Form of] CROSS LICENSING AND INTELLECTUAL PROPERTY AGREEMENT
EXHIBIT
10.3
[Form
of]
THIS
CROSS LICENSING AND INTELLECTUAL PROPERTY AGREEMENT (this “Agreement”) is
made and entered into as of the ___ day of _________, 2005, by and between THE
DOW CHEMICAL COMPANY, a Delaware corporation (“Dow”), and
MILLENNIUM CELL INC., a Delaware corporation (“MCEL”). Dow
and MCEL also may be referred to herein individually as a “Party” or
collectively as the “Parties.”
Recitals
WHEREAS,
the Parties entered into that certain Stock Purchase Agreement, dated as of
February 27, 2005 (the “Stock
Purchase Agreement”),
pursuant to which, among other things, at the First Closing (as defined in the
Stock Purchase Agreement), the Parties are to enter into this
Agreement;
WHEREAS,
the First Closing has occurred and, simultaneously therewith, the Parties are
entering into this Agreement pursuant of the Stock Purchase
Agreement;
WHEREAS,
simultaneously with the entering into of this Agreement, Dow and MCEL have also
entered into that certain Joint Development Agreement, dated as of the date
hereof (the “Joint
Development Agreement”);
WHEREAS,
simultaneously with the entering into of this Agreement, Dow and MCEL have also
entered into the Patent Assignment Agreement, dated as of the date hereof (the
“Patent
Assignment Agreement”);
WHEREAS,
in connection with entering into the Joint Development Agreement, (i) Dow
desires to grant, and MCEL desires to accept, a license to the Dow-Licensed
Intellectual Property (as defined below) within the Field of Use (as defined
below) and within the Application (as defined below) and (ii) MCEL desires
to grant, and Dow desires to accept, a license to the JDA Intellectual Property
(as defined below) within the Non-Exclusive Areas (as defined below), in each
case on the terms and conditions set forth herein.
NOW,
THEREFORE, the Parties hereto, in consideration of the mutual agreements
contained herein, the receipt and sufficiency of which are hereby acknowledged,
do hereby agree as follows:
1. Definitions.Capitalized
terms used but not defined herein shall have the meanings given to them in the
Joint Development Agreement. The following terms shall have the meanings
provided:
“Application” means
(A) production of hydrogen gas for use by fuel cells by storing and chemically
converting sodium borohydride or other boron hydride-fuel formulations into
hydrogen by (1) controlling the contact of an alkaline aqueous boron hydride
solution with a contained solid catalyst comprised of a transition metal adhered
to a substrate which promotes the chemical reaction between the boron hydride
and water to release hydrogen gas; and/or (2) [***] and (B) interconnections and
related control strategies for the integration of a fuel cell and hydrogen
generator systems for delivery of hydrogen gas produced by one of these means
for conversion to power by a fuel cell.
Information marked by
[***] has been omitted pursuant to a request for confidential treatment. The
omitted portion has been separately filed with the Securities and Exchange
Commission.
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“Dow-Licensed
Intellectual Property” means
the trade secrets, technical data, designs, concepts, processes, formulae,
know-how and information of Dow that are disclosed or otherwise made available
to MCEL under the terms of the Joint Development Agreement pertaining to the
design, development, manufacture, sale and use of the proposed JDA Products and
any registered intellectual property that may be added hereto from time to time
pursuant to Section
3.3 and
including Dow’s interest in the Patent.
“Dow
Technical Resources” means
(i) the persons listed on Schedule
A
hereto and (ii)
such other persons that the Dow appointees to the Steering Committee may
designate in writing to be added to Schedule
A hereto
at such time as any such other person contributes efforts as FTEs under the
Joint Development Agreement, but, in
the case of clauses (i) and (ii), only during the period that such persons are
dedicating time that constitutes some or all of Dow’s obligation to provide FTEs
under Section
5.1 of the
Joint Development Agreement in furtherance of fulfilling a
Milestone.
“Field
of Use” means
fuel cells for energy generation.
“Government
Authority” has the
meaning given such term in the Stock Purchase Agreement.
“Improvements” means
any and all systems, subsystems, components or methods currently existing, under
development or developed in the future that utilize any item of the JDA
Intellectual Property and any patent rights thereto, including all divisions,
continuations, continuations-in-part, reissues, reexaminations and extensions
thereof.
“JDA
Intellectual Property” means
(i) the technical data, designs, concepts, processes, formulae, know-how and
information, copyright, trade secret, or other intellectual property rights
related thereto developed by MCEL and/or Dow Technical Resources during the Term
of the Joint Development Agreement and in
furtherance of the Milestones under the Joint Development Agreement, (ii) any
Improvements thereto conceptualized or developed during the Term of the Joint
Development Agreement and/or (iii) all technical data, designs, concepts,
processes, formulae, know-how and information, copyright, trade secret, or other
intellectual property rights related thereto jointly developed by MCEL and/or
Dow Technical Resources with other Person(s) pertaining to the design,
development, manufacture, sale and use of the JDA Products, including without
limitation any patent during the Term of the Joint Development Agreement.
“JDA
Products” has the
meaning given such term in the Joint Development Agreement.
