS" are those reasonable costs and expenses that are
actually incurred by either ADM or ADM Sub in connection with the Construction
of the ADM Sub Manufacturing Facility, or MBX in connection with the
Construction or acquisition of the MBX Formulation Facility, in either case, as
and to the extent such costs and expenses were: (i) reasonably incurred in
Construction consistent with the plans, designs, engineering and budget in the
ADM Sub Construction Master Plan and Budget as approved by the TAC as provided
in the Technology Alliance and Option Agreement (or as approved by the Steering
Committee pursuant to Section 4.2.2), or the MBX Facility Master Plan and Budget
(as applicable), (ii) reasonably incurred in Construction consistent with the
plans, designs, engineering and budget in any amended ADM Sub Construction
Master Plan and Budget or the MBX Facility Master Plan and Budget (as
applicable), which amendments were approved by the Steering Committee to the
extent required herein; or (iii) were otherwise designated by the Steering
Committee as Construction Costs. Without limiting the foregoing, the Steering
Committee shall not approve as Construction Costs costs and expenses which it
determines are excessive in amount, or costs and expenses that relate to
improvements of existing facilities, or features of new facilities, to the
extent such improvements or features are not for the benefit for the Commercial
Alliance.
* CONFIDENTIAL TREATMENT REQUESTED
4
"CONSTRUCTION PHASE" means the period commencing upon the Effective Date
and expiring upon the first to occur of: (i) the date of the First Commercial
Sale of a PHA Material (including, without limitation, PHA Material that is
contained within PHA Formulations) produced in the ADM Sub Manufacturing
Facility, to a Third Party by the Joint Sales Company and (ii) the termination
of this Agreement.
"CONTROL" OR "CONTROLLED" means (a) with respect to Technology (other than
Proprietary Materials) or Patent Rights, the possession by a Party of the
ability to grant a license or sublicense to such Technology or Patent Rights as
provided herein without violating the terms of any agreement or arrangement
between such Party and any Third Party, and (b) with respect to Proprietary
Materials, the possession by a Party of the ability to supply such Proprietary
Materials to the other Party for use as provided herein without violating the
terms of any agreement or arrangement between the supplying Party and any Third
Party. A Party shall be deemed not to "Control" any Technology, Patent Rights or
Proprietary Materials of any other Party solely by virtue of rights therein, or
possession thereof, that was granted or acquired solely in accordance with this
Agreement or any other Commercial Alliance Agreement.
"DEFENDING PARTY" shall have the meaning set forth in Section 11.3.1.
"EFFECTIVE DATE" means the date first above written.
"EXCLUSIVE PERIOD" shall mean that period of time commencing upon the
Effective Date and continuing until the first to occur of: (i) the JV Option
expiring without having been exercised by ADM Sub and (ii) the end of the Term.
"EXPANSION PROPOSAL" shall have the meaning set forth in Section 9.1.1.
"FERMENTATION AND RECOVERY PROCESS" means the process used to produce
fermentation broth containing PHA Material, to produce PHA Cell Paste from
fermentation broth, and to recover PHA Material from such PHA Cell Paste using
solvent and aqueous recovery processes.
"FIELD" means the research, development, manufacture, use, sale and
importation of PHA Material and PHA Formulations; provided that the Field shall
not include any uses that are within the "Field of Use" as that term is defined
in the License Agreement by and between MBX and Tepha, Inc. dated October 1,
1999, as amended on December 17, 2002.
"FIRST COMMERCIAL SALE" means the sale of not less than 1,000,000 pounds of
PHA Material (including, without limitation, PHA Material that is contained
within PHA Formulations) manufactured in the ADM Sub Manufacturing Facility,
that meets the then-current specifications for PHA Material, to Third Parties,
who are satisfied with the quality, and who purchased the PHA Material in
greater than sample quantities for commercial use.
"FUNDED TECHNOLOGY" shall have the meaning set forth in Section 4.4.1.
"INFRINGEMENT" shall have the meaning set forth in Section 11.3.1.
* CONFIDENTIAL TREATMENT REQUESTED
5
"JOINT ALLIANCE TECHNOLOGY" means Technology developed, conceived or
reduced to practice jointly by employees of, or consultants to, ADM Sub on the
one hand, and MBX on the other, (in either case, with or without a Third Party)
during the course of performance of the Commercial Alliance. Technology that is
within the meaning of the term "Joint Program Technology" (as that term is
defined in the Technology Alliance and Option Agreement) is hereby deemed to be
included within the term "Joint Alliance Technology." For the purposes of this
definition, employees of the Joint Sales Company, excluding employees of ADM,
ADM Sub or MBX who are providing services to the Joint Sales Company under the
ADM Sub Services Agreement or the MBX Services Agreement, will be deemed to be
employees of both ADM Sub and MBX. Notwithstanding the foregoing, Unfunded
Technology shall not be included as part of Joint Alliance Technology.
"JOINT VENTURE" shall have the meaning set forth in Section 9.1.1.
"JOINT VENTURE ENTITY" shall have the meaning set forth in Section 9.1.1.
"JV OPTION" shall have the meaning set forth in Section 9.1.
"KNOWLEDGE means, with respect to MBX, the actual knowledge and awareness,
without the requirement of investigation, of any of the following four (4)
members of MBX management: President and CEO, Chief Scientific Officer, Chief
Financial Officer and Director of Manufacturing and Development, without the
requirement of investigation, and, with respect to ADM Sub, the actual knowledge
and awareness, without the requirement of investigation, of any of the following
nine (9) members of ADM management: Senior Vice President (Corn Processing and
Food Specialties), President of Natural Health & Nutrition Division, Assistant
Controller, Corporate Counsel - Intellectual Property, Senior Attorney, Senior
Vice President Venture Research, Vice President Technology Assessment, President
of ADM Research Division, and Vice President of Research, Molecular Biology -
Fermentation.
"LEDGER ACCOUNT" shall have the meaning set forth in the Operating
Agreement.
"LICENSE FEE" shall have the meaning set forth in Section 7.2.3.
"LIMITED SUBLICENSE RIGHT" means that with respect to a particular license
of rights that the licensee shall have no right to sublicense or otherwise
enable a Third Party to perform or participate in the performance of the
Fermentation and Recovery Process, or any part thereof, but that the licensee
shall have the right otherwise to grant sublicenses of such licensed rights, and
further that the Joint Sales Company shall have the right to contract with Third
Parties to conduct Pilot Sourcing as per Section 4.4.2, and the licensee shall
have the right to contract with Third Parties to troubleshoot, consult, or
further develop aspects of the Fermentation and Recovery Process, provided that
the licensee shall pursuant to a written agreement with such third party own all
Technology arising from such contracted activity. Notwithstanding the foregoing,
the licensee shall not transfer or convey any cell line constituting part of the
MBX Proprietary Materials to any Third Party.
* CONFIDENTIAL TREATMENT REQUESTED
6
"LOAN AND SECURITY AGREEMENT" shall have the meaning set forth in Section
2.1.1.
"MANUFACTURING COST" shall have the meaning set forth in the ADM Sub
Manufacturing Agreement.
"MBX ALLIANCE TECHNOLOGY" means any Technology developed, conceived or
reduced to practice during the course of performance of the Commercial Alliance,
solely by employees of, or consultants to, MBX or its Affiliates, including
without limitation, employees of MBX or its Affiliates who are providing
services to the Joint Sales Company under any of the Commercial Alliance
Agreements (alone or jointly with a Third Party), with or without the material
use of any ADM Technology or Joint Alliance Technology. Technology that is
within the meaning of the term "MBX Program Technology" (as that term is defined
in the Technology Alliance and Option Agreement) is hereby deemed to be included
within the term "MBX Alliance Technology." For the purposes of this definition,
employees of or consultants to the Joint Sales Company (other than employees of
MBX or its Affiliates who are providing services to the Joint Sales Company
under any of the Commercial Alliance Agreements) will be deemed to be employees
of both ADM Sub and MBX. Notwithstanding the foregoing, Unfunded Technology
shall not be included as part of MBX Alliance Technology.
"MBX APPLICATIONS PATENT RIGHTS" means and Patent Rights Controlled by MBX
that claim or cover specific uses, within the Field, of PHA Materials or PHA
Formulations.
"MBX BACKGROUND TECHNOLOGY" means any Technology that is Controlled by MBX:
(i) as of the Effective Date or (ii) developed, conceived or reduced to practice
solely by employees, of, or consultants to, MBX or its Affiliates in the conduct
of activities outside of the Commercial Alliance, without the material use of
any ADM Technology or Alliance Technology. Technology that is within the meaning
of the term "MBX Program Technology" (as that term is defined in the Technology
Alliance and Option Agreement) is hereby deemed not to be included within the
term "MBX Background Technology."
"MBX FACILITY MASTER PLAN AND BUDGET" shall have the meaning set forth in
Section 4.3.2.
"MBX FORMULATION AGREEMENT" shall have the meaning set forth in Section
2.1.1.
"MBX FORMULATION FACILITY" shall have the meaning set forth in Section 4.1.
"MBX PATENT RIGHTS" means any Patent Rights Controlled by MBX and claiming
or covering the MBX Technology, including without limitation, the MBX
Applications Patent Rights.
"MBX PROPRIETARY MATERIALS" means any Proprietary Materials Controlled by
MBX and used by MBX, provided by MBX for use, or necessary or useful in the
Commercial Alliance. MBX Proprietary Materials shall include, without
limitation, all PHA Material and PHA Formulations supplied as samples to ADM or
ADM Sub, all cell lines (including all master stocks and working stock whether
prepared by ADM or ADM Sub or MBX) and all fermentation media, supplied by MBX
to ADM or ADM Sub, and all progeny, derivatives and mutated forms developed
therefrom.
* CONFIDENTIAL TREATMENT REQUESTED
7
"MBX SERVICES AGREEMENT" shall have the meaning set forth in Section 2.1.1.
"MBX TECHNOLOGY" means, collectively, MBX Proprietary Materials, MBX
Background Technology and MBX Alliance Technology.
"MBX TECHNOLOGY MANAGER" shall have the meaning set forth in Section 4.2.3.
"MIT LICENSE" means that certain License Agreement dated July 15, 1993 by
and between MBX and Massachusetts Institute of Technology, as amended.
"NEUTRAL PARTY" shall have the meaning set forth in Section 11.3.1.
"NON-EXCLUSIVE PERIOD" means that period of time during the Term following
the end of the Exclusive Period.
"OFFEREE PARTY" shall have the meaning set forth in Section 9.7.
"OFFEROR PARTY" shall have the meaning set forth in Section 9.7.
"OPERATING AGREEMENT" shall have the meaning set forth in Section 2.1.1.
"OPERATING PAYMENT" AND "OPERATING PAYMENTS" shall each have the meaning
set forth in Section 4.5 hereof.
"PATENT COMMITTEE" shall have the meaning set forth in Section 11.1.
"PATENT RIGHTS" means the rights and interests in and to issued patents and
pending patent applications (which for purposes of this Agreement shall be
deemed to include certificates of inventions and applications for certificates
of invention and priority rights) in any country, including all provisional
applications, substitutions, continuations, continuations-in-part, divisionals,
and renewals, all letters patent granted thereon, and all reissues,
reexaminations and extensions thereof, Controlled by a Party.
"PERMITTED ACTIVITIES" shall have the meaning set forth in Section 8.4.
"PERSON" means any individual, partnership (whether general or limited),
limited liability company, corporation, trust, estate, association, nominee or
other entity.
"PHA CELL PASTE" means the paste, containing the PHA Material, recovered
from whole fermentation broth and meeting the specifications set forth in
EXHIBIT H.
"PHA FORMULATIONS" means PHA Material that has been processed by blending
different types of PHA Material together with other polymers and/or with other
additives, including nucleants, clarifiers, flow modifiers, plasticizers, flame
retardants and heat stabilizers.
* CONFIDENTIAL TREATMENT REQUESTED
8
"PHA KNOW-HOW MATERIAL" means PHA Material, the manufacture, use, sale or
importation of which is accomplished or performed with the use of the MBX
Technology or Joint Alliance Technology.
"PHA MATERIAL" means the following forms of polyhydroxyalkanoate: * when
produced by any means other than via Plants, and any other forms of
polyhydroxyalkanoate, produced by any means other than via Plants, that are
substitutable by any customer with one or more of the above substances, are
generally technically and commercially feasible in the marketplace, and have
a potential adverse affect on the sales or profitability of the Joint Sales
Company in a material way. For avoidance of doubt, any PHB copolymers having
at least fifty percent (50%) of the * when produced by any means other than
via Plants, are hereby deemed to be included in the definition of PHA
Material.
"PHA PATENTED MATERIAL" means PHA Material, the manufacture, use, sale or
importation of which within or into the United States by a Person other than
MBX, absent the licenses granted herein, would infringe a Valid Claim of the MBX
Patent Rights or a Valid Claim within Patent Rights claiming or covering any
Technology within the Joint Alliance Technology.
"PHA-RELATED MATERIALS" means any polymer material consisting of one or
more hydroxyacids of the general formula:
*
"PHA SUPPLEMENTAL KNOW-HOW MATERIAL" means PHA Material, the manufacture,
use, sale or importation of which is accomplished or performed with the use of a
cell line Controlled by MBX and delivered by MBX to the Joint Sales Company at
any time during the Term.
"PILOT ACTIVITIES" means the activities related to Pilot Sourcing as
described in Section 4.4.2, the process development activities described in
Section 4.4.1 and the sales activities described in Section 4.4.3.
"PILOT FACILITIES" means the facility, or facilities, at which the Pilot
PHA Material is produced, purified, formulated and packaged for sale.
* CONFIDENTIAL TREATMENT REQUESTED
9
"PILOT PHA MATERIAL" shall have the meaning set forth in Section 4.4.2.
"PILOT SOURCING" shall have the meaning set forth in Section 4.4.2.
"PILOT SOURCING COSTS" shall have the meaning set forth in Section 4.4.2.
"PLANTS" shall mean photosynthetic organisms when not raised through
fermentation, but in any case excluding *. For avoidance of doubt, * is
included within the definition of Plants.
"PROJECT TEAMS" shall have the meaning set forth in Section 3.4.
"PROJECTS" shall have the meaning set forth in Section 3.4.
"PROPRIETARY MATERIALS" means any tangible chemical, biological or physical
research materials that are furnished by or on behalf of one Party to any other
Party in connection with this Agreement, regardless of whether such materials
are specifically designated as proprietary by the transferring Party.
"ROFN" shall have the meaning set forth in Section 7.4.
"ROFN RIGHTS" shall have the meaning set forth in Section 7.4.
"ROYALTY TERM" means that period commencing upon * and continuing until
the later of the expiration or termination of * from the Effective Date.
"SECTION 7 BREACH" shall have the meaning set forth in Section 10.2.1.
"SENIOR EXECUTIVES" shall have the meaning set forth in Section 14.3.1.
"STRATEGIC ALLIANCE" shall have the meaning set forth in Section 3.1.1.
"STRATEGIC ALLIANCE PARTNER" shall have the meaning set forth in Section
3.1.1.
"STEERING COMMITTEE" shall have the meaning set forth in Section 3.1.
"SUPPLEMENTAL ROYALTY TERM" means that period commencing upon the
delivery by MBX to ADM, ADM Sub or the Joint Sales Company of a cell line
Controlled by MBX used in the production or manufacture of PHA Supplemental
Know-How Material and ending upon the * to occur of (i) the *, and (ii) *
from the date of such delivery.
"TAC" shall have the meaning set forth in the Technology Alliance and
Option Agreement.
* CONFIDENTIAL TREATMENT REQUESTED
10
"TECHNOLOGY" means and includes all inventions, discoveries, improvements,
trade secrets, know-how, trademarks, servicemarks, tradenames and proprietary
methods and Proprietary Materials, whether or not patentable.
"TECHNOLOGY ALLIANCE AND OPTION AGREEMENT" shall have the meaning set forth
in the above recitals.
"TECHNOLOGY TRANSFER" shall have the meaning set forth in Section 6.7.
"TERM" shall have the meaning set forth in Section 10.1.
"THIRD PARTY" shall mean any person, corporation, partnership or other
entity other than the Parties and their respective Affiliates.
"THIRD PARTY ROYALTY OFFSET" shall have the meaning set forth in Section
9.8.4.
"UNFUNDED TECHNOLOGY" shall have the meaning set forth in Section 4.4.1.
"UNITS" shall have the meaning set forth in the Operating Agreement.
"VALID CLAIM" means a claim within a patent application or patent that has
not been abandoned or finally determined to be unenforceable or invalid by a
court or administrative agency with competent jurisdiction where all appeal
rights have been exhausted or expired.
"50,000 TON ANNUAL DESIGN CAPACITY" shall have the meaning set forth in
Section 4.2.1.
ARTICLE 2
OVERVIEW AND COMMERCIAL ALLIANCE AGREEMENTS
2.1 OVERVIEW OF THE COMMERCIAL ALLIANCE. The purpose and goal of the
Commercial Alliance is to advance and exploit the research, development and
marketing activities undertaken by ADM Sub and MBX in the performance of the
Technology Alliance and Option Agreement by combining, on a larger scale and for
a longer term, ADM Sub's fermentation capabilities, market knowledge and capital
with MBX's technology, formulation expertise, market knowledge and intellectual
property rights and to create and establish a commercial outlet for PHA Material
and PHA Formulations through the Joint Sales Company in order to create a
commercial venture in the Field. The Commercial Alliance shall be conducted by
MBX and ADM Sub, each on an individual basis and through their ownership and
participation as members in the Joint Sales Company, all in accordance with this
Agreement and the other Commercial Alliance Agreements.
2.1.1 COMMERCIAL ALLIANCE AGREEMENTS. Unless otherwise indicated
below, the Parties, as of the Effective Date, have executed and delivered the
following Commercial Alliance Agreements as provided for therein. The following
summary description of the Commercial
* CONFIDENTIAL TREATMENT REQUESTED
11
Alliance Agreements is provided solely for informational purposes and is not to
amend the terms set forth therein or to inform the interpretation of such terms.
(a) OPERATING AGREEMENT. The operating agreement, executed and
delivered by the Parties as of the Effective Date and appended hereto as Exhibit
A (the "Operating Agreement"), is the agreement pursuant to which the Joint
Sales Company was formed and shall operate and which defines the respective
rights and obligations of MBX and ADM Sub as the members of the Joint Sales
Company, all as and to the extent set forth therein and subject to the terms and
conditions set forth therein.
(b) ADM SUB MANUFACTURING AGREEMENT. The manufacturing agreement,
executed and delivered by ADM Sub and the Joint Sales Company as of the
Effective Date and appended hereto as Exhibit B (the "ADM Sub Manufacturing
Agreement"), is the agreement pursuant to which ADM Sub shall manufacture PHA
Material for the Joint Sales Company.
(c) MBX FORMULATION AGREEMENT. The formulation agreement, which
will be executed and delivered by MBX and the Joint Sales Company if and when
MBX commences the Construction of the MBX Formulation Facility or acquires the
MBX Formulation Facility, is appended hereto as Exhibit C (the "MBX Formulation
Agreement"), and is the agreement pursuant to which MBX shall produce PHA
Formulations for the Joint Sales Company from the PHA Material manufactured by
ADM Sub.
