PRODUCTION LICENSE AGREEMENT
Exhibit
10.6
This
Production License Agreement ("Agreement") is made as of this
31st
day of October, 2008, by and between Xxxxxx Induflex NV (which will be renamed
“Induflex NV” shortly after the acquisition of its shares as of the date hereof,
as described below), a Belgian corporation having its registered office at
Xxxxxxxxxxxxxxxxxx 000, 0000 Xxxxx, Xxxxxxx and registered with the Crossroads
Bank of Enterprises under enterprise number 0807.149.569 (the “Company”), and Xxxxxx
Corporation, a Massachusetts corporation (“Xxxxxx”).
WHEREAS, pursuant to that
certain Stock Purchase Agreement, of even date herewith (the “Stock Purchase Agreement”),
Induflex Holding NV (“Holding”) has agreed to
purchase from Xxxxxx all of the issued and outstanding shares of capital stock
of the Company;
WHEREAS, the Company has
developed certain methodology relating to the design, development and
manufacture of multilayer laminates comprised of layers of any of the following
products: Mylar, Tedlar and adhesives used in insulation of bus bars currently
used by the Company to manufacture the products set out on Exhibit A hereto
(collectively, “Busbar
Insulation Laminates”), as manufactured
by Xxxxxx and/or its Affiliates (as such term is defined herein) and was until
the date of the Stock Purchase Agreement the owner of certain expertise,
Know-how (as defined herein) and trade secrets pertaining thereto;
WHEREAS, Xxxxxx owned certain
technology for the production of Busbar Insulation Laminates prior to its
acquisition of the Company, and desires to retain the right to use that
technology for its own use (but not transfer it to others), and further desires
to eliminate any question as to its legal right to do so; and
WHEREAS, as a part of Roger’s
sale of the Company to Holding, Xxxxxx is requiring that the Company grant to
Xxxxxx and its Affiliates a non-exclusive license to use certain Intellectual
Property (as defined herein) of the Company in order to manufacture the Busbar
Insulation Laminates under certain circumstances, upon the terms and conditions
set forth herein, to insure that Xxxxxx has such license to use even though it
did not retain such rights from prior to its acquisition of the
Company;
NOW, THEREFORE, for good and
valuable consideration, the receipt of which is hereby acknowledged, the parties
agree as follows:
1. DEFINITIONS. In
this Agreement, the following words and expressions shall have the meanings set
opposite each respectively:
“Affiliate”
means (a) an entity which is controlled by, controls, or is under common control
with another entity, (b) an entity owning a majority of the voting securities of
another entity, and (c) an entity a majority of whose voting securities is owned
by the other entity.
“Busbar
Insulation Laminates” has the meaning set forth in the recitals.
“Confidential
Information” has the meaning set forth in Section 5.1.
“Disclosing
Party” has the meaning set forth in Section 5.1.
“Know-how”
means the knowledge and experience of the Company, its employees and
contractors, relating to and which may be relevant to the manufacture of the
Busbar Insulation Laminates, including without limitation any and all processes,
documents, reports, operating and testing procedures, technical data, know-how,
confidential information, instructions, formulae, blueprints, and other
knowledge and information, whether similar or dissimilar to any of the
foregoing, and whether or not in any way recorded, and howsoever recorded,
relating or relevant to the development, manufacture, and/or use of the Busbar
Insulation Laminates.
"Intellectual
Property" means any and all Know-how, inventions, patents, registered and
unregistered designs, utility models, prototypes, copyrights, design rights,
technical knowledge, trade secrets, methods of manufacture, plans, drawings,
sketches, blueprints, specifications, data and any other commercial property
rights and where applicable, any applications for any of the foregoing and the
right to apply therefor in any part of the world insofar as the same may be used
or usable herein for the production of the Busbar Insulation Laminates, owned by
the Company that are being acquired by Holding in connection with the Stock
Purchase Agreement .
“Qualified
Supplier” means a supplier of Busbar Insulation Laminates which has previously
been qualified by Xxxxxx or its Affiliate as such.
“Receiving
Party” has the meaning set forth in Section 5.1.
“Stock
Purchase Agreement” has the meaning set forth in the recitals.