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“Licensed
Intellectual Property” means,
as applicable, (i) the Dow-Licensed Intellectual Property being licensed to MCEL
hereunder or (ii) the JDA Intellectual Property being licensed to Dow
hereunder.
“Licensee
Party” means,
as applicable, (i) MCEL as the licensee of the Dow-Licensed Intellectual
Property pursuant to the terms of this Agreement or (ii) Dow as the licensee of
the JDA Intellectual Property pursuant to the terms of this
Agreement.
“Licensor
Party” means,
as applicable, (i) Dow as the licensor of the Dow-Licensed Intellectual Property
pursuant to the terms of this Agreement or (ii) MCEL as the licensor of the JDA
Intellectual Property pursuant to the terms of this Agreement.
“MCEL-Contributed
Intellectual Property” has the
meaning given such term in the Joint Development Agreement and also means MCEL’s
interest in the Patent and all rights thereto (excluding any rights to the
Patent that are not explicitly transferred by the Patent Assignment
Agreement).
“Non-Exclusive
Areas” means,
collectively, outside of the Field of Use (whether or not within the
Application) and outside of the Application (whether or not within the Field of
Use).
“Patent” means
US Provisional Patent Application Serial No. [***], filed jointly between MCEL
and Dow on April 14, 2004, and all other intellectual property rights claiming
priority from such provisional patent application.
“Term” has the
meaning given such term in the Joint Development Agreement.
“Use” means
the right to use, practice, make, have made, reproduce, modify, enhance,
upgrade, create derivative works, import, export, copy and sell, offer for sale,
license and/or sublicense, except as otherwise provided in Section
3.1 and
Section
8.3.
2. Ownership of
Intellectual Property.
2.1. Ownership
of Dow-Licensed Intellectual Property. MCEL
agrees and acknowledges that Dow retains under this Agreement all ownership
rights, including without limitation all intellectual property rights, in and to
the Dow-Licensed Intellectual Property. Except as otherwise provided for in this
Agreement and the Joint Development Agreement, no ownership rights, including
without limitation any intellectual property rights, in and to the Dow-Licensed
Intellectual Property is hereby conveyed by Dow to MCEL. Except as otherwise
provided in this Agreement and subject to the confidentiality provisions in the
Joint Development Agreement, Dow shall be entitled on its own to develop
improvements and inventions using the JDA Intellectual Property and to apply for
any new patents or other intellectual property rights that arise or result
therefrom and to own and hold such new patents or other intellectual property
rights in its own name.
Information
marked
by [***] has been omitted pursuant to a request for confidential treatment. The
omitted portion has been separately filed with the Securities and Exchange
Commission.
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2.2. Ownership
of JDA Intellectual Property. Dow
agrees and acknowledges that MCEL retains under this Agreement all ownership
rights, including without limitation all intellectual property rights, in and to
the JDA Intellectual Property and that such JDA Intellectual Property shall be
protected by the Parties as Proprietary Information of MCEL or Dow, as
appropriate, under Section 9 of the Joint Development Agreement. Except as
otherwise provided for in this Agreement and the Joint Development Agreement, no
ownership rights, including without limitation any intellectual property rights,
in and to the JDA Intellectual Property is hereby conveyed by MCEL to Dow.
Except as otherwise provided in this Agreement, MCEL shall be entitled on its
own to develop improvements and inventions using the JDA Intellectual Property
and to apply for any new patents or other intellectual property rights that
arise or result therefrom and to own and hold such new patents or other
intellectual property rights in its own name.
3. License
to MCEL of Dow-Licensed
Intellectual Property within the Field of Use and Application.
3.1. License. Except
as otherwise provided in the Patent Assignment Agreement, and subject to the
terms and conditions contained herein and any rights of Governmental Authorities
or third parties in existence on the date hereof, Dow hereby grants to MCEL, and
MCEL hereby accepts from Dow, a world-wide, royalty-free, paid-up, non-exclusive
license to Use the Dow-Licensed Intellectual Property within the Field of Use
and Application during the term set forth in Section
3.2;
provided, however, solely
for purposes of the license granted pursuant to this Section
3.1, the
term “Use” shall not be deemed to include the right to license or sublicense the
Dow-Licensed Intellectual Property.
3.2. Term
of License. The
license to MCEL of the Dow-Licensed Intellectual Property granted under this
Section 3.1 shall
terminate immediately upon the expiration or termination of the Joint
Development Agreement in accordance with its terms, unless such license is
previously terminated pursuant to Section
13.
3.3. Updates
to Dow-Licensed Intellectual Property. Dow may
add any item of registered intellectual property to the definition of
“Dow-Licensed Intellectual Property” by providing notice in writing to add any
such patent, copyright or other intellectual property rights, at which time such
patent, copyright or other intellectual property will be deemed to be
“Dow-Licensed Intellectual Property” as of the date of such
addition.
4. License
to Dow of JDA
Intellectual Property within the Non-Exclusive Areas.
4.1. License. Subject
to the terms and conditions contained herein, MCEL hereby grants to Dow, and Dow
hereby accepts from MCEL, a perpetual, world-wide, royalty-free, paid-up,
non-exclusive license to Use the JDA Intellectual Property within the
Non-Exclusive Areas during the term set forth in Section
4.3.