(d) ADM SUB SERVICES AGREEMENT. The services agreement, executed
and delivered by ADM Sub and the Joint Sales Company as of the Effective Date
and appended hereto as Exhibit D (the "ADM Sub Services Agreement"), is the
agreement pursuant to which ADM Sub will provide services to the Joint Sales
Company.
(e) MBX SERVICES AGREEMENT. The services agreement, executed and
delivered by MBX and the Joint Sales Company as of the Effective Date and
appended hereto as Exhibit E (the "MBX Services Agreement"), is the agreement
pursuant to which MBX will provide services to the Joint Sales Company.
(f) LOAN AND SECURITY AGREEMENT. The loan and security agreement,
executed and delivered by ADM Sub and the Joint Sales Company as of the
Effective Date and appended hereto as Exhibit F (the "Loan and Security
Agreement") is the agreement pursuant to which ADM Sub will make available to
the Joint Sales Company a credit facility.
ARTICLE 3
STEERING COMMITTEE; PROJECT TEAMS
3.1 STEERING COMMITTEE. MBX and ADM Sub hereby establish a joint steering
committee (the "Steering Committee") to plan and oversee the establishment and
activities of the Commercial Alliance in such instances where ADM Sub and MBX
are acting on an individual basis and in such instances where ADM Sub and MBX
are acting as members of the Joint Sales Company, all as further set forth
herein.
3.1.1 RESPONSIBILITIES AND AUTHORITY OF THE STEERING COMMITTEE. The
Steering Committee shall have the rights and obligations provided for herein, in
the other Commercial Alliance Agreements and as agreed to by ADM Sub and MBX in
writing from time-to-time
* CONFIDENTIAL TREATMENT REQUESTED
12
during the Term. Without limiting the foregoing, the Steering Committee shall
have the general responsibility of (i) coordinating the planning and execution
of the individual activities of ADM Sub and MBX in connection with the
Commercial Alliance, including without limitation by controlling or
participating (as specifically provided herein or in the other Commercial
Alliance Agreements) in decision-making on both a strategic and tactical level,
by assisting in setting priorities for performance and resource allocation, and
by assisting in avoiding or resolving disputes among ADM Sub, MBX and the Joint
Sales Company, and (ii) coordinating the planning and execution of the
activities of ADM Sub and MBX as members of the Joint Sales Company, in all
cases, subject to the right and authority of ADM Sub, MBX and the Joint Sales
Company to make decisions and take actions required to perform their obligations
hereunder and under the other Commercial Alliance Agreements in accordance
herewith and therewith, including without limitation, those decisions and
actions that are specifically identified as reserved to any of them hereunder or
thereunder. Without limiting the foregoing, the following actions, designations
and documents shall require the prior approval of the Steering Committee before
such actions may be taken or before such designations or documents shall be
valid and binding commitments:
(a) the designation of costs and expenses incurred in connection
with the Construction of the ADM Sub Manufacturing Facility (pursuant to
Section 4.2.5) or the Construction or acquisition of the MBX Formulation
Facility (pursuant to Section 4.3.5) as "Construction Costs" to be credited
or debited against the Ledger Account, as that term is defined in the
Operating Agreement, as and to the extent provided for in the Operating
Agreement;
(b) the appointment of the following key personnel: (i) ADM Sub
Project Manager (to be nominated by ADM Sub), (ii) ADM Sub Manufacturing
Manager (to be nominated by ADM Sub); (iii) MBX Technology Manager (to be
nominated by MBX); (iv) Marketing and Sales Manager of the Joint Sales
Company (to be nominated by MBX pursuant to the terms of the Operating
Agreement) and (v) Assistant Marketing and Sales Manager of the Joint Sales
Company (to be nominated by ADM Sub pursuant to the terms of the Operating
Agreement);
(c) the decision to contract with a Third Party to perform
strategic, ongoing research, development or commercial activities with or
on behalf of either Party or the Joint Sales Company in connection with the
Commercial Alliance as part of a contractual relationship (such Third Party
is a "Strategic Alliance Partner" and such contractual relationship is a
"Strategic Alliance");
(d) the establishment of strategic and operational plans for
performance hereunder and under the other Commercial Alliance Agreements,
the preparation and finalization of budgets for funding such performance,
the establishment of high-level procedures and policies, including without
limitation, accounting policies and procedures, in connection with such
performance;
(e) any action that requires the consent of the members to the
Joint Sales Company, as specified in the Operating Agreement.
3.1.2 CERTAIN LIMITATIONS ON THE RESPONSIBILITIES AND AUTHORITY OF THE
STEERING COMMITTEE. The Steering Committee shall have no authority to act on
behalf of ADM, ADM Sub, MBX or the Joint Sales Company in connection with Third
Parties. Without limiting
* CONFIDENTIAL TREATMENT REQUESTED
13
the foregoing, the Steering Committee shall have no authority to, and shall not
purport to or attempt to: (i) negotiate agreements on behalf of ADM, ADM Sub,
MBX or the Joint Sales Company, (ii) make representations or warranties on
behalf of ADM, ADM Sub, MBX or the Joint Sales Company, (iii) waive rights of
ADM, ADM Sub, MBX or the Joint Sales Company, (iv) extend credit on behalf of
ADM, ADM Sub, MBX or the Joint Sales Company, or (v) take or grant licenses of
intellectual property on behalf of ADM, ADM Sub, MBX or the Joint Sales Company.
3.1.3 DECISION-MAKING STANDARD FOR THE STEERING COMMITTEE. All
decisions and other actions of the Steering Committee shall be made in good
faith and with due care, after consideration of the information that is
reasonably available to the Steering Committee, with the intention that: (i) the
resulting decision or actions will conform to, or be consistent with, the
provisions and requirements of this Agreement and the other Commercial Alliance
Agreements and (ii) the resulting decision or action will maintain or increase
the likelihood that ADM Sub, MBX and the Joint Sales Company will achieve the
purposes and goal of the Commercial Alliance as set forth in Section 2.1.
Without limiting the foregoing, the Steering Committee is expressly prohibited
from taking into account interests of a Party, or of any members of the Steering
Committee, other than their respective interests in achieving the purposes and
goal of the Commercial Alliance as set forth in Section 2.1.
3.2 MEMBERSHIP OF STEERING COMMITTEE. ADM Sub and MBX shall each appoint an
equal number of members to the Steering Committee (not to exceed five (5)
members each), one of whom shall be designated by each of ADM Sub and MBX as its
"Co-Chair." ADM Sub and MBX shall have the right at any time to substitute
individuals, on a permanent or temporary basis, for any of its previously
designated representatives to the Steering Committee, including its Co-Chair, by
giving written notice thereof to the other Party. Initial designees to the
Steering Committee shall be as follows:
For MBX: Xxxxx Xxxxxx (Co-Chair)
Xxxxxx Xxxxxxx
Xxxxxx Xxxxxxxxxxx
Johan van Walsem
Xxxxxx Xxxxxxx
For ADM Sub: Xxxx Xxxx (Co-Chair)
Xxxxx Xxxx
Xxx Xxxxxx
Xxxxx Xxxxx
Xxxx Xxxxxxx
3.3 MEETINGS.
3.3.1 SCHEDULE OF MEETINGS. The Steering Committee shall establish a
schedule of times for its meetings, taking into account, without limitation, the
planning needs of the Commercial Alliance. The Steering Committee shall meet
monthly unless otherwise agreed
* CONFIDENTIAL TREATMENT REQUESTED
14
upon by ADM Sub and MBX. Meetings shall also be convened upon the determination
of either or both of the Co-Chairs of the Steering Committee by written notice
(including notice via e-mail) thereof to their respective members that a meeting
is required to discuss or resolve any matter or matters with respect to the
Commercial Alliance. Meetings shall alternate between the respective offices of
ADM Sub or MBX or another mutually agreed upon location; PROVIDED, HOWEVER, that
the Co-Chairs of the Steering Committee may mutually agree to meet by
teleconference or video conference or may act by a written memorandum signed by
the Co-Chairs of the Steering Committee.
3.3.2 QUORUM; VOTING; DECISIONS. At each meeting of the Steering
Committee, the participation of at least one member designated by each of ADM
Sub and MBX shall constitute a quorum. Each Steering Committee member shall have
one vote on all matters before the Steering Committee; PROVIDED, HOWEVER, that
the member or members of each of ADM Sub and MBX present at any meeting shall
have the authority to cast the votes of any of such Party's members who are
absent from the meeting. All decisions of the Steering Committee shall be made
by majority vote of all of the members, except when acting in its capacity as a
representative committee of the members of the Joint Sales Company where
unanimous consent of the members is required, in which case the decisions of the
Steering Committee shall be made by unanimous vote of all of its members.
Whenever any action by the Steering Committee is called for hereunder during a
time period in which a meeting is not scheduled, the Co-Chairs shall cause the
Steering Committee to take the action in the requested time period by calling a
special meeting or by action without a formal meeting by written memorandum
signed by both Co-Chairs of the Steering Committee. Representatives of each of
ADM Sub and MBX, in addition to the members of the Steering Committee, may
attend meetings as non-voting observers with prior notice to the other Party. In
the event that the Steering Committee is unable to resolve any matter before it,
such matter shall be resolved as set forth in Section 14.3 hereof.
3.3.3 MINUTES. A secretary shall be appointed to keep accurate minutes
of the deliberations of the Steering Committee recording all proposed decisions
and all actions recommended or taken. Drafts of such minutes shall be delivered
to the Co-Chairs of the Steering Committee within a reasonable period of time
not to exceed five (5) days after a Steering Committee meeting. Draft minutes
shall be edited by ADM Sub and MBX and shall be issued in final form within a
reasonable time not to exceed ten (10) days after the meeting only with their
approval and agreement as evidenced by their signatures on the minutes.
Responsibility for appointment of the secretary shall rotate annually between
MBX and ADM Sub.
3.3.4 EXPENSES. MBX and ADM Sub shall each bear all expenses of their
respective Steering Committee members related to their participation on the
Steering Committee and attendance at Steering Committee meetings.
3.4 PROJECT TEAMS. ADM Sub and MBX, either: (i) acting through the Steering
Committee, or (ii) as set forth herein or in the other Commercial Alliance
Agreements, may, from time-to-time, form project teams to support the activities
of the Steering Committee with respect solely to discrete, defined projects
("Projects") that are to be performed in support of, or as part of, the
Commercial Alliance ("Project Teams"). Each Project Team shall function in
accordance with the terms and conditions set forth herein, as set forth in the
other Commercial Agreements or as otherwise agreed to by the Steering Committee
in writing.
* CONFIDENTIAL TREATMENT REQUESTED
15
3.4.1 RESPONSIBILITIES AND AUTHORITY OF THE PROJECT TEAMS. Each
Project Team shall have the rights and obligations provided for herein, in the
other Commercial Alliance Agreements, or as expressly delegated to it by the
Steering Committee in writing from time-to-time during the Term.
3.4.2 CERTAIN LIMITATIONS ON THE RESPONSIBILITIES AND AUTHORITY OF THE
PROJECT TEAMS. The rights and authority of the Project Teams are derived from
and are subordinate to the rights and authority of the Steering Committee.
Without limiting the foregoing, no Project Team shall have any rights or
authority to make decisions or take actions that are not directly related to the
applicable Project and all Project Teams shall be subject to the same
limitations as are applicable to the Steering Committee as set forth in Section
3.1.2.
3.4.3 DECISION-MAKING STANDARD FOR THE STEERING COMMITTEE. The Project
Teams shall make decisions and take actions subject to the same standards as are
applicable to the Steering Committee as set forth in Section 3.1.3 hereof.
3.5 MEMBERSHIP OF PROJECT TEAMS. Each Project Team shall be comprised of
such number of members as is provided herein, in another Commercial Alliance
Agreement or as provided by the Steering Committee. Unless otherwise mutually
agreed by ADM Sub and MBX, any Project Team concerning the ADM Sub Manufacturing
Facility shall be comprised of a majority of members appointed by ADM Sub, and
any Project Team concerning the MBX Formulation Facility shall be comprised of a
majority of members appointed by MBX. Project Team members may also be members
of the Steering Committee. Each of ADM Sub and MBX shall have the right at any
time to substitute individuals, on a permanent or temporary basis, for any of
its previously designated representatives to a Project Team by giving written
notice thereof to the other Party.
3.6 MEETINGS.
3.6.1 SCHEDULE OF MEETINGS. Each Project Team shall establish a
schedule of times for its meetings, taking into account, without limitation, the
planning needs of the applicable Project. Meetings shall alternate between the
respective offices of ADM Sub and MBX or another mutually agreed upon location;
provided, however, that ADM Sub and MBX may mutually agree to meet by
teleconference or video conference or may act by a written memorandum signed by
the Co-Chairs of the Project Team.
3.6.2 QUORUM; VOTING; DECISIONS. At each meeting of a Project Team,
the participation of at least one member designated by each of ADM Sub and MBX
shall constitute a quorum. Each Project Team member shall have one vote on all
matters before the Project Team; provided, however, that the member or members
of each of ADM Sub and MBX present at any meeting shall have the authority to
cast the votes of any of such Party's members who are absent from the meeting.
Unless provided otherwise herein or in another Commercial Alliance Agreement,
all decisions of the Project Team shall be made by majority vote of all of the
members. Representatives of each of ADM Sub and MBX, in addition to the members
of the Project Team, may attend meetings as non-voting observers with prior
notice to the other Party. In the event that a Project Team is unable to resolve
any matter before it, such matter shall be referred to the Steering Committee
for resolution.
3.6.3 MINUTES. A secretary for each Project Team shall be appointed to
keep accurate minutes of the deliberations of such Project Team recording all
proposed decisions and
* CONFIDENTIAL TREATMENT REQUESTED
16
all actions recommended or taken. Copies of such minutes shall be made available
to the Steering Committee as it shall request.
3.6.4 EXPENSES. MBX and ADM Sub shall each bear all expenses of their
respective Project Team members related to their participation on Project Teams
and attendance at Project Team meetings.
3.6.5 REPORTS. Each Project Team shall produce such reports for the
Steering Committee as the Steering Committee shall request from time-to-time.
3.7 BUSINESS INTEGRATION AND COORDINATION. ADM Sub and MBX, with and
through the Commercial Alliance Business Team, subject to the terms and
conditions of the Commercial Alliance Agreements, shall coordinate and integrate
the efforts of the Parties to plan and execute manufacturing, formulation,
marketing and sales activities in such a manner as to establish and maintain an
efficient and profitable commercial operation.
3.7.1 COMMERCIAL ALLIANCE BUSINESS TEAM. The Parties shall form a
Commercial Alliance Business Team (the "Commercial Alliance Business Team") to
assist in the integration and coordination of the manufacturing, formulation,
marketing and sales activities of the Parties. The Commercial Alliance Business
Team shall be a Project Team of the Steering Committee and shall function, and
otherwise be subject to, the provisions set forth in Sections 3.4 through 3.6,
inclusive, except that decisions shall be made by unanimous agreement. The
Commercial Alliance Business Team shall be composed of the Marketing and Sales
Manager of the Joint Sales Company, the Assistant Marketing and Sales Manager of
the Joint Sales Company, the ADM Sub Manufacturing Manager, the MBX Technology
Manager and during the Construction Phase, the ADM Sub Project Manager. The
Marketing and Sales Manager of the Joint Sales Company shall be the chair of the
Commercial Alliance Business Team. The Commercial Alliance Business Team may be
expanded by the Steering Committee in order to add persons with technical
knowledge or to ensure the integration of key functional areas within the
Commercial Alliance into the planning and coordination process.
3.7.2 BUSINESS PLANNING. The Commercial Alliance Business Team will
have access to and review the plans and reports prepared by any established
Project Teams, ADM Sub and MBX relating to manufacturing, formulation and
marketing the PHA Material and PHA Formulations. The Commercial Alliance
Business Team will analyze such input and make reports or recommendations to the
Board of the Joint Sales Company, the Steering Committee or other Project Teams,
as appropriate, in order to ensure that: (i) complete, current and accurate
information is available across relevant Project Teams and functional groups,
(ii) the activities of any Project Teams do not conflict, and to the extent they
are interdependent, they are appropriately coordinated and (iii) input from
Third Parties, such as Strategic Alliance Partners, customer segments and key
customers are adequately taken into account in planning, prioritizing and
executing manufacturing, formulation, marketing and sales activities.
* CONFIDENTIAL TREATMENT REQUESTED
17
ARTICLE 4
CONSTRUCTION PHASE
4.1 OVERVIEW AND GOAL OF CONSTRUCTION PHASE. The primary goal of the
Construction Phase is to prepare for the commercial launch of PHA Material and
PHA Formulations manufactured in facilities owned by the Parties. In order to
achieve this goal, the Parties will pursue the following primary objectives: (i)
ADM Sub will arrange for and finance the construction of a facility in which it
will manufacture PHA Material pursuant to the terms of the ADM Sub Manufacturing
Agreement (the "ADM Sub Manufacturing Facility"), (ii) MBX will either arrange
for and finance the acquisition or construction of a facility in which it will
produce the PHA Formulations pursuant to the terms of the MBX Formulation
Agreement (the "MBX Formulation Facility") or it will use Commercially
Reasonable Efforts to arrange for other access to a facility in which a Third
Party will produce the PHA Formulations pursuant to the terms of an agreement
with the Joint Sales Company and (iii) MBX, acting in the name and on behalf of
the Joint Sales Company, will establish the market for the PHA Material and PHA
Formulations, in each case, with the support and participation of the other
Parties and the Steering Committee and as more fully set forth herein and in the
other Commercial Alliance Agreements.
4.2 CONSTRUCTION OF THE ADM SUB MANUFACTURING FACILITY. ADM Sub shall have
primary responsibility for the Construction of the ADM Sub Manufacturing
Facility consistent with the ADM Sub Construction Master Plan and Budget to
produce PHA Material in accordance with the terms and conditions of the ADM Sub
Manufacturing Agreement. MBX will have the right to actively participate in each
of these activities, as set forth in more detail below, in order to assist ADM
Sub in achieving the foregoing goal.
4.2.1 SPECIFICATIONS OF THE ADM SUB MANUFACTURING FACILITY. The ADM
Sub Manufacturing Facility will be designed to produce, through microbial
fermentation, approximately fifty thousand (50,000) tons of PHA Material, having
an acceptable level of purity, during each twelve (12) month period, on an
ongoing basis through a stable and robust operation, over a period of years. The
Parties acknowledge that the actual production of PHA Material from the ADM Sub
Manufacturing Facility will vary from year to year based upon multiple factors
and variables. The designed capacity, irrespective of the actual production
which may be achieved, is hereinafter defined as the "50,000 Ton Annual Design
Capacity". ADM Sub will use Commercially Reasonable Efforts to Construct the ADM
Sub Manufacturing Facility to enable and support state-of-the-art PHA Material
manufacturing operations, consistent with the ADM Sub Construction Master Plan
and Budget. ADM Sub shall proceed with the Construction in a manner intended to
complete Construction of the ADM Sub Manufacturing Facility within twenty-four
(24) to thirty-six (36) months following the Effective Date.