2. LICENSE. Subject
to the terms and conditions of this Agreement, the Company hereby grants to
Xxxxxx and its Affiliates, during the term hereof, a
non-exclusive, irrevocable, worldwide, fully paid, royalty free,
non-transferable license to use any and all Intellectual Property (specifically
including Know-how) belonging to the Company for the manufacture, by Xxxxxx and
its Affiliates, solely for Xxxxxx and/or its Affiliates’ own use, of the Busbar
Insulation Laminates. The Company agrees that upon the expiration of
the term hereof, the Company nevertheless shall continue to allow Xxxxxx and/or
its Affiliates to use the Intellectual Property solely for Xxxxxx and/or its
Affiliates’ own use to manufacture products incorporating the Busbar Insulation
Laminates. Xxxxxx agrees that all improvements, developments, new
inventions, additions, new products or processes involving the Busbar Insulation
Laminates and new technology which may be conceived, devised or developed by the
Company after the date hereof shall belong to, be owned by and inure to the
benefit of the Company.
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3. ACCESS TO RAW
MATERIALS. For the first three (3) years of the term hereof,
in the event of a shutdown in the Company’s production of Busbar Insulation
Laminates, whether or not caused by any fault of the Company, Xxxxxx and its
Affiliates shall have the right to purchase from the Company, at cost, upon
request from Xxxxxx or such Affiliate, such amount of any raw material(s) used
in the manufacture of the Busbar Insulation Laminates as, in Xxxxxx’ view, may
be necessary to exercise its rights hereunder during the period of such
shutdown. Immediately upon any such request from Xxxxxx,
the Company shall inform Xxxxxx in writing the extent
of its then existing supply of such raw material, and shall deliver
the requested amounts to Xxxxxx, at Xxxxxx’ sole expense, in the manner and at
the time(s) required by Xxxxxx.
4. REPRESENTATIONS AND
WARRANTIES; LIMITATION ON LIABILITY.
4.1. Each
party represents and warrants to the other, as of the date hereof, that it has
the requisite corporate power and authority to enter into this Agreement and to
perform its obligations hereunder.
4.2. EXCEPT
AS EXPRESSLY SET FORTH HEREIN, NEITHER PARTY MAKES ANY WARRANTIES, EXPRESS OR
IMPLIED, WITH RESPECT TO THE SUBJECT MATTER HEREOF AND EACH PARTY EXPRESSLY
DISCLAIMS ALL WARRANTIES, INCLUDING, WITHOUT LIMITATION, THE IMPLIED WARRANTIES
OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
4.3. In
no event shall either party be liable to the other party for incidental,
indirect, punitive or special damages or for any economic consequential damages
(including, without limitation, lost profits), regardless of whether a claim is
for breach of contract, warranty or tort (including negligence), and regardless
of whether such party has been advised of the possibility of such damages;
except in the event of an intentional violation hereof.
5. CONFIDENTIALITY.
5.1. Pursuant
to this Agreement, a party may disclose (the “Disclosing Party”) to the
other party (the “Receiving
Party”) information and/or material it considers proprietary and
confidential, which disclosures shall be in writing and marked as “Proprietary”
or “Confidential.” If the Disclosing Party discloses proprietary or
confidential information visually, orally or in any other manner incapable of
physical marking to the Receiving Party, the Disclosing Party shall inform the
Receiving Party that such information is proprietary and confidential at the
time of the disclosure, shall reduce the proprietary or confidential information
to writing and xxxx it as such, and send the writing to the Receiving Party
within thirty (30) days of the disclosure. Information and/or
material disclosed and marked in these manners shall hereafter be referred to as
“Confidential
Information.” The Receiving Party shall not use the
Confidential Information for any purpose other than for the purposes of this
Agreement, and shall not disclose the Confidential Information to any third
party except with the express prior written consent of the Disclosing Party, and
then only upon binding such third party in writing to the same extent that the
Receiving Party is hereby bound. The Receiving Party shall use not
less than the degree of care used to prevent disclosure of its own proprietary
and confidential information to prevent the disclosure of the Disclosing Party’s
Confidential Information. In no event, however, shall the Receiving
Party use less than a reasonable degree of care.