4.2. Sublicense. Dow may
sublicense the rights granted under Section
4.1 (a) to
any third party. Any such sublicense shall be on terms and conditions at least
as restrictive as the terms and conditions of this Agreement. Dow shall provide
MCEL with a summary of any such license or sublicense within thirty (30)
Business Days of executing such a license.
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4.3. Term
of License: The
license to Dow of the JDA Intellectual Property granted under this Section
4.1 shall be
for the duration of the last to expire of the registered JDA Intellectual
Property, unless such license is previously terminated pursuant to Section 13.
4.4. Reporting. During
the term of the license set forth in Section
4, MCEL
shall provide Dow annual reports that disclose the status of MCEL’s efforts to
prosecute the patents that are a part of the JDA Intellectual Property. In the
event that MCEL determines not to pursue the prosecution of any patents that are
a part of the JDA Intellectual Property or otherwise abandons any of the JDA
Intellectual Property, including the failure to pay any applicable United States
maintenance fee or any applicable foreign annuity, MCEL shall first notify Dow
of such intention and, at Dow’s option, Dow may obtain the prosecution file and
prosecute or maintain any such patent that is part of such JDA Intellectual
Property at its sole cost and expense or, at Dow’s written request, MCEL shall
assign its rights in any such issued patent to Licensee to the extent possible
by law or third party contracts.
5. Export
Control. The use
and disclosure of the Licensed Intellectual Property and the exercise of all
rights granted by this Agreement shall be subject to the technology transfer,
export, assets and financial control regulations of the United States of America
and any applicable foreign governments or governmental bodies, including,
without limitation, restrictions under regulations of the United States that may
be applicable to direct or indirect exportation or reexportation of such
technical information or of equipment, products or services directly produced by
use of such technical information. Each Licensee Party shall comply fully with
all such applicable provisions and to protect the full value of the intellectual
property rights which are the subject of this Agreement.
6. License
Fees and Royalties. Except
as provided for any MFN License as set forth in Section
7, neither
Party hereto shall be obligated to (i) pay any license fees or royalties for any
license to Licensed Intellectual Property permitted hereby or (ii) provide any
accounting in respect thereof.
7. “Most
Favored Nation” License of JDA Intellectual Property within Field of Use and
within Application. Upon
the written request of Dow, MCEL shall grant to Dow, and Dow shall accept from
MCEL, a perpetual, world-wide, non-exclusive license to Use any JDA
Intellectual Property within the Field of Use and within the Application (each,
an “MFN
License”) that
is otherwise on terms substantially similar to the terms of the license of the
Licensed Intellectual Property to Dow, as Licensee party, under this Agreement,
except that (i) with respect to the pricing terms of such MFN License, such
terms shall be on reasonable commercial terms and conditions and (ii) such MFN
License shall provide that (A) in the event that, after the date Dow requests
such MFN License from MCEL under this Section
7, MCEL
directly or indirectly enters into a license of all or any portion of such JDA
Intellectual Property with a third party licensee (a “Third
Party License”), MCEL
shall promptly provide a description of the Third Party License and all other
terms material to such Third Party License to Dow, (B) if such Third Party
License contains, in the good faith determination of Dow, more favorable
pricing, terms and conditions, in the aggregate, than such terms contained in
such MFN License, Dow may, by delivering written notice thereof, promptly modify
the pricing, terms and conditions of this License to be the same as the pricing,
terms and conditions, in the aggregate, that are contain in such Third Party
License and (C) such modifications described in clause (B) shall in all cases be
effective as of the date that Licensor entered into such Third Party License.
Each MFN License shall be negotiated in good faith and as promptly as possible
after Dow’s request.
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8. Notice
of Certain Transactions; Dow Rights of First Refusal.
8.1. Notice
with respect to JDA Intellectual Property. For the
five (5) year period commencing upon the date of this Agreement, MCEL shall
provide Dow advance written notice at least 60 days prior to granting a license
or transferring any initial license of JDA Intellectual Property to any third
party licensee or transferee if, after giving effect to such grant or transfer,
MCEL will no longer be able to grant an exclusive license to Dow in respect of
such JDA Intellectual Property in the field of use, application and/or area
which is the subject of or covered by such grant or transfer.
8.2. Dow’s
Right of First Refusal - MCEL Contributed Intellectual Property. In the
event MCEL proposes to grant an exclusive license
or exclusive transfer
of any MCEL-Contributed Intellectual Property to any third party licensee or
transferee for any use whatsoever (whether within the Field of Use and within
the Application or within the Non-Exclusive Areas), Dow shall have a right of
first refusal to enter into such license or transfer agreement with respect to
such MCEL-Contributed Intellectual Property on substantially similar terms as
the terms in which MCEL proposes to license or transfer such MCEL-Contributed
Intellectual Property to such third party licensee or transferee, subject to the
procedure contained in Section
8.4.