4.2.2 ADM SUB CONSTRUCTION MASTER PLAN AND BUDGET. In the event the
ADM Sub Construction Master Plan and Budget was not developed pursuant to the
Technology Alliance and Option Agreement, ADM Sub, in consultation with any
appointed Project Team and the Metabolix Technology Manager, and with the
assistance of such Third Party consultants as shall be approved by the Steering
Committee, shall develop the ADM Sub Construction Master Plan and Budget and
submit same to the Steering Committee for approval. ADM Sub
* CONFIDENTIAL TREATMENT REQUESTED
18
will use Commercially Reasonable Efforts to implement the ADM Sub Construction
Master Plan and Budget. The ADM Sub Construction Master Plan and Budget shall be
amended, from time to time, in an effort to ensure that it remains sufficiently
accurate and complete so that if the activities called for in the ADM Sub
Construction Master Plan and Budget were to be executed in accordance with its
terms, ADM Sub would have satisfied all of its obligations hereunder with
respect to the Construction of the ADM Sub Manufacturing Facility. The ADM Sub
Construction Master Plan and Budget shall also be subject to amendment in the
event that ADM Sub reasonably expects that the total amount set forth in the
budget within the ADM Sub Construction Master Plan and Budget will not be
sufficient to fund the activities remaining to be performed under the ADM Sub
Construction Master Plan and Budget. Such amendments will include an updated
budget with a description and the amount of all additional costs and expenses
that ADM Sub desires to have designated as Construction Costs. All amendments to
the ADM Sub Construction Master Plan and Budget will be subject to the approval
of the Steering Committee, subject to the standards set forth in Section 3.1.3.
For avoidance of doubt, no amendment to the ADM Sub Construction Master Plan and
Budget will be required due to a variance in the actual cost of a particular
item or service as compared to the budgeted cost of such item or service unless
such variance (alone or cumulatively with other such variances) causes ADM Sub
to reasonably expect that the total amount set forth in the budget within the
ADM Sub Construction Master Plan and Budget will not be sufficient to fund the
activities remaining to be performed under the ADM Sub Construction Master Plan
and Budget.
4.2.3 MBX TECHNOLOGY MANAGER. Metabolix shall appoint, subject to the
approval of the Steering Committee, a representative to serve as its technology
manager (the "MBX Technology Manager"). The MBX Technology Manager, and up to
three (3) MBX employees having varied areas of technical expertise, shall be
given a reasonable opportunity to review, consult and sign off on key
engineering designs and documents relating to the Construction of the ADM Sub
Manufacturing Facility, in accordance with good engineering and process
management principles, including, without limitation, piping and instrumentation
diagrams, major plant item design calculations and data sheets, purchase
contract technical specifications for major plant items, sterile engineering
design and operating philosophy, pre-delivery performance and acceptance testing
of major plant items, conceptual functional specifications for control and
automation, analytical and quality control procedures, hazard and operability
studies, fermentation recipe specifications (including without limitation raw
material specifications) and change orders during the course of the contract.
Notwithstanding the foregoing, after providing the MBX Technology Manager and
any appointed Project Team with the requisite opportunities to review and to
provide input on decisions relating the Construction of the ADM Sub
Manufacturing Facility, and after giving reasonable consideration to such input,
ADM Sub shall have the right and responsibility to make final decisions with
respect to all such matters.
4.2.4 ACCESS TO SITE, BOOKS AND RECORDS. The MBX Technology Manager,
and up to three (3) MBX employees, shall have reasonable access, after giving
reasonable prior notice, during hours of operation, to: (i) the site on which
the ADM Sub Manufacturing Facility is being Constructed, throughout the
Construction process, (ii) individuals involved in the Construction process,
including without limitation, construction managers, engineers and supervisors,
and (iii) all documents relating to the Construction of the ADM Sub
Manufacturing
* CONFIDENTIAL TREATMENT REQUESTED
19
Facility, including without limitation, the ADM Sub Construction Master Plan and
Budget and the various documents and agreements that relate to the preparation
and amendment thereof, including without limitation all surveys, blueprints,
engineering studies, piping and instrumentation diagrams, equipment design
calculations and drawings, piping layouts, purchase contracts, sterile
engineering designs and construction details, equipment test reports, automation
and control designs, analytical and quality control procedures, hazard and
operability studies, fermentation recipe specifications (including without
limitation raw material specifications) and change orders during the course of
the contract, in each case, whether prepared by ADM Sub or a Third Party. For
purposes of the foregoing sentence, the term "reasonable access" means and
includes such access as is necessary or convenient for such individuals to
fulfill their obligations hereunder in the manner required hereby without unduly
burdening the other individuals involved in the Construction process or
unnecessarily delaying the Construction process. All site visits or record
reviews undertaken at ADM Sub facilities will be conducted in accordance with
policies and procedures in force at such facilities, including without
limitation, policies designed to promote safety and policies against sexual
harassment and discrimination.
4.2.5 ADM SUB FINANCIAL RESPONSIBILITY. ADM Sub shall be solely
responsible for all costs incurred in connection with the ADM Sub Manufacturing
Facility, subject to application as a credit against the Ledger Account (as such
term is defined in the Operating Agreement), as and to the extent provided in
the Operating Agreement, of those costs and expenses that were designated as
Construction Costs by the TAC as part of the ADM Sub Construction Master Plan
and Budget as provided in the Technology Alliance and Option Agreement or as are
designated as Construction Costs as set forth herein and in Section 4.2.2. In
addition to the foregoing approval procedures, ADM Sub shall have the right to
seek a re-designation of any categories or items of costs and expenses that it
believes should be designated and approved as Construction Costs at anytime
during the Term. The Steering Committee shall, on a quarterly basis during the
Construction Period, or more frequently as reasonably requested by ADM Sub or
MBX, review the ADM Sub Construction Master Plan and Budget to evaluate and
approve any material additional or changed information concerning the design or
Construction of the ADM Sub Manufacturing Facility, subject to the standards set
forth in Section 3.1.3.
4.3 ACQUISITION, CONSTRUCTION AND ACCESS TO FORMULATION FACILITY. MBX shall
have primary responsibility for arranging the acquisition or Construction of the
MBX Formulation Facility in a manner reasonably calculated to result in the
consistent production of PHA Formulations by MBX for the Joint Sales Company in
accordance with terms and conditions of the MBX Formulation Agreement, or to use
Commercially Reasonable Efforts to arrange for other access to a formulation
facility in a manner reasonably calculated to result in the consistent
production of PHA Formulations by a Third Party for the Joint Sales Company in
accordance with terms and conditions of an agreement between such Third Party
and the Joint Sales Company. ADM Sub will have the right to actively participate
in each of these activities, as set forth in more detail below, in order to
assist MBX in achieving the foregoing goal. Formulation activities to be
conducted at the MBX Formulation Facility or the Third Party formulation
facility, as the case may be, will include, without limitation, blending
different types of PHA Material together, and with other polymers and/or with
other additives, such as nucleants, clarifiers, flow modifiers, plasticizers,
flame retardants and heat stabilizers.
* CONFIDENTIAL TREATMENT REQUESTED
20
4.3.1 SPECIFICATIONS OF THE MBX FORMULATION FACILITY. The MBX
Formulation Facility or the Third Party formulation facility, as the case may
be, will be sufficient to enable and support state-of-the-art PHA Material
formulation operations at a scale reasonably calculated to meet the formulation
needs of the Commercial Alliance with respect to the output from the ADM Sub
Manufacturing Facility and market demand. MBX shall proceed with the acquisition
or Construction of MBX Formulation Facility, or gaining access to a Third Party
formulation facility, in sufficient time to meet the formulation needs of the
Commercial Alliance with respect to the output from the ADM Sub Manufacturing
Facility and market demand.
4.3.2 MBX FACILITY MASTER PLAN AND BUDGET. MBX, in consultation with
any appointed Project Team, and with the assistance of such Third Party
consultants as shall be approved by the Steering Committee, shall develop a plan
and budget for the acquisition or Construction of the MBX Formulation Facility
or gaining access to a Third Party formulation facility (the "MBX Facility
Master Plan and Budget") and submit same to the Steering Committee for approval.
MBX will use Commercially Reasonable Efforts to implement the MBX Facility
Master Plan and Budget. The MBX Facility Master Plan and Budget shall be
amended, from time to time, in an effort to ensure that it remains sufficiently
accurate and complete so that if the activities called for in the MBX Facility
Master Plan and Budget were to be executed in accordance with its terms, MBX
would have satisfied all of its obligations hereunder with respect to the
acquisition or Construction of MBX Formulation Facility or gaining access to a
third Party formulation facility. The MBX Facility Master Plan and Budget shall
be subject to amendment in the event that MBX reasonably expects that the total
amount set forth in the budget within the MBX Facility Master Plan and Budget
will not be sufficient to fund the activities remaining to be performed under
the MBX Facility Master Plan and Budget. Such amendments to the MBX Facility
Master Plan and Budget will include an updated budget with a description and the
amount of all additional costs and expenses that MBX desires to have designated
as Construction Costs. Such amendments to the MBX Facility Master Plan and
Budget will be subject to the approval of the Steering Committee, subject to the
standards set forth in Section 3.1.3. For avoidance of doubt, no amendment to
the MBX Facility Master Plan and Budget will be required due to a variance in
the actual cost of a particular item or service as compared to the budgeted cost
of such item or service unless such variance (alone or cumulatively with other
such variances) causes MBX to reasonably expect that the total amount set forth
in the budget within the MBX Facility Master Plan and Budget will not be
sufficient to fund the activities remaining to be performed under the MBX
Facility Master Plan and Budget.
4.3.3 PROJECT TEAM; FORMULATION ENGINEER. ADM Sub shall appoint,
subject to the approval of the Steering Committee, a representative to serve as
its formulation engineer (the "ADM Sub Formulation Engineer"). The ADM Sub
Formulation Engineer, and up to three (3) employees of ADM Sub, shall be given a
reasonable opportunity to review, consult and sign off on key aspects of the MBX
Facility Master Plan and Budget. If the MBX Formulation Facility is to be
Constructed by MBX, the ADM Sub Formulation Engineer, and up to three (3)
employees of ADM Sub or its Affiliates, shall be given reasonably opportunity to
review, consult and sign off on key engineering designs and documents relating
to the Construction of the MBX Manufacturing Facility, in accordance with good
engineering and process management principles, including without limitation,
piping and instrumentation diagrams, major plant item
* CONFIDENTIAL TREATMENT REQUESTED
21
design calculations and data sheets purchase contract technical specifications
for major plant items, sterile engineering design and operating philosophy,
pre-delivery performance and acceptance testing of major plant items, conceptual
functional specifications for control and automation, analytical and quality
control procedures, hazard and operability studies, and change orders during the
course of the contract. If the MBX Formulation Facility is to be acquired or in
the event MBX is gaining access to a Third Party formulation facility, the ADM
Sub Formulation Engineer, and up to three (3) employees of ADM Sub or its
Affiliates, shall be given reasonable opportunity to inspect the facilities and
review, consult and sign off on key engineering designs and documents relating
to the operation of any such facility to produce PHA Formulations.
Notwithstanding the foregoing, after providing the ADM Sub Formulation Engineer
and any appointed Project Team with the requisite opportunities to review and to
provide input on material decisions relating to the MBX Facility Master Plan and
Budget, and after giving reasonable consideration to such input, MBX shall have
the right and responsibility to make final decisions with respect to all such
matters.
4.3.4 ACCESS TO SITE, BOOKS AND RECORDS. If the MBX Formulation
Facility is to be Constructed by MBX, then the ADM Sub Formulation Engineer, and
up to three (3) employees of ADM Sub, shall have reasonable access, after giving
prior notice, during regular business hours, to (i) the site on which the MBX
Formulation Facility is being Constructed, throughout the Construction process,
(ii) individuals involved in the Construction process, including without
limitation, construction managers, engineers and supervisors, and (iii) all
documents relating to the Construction of the MBX Formulation Facility,
including without limitation, the MBX Facility Master Plan and Budget and the
various documents and agreements that relate to the preparation and amendment
thereof, including without limitation all surveys, blueprints, engineering
studies, piping and instrumentation diagrams, equipment design calculations and
drawings, piping layouts, purchase contracts, sterile engineering designs and
construction details, equipment test reports, automation and control designs,
analytical and quality control procedures, hazard and operability studies, and
change orders during the course of the contract, in each case, whether prepared
by MBX or a Third Party. If the MBX Formulation Facility is not going to be
Constructed by MBX, then the ADM Sub Formulation Engineer shall have reasonable
access, during regular business hours, to the site of the MBX Formulation
Facility and all documents relating to the potential MBX Formulation Facilities
or Third Party formulation facilities that MBX has in its control, including
without limitation, the MBX Facility Master Plan and Budget and the various
documents and agreements that relate to the preparation and amendment thereof,
including without limitation a survey of available facilities, detailed
documentation of the capabilities of the most highly-rated facilities, cost,
schedule of availability and other relevant information and data, whether
prepared by MBX or a Third Party. For purposes of the foregoing sentence, the
term "reasonable access" means and includes such access as is necessary or
convenient for such individuals to fulfill their obligations hereunder in the
manner required hereby without unduly burdening the other individuals involved
in the execution of the MBX Facility Master Plan and Budget unnecessarily
delaying the execution of the MBX Facility Master Plan and Budget. All site
visits or record reviews undertaken at MBX facilities will be conducted in
accordance with policies and procedures in force at such facilities, including
without limitation, policies designed to promote safety and policies against
sexual harassment and discrimination.
* CONFIDENTIAL TREATMENT REQUESTED
22
4.3.5 MBX FINANCIAL RESPONSIBILITY. MBX shall be solely responsible
for all costs incurred in connection with the MBX Formulation Facility, subject
to application as a debit against the Ledger Account (as such term is defined in
the Operating Agreement), as and to the extent provided in the Operating
Agreement, of those costs and expenses that are designated by the Steering
Committee as Construction Costs as set forth herein and in Section 4.3.2. The
Steering Committee shall conduct a complete review of the MBX Facility Master
Plan and Budget, promptly after the completion of such document, and shall
designate and approve those items or categories of costs and expenses provided
in such documents as Construction Costs and shall indicate whether and why
certain items or categories of costs and expenses do not qualify as Construction
Costs, in whole or in part, and whether such costs and expenses could so qualify
under other circumstances, for example, if more information were provided as the
necessity and reasonableness of the particular costs and expenses or the
features or facilities to which such costs and expenses relate. The Steering
Committee shall, on a quarterly basis during the Construction Phase, or more
frequently as reasonably requested by MBX, review the MBX Facility Master Plan
and Budget to evaluate any material additional or changed information concerning
the design of the MBX Formulation Facility, subject to the standards set forth
in Section 3.1.3. In addition to the foregoing review procedures, MBX shall have
the right to seek a re-designation of any categories or items of costs and
expenses that it believes should be designated as Construction Costs at anytime
during the Term.
4.3.6 PHA FORMULATION FEE. The Joint Sales Company will pay to MBX
a formulation fee equal to * on all sales or other conveyances of PHA
Material contained within PHA Formulations, on a one hundred percent (100%)
purity basis, that is not formulated for the Joint Sales Company by MBX in
the MBX Formulation Facility. The formulation fee shall be due and payable on
a monthly basis. The formulation fee for sales or conveyances completed
during any month shall be due and payable to MBX on or before the last
business day of the succeeding month. Amounts due under this Section 4.3.6
shall be payable by wire transfer of immediately available funds to an MBX
bank account in accordance with instructions to be provided to the Joint
Sales Company by MBX. Any amounts that are not paid when due hereunder shall
accrue interest at the rate of four percent (4%) per annum in excess of the
one year London Interbank Offered Rate (LIBOR) then most recently published
in THE WALL STREET JOURNAL. The right to demand and receive the interest
provided hereunder shall be in addition to any other rights available to MBX
hereunder or at law.
4.4 PILOT ACTIVITIES.
4.4.1 RESEARCH AND DEVELOPMENT; FUNDED TECHNOLOGY. During the
Construction Phase and thereafter during the Term, MBX will continue its
research and development efforts, on its own and with Third Parties, provided
that MBX shall pursuant to a written agreement with such Third Party own or
obtain an option to exclusively license all Technology arising from such
activity, aimed at improving the MBX Technology relating to the production of
PHA Cell Paste, PHA Material and PHA Formulations, including without
limitation, MBX's microbial strains, fermentation processes and recovery
technology. The goal of these efforts is for MBX to develop a microbial
strain and processes capable of producing PHA Material at a cost of
approximately * at a manufacturing scale of * per year and to develop related
Technology that
* CONFIDENTIAL TREATMENT REQUESTED
23
will expand and enhance the commercial potential of the PHA Material for use in
the Field. Beginning with the commencement of the Commercial Phase, MBX and ADM
Sub shall each, from time to time, have the option of proposing to the Steering
Committee certain studies or other research efforts in the Field. The Joint
Sales Company shall have the option to fund such studies or research efforts in
accordance with a work plan and budget to be prepared by the Party making such
proposal. If the Steering Committee approves, and the Joint Sales Company
commits to, and in fact does, fund such a study or research effort, any
Technology developed, conceived or reduced to practice in the course of such
study or research effort shall be deemed to be funded technology ("Funded
Technology") and will automatically be subject to the licenses and rights
granted herein as part of the Joint Alliance Technology without further action
by either Party. Subject to the standards set forth in Section 3.1.3, the
Steering Committee shall determine the party best able to perform the work
outlined in an approved proposal, considering all relevant factors, including,
for example, the availability of particular human or the resources, access to
Technology, materials or know-how, or technical experience. If the Steering
Committee determines that ADM Sub and MBX are both equally able to perform such
work, then the Steering Committee shall request MBX to perform such work. If the
Steering Committee does not approve, or if the Joint Sales Company declines to,
or in fact fails to, fund such a study or research effort, and the Party which
proposes the study or research performs such study or research, any Technology
developed, conceived or reduced to practice in the course of such study or
research effort shall be deemed to be unfunded technology ("Unfunded
Technology") and shall be solely owned by MBX or ADM Sub, as the case may be,
and, anything herein to the contrary notwithstanding, shall not be subject to
the rights and licenses granted herein, subject to the Parties subsequently
agreeing to a license or similar agreement to the contrary. For the avoidance of
doubt, the parties acknowledge that the research and development projects that
may be subject to the proposals described above may be performed by Third
Parties to be identified in such proposals, and in such cases the Steering
Committee shall either accept or reject the proposal on behalf of the Joint
Sales Company but shall have no right to require that a different Third Party or
any of the Parties shall perform such research and development project.