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5.2.
The obligations of non-use and confidentiality set forth in Section 5.1
shall not apply to Confidential Information that (a) on the date of
disclosure is in the public domain; (b) is published or otherwise becomes part
of the public domain through no fault of the Receiving Party after the date of
the disclosure; (c) the Receiving Party can show is received by it without an
obligation of confidentiality from a third party; or (d) the Receiving Party is
required to disclose to a third party by virtue of a court order or a statutory
obligation; provided that notice is given by the Receiving Party to the
Disclosing Party reasonably in advance of any such disclosure to enable the
Disclosing Party to take appropriate steps to protect its confidential or
proprietary information. The Receiving Party shall have the burden of
proving that this Section 5.2 applies to any Confidential Information
received by it.
6. FORCE
MAJEURE. No failure or omission by either party in the
performance of any obligation of this Agreement shall be deemed a breach of this
Agreement nor create any liability if the same shall be caused by any event or
circumstance beyond the reasonable control of such party including, but not
restricted to, the following, which, for the purpose of this Agreement, shall be
regarded as beyond the control of the party in question: Acts of God; acts or
omissions of any government or any agency thereof; compliance with rules,
regulations or orders of any governmental authority or any officer, department,
agency or instrumentality thereof; fire; storm; flood; earthquake; accident;
acts of the public enemy; war; rebellion; insurrection; riots; sabotage;
invasion; quarantine restrictions; strikes; lockout; disputes or differences
with workmen; transportation embargoes or failures or delays in
transportation.
7. TERM;
TERMINATION.
7.1. The
term of this Agreement shall begin on the date hereof and shall remain in full
force in effect thereafter until December 31, 2033, unless sooner terminated
pursuant to Sections 7.2 or 7.3.
7.2. Either
party may, at its own option, terminate this Agreement on written notice to the
other party in the event of any proceedings, voluntary or involuntary, in
bankruptcy or insolvency by or against the other party, or in the event of the
appointment, with or without consent, of an assignee or a receiver for the
benefit of the creditors of such other party, which events are not dismissed
within ninety (90) days.
7.3. Either
party may terminate this Agreement upon written notice to the other in the event
of any material breach of this Agreement by the other party that is not cured
within sixty (60) days after written notice to such other party explaining the
breach in reasonable detail.
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7.4. The
parties acknowledge and agree that the terms of Sections 5, 6 and 8 shall
survive termination of this Agreement for any reason.
7.5. The
license granted hereunder shall terminate upon any termination of this
Agreement, subject to the right of Xxxxxx and/or its Affiliates to require
fulfillment of any outstanding order for raw material pursuant to Section
3.
8. MISCELLANEOUS.
8.1. This
Agreement and performance of the obligations hereunder shall be governed by, and
construed in accordance with, the laws of Belgium. Any dispute,
controversy or claim arising out of or relating to this Agreement, or the breach
or invalidity thereof, will be settled by arbitration in accordance with the
provisions of Section 9(f) of the Stock Purchase Agreement, which are
incorporated herein by reference, mutadis mutandis, as if they
were expressly set forth herein. The parties expressly reject the
applicability to this Agreement of the United Nations Convention on Contracts
for the International Sale of Goods. This Agreement may be translated
into languages other than the English; provided, that in the event of conflict,
the English language version shall control.
8.2. This
Agreement shall be binding upon and inure for the benefit of the successors of
the parties and their permitted assigns.
8.3. Neither
of the parties hereto may assign its respective rights or obligations under this
Agreement without the written consent of the other; provided, that either party
shall be entitled to assign any of all of its respective rights or obligations
hereunder to that party's parent company, to its subsidiary or to another
subsidiary of that party's parent company or in connection with its merger or
consolidation or with the sale of substantially all of its assets utilized in
the business to which this Agreement relates to a party who expressly assumes
and agrees to perform all of the obligations of the assigning
party.
8.4. Nothing
in this Agreement shall be deemed to constitute a partnership between the
parties hereto or constitute any part of the agent or any other party for any
purpose or entitle any party to commit or bind the other party (or any associate
of that party) in any manner.