8.3. Dow’s
Right of First Refusal -- JDA Intellectual Property. In the
event MCEL proposes to grant an exclusive license or exclusive transfer of any
JDA Intellectual Property to any third party licensee or transferee for any Use
within the Field of Use and within the Application, Dow shall have a right of
first refusal to enter into such license or transfer agreement with respect to
such JDA Intellectual Property on substantially similar terms as the terms in
which MCEL proposes to license or transfer such JDA Intellectual Property to
such third party licensee or transferee, subject to the procedure contained in
Section
8.4;
provided,
however, solely
for purposes of such license under this Section
8.3, the
term “Use” shall not be deemed to include the right to license or sublicense the
JDA Intellectual Property.
8.4. Right
of First Refusal Process.
(a) Notice
of Proposed Transfer. Before
effecting any proposed license or transfer to which Section
8.2 or
Section
8.3 applies
(the “Proposed
License”), MCEL
shall give written notice to Dow (i) describing terms of the Proposed License
and all other terms material to such Proposed License (the “License
Notice”). MCEL
shall also certify to Dow that the Proposed License is a bona fide transaction
and that the third party licensee or transferee is ready, willing and able
(financially and otherwise) to enter into the Proposed License.
(b) Exercise
of Right of First Refusal. At any
time within the ten (10)-Business Day period immediately following the receipt
of the License Notice, Dow may elect to exercise the right of first refusal
under Section
8.2 or
Section
8.3, as
applicable. The entering into of any Proposed License pursuant to the exercise
of any such right of first refusal shall in no
event be held more than thirty (30)-Business Days after Dow’s election to
exercise such right of first refusal.
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(c) Proposed
License to a Third Party Licensee. If (i)
Dow fails to exercise the right of first refusal under Section
8.2 or
Section
8.3, as
applicable, within such ten (10)-Business Day period following receipt of the
License Notice on substantially similar terms as the terms set forth in the
License Notice or (ii) Dow fails to enter into the Proposed License within the
period specified therefor in Section
8.4(b), then
MCEL may, not later than thirty (30)-Business Days following the later of clause
(i) and clause (ii) of this sentence, enter into the Proposed License on the
terms and conditions described in such License Notice. Any proposed license on
terms and conditions materially different from those described in the License
Notice, as well as any proposed license by MCEL after the expiration of such
30-Business Day period, shall again be subject to the right of first refusal
under Section
8.2 or
Section
8.3, as
applicable, and shall require compliance by MCEL with the procedure described in
this Section
8.4.
9. Representations
and Warranties of MCEL. MCEL
makes the representations and warranties set forth below in this Section
9.
9.1. General
Representations and Warranties.
(a) Corporate
Power and Authorization. MCEL
has all requisite legal and corporate power and authority to enter into this
Agreement and perform its obligations in accordance with the terms of this
Agreement. The execution and delivery of this Agreement by MCEL and the
consummation by it of the transactions contemplated hereby have been duly
authorized by all necessary action on the part of MCEL and no further action is
required by MCEL. This Agreement has been duly executed and delivered by MCEL
and constitutes the valid and binding obligation of MCEL enforceable against
MCEL in accordance with its respective terms except (a) as limited by applicable
bankruptcy, insolvency, reorganization, moratorium, fraudulent conveyance, or
other laws of general application relating to or affecting the enforcement of
creditors’ rights generally and (b) as limited by laws relating to the
availability of specific performance, injunctive relief, or other equitable
remedies.
(b) Filings,
Consents and Approvals. MCEL is
not required to obtain any consent, waiver, authorization or order of, give any
notice to, or make any filing or registration with, any court or other federal,
state, local or other governmental authority or other Person in connection with
the execution, delivery and performance by MCEL of this Agreement in accordance
with its terms.
9.2. MCEL
Intellectual Property. Except
as stated on Schedule
9.2:
(a) No
MCEL-Contributed Intellectual Property or product or service of MCEL related to
MCEL-Contributed Intellectual Property is subject to any proceeding or
outstanding decree, order, judgment, agreement, contract or stipulation
restricting in any manner the use, transfer or licensing thereof by MCEL, or
which may affect the validity, use or enforceability of such MCEL-Contributed
Intellectual Property. Each item of registered MCEL-Contributed Intellectual
Property is presumed valid and subsisting. All necessary registration,
maintenance and renewal fees currently due in connection with registered
MCEL-Contributed Intellectual Property have been made and all necessary
documents, recordations and certifications in connection with such registered
MCEL-Contributed Intellectual Property have been filed with the relevant patent,
copyright, trademark or other Government Authority for the purpose of
maintaining such registered MCEL-Contributed Intellectual Property.
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(b) MCEL owns
and has exclusive title to, or has licenses (sufficient for the conduct of the
business of MCEL as currently conducted and as proposed to be conducted) to,
each item of MCEL-Contributed Intellectual Property used in connection with the
conduct of the business of MCEL as currently conducted and as proposed to be
conducted free and clear of any lien, and MCEL is the exclusive owner or
exclusive licensee of all trademarks and service marks, trade names and domain
names used in connection with the operation or conduct of the business of MCEL,
free and clear of all liens.
(c) MCEL owns
exclusively all copyrighted works that are MCEL products or which MCEL otherwise
expressly purports to own, free and clear of all liens.