4.4.2 PILOT MANUFACTURING. During the Term, the Parties will use
reasonable efforts to obtain access to pilot quantities of PHA Material from a
combination of one or more contract manufacturers, ADM Sub personnel and
facilities and MBX personnel and facilities, for use solely in research and
development efforts and to support or facilitate marketing and sales efforts of
PHA Material and/or PHA Formulations, but, after the First Commercial Sale, not
to supply all, or a segment, of the commercial market for PHA Material as part
of an ongoing commercial sales operation (such activity is "Pilot Sourcing"). To
the extent the Pilot Sourcing utilizes the personnel and facilities of Third
Party contract manufacturers and/or the personnel and facilities of MBX, MBX
shall control the selection and operations of such personnel and facilities. To
the extent the Pilot Sourcing utilizes the personnel and facilities of ADM Sub,
ADM Sub shall control the selection and operations of such personnel and
facilities. During the Construction Phase, MBX will investigate available
options for Pilot Sourcing and, if MBX identifies a viable option, then MBX will
present a proposal to the Steering Committee for the Steering Committee's
consideration and approval. The proposal shall include the identity of the
manufacturer(s), the personnel and facilities that ADM Sub and MBX would devote
to the efforts, the site(s) of the Pilot Sourcing, the anticipated quantity to
be produced under the
* CONFIDENTIAL TREATMENT REQUESTED
24
proposal, the anticipated delivery schedule for PHA Material under the proposal
and the estimated capital and operating cost to ADM Sub and MBX under the
proposal (each such proposal is hereinafter a "Pilot Sourcing Proposal"). MBX
will use reasonable efforts to implement any Pilot Sourcing Proposal approved by
the Steering Committee. ADM Sub and MBX shall share equally the total cost and
expenses incurred by them in connection with any approved Pilot Sourcing
Proposal, including the cost of ADM Sub personnel and facilities and MBX
personnel and facilities all of which will be accounted for on a cost basis,
defined in a manner to be agreed upon as part of any such proposal ("Pilot
Sourcing Costs"), and any Technology developed in connection with such
activities shall be part of the Joint Alliance Technology. After the
Construction Phase, MBX will present any Pilot Sourcing Proposal to the Joint
Sales Company for the Joint Sales Company's consideration and approval. MBX will
use reasonable efforts to implement any Pilot Sourcing Proposal approved by the
Steering Committee. The Joint Sales Company shall bear the Pilot Sourcing Costs
in connection with any approved Pilot Sourcing Proposal and any Technology
developed in connection with such activities shall be part of the Joint Alliance
Technology. In the event that the Steering Committee or the Joint Sales Company,
as applicable, do not approve a particular Pilot Sourcing Proposal, MBX may
proceed to implement the proposal at its own expense and any Technology
developed in connection with such activities shall be part of the MBX Alliance
Technology. Any PHA Cell Paste or PHA Material obtained in connection with the
Pilot Sourcing ("Pilot PHA Material") shall be used solely for internal research
and development purposes or shall be provided to Third Parties as set forth in
Section 4.4.3 below.
4.4.3 DISPOSITION OF PILOT PHA MATERIAL. During the Construction
Phase, MBX will market and sell the Pilot PHA Material in the name of and on
behalf of the Joint Sales Company and, during the Construction Phase, the
proceeds of such sales will be distributed as set forth in this Section 4.4.3
rather than as set forth in the Operating Agreement. Proceeds from the sale of
Pilot PHA Material will be distributed to the Parties on a pro rata basis to
reimburse them for the Pilot Sourcing Costs with the remainder, if any, to be
distributed to the Parties on a pro rata basis to reimburse them for their
respective reasonable costs and expenses incurred in connection with marketing
and sales activities carried out by them in furtherance of the Commercial
Alliance and approved by the Steering Committee. After the Construction Phase,
the Joint Sales Company will market and sell the Pilot PHA Material and the
proceeds of sales of Pilot PHA Material will be distributed, if at all, in
accordance with the terms and conditions set forth in the Operating Agreement.
4.4.4 IN-LICENSE TECHNOLOGY. Beginning with the Effective Date, MBX
and ADM Sub shall each, from time to time, have the option of proposing to the
Steering Committee certain in-licensing or acquisition of Technology that may be
useful in connection with the activities of the Parties hereunder, or under the
other Commercial Alliance Agreements. The Joint Sales Company shall have the
option to so in-license or acquire such Technology at its expense, in which
case, the Joint Sales Company shall negotiate the terms and conditions of such
license or acquisition. If the Steering Committee approves, and the Joint Sales
Company commits to, and in fact does, license or acquire such Technology then
such Technology shall be deemed part of the Joint Alliance Technology and will
automatically be subject to the licenses and rights granted herein without
further action by either Party. If the Steering Committee does not approve, or
if the Joint Sales Company declines to, or in fact fails to, in-license or
acquire
* CONFIDENTIAL TREATMENT REQUESTED
25
such Technology, then if either Party supported the proposal then such Party
shall have the right to in-license or acquire such Technology at its expense,
and shall be deemed a part of the Unfunded Technology and shall be solely owned
by MBX or ADM Sub, as the case may be, and, anything herein to the contrary
notwithstanding, shall not be subject to the rights and licenses granted herein,
subject to the Parties subsequently agreeing to a license or similar agreement
to the contrary.
4.5 CERTAIN FINANCIAL COMMITMENTS DURING THE CONSTRUCTION PHASE. In
partial consideration of the rights and licenses granted herein to the Joint
Sales Company, the Joint Sales Company shall make the non-refundable payments
described herein to MBX during the Construction Phase. The Joint Sales
Company shall pay to MBX: (a) two (2) equal payments of one million, five
hundred and seventy-five thousand dollars ($1,575,000) each, and (b) up to:
(i) ten (10) equal, payments of one million, five hundred and seventy-five
thousand dollars ($1,575,000) during each Calendar Quarter during the
Construction Phase. Such twelve (12) payments are each an "Operating Payment"
and together the "Operating Payments"). The first two Operating Payments
totaling three million one hundred fifty thousand dollars ($3,150,000) shall
be due and payable within ten (10) days after the Effective Date and each
Operating Payment thereafter shall become due and payable on the first
Business Day of each successive Calendar Quarter during the Construction
Phase. The Steering Committee shall have the right to increase the amount of
the Operating Payments at any time during the Term to support additional work
by MBX in support of the Commercial Alliance. If the Construction Phase ends
before all twelve (12) Operating Payments become due and payable hereunder,
and this Agreement remains in effect, then the Joint Sales Company shall make
a final payment to MBX within thirty (30) days of the end of the Construction
Phase as determined in accordance with the following formula:
X = $250,000 x (12-Y)
For the purposes of the above formula, "X" equals the amount of the final
payment in dollars and "Y" equals the number of Operating Payments that became
due and payable during the Construction Phase. Amounts due under this Section
4.5 shall be payable by wire transfer of immediately available funds to an MBX
bank account in accordance with instructions to be provided to the Joint Sales
Company by MBX. Any amounts that are not paid when due hereunder shall accrue
interest at the rate of four percent (4%) per annum in excess of the one year
London Interbank Offered Rate (LIBOR) then most recently published in THE WALL
STREET JOURNAL. The right to demand and receive the interest provided hereunder
shall be in addition to any other rights available to MBX hereunder or at law.
For avoidance of doubt, the failure by ADM Sub to provide funds to the Joint
Sales Company to make the Operating Payments as and when provided for herein
shall be deemed a breach of this Agreement by ADM Sub.
* CONFIDENTIAL TREATMENT REQUESTED
26
ARTICLE 5
JOINT SALES COMPANY; MARKETING AND SALES ACTIVITY
5.1 FORMATION AND PURPOSE OF JOINT SALES COMPANY.
5.1.1 GENERAL PURPOSES. As is referenced above, the Joint Sales
Company is a limited liability company, formed and owned by the Parties, and
intended to: (i) serve as the commercial entity to establish and develop the
commercial market for the PHA Material and PHA Formulations, and to conduct the
marketing and sales of PHA Material and PHA Formulations in furtherance of the
goals of the Commercial Alliance, (ii) assist in the coordination and
integration of the manufacturing, formulation and marketing activities in such a
manner as to establish and maintain an efficient and profitable commercial
operation and (iii) administer and account for certain financial matters
relating to the investments of the Parties in the Commercial Alliance and the
allocation and distribution of losses and profits therefrom to the Parties, as
more fully set forth in the Operating Agreement.
5.2 MARKETING AND SALES ROLE. During the Construction Phase, MBX will use
Commercially Reasonable Efforts to establish the market for the PHA Material and
PHA Formulations in the name of the Joint Sales Company. ADM Sub shall have the
right to appoint a representative to participate in such efforts. During the
Commercial Phase, the Joint Sales Company will develop, expand and supply the
global market for PHA Material and PHA Formulations.
5.2.1 STRATEGIC ALLIANCE PARTNERS. During the Construction Phase, MBX
will have primary responsibility for determining whether it is advisable to seek
a Strategic Alliance Partner to support and participate in the activities
described in this Article 5 and for identifying, contacting and negotiating, on
behalf of the Joint Sales Company, with potential Strategic Alliance Partners.
Notwithstanding the foregoing, MBX shall obtain the approval of the Steering
Committee and the Joint Sales Company before entering into any contractual
arrangement with a Third Party to assume responsibility for an active and
ongoing role in executing a strategic plan to establish the market for the PHA
Material or PHA Formulations.
5.2.2 FINANCIAL MATTERS RELATING TO MARKETING AND SALES. Subject to
reimbursement of certain costs and expenses to the extent available under
Section 4.4.2, ADM Sub and MBX shall each be solely responsible for its own
costs and expenses incurred in connection with performing marketing and sales
activities undertaken during the Construction Phase.
5.3 FUNDING OF JOINT SALES COMPANY.
5.3.1 CAPITAL CONTRIBUTIONS. ADM Sub and MBX shall each make an
investment of capital in the Joint Sales Company in the amount of * as set
forth herein. ADM Sub shall remit such amount in cash to the Joint Sales
Company within ten (10) days after the Effective Date. MBX shall be credited
with a capital investment of * in exchange for foregoing receipt of the
payment of the License Fee by the Joint Sales Company to MBX. As is more
fully set forth in
* CONFIDENTIAL TREATMENT REQUESTED
27
the Operating Agreement, future investments of capital by ADM Sub credited to
the Ledger Account pursuant to the Operating Agreement shall not cause ADM Sub
to acquire additional Units in the Joint Sales Company or to otherwise effect
the Parties' equal ownership of the Joint Sales Company.
5.3.2 LOAN FACILITY. ADM Sub shall, as more fully set forth in the
Loan and Security Agreement, make available a loan facility to the Joint Sales
Company to fund certain cash requirements of the Joint Sales Company.
ARTICLE 6
COMMERCIAL PHASE; ANCILLARY SERVICES
6.1 OVERVIEW AND GOAL OF THE COMMERCIAL PHASE. The primary goal of the
Commercial Phase is to leverage the Parties' assets, including without
limitation, assets developed during the Construction Phase, such as the ADM Sub
Manufacturing Facility, the MBX Formulation Facility, the market developed
through the efforts of the Parties, including the sale of the Pilot PHA
Material, and the business relationships established by and on behalf of the
Joint Sales Company, in order to manufacture at the 50,000 Ton Annual Design
Capacity and sell the resulting PHA Material and PHA Formulations during the
Commercial Phase as a profitable, ongoing business venture. In order to achieve
this goal, the Parties will pursue the following primary objectives: (i) ADM Sub
will, as and to the extent required in the ADM Sub Manufacturing Agreement,
dedicate the ADM Sub Manufacturing Facility and its personnel to manufacturing
PHA Material for sale to the Joint Sales Company, (ii) MBX will, as and to the
extent required in the MBX Formulation Agreement, arrange for formulating PHA
Material, whether in a dedicated facility or not, (iii) the Parties will, as and
to the extent set forth herein and in the other Commercial Alliance Agreements,
participate in and support, financially and otherwise, the efforts of the Joint
Sales Company to develop, expand and supply the global market for PHA Material
and PHA Formulations.
6.2 ADM SUB MANUFACTURING. Throughout the Commercial Phase, ADM Sub shall
provide PHA Material to the Joint Sales Company in accordance with the terms and
conditions set forth in the ADM Sub Manufacturing Agreement. The ADM Sub
manufacturing services will be overseen by a manager appointed for this purpose
by ADM Sub with the approval of the Steering Committee (the "ADM Sub
Manufacturing Manager"). The performance parameters, including without
limitation, the product specifications, and procedures for forecasting,
ordering, delivery and payment for such PHA Materials are all as provided in the
ADM Sub Manufacturing Agreement. Distribution of amounts received by the Joint
Sales Company upon sale of the PHA Material and PHA Formulations shall be as
provided in the Operating Agreement.
6.3 MBX FORMULATION. Throughout the Commercial Phase, MBX shall provide
formulation services with respect to the PHA Formulations for the Joint Sales
Company in accordance with the terms and conditions set forth in the MBX
Formulation Agreement. The performance parameters and procedures by which the
Joint Sales Company will access those services are all as provided in the MBX
Formulation Agreement. The distribution of amounts
* CONFIDENTIAL TREATMENT REQUESTED
28
received by the Joint Sales Company upon sale of the PHA Materials and PHA
Formulations shall be as provided in the Operating Agreement.
6.4 JOINT SALES COMPANY. Unless expressly stated otherwise in this
Agreement or the other Commercial Alliance Agreements, or unless the Parties
agree otherwise in writing, once the Commercial Phase commences, all PHA
Material and PHA Formulations, excepting Pilot PHA Material, to be sold, or
otherwise disposed of, by or for the benefit of the Commercial Alliance, shall
be purchased solely from ADM Sub by the Joint Sales Company, and, if formulation
services for PHA Formulations are required, they shall be purchased solely from
MBX by the Joint Sales Company.
6.4.1 ANCILLARY SERVICES. The Parties hereby acknowledge that MBX will
provide certain ancillary services to the Joint Sales Company as set forth in
the MBX Services Agreement. The Parties further acknowledge that ADM Sub will
provide certain ancillary services to the Joint Sales Company as set forth in
the ADM Sub Services Agreement.
ARTICLE 7
INTELLECTUAL PROPERTY; LICENSES; TECHNOLOGY TRANSFER; ROFN
7.1 OWNERSHIP.
7.1.1 SOLE OWNERSHIP. Subject to the rights and licenses granted
herein and in the other Commercial Alliance Agreements, ADM Sub shall own all
right, title and interest in and to any: (i) ADM Sub Background Technology, (ii)
ADM Sub Alliance Technology and (iii) ADM Sub Proprietary Materials. Subject to
the rights and licenses granted herein and in the other Commercial Alliance
Agreements, MBX shall own all right, title and interest in and to any: (x) MBX
Background Technology, (y) MBX Alliance Technology and (z) MBX Proprietary
Materials.
7.1.2 JOINT OWNERSHIP. Subject to Section 7.1.1, and subject to the
rights and licenses granted herein and in the other Commercial Alliance
Agreements, MBX and ADM Sub shall jointly own all Joint Alliance Technology. ADM
Sub hereby grants to MBX a perpetual, royalty-free, fully-sublicenseable license
to ADM Sub's rights in Joint Alliance Technology for the research, development,
manufacture, use, sale and importation of PHA-Related Material produced via
Plants. MBX hereby grants to ADM Sub a perpetual, royalty-free, exclusive,
fully-sublicenseable license to MBX's rights in Joint Alliance Technology for
use in all fields that are part of ADM's and its Affiliates' commercial
activities at any time during the Term of the Commercial Alliance, but
excluding: (i) uses that are within the Field, (ii) uses that are within the
term "Field of Use" as that term is defined in the License Agreement by and
between MBX and Tepha, Inc. dated October 1, 1999, as amended on December 17,
2002 and (iii) any and all uses of PHA-Related Material produced via Plants.
Subject to the rights and licenses granted herein and in the other Commercial
Alliance Agreements, MBX and ADM Sub hereby agree that they shall each have the
right to assign, sell, license or otherwise convey their rights in the Joint
Alliance Technology without notice to or consent of the other Party and without
any obligation to share the proceeds of such activity with the other Party, or
otherwise to account to the other
* CONFIDENTIAL TREATMENT REQUESTED
29
Party in connection with such activities. In all other respects, the rights of
the Parties as joint owners shall be determined by the laws of the United States
of America and the State of Delaware. Trademarks that are developed by or on
behalf of the Joint Sales Company for use in connection with the marketing and
sale of PHA Material or PHA Formulations during the Term shall be included
within the Joint Alliance Technology and the Parties agree and covenant not to
use any such trademarks, or other trademarks licensed hereunder, in a manner
that would cause a diminution in value of such trademarks, including without
limitation, by using such trademarks in connection with other goods, by using
such trademarks in a misleading or confusing manner or by using any trademarks
that are confusingly similar to any such trademark.
7.1.3 DISCLOSURE; ASSIGNMENTS. MBX shall promptly disclose in writing
to ADM Sub the making, conception or reduction to practice of any Alliance
Technology. ADM Sub shall promptly disclose in writing to MBX the making,
conception or reduction to practice of any Alliance Technology. Each Party
hereby assigns all of its right, title and interest in and to any Alliance
Technology to the other Party to the extent necessary to conform to the
allocation of ownership rights set forth in this Section 7.1. The Parties agree
to take such actions, including without limitation, executing and delivering
such documents, as the other Party may reasonably request in order to give
effect to and to evidence the foregoing assignments of rights.
7.2. LICENSE GRANTS BY MBX.
7.2.1 GRANT BY MBX TO ADM SUB. Subject to the terms and conditions set
forth herein, MBX hereby grants to ADM Sub a royalty-free, exclusive license,
without the right to sublicense, under MBX's right, title and interest in and to
the MBX Technology, the MBX Patent Rights and the Joint Alliance Technology,
solely to manufacture PHA Material and PHA Formulations in North America during
the Construction Phase in the quantities and form requested in writing by MBX,
or the Joint Sales Company, and agreed to by ADM Sub, and solely for sale by ADM
Sub to MBX and/or the Joint Sales Company for use within the Field, such
exclusivity to be subject to MBX's right to conduct the Permitted Activities as
set forth in Section 8.4. MBX shall not itself, or grant any license to any
third party to, manufacture, have made, offer for sale, sell, have sold or
import PHA Cell Paste, PHA Material or PHA Formulations, subject to MBX's right
to conduct the Permitted Activities as set forth in Section 8.4.
7.2.2 GRANT BY MBX TO THE JOINT SALES COMPANY; GRANT OF SUBLICENSE.
Subject to the terms and conditions set forth herein, including without
limitation Section 9.8, MBX hereby grants to the Joint Sales Company the
following licenses, with Limited Sublicense Right: (i) upon completion of the
Construction Phase, a royalty-bearing, exclusive license during the Term, under
MBX's right, title and interest in and to the MBX Technology, the MBX Patent
Rights and the Joint Alliance Technology, solely to make and have made PHA
Material and PHA Formulations in North America, such exclusivity to be subject
to MBX's right to conduct the Permitted Activities as set forth in Section 8.4,
and (ii) upon the Effective Date, a royalty-bearing, exclusive license under
MBX's right, title and interest in and to the MBX Technology, the MBX Patent
Rights and the Joint Alliance Technology to offer for sale, sell, have sold and
import PHA Material and PHA Formulations for use in the Field worldwide. The
foregoing licenses shall, in all instances, be limited such that the Joint Sales
Company shall only be
* CONFIDENTIAL TREATMENT REQUESTED
30
permitted to make and have made that amount of PHA Material (including, without
limitation, PHA Material that is contained within PHA Formulations) that is
produced by the ADM Sub Manufacturing Facility, having a 50,000 Ton Annual
Design Capacity, during any period of twelve (12) consecutive months during the
Term. MBX shall not itself, or grant any license to any third party to,
manufacture, have made, offer for sale, sell, have sold or import PHA Cell
Paste, PHA Material or PHA Formulations, subject to MBX's right to conduct the
Permitted Activities as set forth in Section 8.4. The Joint Sales Company hereby
grants an exclusive, royalty free sublicense of its right to make and have made
PHA Material to ADM Sub; provided, however, that such sublicense shall be
limited solely to permit ADM Sub to make such PHA Material for sale to the Joint
Sales Company under the ADM Sub Manufacturing Agreement and solely for delivery
directly to, or as directed by, the Joint Sales Company. MBX hereby grants its
consent to the foregoing grant of such limited sublicense by the Joint Sales
Company to ADM Sub. Notwithstanding anything to the contrary herein, ADM, ADM
Sub and the Joint Sales Company shall not transfer or convey any cell line
constituting part of the MBX Proprietary Materials to any Third Party.