8.5. This
Agreement and the documents referred to herein represent the entire Agreement
between the parties and supersedes any prior Agreement or understanding with
respect thereto whether entered into by the parties hereto or
otherwise.
8.6. Any
notice required to be given hereunder shall be in writing (in the English
language) and will be deemed to have been duly given when (i) delivered by hand
(with written confirmation of receipt), (ii) sent by telecopier (with
confirmation of receipt in a manner permitted herein), or (iii) when received by
the addressee, if sent by courier or other delivery service, in each case to the
appropriate address and telecopier numbers set forth below (or to such other
addresses and telecopier numbers as a party may designate by notice to the other
Parties).
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If
to Xxxxxx:
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Xxxxxx
Corporation
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Xxx
Xxxxxxxxxx Xxxxx
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Xxxxxx,
XX 00000
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Facsimile No:
x0-000-000-0000
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Attn.:
Corporate Secretary
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With copies
to:
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Xxxxx
& Xxxxxxxx LLP
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000
Xxxxxx Xxxxxx
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Xxxxxx,
XX 00000
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Facsimile
No: +1-617- 345-3299
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Attn: Xxxxxx
X. Xxxxxxx, Esq.
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Xxxxxx
XXXX
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Xxxxxxxxxx
000
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Xxxx,
X-0000, Xxxxxxx
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Facsimile No:
x00-0-000-0000
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Attn:
Vice President, Europe
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If
to the Company:
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Induflex
NV
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Xxxxxxxxxxxxxxxxxx
000,
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0000
Xxxxx, Xxxxxxx
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Facsimile No:
x00-0-000-00-00
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Attn.:
Xxxx Xxxxxxxxx
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8.7. In
the event that any of the provisions of this Agreement, or any word, phrase,
sentence, clause or other party hereof, proves for any reason to be illegal or
unenforceable, the provision or other part in questions shall be modified or
deleted in such a way as to make this Agreement thereafter legal and enforceable
to the fullest extent permitted under applicable laws, and the illegality or
unenforceability of any provision or other part of this Agreement shall not
affect the other provisions hereof, all of which shall remain in full force and
effect notwithstanding any such illegality or unenforceability.
8.8. No
failure or delay on the part of either of the parties to exercise any of its
rights hereunder shall operate as a waiver thereof, nor shall any single or
partial exercise of any such right include any other or future exercise
thereof. Any waiver by any of the parties of any breach by either of
the others of any of its obligations hereunder shall not affect its rights in
the event of any further or additional breach or breaches.
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8.9. No
modification or amendment of the provisions of this Agreement shall be binding
upon either party hereto unless in writing and signed by duly authorized
officers of the respective parties.
8.10. This
Agreement may be executed in one or more counterparts, each of which shall
constitute an original and both of which together shall be deemed a single
instrument. This Agreement shall be deemed effective upon the receipt by each
party of an executed signature page hereto signed by the other, which may be
transmitted by facsimile or electronic means.
IN WITNESS WHEREOF, the
parties hereto have caused this Production License Agreement to be executed by
affixing their signatures below.
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XXXXXX
INDUFLEX NV
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Date
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/s/ X. X. Xxxxxxxxx | ||
| By: X. X. Xxxxxxxxx | |||
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Its: Managing
Director
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XXXXXX
CORPORATION
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/s/ Luc Van
Eenaeme
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By: Luc
Van Eenaeme
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Its: Vice
President Europe
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7
Exhibit
A
Products Utilizing Busbar
Insulation Laminates
| Type Lg nr | RM NR | Composition | ||
| Lg 4005 | RM101200102600 | 75 u ADS/Tedl38 + coating | ||
| Lg 4006 | RM161300402600 RM161300402053 RM161300402150 RM161300402300 |
190u A/2xTed38/2xcoating | ||
| Lg 4007 | RM161300502600 | 50u ADS/2xTed38+2xcoating | ||
| Lg 4011 | 125uADS/Ted38 + coating | |||
| Lg 4017 | RM101300502610 | 125uADS/2xTed+2xcoating | ||
| Lg 4019 | RM101300602600 | 190u A/Ted38 + coating |
8