(d) To the
extent that any MCEL-Contributed Intellectual Property has been developed or
created by a third party for MCEL, MCEL has a written agreement with such third
party with respect thereto and MCEL thereby either (i) has obtained ownership of
and is the exclusive owner of, or (ii) has obtained a license (sufficient for
the conduct of the business of MCEL as currently conducted and as proposed to be
conducted, including MCEL’s development activities contemplated under the Joint
Development Agreement) to all of such third party’s MCEL-Contributed
Intellectual Property in such work, material or invention by operation of law or
by valid assignment.
(e) All
contracts relating to the MCEL-Contributed Intellectual Property are in full
force and effect. The consummation of the transactions contemplated by this
Agreement will neither violate nor result in a breach, modification,
cancellation, termination or suspension of any of such contracts. MCEL is in
compliance in all material respects with all such contracts and has not breached
any material term of any such contract. To the knowledge of MCEL, all other
parties to such contracts are in compliance in all respects with all such
contracts and have not breached any term of any such contract.
(f) To MCEL’s
knowledge, the operation of the business of MCEL as it is currently conducted
and as proposed to be conducted, including MCEL’s development activities
contemplated hereby, has not, does not and will not infringe or misappropriate
in any manner the intellectual property of any third party or constitute unfair
competition or trade practices under the applicable laws of any
jurisdiction.
(g) To MCEL’s
knowledge, MCEL has not received written notice from any third party or any
other overt threats from any third party, that the operation of the business of
MCEL as it is currently conducted and as proposed to be conducted, or any act,
product or service of MCEL, infringes or misappropriates the intellectual
property of any third party or constitutes unfair competition or trade practices
under the applicable laws of any jurisdiction.
(h) To the
knowledge of MCEL, no Person has or is infringing or misappropriating any
MCEL-Contributed Intellectual Property.
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(i) MCEL has
taken steps which it believes reasonable to protect the rights of MCEL in the
Proprietary Information of MCEL or any trade secrets or confidential information
of third parties used, and, without limiting the foregoing, MCEL has enforced a
policy requiring each employee, consultant and independent contractor to execute
a proprietary information/confidentiality agreement in substantially the form
provided to Dow, and except under confidentiality obligations, or in connection
with pursuing patent rights by filing applications for patents in the U.S. or
foreign patent and trademark offices, there has not been any disclosure by MCEL
of any such trade secrets or confidential information.
9.3. Disclaimer. EXCEPT
FOR THE REPRESENTATIONS AND WARRANTIES PROVIDED IN THIS AGREEMENT, THE JOINT
DEVELOPMENT AGREEMENT, AND THE PATENT ASSIGNMENT AGREEMENT, MCEL MAKES NO
REPRESENTATIONS WITH RESPECT TO MCEL-CONTRIBUTED INTELLECTUAL PROPERTY AND
EXPLICITLY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE OR OTHERWISE ARISING FROM A COURSE OF DEALING OR USAGE OF
TRADE WITH RESPECT TO MCEL-CONTRIBUTED INTELLECTUAL PROPERTY OR REPRESENTATIONS
AND WARRANTIES OF NON-INFRINGEMENT.
9.4. JDA
Intellectual Property. Except
as stated on Schedule
9.4:
(a) To MCEL’s
knowledge, no JDA Intellectual Property or JDA Product or service of MCEL
related to JDA Intellectual Property is subject to any proceeding or outstanding
decree, order, judgment, agreement, contract or stipulation restricting in any
manner the use, transfer or licensing thereof by MCEL, or which may affect the
validity, use or enforceability of such JDA Intellectual Property. Each item of
registered JDA Intellectual Property is presumed valid and subsisting. All
necessary registration, maintenance and renewal fees currently due in connection
with registered JDA Intellectual Property have been made and all necessary
documents, recordations and certifications in connection with such registered
JDA Intellectual Property have been filed with the relevant patent, copyright,
trademark or other Government Authority for the purpose of maintaining such
registered JDA Intellectual Property.
(b) MCEL owns
and has exclusive title to, or has licenses (sufficient for the conduct of the
business of MCEL as currently conducted and as proposed to be conducted) to,
each item of JDA Intellectual Property used in connection with the conduct of
the business of MCEL as currently conducted and as proposed to be conducted free
and clear of any lien, and MCEL is the exclusive owner or exclusive licensee of
all trademarks and service marks, trade names and domain names used in
connection with the operation or conduct of the business of MCEL, free and clear
of all liens.
(c) MCEL owns
exclusively all copyrighted works that are MCEL products or which MCEL otherwise
expressly purports to own, free and clear of all liens.
(d) To the
extent that any JDA Intellectual Property has been developed or created by a
third party for MCEL, MCEL has a written agreement with such third party with
respect thereto and MCEL thereby either (i) has obtained ownership of and is the
exclusive owner of, or (ii) has obtained a license (sufficient for the conduct
of the business of MCEL as currently conducted and as proposed to be conducted)
to all of such third party’s JDA Intellectual Property in such work, material or
invention by operation of law or by valid assignment.
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(e) All
contracts relating to the JDA Intellectual Property are in full force and
effect. The consummation of the transactions contemplated by this Agreement will
neither violate nor result in a breach, modification, cancellation, termination
or suspension of any of such contracts. MCEL is in compliance in all material
respects with all such contracts and has not breached any material term of any
such contract. To the knowledge of MCEL, all other parties to such contracts are
in compliance in all respects with all such contracts and have not breached any
term of any such contract.