7.2.3 PAYMENT OF ROYALTIES. In consideration of the grant of the
license by MBX under Section 7.2.2, the Joint Sales Company shall pay to MBX
an upfront license fee (the "License Fee") equal to *. Notwithstanding the
foregoing, MBX and the Joint Sales Company hereby agree that MBX shall forego
receipt of the payment of the License Fee, and the Joint Sales Company shall
retain the License Fee and shall treat such amount as a capital contribution
by MBX to the Joint Sales Company as further set forth in Section 5.3.1.
During the Royalty Term, the Joint Sales Company will pay to MBX a royalty
equal to: (i) * on all sales or other conveyances of PHA Patented Material
(including, without limitation, PHA Material that is contained within PHA
Formulations), on a one hundred percent (100%) purity basis; and (ii) * on
all sales or other conveyances of PHA Know-How Material (including, without
limitation, PHA Material that is contained within PHA Formulations), on a one
hundred percent (100%) purity basis. During the Supplemental Royalty Term,
the Joint Sales Company will pay to MBX a royalty equal to * on all sales or
other conveyances of PHA Supplemental Know-How Material (including, without
limitation, PHA Material that is contained within PHA Formulations), on a one
hundred percent (100%) purity basis. In the event more than one royalty
applies to the manufacture, use, sale or importation of a particular product,
then the highest royalty shall be the only applicable royalty hereunder. The
royalties on sales or conveyances completed during any month shall be due and
payable to MBX on or before the last business day of the succeeding month.
Amounts due under this Section 7.2.3 shall be payable by wire transfer of
immediately available funds to an MBX bank account in accordance with
instructions to be provided to the Joint Sales Company by MBX. Any amounts
that are not paid when due hereunder shall accrue interest at the rate of
four percent (4%) per annum in excess of the one year London Interbank
Offered Rate (LIBOR) then most recently published in THE WALL STREET JOURNAL.
The right to demand and receive the interest provided hereunder shall be in
addition to any other rights available to MBX hereunder or at law.
* CONFIDENTIAL TREATMENT REQUESTED
31
7.3 LICENSE GRANTS BY ADM SUB.
7.3.1 GRANT BY ADM SUB TO MBX. Subject to the terms and conditions
set forth herein, ADM Sub hereby grants to MBX a *, non-exclusive license,
without the right to sublicense (except in connection with the Pilot
Activities), under ADM Sub's right, title and interest in and to the ADM
Technology and the ADM Sub Patent Rights, solely to use, offer for sale,
sell, have sold and import PHA Material and PHA Formulations during the
Construction Phase in the quantities and form requested in writing by MBX, or
the Joint Sales Company, and agreed to by ADM Sub, in connection with the
Commercial Alliance as expressly permitted under this Agreement, including
without limitation, in connection with the Pilot Activities.
7.3.2 GRANT BY ADM SUB TO THE JOINT SALES COMPANY. Subject to the
terms and conditions set forth herein, ADM Sub hereby grants to the Joint
Sales Company a *, exclusive, fully-sublicenseable license during the Term,
under ADM Sub's right, title and interest in and to the ADM Technology, the
ADM Sub Patent Rights and the Joint Alliance Technology, solely to make and
have made PHA Material and PHA Formulations in North America and to offer for
sale, sell, have sold and import PHA Material and PHA Formulations worldwide.
The foregoing license shall be limited such that the Joint Sales Company
shall only be permitted to make and have made that amount of PHA Material
(including, without limitation, PHA Material that is contained within PHA
Formulations) that is * during the Term.
7.4. RIGHT OF FIRST NEGOTIATION. MBX hereby grants to the Joint Sales
Company, a right of first negotiation as set forth in this Section 7.4 (the
"ROFN"). If MBX comes to Control Technology or Patent Rights pertaining *
(the "ROFN Rights"), and MBX decides to offer a Third Party a license or
similar rights under the ROFN Rights at anytime during the Term and prior to
the expiration of the JV Option (including the expiration of the possibility
that the JV Option could reset under Section 9.8.5), then MBX shall first
offer to the Joint Sales Company the right to negotiate towards a license
under which such ROFN Rights would be licensed by MBX to the Joint Sales
Company and, if ADM Sub accepts such offer on behalf of the Joint Sales
Company, then ADM Sub, on behalf of the Joint Sales Company, and MBX shall
negotiate in good faith towards such a license on such terms as each, in its
sole discretion, shall determine to be acceptable. In the event that MBX and
the Joint Sales Company have not executed a written agreement including the
terms of a license agreed upon by ADM Sub and MBX within one hundred twenty
(120) days after the initial offer from MBX to the Joint Sales Company, then
MBX shall be free to offer a license or similar rights under the ROFN Rights
to a Third Party; provided, however, (i) any such license or similar rights
offered to a Third Party shall not include economic terms that are more
favorable to such Third Party than the economic terms MBX last proposed to
the Joint Sales Company; and (ii) MBX shall remain subject to, and by
granting any such license or similar rights to any Third Party shall not
breach, the restrictions and obligations set forth in this Agreement
(including without limitation Section 8.4, to the extent then-applicable) and
the other Commercial Alliance Agreements.
* CONFIDENTIAL TREATMENT REQUESTED
32
7.5 NO IMPLIED RIGHTS. The Parties hereby agree and acknowledge that no
rights or licenses under their respective intellectual property rights are
granted hereunder, by implication, estoppel or otherwise, by any of them.
7.6 TECHNOLOGY TRANSFER; LIMITED ACCESS. MBX and ADM Sub hereby acknowledge
the technology transfer conducted pursuant to the Technology Alliance and Option
Agreement. MBX hereby agrees to use Commercially Reasonable Efforts to conduct
an additional transfer of MBX Technology, which technology transfer will be
periodically updated during the Construction Phase to include improvements to
the MBX Technology, including without limitation, process improvements developed
as described under Section 4.4.1, as and to the extent reasonably necessary to
enable ADM Sub to perform its obligations under the ADM Sub Manufacturing
Agreement (the "Technology Transfer"). MBX and ADM Sub shall each devote such
personnel and other resources as are reasonably required to complete the
Technology Transfer in an efficient manner. ADM Sub acknowledges that some of
the MBX Technology that will be transferred to ADM Sub is in the form of trade
secrets. In an effort to ensure the maximum continued protection of MBX's rights
in such trade secrets, and in keeping with the confidentiality obligations
herein, ADM Sub covenants that it will provide access to the MBX Technology only
to employees of ADM and ADM Sub who have a need to have access to such MBX
Technology in order to complete the Technology Transfer and perform ADM Sub's
obligations under the ADM Sub Manufacturing Agreement.
7.7 ACKNOWLEDGEMENT REGARDING MIT LICENSE. The Parties hereby acknowledge
that certain of the MBX Patent Rights and MBX Technology are Controlled by MBX
pursuant and subject to the MIT License. All licenses granted herein to such MBX
Patent Rights and MBX Technology are subject to certain rights retained by MIT
in the MIT License and the Parties agree that the obligations to MIT set forth
in Articles 2, 5, 7, 8, 9, 10, 12, 13 and 15 (copies of said articles are
attached hereto as EXHIBIT G) are binding upon the Joint Sales Company and ADM
Sub as if they were parties to the MIT License.
ARTICLE 8
DUE DILIGENCE; REPRESENTATIONS AND WARRANTIES; EXCLUSIVITY
8.1 CONDUCT OF COMMERCIAL ALLIANCE. The Parties shall use Commercially
Reasonable Efforts to perform their respective obligations under the Commercial
Alliance, in accordance with the provisions herein and the provisions set forth
in the other Commercial Alliance Agreements.
8.1.1 CERTAIN MUTUAL REPRESENTATIONS. Each Party hereby represents and
warrants to the other Parties as follows: (i) it shall use Commercially
Reasonable Efforts to perform its obligations in connection with the Commercial
Alliance in accordance with high scientific and engineering principles and
procedures, and in compliance in all material respects with all requirements of
applicable laws, rules, and regulations, (ii) it shall use Commercially
Reasonable Efforts to achieve the objectives of the Commercial Alliance
efficiently and expeditiously and (iii) it shall proceed diligently with the
Commercial Alliance, using
* CONFIDENTIAL TREATMENT REQUESTED
33
Commercially Reasonable Efforts, including by allocating time, effort,
equipment, and skilled personnel to complete the Commercial Alliance
successfully and promptly.
8.2 REPRESENTATIONS AND WARRANTIES.
8.2.1 MBX REPRESENTATIONS. Except as otherwise disclosed on
Schedule 8.2.1 attached hereto and incorporated herein by reference, MBX
represents and warrants, as of the Effective Date, that: *
* CONFIDENTIAL TREATMENT REQUESTED
34
* MBX DOES NOT MAKE ANY OTHER REPRESENTATION OR
* CONFIDENTIAL TREATMENT REQUESTED
35
WARRANTY WHATSOEVER CONCERNING THE MBX PATENT RIGHTS, THE MBX TECHNOLOGY OR ITS
RIGHTS THEREIN. MBX HEREBY SPECIFICALLY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO, IMPLIED WARRANTIES OF MERCHANTABILITY
AND FITNESS FOR A PARTICULAR PURPOSE.
8.2.2 ADM SUB REPRESENTATIONS. Except as otherwise disclosed on
Schedule 8.2.2 attached hereto and incorporated herein by reference, ADM Sub
represents and warrants, as of the Effective Date, that: *
* CONFIDENTIAL TREATMENT REQUESTED
36
* ADM SUB DOES NOT MAKE ANY OTHER REPRESENTATION OR WARRANTY WHATSOEVER
CONCERNING THE ADM SUB PATENT RIGHTS, THE ADM SUB TECHNOLOGY OR ITS RIGHTS
THEREIN. ADM SUB HEREBY SPECIFICALLY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO, IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
8.3 RECORDS. ADM Sub and MBX shall maintain records with respect to the
Commercial Alliance in sufficient detail and in a good scientific manner
appropriate to support patent filings, which shall be complete and accurate and
shall fully and properly reflect all work done and results achieved in the
performance of the Commercial Alliance. All such records shall be retained for
at least five (5) years after the termination of this Agreement, or for such
longer period as may be required by applicable law. Each of MBX and ADM Sub
shall have the right, during normal business hours and upon reasonable notice,
to inspect and copy any such records that are maintained in accordance with this
Section 8.3.
* CONFIDENTIAL TREATMENT REQUESTED
37
8.4 EXCLUSIVITY. Except as otherwise provided herein, during the
Exclusive Period, *.
8.5 PROHIBITION ON SOLICITATION. No Party nor any of its Affiliates
shall, during the period commencing on the Effective Date and continuing
until the expiration or termination of this Agreement and * thereafter,
specifically solicit any person who is employed by the other Party or its
Affiliates and who was involved in the Commercial Alliance during the Term of
this Agreement, whether such person is solicited to be hired as an employee
or consultant, unless authorized in writing by the other Party. The Parties
acknowledge that generally listing a position for hire in a newspaper, trade
journal or similar publication shall not constitute a specific solicitation
in violation of the terms of this provision. The Parties further acknowledge
for the avoidance of doubt that this Section only applies to those persons
that remain employees of a Party and not to former employees of a Party.
ARTICLE 9
GRANT OF JV OPTION
9.1 GRANT OF JV OPTION. MBX hereby grants to ADM Sub the right and option
to enter into a commercial joint venture for the further manufacture and sale of
the PHA Material on the terms and conditions set forth in this Article 9 (the
"JV Option").
9.1.1 JV OPTION MECHANICS. If, at any time during the Term, either ADM
Sub or MBX reasonably determines that within two (2) years, the Joint Sales
Company would likely be able to sell, on a consistent and on-going basis, more
than fifty thousand (50,000) tons of PHA
* CONFIDENTIAL TREATMENT REQUESTED
38
Material (including, without limitation, PHA Material that is contained within
PHA Formulations) per twelve (12) month period, then either ADM Sub or MBX may
prepare and deliver a written proposal (the "Expansion Proposal") to the other
such Party to form a separate entity joint venture or to expand the scope of the
Joint Sales Company (in either case, the "Joint Venture Entity") with a goal and
purpose of expanding the manufacturing capacity and PHA Material sales to in
excess of seventy thousand (70,000) tons per year (the "Joint Venture"). The
Expansion Proposal shall merely be a proposal to expand manufacturing capacity
and PHA Material sales through the Joint Venture Entity as set forth herein; the
specific manner and method of accomplishing any such expansion shall be left to
the Joint Venture Entity in the event ADM Sub exercises the JV Option. Upon
receipt of an Expansion Proposal, ADM Sub shall have a period of one hundred
twenty (120) days during which it shall decide whether or not, in its sole
discretion, to exercise the JV Option. During such period, ADM Sub and MBX
shall, in good faith, share information relating to the market for PHA Material
and other matters relevant to the exercise of the JV Option. If ADM Sub decides
to exercise the JV Option, then ADM Sub and MBX shall promptly proceed to
prepare, execute and deliver documents, and take such other actions as are
reasonably necessary, to form a Joint Venture Entity and commence the Joint
Venture on the terms and conditions set forth in this Article 9. If ADM Sub does
not exercise the JV Option within such period, then the JV Option shall expire
(subject to the revival of the JV Option pursuant to Section 9.8) and the other
consequences set forth in Section 9.8 shall be given full force and effect. For
avoidance of doubt, at any time during the Term, the Parties shall be permitted
to negotiate temporary or permanent increases to the annual capacity limit in
the licenses granted in Sections 7.2 and 7.3 above, which increases shall be
given effect, if at all, in one or more written amendments to this Agreement.
9.2 FORMATION OF JV ENTITY. If ADM Sub exercises the JV Option in
accordance with Section 9.1.1 and the Parties determine to form a new separate
entity, ADM Sub and MBX shall form a new entity under the laws of the State of
Delaware, to serve as the Joint Venture Entity and to own and operate the Joint
Venture.
9.2.1 JV ASSETS. All assets that are owned by ADM Sub and MBX, that
are solely dedicated to the activities of the Commercial Alliance as of the date
the JV Option is exercised, and that may reasonably be divested from ADM Sub or
MBX, as applicable, without undue liability, including without limitation, tax
liability, shall promptly be transferred to the JV Entity as requested by the JV
Entity, along with any other assets as MBX and ADM Sub agree shall be
transferred to the JV Entity, on terms and conditions to be agreed upon by ADM
Sub, MBX and the JV Entity.
9.2.2 OTHER ASSETS. Ownership of those assets of ADM Sub and MBX that
have been dedicated in part to the activities of the Commercial Alliance,
including without limitation, the ADM Sub Manufacturing Facility and the MBX
Formulation Facility, shall be retained by ADM Sub or MBX, as applicable,
provided however, that such assets shall be dedicated to the Joint Venture, as
and to the extent the Joint Venture Entity shall desire, on terms consistent
with those established during the Commercial Phase, including without limitation
the price payable to ADM Sub or MBX for such manufacturing or formulation
services. The Joint Venture Entity shall purchase PHA Material from ADM Sub, in
an amount to be determined by ADM Sub and the Joint Venture Entity; provided,
however, that the Joint Venture Entity shall not purchase any
* CONFIDENTIAL TREATMENT REQUESTED
39
PHA Material from any other source (with the exception of pilot-scale
production quantities) without the prior consent of ADM Sub during any period
unless and until the Joint Venture Entity has purchased all of ADM Sub's
output of the PHA Material from the ADM Sub Manufacturing Facility (and
including any amounts then in inventory at the ADM Sub Manufacturing
Facility). In addition, the Joint Venture Entity shall determine whether
additional supplies of PHA Material in addition to that produced by the ADM
Sub Manufacturing Facility shall be acquired from ADM Sub or from a Third
Party; provided, however, that ADM Sub shall have the right and option to
expand the manufacturing capacity at the ADM Sub Manufacturing Facility to a
design capacity of up to *, and the Joint Venture Entity will purchase such
supply from ADM Sub, if the projected profitability of the Joint Venture
Entity would be the same or greater than if it acquired such additional
supply from another source. If the Joint Venture Entity is to obtain such
additional supply from ADM Sub, then *.
9.3 EXPANSION; FUTURE INVESTMENTS. Except as otherwise expressly provided
in this Agreement, the manner of expansion of manufacturing capacity and PHA
Material sales shall be determined by the Joint Venture Entity. Subject to the
provisions in Section 9.2.1 and 9.2.2, future investments in the Joint Venture
activities, including without limitation, the acquisition of additional
equipment, facilities and personnel, shall be made by the Joint Venture Entity
and not ADM, ADM Sub or MBX on an individual basis, so that the Joint Venture
Entity shall become an independently-financeable entity that the owners may
sell, sell equity in to Third Parties or otherwise exploit in whatever
reasonable fashion they may determine. In the event the Joint Venture Entity is
unable to obtain necessary independent financing, then ADM Sub and MBX shall
equally finance the Joint Venture Entity subject to certain limits, terms and
conditions to be determined upon the formation of the Joint Venture Entity. In
the event ADM Sub, on the one hand, or MBX, on the other hand, is financially
incapable of committing to provide an equal share of the financing, then none of
them shall have an obligation to provide such financing, such failure to finance
shall not constitute a breach of any obligation or otherwise alter the
respective rights of the Parties and the Parties shall diligently pursue
alternative financing or other means to accomplish the goal of the Joint Venture
as set forth in Section 9.1.1.
9.4 CONTRACTS; LICENSES. The operations and assets of the Joint Sales
Company will be dedicated or transferred to the Joint Venture Entity in
accordance with the foregoing requirements of this Article 9, and ADM Sub and
MBX hereby consent to the same. In keeping with the foregoing, the Joint Sales
Company shall assign such of the Commercial Alliance Agreements to the Joint
Venture Entity as are reasonably necessary or useful for the Joint Venture
Entity to conduct the Joint Venture. ADM Sub and MBX shall take, or cause the
Joint Sales Company to take, such actions as are required to comply with and
give effect to this Article 9. ADM Sub and MBX shall also grant such licenses,
and provide such services, on commercially reasonable terms in light of the
licenses and services that ADM Sub and MBX provided to the Joint Sales Company,
as are reasonably necessary to enable the Joint Venture Entity to conduct the
business of the Joint Venture on the terms set forth herein. Without limiting
the foregoing, ADM Sub and MBX shall grant to the Joint Venture Entity exclusive
* CONFIDENTIAL TREATMENT REQUESTED
40
licenses of similar scope as the licenses each granted herein to the Joint Sales
Company but without the limitation on production volume.