(f) To MCEL’s
knowledge, the operation of the business of MCEL as it is currently conducted
and as proposed to be conducted, including MCEL’s development activities
contemplated hereby, has not, does not and will not infringe or misappropriate
in any manner the intellectual property of any third party or constitute unfair
competition or trade practices under the applicable laws of any
jurisdiction.
(g) To MCEL’s
knowledge, MCEL has not received written notice from any third party or any
other overt threats from any third party, that the operation of the business of
MCEL as it is currently conducted and as proposed to be conducted, or any act,
product or service of MCEL, infringes or misappropriates the intellectual
property of any third party or constitutes unfair competition or trade practices
under the applicable laws of any jurisdiction.
(h) To the
knowledge of MCEL, no Person has or is infringing or misappropriating any JDA
Intellectual Property.
(i) MCEL has
taken steps which it believes to be reasonable to protect the rights of MCEL in
the Proprietary Information of MCEL or any trade secrets or confidential
information of third parties used, and, without limiting the foregoing, MCEL has
enforced a policy requiring each employee, consultant and independent contractor
to execute a proprietary information/confidentiality agreement in substantially
the form provided to Dow and
except under confidentiality obligations, or in connection with pursuing patent
rights by filing applications for patents in the U.S. or foreign patent and
trademark offices, there has not been any disclosure by MCEL of any such
Proprietary Information.
9.5. Disclaimer. EXCEPT
FOR THE REPRESENTATIONS AND WARRANTIES PROVIDED IN THIS AGREEMENT, THE JOINT
DEVELOPMENT AGREEMENT, AND THE PATENT ASSIGNMENT AGREEMENT, MCEL MAKES NO
REPRESENTATIONS WITH RESPECT TO JDA INTELLECTUAL PROPERTY AND EXPLICITLY
DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE OR OTHERWISE ARISING FROM A COURSE OF DEALING OR USAGE OF
TRADE WITH RESPECT TO JDA INTELLECTUAL PROPERTY OR REPRESENTATIONS AND
WARRANTIES OF NON-INFRINGEMENT.
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10. Representations
and Warranties By Dow. Dow
makes the representations and warranties set forth below in this Section
10.
10.1. General
Representations and Warranties.
(a) Corporate
Authority. Dow has
all requisite legal and corporate power and authority to enter into this
Agreement. The execution and delivery of this Agreement and the consummation by
it of the transactions contemplated hereby have been duly authorized by all
necessary action on the part of Dow. This Agreement has been duly executed and
delivered by Dow and constitutes the valid and binding obligation of Dow
enforceable against it in accordance with its terms except (a) as limited by
applicable bankruptcy, insolvency, reorganization, moratorium, fraudulent
conveyance, or other laws of general application relating to or affecting the
enforcement of creditors’ rights generally and (b) as limited by laws relating
to the availability of specific performance, injunctive relief, or other
equitable remedies
(b) Binding
Obligations. Dow is
not required to obtain any consent, waiver, authorization or order of, give any
notice to, or make any filing or registration with, any court or other federal,
state, local or other governmental authority or other Person in connection with
the execution, delivery and performance by Dow of this Agreement in accordance
with its terms.
10.2. Disclaimer. DOW
MAKES NO OTHER REPRESENTATIONS WITH RESPECT TO DOW-LICENSED INTELLECTUAL
PROPERTY AND EXPLICITLY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE OR OTHERWISE ARISING FROM A COURSE OF DEALING,
USAGE OF TRADE WITH RESPECT TO DOW-LICENSED INTELLECTUAL PROPERTY OR
REPRESENTATIONS AND WARRANTIES OF NON-INFRINGEMENT.
11. Further
Agreements with respect to JDA Intellectual Property and MCEL-Contributed
Intellectual Property.
11.1. JDA
Intellectual Property and MCEL-Contributed Intellectual Property. MCEL
shall use reasonable best efforts to ensure that no JDA Intellectual Property,
MCEL-Contributed Intellectual Property or JDA Product or service of MCEL related
to JDA Intellectual Property or MCEL-Contributed Intellectual Property becomes
subject to any proceeding or outstanding decree, order, judgment, agreement,
contract or stipulation restricting in any manner the use, transfer or licensing
thereof by MCEL, or which may affect the validity, use or enforceability of such
JDA Intellectual Property or MCEL-Contributed Intellectual Property, as
applicable. MCEL shall use reasonable best efforts to ensure that MCEL owns and
has good and exclusive title to, or has licenses (sufficient for the conduct of
the business of MCEL as currently conducted and as proposed to be conducted) to,
each item of JDA Intellectual Property and MCEL-Contributed Intellectual
Property used in connection with the conduct of the business of MCEL as
currently conducted and as proposed to be conducted free and clear of any
lien.
11.2. Third
Party Development. To the
extent that any JDA Intellectual Property or MCEL-Contributed Intellectual
Property is developed or created by a third party (other than Dow) for MCEL,
MCEL shall have a written agreement with such third party with respect thereto
under which MCEL shall either (i) have obtained ownership of and be the
exclusive owner of, or (ii) have obtained a license (sufficient for the conduct
of the business of MCEL as currently conducted and as proposed to be conducted)
to all of such third party’s work, material or invention in such JDA
Intellectual Property or MCEL-Contributed Intellectual Property, as applicable,
by operation of law or by valid assignment.
11
11.3. Contracts. MCEL
shall remain at all times in compliance with all contracts relating to the JDA
Intellectual Property or MCEL-Contributed Intellectual Property and has not
materially breached any term of any such contract.
11.4. Operation
of Business. MCEL
will operate its business in a manner which will not knowingly infringe or
misappropriate in any manner the intellectual property of any third party or
constitute unfair competition or trade practices under the applicable laws of
any jurisdiction. MCEL shall notify Dow immediately upon receiving notice from
any Person or Government Authority of notice any other overt threats that the
operation of the business of MCEL infringes or misappropriates the intellectual
property of such third party or constitutes unfair competition or trade
practices under the applicable laws of any jurisdiction
11.5. Protection
Measures. MCEL
shall take all reasonable steps to protect the rights of MCEL in the Proprietary
Information of MCEL or any trade secrets or confidential information of third
parties used, and, without limiting the foregoing, MCEL shall enforce a policy
requiring each employee, consultant and independent contractor to execute a
proprietary information/confidentiality agreement in substantially the form
previously provided to Dow, and except under confidentiality obligations, or in
connection with pursuing patent rights by filing applications for patents in the
U.S. or foreign patent and trademark offices, there shall not be any disclosure
by MCEL of any such Proprietary Information.
12. Infringement
Claims.
(a) Each
Party shall provide the other Party hereto with prompt notice of any alleged,
actual or threatened infringement or other improper use of any Licensed
Intellectual Property of which such Party becomes aware. Upon discovery of such
infringement, the Parties agree to confer and decide upon an appropriate course
of action.
(b) Dow
retains the right, but not the obligation, to take action to institute and
prosecute any actions for any infringement or alleged infringement, and
otherwise to take appropriate action with respect to Dow-Licensed Intellectual
Property. In the event Dow elects not to take any such action but MCEL can
demonstrate that its business is directly affected by such infringement, MCEL
may request authorization from Dow to institute actions on its behalf and
expense, which request shall be considered by Dow in good faith. The Party
instituting such action, if any, shall be solely responsible for all costs and
expenses (including attorneys’ fees) of prosecuting such actions. Any damages,
costs or other amounts recovered through such proceedings for such purposes
shall be retained by such Party. In the event Dow authorizes MCEL to institute
any such action, Dow shall join such proceeding if necessary as a party and
shall provide MCEL with all reasonably requested assistance in connection with
such proceedings, and MCEL shall reimburse Dow’s reasonable out-of-pocket costs
of providing such assistance.
12
(c) MCEL
retains the right, but not the obligation, to take action to institute and
prosecute any actions for any infringement or alleged infringement, and
otherwise to take appropriate action with respect to JDA Intellectual Property.
In the event MCEL elects not to take any such action but Dow can demonstrate
that its business is directly affected by such infringement, Dow may request
authorization from MCEL to institute actions on its behalf and expense, which
request shall be considered by MCEL in good faith. The Party instituting such
action, if any, shall be solely responsible for all costs and expenses
(including attorneys’ fees) of prosecuting such actions. Any damages, costs or
other amounts recovered through such proceedings for such purposes shall be
retained by such Party. In the event MCEL authorizes Dow to institute any such
action, MCEL shall join such proceeding if necessary as a party and shall
provide Dow with all reasonably requested assistance in connection with such
proceedings, and Dow shall reimburse MCEL’s reasonable out-of-pocket costs of
providing such assistance.
13. Other
Agreements.
13.1. Confidentiality. Each
Party agrees to protect the Proprietary Information of the other Party
(including, without limitation, any Proprietary Information that is or is
related to the Licensed Intellectual Property) in accordance with the terms of
the Joint Development Agreement.
13.2. Cooperation;
Further Assurances. Each of
the Parties agree to execute and deliver, or cause to be executed and delivered,
such documents and take such further actions as the other Party shall reasonably
request for the purpose of more fully giving effect to the provisions of this
Agreement, including without limitation, executing powers of attorney,
assignment documents, and providing notice of filings and copies of all
applications, studies, prosecution documents (both to and from any patent office
or authority), and related documents and correspondence, as the other Party
shall from time to time reasonably request. Each Party, upon the reasonable
request of the other Party, agrees to perform all further acts and execute,
acknowledge and deliver any documents which may be reasonably necessary,
appropriate or desirable to carry out the intent and purposes of this
Agreement.
13.3. Costs. Each
Party shall bear all costs and expenses that it incurs in performing its
obligations under this Agreement (including, in the case of MCEL, its
obligations associated with and with respect to all patent and copyright
applications or registrations with respect to the JDA Intellectual Property and
securing its intellectual property rights for any JDA Intellectual Property
developed under the Joint Development Agreement).
13.4. Taxes. Each
Licensee Party shall pay to the Licensor Party or the relevant tax authority (a)
all sales, use, value added and all other taxes, duties and other similar
government charges and fees, other than income taxes, imposed on the Licensor
Party (as the case may be) under this Agreement and (b) any additional taxes,
charges or fees imposed on such Licensor Party as a result of any reimbursement
of taxes under this Section
13.4.