9.5 OWNERSHIP; RETURN ON INVESTMENT. ADM Sub and MBX shall each own fifty
percent (50%) of the total equity of the Joint Venture Entity. In keeping with
the foregoing, capital contributions, profit distributions and control of
management and operations of the Joint Venture Entity shall be shared equally by
ADM Sub and MBX; provided, however, the Ledger Account shall continue in the
manner set forth in the Operating Agreement, and all profit distributions by the
Joint Venture Entity shall be made to ADM Sub until such time as the Ledger
Account is reduced to zero. The agreements or other documents governing the
distributions of profit from the Joint Venture Entity will provide for periodic
preferential distributions in order to maintain equal investments by both ADM
Sub and MBX.
9.6 MANAGEMENT. ADM Sub and MBX intend for the Joint Venture Entity to be
managed by a steering committee or board of directors, on which they have equal
representation, in a manner that is similar to that provided herein for
management of the Commercial Alliance by the Steering Committee. The overriding
principle for such management will be equal representation and cooperative
decision-making in the best interest of the long term profitability of the Joint
Venture Entity, and not on the basis of ADM Sub's or MBX's separate commercial
goals and interests.
9.7 TRANSFER OF INTEREST. If either MBX or ADM Sub desires to transfer its
ownership interest in the Joint Venture Entity to a Third Party (the Party
desiring to so transfer shall be the "Offeror Party" and the other such Party
shall be the "Offeree Party"), then the Offeror Party shall first offer to the
Offeree Party the opportunity to negotiate towards a purchase of such ownership
interest and, if the Offeree Party accepts such offer, then the Offeror Party
and the Offeree Party shall negotiate in good faith towards a purchase of such
ownership interest on such terms as each, in its sole discretion, shall
determine to be acceptable. In the event that the Offeror Party and the Offeree
Party have not completed a purchase and sale transaction for such ownership
interest within sixty (60) days after the initial offer, then the Offeror Party
shall be free to transfer its ownership interest in the Joint Venture Entity to
a Third Party without restriction or obligation hereunder; provided, however,
any such transfer shall be on terms and conditions no less favorable than the
terms and conditions the Offeror Party last proposed to the Offeree Party. Both
ADM Sub and MBX shall have the right to transfer their respective ownership
interest in the Joint Venture Entity to a Third Party who acquires all or
substantially all of the assets or equity interest of ADM Sub or MBX without
having to comply with the foregoing right of first negotiation; provided,
however, that such Party's successor in interest shall be bound by such right of
first negotiation.
9.8 ADM SUB DECLINES JV OPTION. If ADM Sub does not exercise the JV Option
as set forth herein, MBX shall have a period of twenty four (24) months
following the expiration of the JV Option during which it shall be free to
commence the establishment of manufacturing capacity for PHA Material outside of
the Commercial Alliance that is comparable to or greater than the manufacturing
capacity of the ADM Sub Manufacturing Facility, including without limitation,
commencing construction of its own manufacturing facility for PHA Material or by
entering into a legally binding agreement with a Third Party to jointly
manufacture PHA
* CONFIDENTIAL TREATMENT REQUESTED
41
Material with such Third Party; provided however, that MBX shall not be
permitted to commence the manufacture or sale of PHA Material outside of the
Commercial Alliance unless and until the Ledger Account has been repaid so
that the balance thereof is less than * as further described in Section 9.8.2.
9.8.1 SUSPENSION OF EXCLUSIVITY. If ADM Sub does not exercise the JV
Option and if MBX is able to commence the establishment of manufacturing
capacity for PHA Material outside of the Commercial Alliance within a
twenty-four (24) month period as set forth in Section 9.8 above, then, upon that
date, this Agreement shall be automatically amended such that Section 8.4 shall
be deleted in its entirety. However, if MBX fails to commence the establishment
of manufacturing capacity for PHA Material outside of the Commercial Alliance
within a twenty-four (24) month period as set forth in Section 9.8 above, then,
upon the expiration of that period, the JV Option shall reset, the suspension of
Section 8.4 shall terminate and Section 8.4 shall again be binding on the
Parties in accordance with its terms, and this Agreement shall continue as if
the Expansion Proposal had never been made.
9.8.2 PAY-DOWN OF LEDGER ACCOUNT. During the Term, MBX shall not be
permitted, directly or through its Affiliates, agents or any Third Party, to
manufacture or have made any PHA Material and PHA Formulations, other than in
connection with Pilot Activities or through the Joint Sales Company as part
of the Commercial Alliance, unless and until the restrictions provided in
Section 8.4 have been suspended or terminated in accordance with Section
9.8.1 and the Ledger Account has been repaid (including without limitation,
directly by MBX to ADM Sub in one or more payments) so that the balance
thereof is less than * when calculated in the manner provided for in the
Operating Agreement. In the event that the restrictions provided in Section
8.4 have been so suspended or terminated and the Ledger Account has been
repaid so that the balance is less than * as described in this Section 9.8.2,
this Agreement shall, as of such date, be automatically amended such that the
licenses granted under Section 7.2.1, 7.2.2 and 7.3.2 convert from exclusive
licenses to non-exclusive licenses.
9.8.3 WIND-DOWN OF JOINT SALES COMPANY. Promptly after the Ledger
Account is paid down and the licenses are converted to non-exclusive licenses as
set forth in Section 9.8.2 above, the Parties will discuss in good faith
alternative arrangements for developing and serving the global marketplace for
PHA Material and PHA Formulations, including sustaining the operation of the
Joint Sales Company. At anytime following the conversion of the licenses, the
Parties may mutually agree to trigger, or any one of them may by ninety (90)
days prior written notice to the other Parties may trigger, the dissolution and
winding down of the Joint Sales Company and the liquidation of its assets, in
accordance with the Operating Agreement. Upon such winding-down of the Joint
Sales Company, MBX shall grant a license to ADM Sub as described in Section
9.8.4. For avoidance of doubt, once the conversion of the licenses from
exclusive to non-exclusive described in Section 9.8.2 occurs, anything herein to
the contrary notwithstanding, MBX shall be free to exploit the MBX Technology
and MBX Patent Rights in any manner it shall determine in its sole discretion,
including without limitation by manufacturing and selling PHA Material and PHA
Formulations.
* CONFIDENTIAL TREATMENT REQUESTED
42
9.8.4 GRANT OF LICENSE. If, as described in Section 9.8.3, the
Parties or any one of them triggers the dissolution and winding down of the
Joint Sales Company, then, effective upon such date, MBX shall grant to ADM
Sub a royalty-bearing, non-exclusive, perpetual, irrevocable license, with
Limited Sublicense Right, under MBX's right, title and interest in and to the
MBX Technology and the MBX Patent Rights, solely to make, have made, use,
offer for sale, sell, have sold and import PHA Material and PHA Formulations
for use in the Field worldwide and this Agreement shall terminate. The
foregoing license shall be limited such that ADM Sub shall only be permitted
to make and have made the amount of PHA Material (including PHA Material
contained within PHA Formulations) permitted under the then-current license
under Section 7.2.2 during each consecutive period of twelve (12) months
during the term of the license. During the Royalty Term, ADM Sub will pay to
MBX a royalty equal to: (i) * on all sales or other conveyances of PHA
Patented Material (including, without limitation, PHA Material that is
contained within PHA Formulations), on a one hundred percent (100%) purity
basis; and (ii) * on all sales or other conveyances of PHA Know-How Material
(including, without limitation, PHA Material that is contained within PHA
Formulations), on a one hundred percent (100%) purity basis. During the
Supplemental Royalty Term, ADM Sub will pay to MBX a royalty equal to * on
all sales or other conveyances of PHA Supplemental Know-How Material
(including, without limitation, PHA Material that is contained within PHA
Formulations), on a one hundred percent (100%) purity basis. In the event
more than one royalty applies to the manufacture, use, sale or importation of
a particular product, then the highest royalty shall be the only applicable
royalty hereunder. Provided, however, that any such royalty shall be reduced
by the amount of royalties payable to any Third Party under a license
required to obtain freedom to practice the MBX Technology and/or MBX Patent
Rights for the manufacture, use or sale of PHA Material within the Field
provided that MBX breached an obligation under Section 8.2.1 to disclose: (i)
the existence of such Third Party's intellectual property rights in such
Technology, or (ii) claims by such Third Party that any of the MBX Patent
Rights are invalid or unenforceable, or that the practice of any of the MBX
Patent Rights would constitute an infringement or misappropriation of such
Third Party's intellectual property rights (such royalty reduction right is
"Third Party IP Royalty Offset"). The royalty shall be payable within thirty
(30) days following the end of each Calendar Quarter during the term of the
applicable license for sales or other conveyances that occur during such
Calendar Quarter. Amounts due under this Section 9.8.3 shall be payable by
wire transfer of immediately available funds to an MBX bank account in
accordance with instructions to be provided to the ADM Sub by MBX. Any
amounts that are not paid when due hereunder shall accrue interest at the
rate of four percent (4%) per annum in excess of the one year London
Interbank Offered Rate (LIBOR) then most recently published in THE WALL
STREET JOURNAL. The right to demand and receive the interest provided
hereunder shall be in addition to any other rights available to MBX hereunder
or at law.
ARTICLE 10
TERM AND TERMINATION
10.1. TERM. This Agreement shall commence as of the Effective Date and
shall expire upon the first to occur of: (i) the expiration or termination of
the last Valid Claim within the Patent Rights granted by the United States
Patent and Trademark Office and claiming MBX
* CONFIDENTIAL TREATMENT REQUESTED
43
Technology or Alliance Technology and (ii) the exercise of the JV Option by ADM
Sub and the Parties have taken all necessary actions to implement the Joint
Venture pursuant to Article 9, unless terminated in accordance with this Article
10 prior to such date (the "Term").
10.2 TERMINATION. This Agreement may be terminated at any time by either
Party as follows:
10.2.1 TERMINATION FOR BREACH. In the event that MBX materially
defaults on any material obligation hereunder or under any other Commercial
Alliance Agreement (including an "Adverse Act" as defined in the Operating
Agreement), or materially breaches any material term herein or therein to be
performed or observed, then ADM Sub shall have the right to terminate this
Agreement: (a) by giving thirty (30) days prior written notice to MBX in the
case of a breach of any payment term, and (b) by giving ninety (90) days prior
written notice to MBX in the case of any other breach; provided, however, that
in the case of a default or breach capable of being cured, if MBX shall cure the
said default or breach within such notice period after said notice shall have
been given, then said notice shall not be effective and the Agreement shall
continue in full force and effect. In the event that ADM Sub materially defaults
on any material obligation hereunder or under any other Commercial Alliance
Agreement (including an "Adverse Act" as defined in the Operating Agreement), or
materially breaches any material term herein or therein to be performed or
observed, then MBX shall have the right to terminate this Agreement: (a) by
giving thirty (30) days prior written notice to ADM Sub in the case of a breach
of any payment term, and (b) by giving ninety (90) days prior written notice to
ADM Sub in the case of any other breach; provided, however, that in the case of
a default or breach capable of being cured, if ADM Sub shall cure the said
default or breach within such notice period after said notice shall have been
given, then said notice shall not be effective and the Agreement shall continue
in full force and effect. In the event that MBX commits a breach of this
Agreement by granting a license under the MBX Technology to a Third Party in
violation of the terms of the license granted to ADM Sub under Section 7.2.1 or
to the Joint Sales Company under Section 7.2.2, and such breach remains uncured
for sixty (60) days following notice from ADM Sub, then such breach (a "Section
7 Breach") shall trigger certain additional rights for ADM Sub as set forth in
Section 10.5.
10.2.2 ADM SUB TERMINATION DUE TO CHANGED CIRCUMSTANCES. In the event
that, based upon a change in circumstances beyond the reasonable control of ADM
and ADM Sub, the projected financial return from the Commercial Alliance is
deemed by ADM Sub to be either too uncertain or inadequate, ADM Sub shall have
the right to terminate this Agreement upon thirty (30) days prior written notice
to MBX. The Parties acknowledge that, without limitation, a Third Party
challenge to the validity or enforceability of the MBX Patent Rights or MBX
Technology, the emergence of a third party's superior technology, an increase in
the projected cost required to Construct the ADM Sub Manufacturing Facility or
to manufacture PHA Material and/or PHA Formulations, a decrease in the projected
sales volume of PHA Material and/or PHA Formulations, and a decrease in the
projected sales price of PHA Material and/or PHA Formulations are all examples
of a change in circumstances beyond the reasonable control of ADM and ADM Sub.
10.2.3 MUTUAL AGREEMENT. MBX and ADM Sub may, at any time during the
Term, terminate this Agreement by written agreement with such consequences as
they shall provide therein.
* CONFIDENTIAL TREATMENT REQUESTED
44
10.2.4 MBX TERMINATION DUE TO CHANGED CIRCUMSTANCES. Commencing upon
ADM Sub declining the JV Option and continuing unless and until such time as the
JV Option resets pursuant to Section 9.8.5, in the event that based upon a
change in circumstances during this period beyond the reasonable control of MBX,
the projected financial return from the Commercial Alliance is deemed by MBX to
be either too uncertain or inadequate, MBX shall have the right to terminate
this Agreement upon thirty (30) days prior written notice to ADM Sub.
10.3 GENERAL CONSEQUENCES OF TERMINATION OR EXPIRATION; GRANT OF LICENSES.
10.3.1 CONSEQUENCES OF TERMINATION OR EXPIRATION. Upon the termination
or expiration of the Agreement, the following shall occur:
(a) MBX shall immediately cease using, and shall promptly
return to ADM Sub, all ADM Technology, except to the
extent MBX has a license to practice such Technology
under this Article 10;
(b) ADM Sub shall immediately cease using, and shall promptly
return to MBX all MBX Technology, except to the extent
ADM Sub has a license to practice such Technology under
this Article 10;
(c) the Joint Sales Company shall immediately cease using all
MBX Technology and all ADM Technology, and shall promptly
return to MBX all MBX Technology and to ADM Sub all ADM
Technology;
(d) the license granted to MBX pursuant to Section 7.3.1
shall immediately terminate;
(e) the license granted to ADM Sub pursuant to Section 7.2.1
shall immediately terminate;
(f) the licenses granted to the Joint Sales Company pursuant
to Section 7.2.2 and Section 7.3.2 shall immediately
terminate;
(g) each Party shall promptly pay to the other any amounts
due and payable hereunder as of the effective date of
termination or expiration;
(h) subject to those rights and obligations of the Parties
that survive termination or expiration by their terms or
pursuant to Section 10.6, this Agreement shall terminate
and be of no further force or effect; and
(i) the other Commercial Alliance Agreements shall terminate
with the effects set forth therein, including without
limitation, that the Joint Sales Company shall be
dissolved and wind up its operations in accordance with
the Operating Agreement.
* CONFIDENTIAL TREATMENT REQUESTED
45
10.4 SPECIFIC CONSEQUENCES OF TERMINATION BY MBX.
10.4.1. TERMINATION DUE TO ADM SUB BREACH. Upon a termination of this
Agreement by MBX pursuant to Section 10.2.1, the following shall occur as of the
effective date of termination.
(a) MANUFACTURING OBLIGATION. In the event the effective date
of termination occurred during the Construction Phase, ADM Sub shall provide
fermentation services to produce PHA Cell Paste in up to * fermentors for a
period of * at the Manufacturing Cost (as such term is defined in the ADM Sub
Manufacturing Agreement), plus depreciation on assets to the extent used to
perform such manufacturing calculated on a ten-year straight-line basis, but
otherwise pursuant to the terms and conditions set forth in the ADM Sub
Manufacturing Agreement. In the event the effective date of termination
occurred during the Commercial Phase, ADM Sub would for a period of three and
one-half years, at MBX's election, to be exercised once at the time MBX
places it first purchase order, (i) provide fermentation services to produce
PHA Cell Paste in up to * fermentors at the Manufacturing Cost, plus
depreciation on assets to the extent used to perform such manufacturing
calculated on a ten-year straight-line basis; or (ii) manufacture PHA
Material in the ADM Sub Manufacturing Facility (subject to the limitations of
such facility as of the time of termination) at Manufacturing Cost, plus
depreciation on assets to the extent used to perform such manufacturing
calculated on a ten-year straight-line basis, in either case, otherwise
pursuant to the terms and conditions set forth in the ADM Sub Manufacturing
Agreement.
(b) GRANT OF LICENSES. Upon the effective date of termination
by MBX, ADM Sub hereby grants to MBX the following licenses: (i) an
exclusive, fully sublicenseable, *, perpetual, irrevocable license, under all
intellectual property rights Controlled by ADM Sub and claiming or covering
Alliance Technology to research, develop, make, have made, use, offer for
sale, sell, have sold and import PHA-Related Material, produced by any means
or methods, for any and all uses and (ii) a non-exclusive, fully
sublicenseable, *, perpetual, irrevocable license, under all intellectual
property rights Controlled by ADM Sub and claiming or covering ADM Sub
Background Technology to research, develop, make, have made, use, offer for
sale, sell, have sold and import PHA-Related Material, produced by any means
or methods, for any and all uses.
10.4.2 TERMINATION DUE TO CHANGED CIRCUMSTANCES.
(a) GRANT OF LICENSE. Upon a termination of this Agreement by MBX
pursuant to Section 10.2.4, MBX hereby grants to ADM Sub a royalty-bearing,
non-exclusive, perpetual, irrevocable license, with Limited Sublicense Right,
under MBX's right, title and interest in and to the MBX Technology and the MBX
Patent Rights, solely to make, have made, use, offer for sale, sell, have sold
and import PHA Material and PHA Formulations for use in the Field worldwide. The
foregoing license shall be limited such that ADM Sub shall only be permitted to
make and have made the amount of PHA Material (including PHA Material contained
within PHA Formulations) permitted under the then-current license under Section
7.2.2 during each consecutive period of twelve (12) months during the term of
the license.
* CONFIDENTIAL TREATMENT REQUESTED
46
During the Royalty Term, ADM Sub will pay to MBX a royalty equal to: (i) * on
all sales or other conveyances of PHA Patented Material (including, without
limitation, PHA Material that is contained within PHA Formulations), on a one
hundred percent (100%) purity basis; and (ii) * on all sales or other
conveyances of PHA Know-How Material (including, without limitation, PHA
Material that is contained within PHA Formulations), on a one hundred percent
(100%) purity basis. During the Supplemental Royalty Term, ADM Sub will pay
to MBX a royalty equal to * on all sales or other conveyances of PHA
Supplemental Know-How Material (including, without limitation, PHA Material
that is contained within PHA Formulations), on a one hundred percent (100%)
purity basis. In the event more than one royalty applies to the manufacture,
use, sale or importation of a particular product, then the highest royalty
shall be the only applicable royalty hereunder. Provided, however, that any
such royalty shall be subject to Third Party IP Royalty Offset. The royalty
shall be payable within thirty (30) days following the end of each Calendar
Quarter during the term of the applicable license for sales or other
conveyances that occur during such Calendar Quarter. Amounts due under this
Section 10.4.2 shall be payable by wire transfer of immediately available
funds to an MBX bank account in accordance with instructions to be provided
to the ADM Sub by MBX. Any amounts that are not paid when due hereunder shall
accrue interest at the rate of four percent (4%) per annum in excess of the
one year London Interbank Offered Rate (LIBOR) then most recently published
in THE WALL STREET JOURNAL. The right to demand and receive the interest
provided hereunder shall be in addition to any other rights available to MBX
hereunder or at law.
10.5 SPECIFIC CONSEQUENCES OF TERMINATION BY ADM SUB.
10.5.1 TERMINATION DUE TO CHANGED CIRCUMSTANCES. Upon a termination of
this Agreement by ADM Sub pursuant to Section 10.2.2, the following shall occur
as of the effective date of termination.
(a) MANUFACTURING OBLIGATION. In the event the effective date
of termination occurred during the Construction Phase, ADM Sub shall provide
fermentation services to produce PHA Cell Paste in up to * fermentors for a
period of * at the Manufacturing Cost, plus depreciation on assets in the ADM
Sub Manufacturing Facility that are not allocated to other uses calculated on
a ten-year straight-line basis, *, but otherwise pursuant to the terms and
conditions of the ADM Sub Manufacturing Agreement. In the event the effective
date of termination occurred during the Commercial Phase, ADM Sub would for a
period of three and one-half (3.5) years, at MBX's election, to be exercised
once at the time MBX places it first purchase order, (i) provide fermentation
services to produce PHA Cell Paste in up to * fermentors at the Manufacturing
Cost, plus depreciation on assets in the ADM Sub Manufacturing Facility that
are not allocated to other uses calculated on a ten-year straight-line basis,
*; or (ii) manufacture PHA Material in the ADM Sub Manufacturing Facility
(subject to the limitations of such facility as of the time of termination)
at Manufacturing Cost, plus depreciation on assets in the ADM Sub
Manufacturing Facility that are not allocated to other uses calculated on a
ten-year straight-line basis, *, in either case, otherwise under the terms
set forth in the ADM Sub Manufacturing Agreement.
* CONFIDENTIAL TREATMENT REQUESTED
47
(b) GRANT OF LICENSE. Upon the effective date of termination
by ADM Sub, ADM Sub hereby grants to MBX a fully sublicenseable, *,
perpetual, irrevocable license, under all intellectual property rights
Controlled by ADM Sub and claiming or covering Alliance Technology to
research, develop, make, have made, use, offer for sale, sell, have sold and
import PHA-Related Material, produced by any means or methods, for any and
all uses. Such license shall be exclusive in the field of PHA-Related
Material for a period of ten (10) years from the date of grant, and
non-exclusive thereafter.
10.5.2 TERMINATION DUE TO MBX BREACH.
(a) Upon the effective date of termination by ADM Sub
for a Section 7 Breach, MBX hereby grants to ADM Sub a non-exclusive, *,
perpetual, irrevocable license, with Limited Sublicense Right, under MBX's
right, title and interest in and to the MBX Technology, the MBX Patent Rights
and the Joint Alliance Technology, solely to make, have made, use, offer for
sale, sell, have sold and import PHA Material and PHA Formulations for use in
the Field worldwide, without any limitation on production volume.
(b) Upon the effective date of termination by ADM Sub
under Section 10.2.1 for any reason other than a Section 7 Breach, MBX hereby
grants to ADM Sub a royalty-bearing, non-exclusive, perpetual, irrevocable
license, with Limited Sublicense Right, under MBX's right, title and interest
in and to the MBX Technology and the MBX Patent Rights, solely to make, have
made, use, offer for sale, sell, have sold and import PHA Material and PHA
Formulations for use in the Field worldwide. The foregoing license shall be
limited such that ADM Sub shall only be permitted to make and have made a
maximum of * (or such greater amount if the then-current license under
Section 7.2.2 has been expanded) of PHA Material (including PHA Material
contained within PHA Formulations) during each consecutive period of twelve
(12) months during the term of the license. During the Royalty Term, ADM Sub
will pay to MBX a royalty equal to: (i) * on all sales or other conveyances
of PHA Patented Material (including, without limitation, PHA Material that is
contained within PHA Formulations), on a one hundred percent (100%) purity
basis; and (ii) * on all sales or other conveyances of PHA Know-How Material
(including, without limitation, PHA Material that is contained within PHA
Formulations), on a one hundred percent (100%) purity basis. During the
Supplemental Royalty Term, ADM Sub will pay to MBX a royalty equal to * on
all sales or other conveyances of PHA Supplemental Know-How Material
(including, without limitation, PHA Material that is contained within PHA
Formulations), on a one hundred percent (100%) purity basis. In the event
more than one royalty applies to the manufacture, use, sale or importation of
a particular product, then the highest royalty shall be the only applicable
royalty hereunder. Provided, however, that any such royalty shall be subject
to Third Party IP Royalty Offset. The royalty shall be payable within thirty
(30) days following the end of each Calendar Quarter during the term of the
applicable license for sales or other conveyances that occur during such
Calendar Quarter. Amounts due under this Section 10.5.2 shall be payable by
wire transfer of immediately available funds to an MBX bank account in
accordance with instructions to be provided to the ADM Sub by MBX. Any
amounts that are not paid when due hereunder shall accrue interest at the
rate of four percent (4%) per annum in excess of the one year London
Interbank Offered Rate (LIBOR) then most recently published in THE WALL STREET
* CONFIDENTIAL TREATMENT REQUESTED
48
JOURNAL. The right to demand and receive the interest provided hereunder shall
be in addition to any other rights available to MBX hereunder or at law.
10.6 RIGHTS UPON BANKRUPTCY.
(a) In the event ADM Sub files for protection under Chapter 11
of the U.S. Bankruptcy Code, and ADM Sub, directly or indirectly in connection
with such proceedings, rejects this Agreement as an executory contract (or on
similar grounds), then ADM Sub shall and hereby does agree to perform the
following obligations:
(i) In the event the effective date of rejection occurred
during the Construction Phase, ADM Sub shall provide fermentation services to
produce PHA Cell Paste in up to * fermentors for a period of *
at the Manufacturing Cost (as such term is defined in the ADM Sub
Manufacturing Agreement), plus depreciation on assets to the extent used to
perform such manufacturing calculated on a ten-year straight-line basis, but
otherwise pursuant to the terms and conditions set forth in the ADM Sub
Manufacturing Agreement. In the event the effective date of termination
occurred during the Commercial Phase, ADM Sub would for a period of three and
one-half (3.5) years, at MBX's election, to be exercised once at the time MBX
places it first purchase order, (i) provide fermentation services to produce
PHA Cell Paste in up to * fermentors at the Manufacturing Cost, plus
depreciation on assets to the extent used to perform such manufacturing
calculated on a ten-year straight-line basis; or (ii) manufacture PHA
Material in the ADM Sub Manufacturing Facility (subject to the limitations of
such facility as of the time of termination) at Manufacturing Cost, plus
depreciation on assets to the extent used to perform such manufacturing
calculated on a ten-year straight-line basis, in either case, otherwise
pursuant to the terms and conditions set forth in the ADM Sub Manufacturing
Agreement.
(ii) Upon the effective date of rejection by MBX, ADM Sub
hereby grants to MBX the following licenses: (i) an exclusive, fully
sublicenseable, *, perpetual, irrevocable license, under all intellectual
property rights Controlled by ADM Sub and claiming or covering Alliance
Technology to research, develop, make, have made, use, offer for sale, sell,
have sold and import PHA-Related Material, produced by any means or methods,
for any and all uses and (ii) a non-exclusive, fully sublicenseable, fully
paid-up, royalty-free, perpetual, irrevocable license, under all intellectual
property rights Controlled by ADM Sub and claiming or covering ADM Sub
Background Technology to research, develop, make, have made, use, offer for
sale, sell, have sold and import PHA-Related Material, produced by any means
or methods, for any and all uses.
(b) In the event MBX files for protection under Chapter 11 of
the U.S. Bankruptcy Code, and MBX, directly or indirectly in connection with
such proceedings, rejects this Agreement as an executory contract (or on similar
grounds), then, effective as of the effective date of such rejection, MBX shall
and hereby does grant to ADM Sub a royalty-bearing, non-exclusive, perpetual,
irrevocable license, with Limited Sublicense Right, under MBX's right, title and
interest in and to the MBX Technology and the MBX Patent Rights, solely to make,
have made, use, offer for sale, sell, have sold and import PHA Material and PHA
Formulations for use in the Field worldwide. The foregoing license shall be
limited such that
* CONFIDENTIAL TREATMENT REQUESTED
49
ADM Sub shall only be permitted to make and have made a maximum of one
hundred fifty thousand (150,000) tons (or such greater amount if the
then-current license under Section 7.2.2 has been expanded) of PHA Material
(including PHA Material contained within PHA Formulations) during each
consecutive period of twelve (12) months during the term of the license.
During the Royalty Term, ADM Sub will pay to MBX a royalty equal to: (i) * on
all sales or other conveyances of PHA Patented Material (including, without
limitation, PHA Material that is contained within PHA Formulations), on a one
hundred percent (100%) purity basis; and (ii) * on all sales or other
conveyances of PHA Know-How Material (including, without limitation, PHA
Material that is contained within PHA Formulations), on a one hundred percent
(100%) purity basis. During the Supplemental Royalty Term, ADM Sub will pay
to MBX a royalty equal to * on all sales or other conveyances of PHA
Supplemental Know-How Material (including, without limitation, PHA Material
that is contained within PHA Formulations), on a one hundred percent (100%)
purity basis. In the event more than one royalty applies to the manufacture,
use, sale or importation of a particular product, then the highest royalty
shall be the only applicable royalty hereunder. Provided, however, that any
such royalty shall be subject to Third Party IP Royalty Offset. The royalty
shall be payable within thirty (30) days following the end of each Calendar
Quarter during the term of the applicable license for sales or other
conveyances that occur during such Calendar Quarter. Amounts due under this
Section 10.5.2 shall be payable by wire transfer of immediately available
funds to an MBX bank account in accordance with instructions to be provided
to the ADM Sub by MBX. Any amounts that are not paid when due hereunder shall
accrue interest at the rate of four percent (4%) per annum in excess of the
one year London Interbank Offered Rate (LIBOR) then most recently published
in THE WALL STREET JOURNAL. The right to demand and receive the interest
provided hereunder shall be in addition to any other rights available to MBX
hereunder or at law.
10.7 SURVIVING PROVISIONS; RESERVATION OF RIGHTS. Termination or expiration
of this Agreement for any reason, and the implementation or exercise of the
consequences of termination as set forth in Sections 10.3, 10.4, 10.5, or 10.6
shall be without prejudice to any rights and obligations of the Parties that
have accrued as of the Effective Date of termination and:
(a) the rights and obligations of the Parties provided in
Articles 1, 8, 11, 12, 13 and 14, Sections 7.1, 7.5, 7.6, 9.8.4, 10.3, 10.4,
10.5, or 10.6 and 10.7 and any other provision which would reasonably be
expected to survive termination in accordance with the terms of this Agreement,
all of which shall survive such termination; and
(b) any other rights or remedies provided at law or equity which
either Party may otherwise have against the other.
ARTICLE 11
PATENT MATTERS
11.1 PATENT COMMITTEE. ADM Sub and MBX shall each appoint two (2)
representatives to serve on a patent committee (the "Patent Committee") to
administer and coordinate certain activities described in this Article 11. ADM
Sub and MBX may replace their
* CONFIDENTIAL TREATMENT REQUESTED
50
respective representatives on the Patent Committee from time to time during the
Term, at their sole discretion, by notice to the other Party.
11.1.1 MEETINGS. The Patent Committee shall meet as frequently and at
such times as its members shall determine.
11.1.2 MINUTES. A secretary for the Patent Committee shall be
appointed by its members to keep accurate minutes of the deliberations of the
Patent Committee recording all proposed decisions and all actions recommended or
taken. Copies of such minutes shall be made available to the Steering Committee
as it shall request.
11.1.3 EXPENSES. MBX and ADM Sub shall each bear all expenses of their
respective representatives to the Patent Committee related to their
participation on the Patent Committee and attendance at Patent Committee
meetings.
11.1.4 REPORTS. The Patent Committee shall produce such reports for
the Steering Committee as the Steering Committee shall request from
time-to-time.
11.2 PATENT FILING, PROSECUTION AND MAINTENANCE.
11.2.1 ADM SUB PATENT RIGHTS. ADM Sub shall have the sole right and
authority to file, prosecute and maintain the ADM Sub Patent Rights during the
Term at its own expense and using patent counsel of its own choosing. ADM Sub
represents that it will continue to file, prosecute and maintain the ADM Sub
Patent Rights in accordance with reasonable commercial practices during the
Term.
11.2.2 MBX PATENT RIGHTS. MBX shall have the sole right and authority
to file, prosecute and maintain the MBX Patent Rights during the Term at its own
expense and using patent counsel of its own choosing. MBX represents that it
will continue to file, prosecute and maintain the MBX Patent Rights in
accordance with reasonable commercial practices during the Term.
11.2.3 JOINT ALLIANCE TECHNOLOGY. ADM Sub and MBX, acting through the
Patent Committee, will file, prosecute and maintain Patent Rights claiming Joint
Alliance Technology in accordance with this Section 11.2.3 with the primary goal
of maximizing the commercial potential of the PHA Material and PHA Formulations
in a commercially reasonable manner. During the Term, the cost of such
activities shall be borne by the Joint Sales Company, and thereafter it shall be
shared equally by ADM Sub and MBX, except as otherwise set forth herein. ADM Sub
and MBX, acting through the Patent Committee and patent attorneys or agents
agreed upon by the Patent Committee, shall prepare, file, prosecute and maintain
all Patent Rights relating to Joint Alliance Technology. If either ADM Sub or
MBX decides to withdraw from the continued prosecution of any Patent Rights on
Joint Alliance Technology, such Party shall so inform the other Party at least
thirty (30) days prior to the effective date of such decision and the other
Party shall have the right, through patent attorneys or agents of its choice, to
assume the cost and responsibility for the continued prosecution of such Patent
Rights. Promptly after the effective date of the decision to withdraw, the
withdrawing Party shall assign its right, title and interest in and to such
Patent Rights to the other Party. Notwithstanding such
* CONFIDENTIAL TREATMENT REQUESTED
51
assignment, such Patent Rights will continue to be subject to the licenses
granted herein to the extent applicable.
11.3 INFRINGEMENT AND DEFENSE.
11.3.1 ACTUAL OR THREATENED INFRINGEMENT. In the event either ADM Sub
or MBX becomes aware of any possible infringement or unauthorized possession,
knowledge or use of any Technology, which is the subject matter of this
Agreement, in the Field (collectively, an "Infringement"), that Party shall
promptly notify the other Party and provide it with available details. ADM Sub
hereby reserves the exclusive right (but not obligation) to take whatever action
it deems appropriate to prevent or terminate any third party infringement of ADM
Sub Patent Rights claiming the ADM Sub Technology. MBX hereby reserves the
exclusive right (but not obligation) to take whatever action it deems
appropriate to prevent or terminate any third party infringement of MBX Patent
Rights claiming the MBX Technology. Notwithstanding the foregoing, during the
term, if either ADM Sub or MBX (the "Defending Party") decides to take any
action to prevent or terminate any Third Party infringement of its Patent Rights
within the Field, it shall first give notice to the other Party (the "Neutral
Party") and, if the Neutral Party can produce a written legal opinion of an
independent patent attorney concluding that there is a reasonable likelihood
that such Third Party could, in good faith, in connection with such action,
allege that a claim or claims within Patent Rights Controlled by the Neutral
Party are invalid or unenforceable, then the Defending Party shall not take such
action against such Third Party without the prior, written consent of the
Neutral Party. ADM Sub and MBX, sharing expenses equally and acting through
patent attorneys or agents agreed upon by them, shall take whatever action they
shall agree upon to prevent or terminate any third party infringement of Patent
Rights relating to Joint Alliance Technology; provided, however, that if the
Parties cannot agree, MBX shall have the right to make the final determination
with respect to third party infringement within the Field. In all cases, all
decisions by a Party pursuant to this Section 11.2 shall be made in good faith
and in the best interest of the Commercial Alliance.
11.3.2 DEFENSE OF CLAIMS. In the event that any action, suit or
proceeding is brought against any Party based on its actions in performance of
the Commercial Alliance and alleging the infringement of the Technology or
intellectual property rights of a Third Party, the Parties shall cooperate with
each other in the defense of any such suit, action or proceeding. The Parties
will give each other prompt written notice of the commencement of any such suit,
action or proceeding or claim of infringement and will furnish each other with a
copy of each communication relating to the alleged infringement. Each Party
shall cooperate in the defense of such actions. If as a consequence of such
action, suit or proceeding by a Third Party, a prohibition, restriction or other
condition is imposed upon one or both of the Parties, the Parties shall examine
and discuss in good faith the consequences of such prohibition or restriction or
other conditions on this Agreement and on possible modifications hereto.
ARTICLE 12
INDEMNIFICATION
12.1 INDEMNIFICATION BY MBX. During the course of, and upon and after
termination of this Agreement for any reason whatsoever, MBX and its Affiliates
shall indemnify, defend and hold ADM Sub, its Affiliates and their respective
directors, officers and employees (collectively, "ADM Sub Indemnitees") harmless
against any claims (including without
* CONFIDENTIAL TREATMENT REQUESTED
52
limitation claims for product liability, personal injury or death, or
property damage), liability, damage, loss, cost or expense (including
reasonable attorneys' fees) incurred by any of them, to the extent resulting
from: *.
12.2 INDEMNIFICATION BY ADM SUB. During the course of, and upon and
after termination of this Agreement for any reason whatsoever, ADM Sub and
its Affiliates shall, jointly and severally, indemnify, defend and hold MBX,
its Affiliates and their respective directors, officers and employees
(collectively, "MBX Indemnitees") harmless against any claims (including
without limitation claims for product liability, personal injury or death, or
property damage), liability, damage, loss, cost or expense (including
reasonable attorneys' fees) incurred by any of them, to the extent resulting
from: *.
12.3 CONDITIONS TO INDEMNIFICATION. A Party seeking indemnification under
this Article 10 (the "Indemnified Party") shall give prompt notice of the claim
to the other Party (the "Indemnifying Party") and, provided that the
Indemnifying Party is not contesting the indemnity obligation, shall permit the
Indemnifying Party to control any litigation relating to such claim and
disposition of any such claim, provided that the Indemnifying Party shall act
reasonably and in good faith with respect to all matters relating to the
settlement or disposition of any claim as the settlement or disposition relates
to Parties being indemnified under this Article 10 and provided, further, that
the Indemnifying Party shall not settle or otherwise resolve any claim without
prior notice to the Indemnified Party and the consent of the Indemnified Party
(which consent shall not be unreasonably withheld, conditioned or delayed) if
such settlement involves anything other than the payment of money by the
Indemnifying Party. The Indemnified Party shall cooperate with the Indemnifying
Party in its defense of any claim for which indemnification is sought under this
Article 12 and shall have the right to be present in person or through counsel
at all legal proceedings giving rise to the right of indemnification.
12.4 ATTRIBUTION. For purposes of this Article 12, except as provided
below: (i) none of the Joint Sales Company, MBX or MBX's Affiliates (or their
respective employees) shall be deemed to be an employee, agent or representative
of ADM or ADM Sub, (ii) none of the Joint Sales Company, ADM Sub or ADM Sub's
Affiliates (or their respective employees) shall be deemed to be an employee,
agent or representative of MBX, (iii) none of MBX or ADM Sub or their respective
Affiliates (or their respective employees) shall be deemed to be an employee,
agent or representative of the Joint Sales Company; and, notwithstanding (i),
(ii) and (iii) above, an employee of ADM, ADM Sub or MBX providing services to
the Joint Sales Company on substantially a full-time basis, pursuant either to
the ADM Sub Services Agreement or the MBX
* CONFIDENTIAL TREATMENT REQUESTED
53
Services Agreement, shall be deemed to be an agent or representative of the
Joint Sales Company.
ARTICLE 13
CONFIDENTIALITY
13.1 CONFIDENTIALITY OBLIGATIONS. MBX, ADM Sub and the Joint Sales Company
each recognize that the other Party's Confidential Information and Proprietary
Materials constitute highly valuable and proprietary confidential information.
Each of MBX, ADM Sub and the Joint Sales Company agrees that it will keep
confidential, and will cause its employees, consultants, agents and Affiliates
to keep confidential, all Confidential Information and Proprietary Materials of
the other Parties. MBX, ADM Sub, the Joint Sales Company and their respective
employees, consultants, agents or Affiliates shall not use Confidential
Information or Proprietary Materials of any other Party for any purpose
whatsoever except as expressly permitted in this Agreement. MBX and Joint Sales
Company acknowledge that the corn costs that constitute a portion of the
Manufacturing Cost shall constitute ADM Sub Confidential Information.
13.2 LIMITED DISCLOSURE. MBX, ADM Sub and the Joint Sales Company each
agree that any disclosure of another Party's Confidential Information or any
transfer of another Party's Proprietary Materials to any employee, consultants
or agents of MBX, ADM Sub, or the Joint Sales Company or any of their respective
Affiliates, shall be made only if and to the extent necessary to carry out its
rights and responsibilities under this Agreement and shall be limited to the
maximum extent possible consistent with such rights and responsibilities. MBX,
ADM Sub and the Joint Sales Company each further agree that any disclosure of
another Party's Confidential Information or any transfer of another Party's
Proprietary Materials as permitted by the preceding sentence shall only be made
to such of the recipient Party's employees, consultants, agents and Affiliates
who are bound by written confidentiality obligations to maintain the
confidentiality thereof and not to use such Confidential Information or
Proprietary Materials except as expressly permitted by this Agreement. MBX, ADM
Sub and the Joint Sales Company each further agree not to disclose or transfer
the other Party's Confidential Information or Proprietary Materials to any third
parties under any circumstance without the prior written approval from the
relevant other Party (such approval not to be unreasonably withheld), except as
otherwise required by law, or except as otherwise expressly permitted by this
Agreement. Each Party shall take such action, and shall cause its Affiliates to
take such action, to preserve the confidentiality of the other Party's
Confidential Information and Proprietary Materials as it would customarily take
to preserve the confidentiality of its own Confidential Information and
Proprietary Materials, and in no event, less than reasonable care. Each Party,
upon the request of another Party, will return all of such other Party's
Proprietary Information and Confidential Materials disclosed or transferred to
it pursuant to this Agreement which does not constitute Joint Program
Technology, including all copies and extracts of documents and all
manifestations in whatever form, within two (2) months of the request or, within
two (2) weeks of the termination or expiration of this Agreement; provided,
however, that a Party may retain Confidential Information and Proprietary
Materials of the other Party relating to any license which survives such
termination and one copy of all other Confidential
* CONFIDENTIAL TREATMENT REQUESTED
54
Information may be retained in its legal files solely for the purpose of
monitoring compliance with this Article 13.
13.3 EMPLOYEES AND CONSULTANTS. MBX, ADM Sub, and the Joint Sales Company
each hereby represent that all of its employees, consultants and agents to such
Party or its Affiliates, participating in the activities of the Commercial
Alliance who shall have access to the Confidential Information or Proprietary
Materials of the other Party are bound by written obligations to maintain such
information in confidence and not to use such information except as expressly
permitted herein and to assign any inventions or discoveries made in connection
with such activities to MBX, ADM Sub or the Joint Sales Company as applicable.
Each Party agrees to be held responsible for the confidentiality obligations to
which its employees, consultants and agents (and those of its Affiliates) are
obligated.
13.4 PUBLICITY. No Party may publicly disclose the existence or terms of
this Agreement without the prior written consent of the other Parties; provided,
however, that any Party may make such a disclosure: (a) to the extent required
by law (including the filing of a redacted copy of the Agreement as an exhibit
to a legally required filing) or by the requirements of any nationally
recognized securities exchange, quotation system or over-the-counter market on
which such Party has its securities listed or traded, and (b) to any investors
(including without limitation, entities interested in acquiring the stock or
assets of such Party or merging with or into such Party), prospective investors,
lenders, other potential financing sources, prospective customers and
prospective strategic marketing partners who are obligated to keep such
information confidential. In the event that such disclosure is required as
aforesaid, the disclosing Party shall make reasonable efforts to provide the
other Party with reasonable notice prior to such disclosure and to coordinate
with the other Party with respect to the wording and timing of any such
disclosure. The Parties will from time to time mutually agree on the wording of
press releases publicizing the Commercial Alliance. Once such press release or
any other written statement is approved for disclosure by both Parties, either
Party may make subsequent public disclosure of the contents of such statement,
but no more than the contents of such statement, without the further approval of
the other Party.
13.6 TERM. The obligations and restrictions set forth in this Article 13
shall survive the termination or expiration of this Agreement for a period of
twenty (20) years.
ARTICLE 14
MISCELLANEOUS
14.1 NO ASSIGNMENT; CHANGE OF CONTROL. No Party shall sell, transfer or
permit any transfer of, in whole or in part, this Agreement without prior
written consent of the other Parties, which consent may be withheld for any
reason. The merger or acquisition of MBX by, with or into a third party shall
not be deemed to effect an assignment of this Agreement by MBX and this
Agreement shall be binding upon and inure to the benefit of such third party, or
new entity, in the case of a merger or similar transaction in which MBX does not
continue as the same corporate entity and shall continue to bind and inure to
the benefit of MBX in the case of an acquisition or similar transaction in which
MBX survives as the same corporate entity. ADM Sub shall not enter into any
merger, acquisition or similar transaction without the prior, written consent of
MBX. Nothing herein shall restrict ADM from entering into a merger or
acquisition of ADM by, with or into a Third Party and no such transaction shall
be deemed to effect an
* CONFIDENTIAL TREATMENT REQUESTED
55
assignment of this Agreement by ADM Sub and this Agreement shall be binding upon
and inure to the benefit of such Third Party, or new entity, in the case of a
merger or similar transaction in which ADM does not continue as the same
corporate entity and shall continue to bind and inure to the benefit of ADM Sub
in the case of an acquisition or similar transaction in which ADM survives as a
the same corporate entity. Any purported assignment or transfer in violation of
this provision shall be null and void*.
14.2 SUCCESSORS. In the event of a permitted assignment, this Agreement
shall be binding upon, and inure to the benefit of, all the Parties and their
respective successors and legal assigns.
14.3 DISPUTE RESOLUTION. Any dispute or claim arising out of or relating to
this Agreement or any other Commercial Alliance Agreement, or a breach hereof or
thereof, shall be resolved in accordance with this Section 14.3. Except with
respect to any dispute as to whether ADM Sub properly exercised its rights to
terminate pursuant to Section 10.2.2, during the course of resolving any such
dispute, the Parties shall continue to perform their obligations hereunder and
under the other Commercial Alliance Agreements (including by making payment of
any undisputed portion of any payment obligation that is the subject of a
dispute hereunder or thereunder). Notwithstanding the foregoing, the obligation
of the Parties to continue to perform
* CONFIDENTIAL TREATMENT REQUESTED
56
hereunder and under the other Commercial Alliance Agreements during the
resolution of disputes shall not require a Party to perform obligations (other
any undisputed portion of any payment obligation) where such performance is
rendered impossible, or would otherwise not maintain or increase the likelihood
that the Parties will achieve the purpose and goal of the Commercial Alliance as
set forth in Section 2.1, because of circumstances created by or directly
related to the dispute itself.
14.3.1 GOOD FAITH CONSULTATION. In the event of a dispute between the
Parties, the Parties shall attempt in good faith to settle such dispute through
mutual consultation. If, after such consultation, the dispute cannot be
resolved, the Parties shall wait for not less than sixty (60) days after the
dispute arises and at the end of such period meet for a second consultation. If
the dispute is not resolved after the second consultation, the matter shall be
referred to the President of ADM Sub and the Chief Executive Officer of MBX
(together, the "Senior Executives") for resolution in accordance with Section
14.4.2.
14.3.2 SENIOR EXECUTIVES. The Senior Executives shall diligently
attempt to resolve the dispute, including, if they deem it necessary, meeting
directly in order to provide full consideration of the dispute. If the Senior
Executives are unable to resolve the dispute within sixty (60) additional days
after the second consultation then the dispute shall be referred to arbitration.
14.3.3 ARBITRATION. Any arbitration to be conducted hereunder shall be
brought and conducted in accordance with the following provisions:
(1) The arbitration shall be held in Chicago, Illinois if
initiated by MBX and in Boston, Massachusetts if initiated
by ADM Sub.
(2) The arbitration shall be conducted by three (3) arbitrators
in accordance with the commercial arbitration rules of the
American Arbitration Association. Each of ADM Sub and MBX,
upon notice to the other Party, shall appoint one
arbitrator. The two arbitrators appointed by such Parties
shall appoint a third arbitrator. The arbitrators shall be
lawyers who will have substantial patent law or patent
litigation experience and substantial commercial law or
commercial litigation experience. The arbitrators shall be
instructed to follow federal precedents, laws and
evidentiary rules that would be applicable to litigation in
the Federal Court of the jurisdiction in which the
arbitration is held, except for those issues which involve
patent issues, in which case the arbitrators shall be
instructed to follow federal precedents, laws and
evidentiary rules that would be applicable to litigation in
the Federal Circuit Court of Appeals.
(3) The arbitration shall be conducted in English, and all
written submissions shall be in English.
* CONFIDENTIAL TREATMENT REQUESTED
57
(4) ADM Sub and MBX agree that the decision of the arbitrators
shall be final and binding on the Parties. The decision of
the arbitrators shall be carried out voluntarily and without
delay.
(5) The fees and expenses of the arbitrators shall be shared
equally by ADM Sub and MBX. ADM Sub and MBX will bear its
own costs and expenses, including without limitation, its
own legal fees and expert witness fees. Notwithstanding the
foregoing, ADM Sub and MBX agree to be bound by and obey any
order of the arbitrators relating to either Party being
liable for any such costs, including without limitation, the
legal fees of the other Party.
14.3.4 EQUITABLE RELIEF. Nothing in this Agreement shall prevent or
limit ADM Sub's or MBX's right to file and prosecute in any court of competent
jurisdiction an action to seek injunctive relief to prevent or stay a breach of
this Agreement or any action necessary to enforce the award of the arbitrators.
14.3.5 BUSINESS ISSUE DEADLOCKS. In the event an issue relating to the
conduct of the business of the Commercial Alliance comes before the Steering
Committee or the conduct of the business of the Joint Sales Company comes before
the Board of the Joint Sales Company, and such business decision is not governed
by the terms of the Commercial Alliance Agreements, but rather is specifically
or by omission left to the business judgment of the Steering Committee or the
Board, and the Steering Committee or Board, acting in accordance with Section
3.1.3 in the case of the Steering Committee, and acting in accordance with the
Operating Agreement in the case of the Board, is unable to reach a decision on
how (or whether) to address or resolve such business issue, then provisions set
forth in Sections 14.3.1 and 14.3.2 shall apply, but the provisions set forth in
Section 14.3.3 shall not apply. During such time as the Ledger Account is less
than ten million dollars ($10,000,000), in the event that the Parties do not
reach a resolution of such a business dispute as provided in Section 14.3.1 or
14.3.2, then the provisions set forth in Section 14.3.3 shall apply, but the
arbitrators' decision shall be rendered as follows: At the conclusion of the
arbitration hearings, each party shall submit a proposed resolution of the
business dispute to the arbitrators. The arbitrators shall choose among the
proposed resolutions and adopt one as the arbitrators' decision, and shall
render that decision as the arbitrators' final determination. The arbitrators do
not have discretion to render any decision other than one submitted by one of
the Parties. For the avoidance of doubt, whether a Party has met the decision
making standards set forth in 3.1.3 shall not be subject to this Section, but
shall be treated as a dispute subject to the provisions of Sections 14.3.1,
14.3.2 and 14.3.3.
14.4 GOVERNING LAW. Except as specifically otherwise provided herein, this
Agreement shall be governed by and construed in accordance with the laws of the
State of Delaware.
14.5 FORCE MAJEURE. In the event of the intervention of a force majeure,
which term shall include, without limitation, acts of God, strikes, labor
disturbances, lockouts, riots, epidemics, quarantines, wars or conditions of
war, actions, inactions or regulations of any government, fires, acts of
terrorists, insurrections, embargoes or trade restrictions, or any other
* CONFIDENTIAL TREATMENT REQUESTED
58
reasons beyond a Party's reasonable control, the Party affected by the force
majeure shall use Commercially Reasonable Efforts to comply with the Agreement.
In the case that such Commercially Reasonable Efforts fail or are futile, such
Party shall not be responsible for delays or a failure to perform under this
Agreement caused by a force majeure. Provided, however, that any payment
obligations of a Party shall not be affected or excused by such force majeure.
If a Party's delay or failure to perform continues for more than one hundred
twenty (120) days, the other Party may terminate this Agreement. In the event
that either Party shall incur a delay in delivery or performance for a reason
permitted by this Article, that Party shall notify the other Party within five
(5) days from the date of the actual occurrence of the cause for such delay
14.6 NOTICES. All notices, requests and other communication hereunder shall
be in writing and sent by facsimile with confirmation sent by courier requiring
acknowledgment of receipt by the respective Parties as follows:
To MBX: Metabolix Corporation
00 Xxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
Attn: President and CEO
With copy to: Xxxxxxx Procter
Exchange Place
00 Xxxxx Xxxxxx
Xxxxxx, XX 00000
Attn: Xxxxxxxxxxx X. Xxxx, Esq.
To ADM Sub: ADM Polymer Corporation
0000 Xxxxxx Xxxxxxx
Xxxxxxx, XX 00000
Attn: President
With copy to: Xxxxxx-Xxxxxxx-Midland Company
0000 Xxxxxx Xxxxxxx
Xxxxxxx, XX 00000
Attn: General Counsel
To JSC: ADM / Metabolix Sales Company, LLC
00 Xxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
With a copy to: ADM Sub, at the address set forth above, and
MBX, at the address set forth above
Either Party may change the registered address to which such notice should be
sent by giving written notice to the other Party.
* CONFIDENTIAL TREATMENT REQUESTED
59
14.7 INTEGRATION; ENTIRE AGREEMENT. This Agreement contains the entire
agreement of the Parties with regard to the subject matter contained herein and
supersedes all prior written and oral agreements, understandings and
negotiations, with regard to such subject matter.
14.8 AMENDMENTS. This Agreement, including this provision, may not be
amended without a written instrument signed by duly authorized representatives
of all Parties.
14.9 SEVERABILITY. In the event that any part of this Agreement is
adjudicated to be invalid or unenforceable because it contravenes any applicable
law or regulation, the Parties shall perform this Agreement in accordance with
their original intentions as set forth herein, corresponding as closely as
possible to the invalid or unenforceable part insofar as it is still valid under
such law or regulation and reflects the original intention of the Parties. The
validity of the remaining permissible portions of this Agreement shall remain
unaffected thereby.
14.10 WAIVER/CUMULATIVE RIGHTS. No failure by any Party to insist upon the
strict performance of any covenant, duty, agreement or condition of this
Agreement or to exercise any right or remedy upon a breach thereof shall
constitute a waiver of any such breach or any other covenant, duty, agreement or
condition. All rights and remedies which a Party may have hereunder or by
operation of law are cumulative, and the pursuit of one right or remedy shall
not be deemed an election to waive or renounce any other right or remedy.
14.11 NO JOINT VENTURE OR PARTNERSHIP RELATIONSHIP. Nothing contained in or
relating to this Agreement is or shall be deemed to constitute a joint venture,
partnership or agency relationship between any of the Parties hereto and no
Party shall have any authority to act for or to assume any obligation or
responsibility on behalf of the other Party
14.12 FURTHER ASSURANCES. Each Party shall duly execute and deliver, or
cause to be duly executed and delivered, such further instruments and do and
cause to be done such further acts and things, including without limitation the
filing of such assignments, agreements, documents and instruments, as may be
necessary or as the other Party may reasonably request in connection with this
Agreement or to carry out more effectively the provisions and purposes hereof,
or to better assure and confirm unto such other Party its rights and remedies
under this Agreement.
14.13 CONSTRUCTION. Except where the context otherwise requires, wherever
used the singular shall include the plural, the plural the singular, the use of
any gender shall be applicable to all genders, the word "or" is used in the
inclusive sense and the word "any" shall mean any one item, or all items, in a
referenced category. The captions of this Agreement are for convenience of
reference only and in no way define, describe, extend, or limit the scope or
intent of this Agreement or the intent of any provision contained in this
Agreement. The language of this Agreement shall be deemed to be the language
mutually chosen by the Parties and no rule of strict construction shall be
applied against either Party hereto.
* CONFIDENTIAL TREATMENT REQUESTED
60
14.14 ACKNOWLEDGMENT. The Parties hereby acknowledge that all licenses
granted herein are, for the purposes of Section 365(n) of Title 11 of the U.S.
Code, licenses of rights to intellectual property as defined in said Title 11.
14.14 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original, and all of which,
taken together, shall constitute one and the same instrument.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
by their duly authorized representatives as of the day and year above written.
ADM POLYMER CORPORATION
By: /s/ Xxxx X. Xxxx
--------------------------------
Name: Xxxx X. Xxxx
------------------------------
Title: President
-----------------------------
METABOLIX, INC.
By: /s/ Xxxxx X. Xxxxxx
--------------------------------
Name: Xxxxx X. Xxxxxx
------------------------------
Title: President and CEO
-----------------------------
ADM/ METABOLIX SALES
COMPANY, LLC
By: /s/ Xxxx X. Xxxx
--------------------------------
Name: Xxxx X. Xxxx
------------------------------
Title: Director
-----------------------------
By: /s/ Xxxxx X. Xxxxxx
--------------------------------
Name: Xxxxx X. Xxxxxx
------------------------------
Title: Director
-----------------------------
* CONFIDENTIAL TREATMENT REQUESTED