13
14. Indemnification.
14.1. Survival. The
representations and warranties of the Parties contained or made pursuant to in
this Agreement shall survive the execution and delivery of this Agreement and
shall continue in full force and effect for fifteen (15) years after the
termination of the Joint Development Agreement. The covenants and agreements set
forth in this Agreement that, by their terms, are to have effect after the
termination of the Joint Development Agreement shall survive for the period
contemplated by such covenants and agreements, or, if no period is expressly set
forth, for the applicable statute of limitations.
14.2. Indemnification
by MCEL. MCEL
hereby indemnifies Dow and its Affiliates, directors, officers, employees and
agents against, and agrees to hold each of them harmless from, any and all
Damages incurred or suffered by any of them:
(i) arising
out of or related in any way to any misrepresentation or breach of any
representation or warranty made by MCEL in this Agreement;
(ii) arising
out of or related in any way to any breach of any covenant or agreement to be
performed by MCEL pursuant to this Agreement;
(iii) arising
out of or related in any way to the infringement by MCEL (including without
limitation through use by MCEL or its licensees of the MCEL-Contributed
Intellectual Property or the JDA Intellectual Property) of the intellectual
property rights of a third party; or
(iv) arising
out of violations by MCEL of applicable law.
14.3. Indemnification
by Dow. Dow
hereby indemnifies MCEL and its Affiliates, directors, officers, employees and
agents against, and agrees to hold each of them harmless from, any and all
claims, demands, costs, expenses, obligations, liabilities, damages, recoveries
and deficiencies, including, without limitation, interest, penalties, court
costs, costs and expenses (including attorney fees) (the “Damages”)
incurred or suffered by any of them:
(i) arising
out of or related in any way to any misrepresentation or breach of any
representation or warranty made by Dow in this Agreement;
(ii) arising
out of or related in any way to any breach of any covenant or agreement to be
performed by Dow pursuant to this Agreement;
(iii) arising
out of the infringement by Dow (including without limitation through use by Dow
or its licensees of the Dow-Licensed Intellectual Property or the JDA
Intellectual Property) of the intellectual property rights of a third party; or
(iv) arising
out of violations by Dow of applicable law.
14
14.4. Indemnification
Procedures.
(a) If any of
Dow or any of their directors, officers, employees and agents, seek
indemnification pursuant to Section
14.2, or MCEL
or any of their Affiliates or any of their directors, officers, employees and
agents, seek indemnification pursuant to Section
14.3, the
Person seeking indemnification (the “Indemnified
Party”) shall
give written notice to the party from whom such indemnification is sought (the
“Indemnifying
Party”)
promptly (and in any event within 30 days) after the Indemnified Party becomes
aware of the facts giving rise to such claim for indemnification (an
“Indemnified
Claim”)
specifying in reasonable detail the factual basis of the Indemnified Claim,
stating the amount of the Damages, if known, the method of computation thereof,
containing a reference to the provision of this Agreement in respect of which
such Indemnified Claim arises and demanding indemnification therefor. The
failure of an Indemnified Party to provide notice in accordance with this
Section
14.4 shall
not constitute a waiver of that party’s claims to indemnification pursuant to
Section
14.2 or
Section
14.3, as
applicable, except to the extent that any such failure or delay in giving notice
causes the amounts paid by the Indemnifying Party to be greater than they
otherwise would have been or otherwise results in prejudice to the Indemnifying
Party. If the Indemnified Claim arises from the assertion of any claim, or the
commencement of any suit, action or proceeding brought by a Person that is not a
party hereto (a “Third
Party Claim”), any
such notice to the Indemnifying Party shall be accompanied by a copy of any
papers theretofore served on or delivered to the Indemnified Party in connection
with such Third Party Claim.
(b) Upon
receipt of notice of a Third Party Claim from an Indemnified Party pursuant to
Section
14.4(a), the
Indemnifying Party will be entitled to assume the defense and control of such
Third Party Claim subject to the provisions of this Section
14.4. After
written notice by the Indemnifying Party to the Indemnified Party of its
election to assume the defense and control of a Third Party Claim, the
Indemnifying Party shall not be liable to such Indemnified Party for any legal
fees or expenses subsequently incurred by such Indemnified Party in connection
therewith. Notwithstanding anything in this Section
14.4 to the
contrary, if the Indemnifying Party does not assume defense and control of a
Third Party Claim as provided in this Section
14.4, the
Indemnified Party shall have the right to defend such Third Party Claim, subject
to the limitations set forth in this Section
14.4, in such
manner as it may deem appropriate. Whether the Indemnifying Party or the
Indemnified Party is defending and controlling any such Third Party Claim, they
shall select counsel, contractors, experts and consultants of recognized
standing and competence, shall take all steps necessary in the investigation,
defense or settlement thereof, and shall at all times diligently and promptly
pursue the resolution thereof. The party conducting the defense thereof shall at
all times act as if all Damages relating to the Third Party Claim were for its
own account and shall act in good faith and with reasonable prudence to minimize
Damages therefrom. The Indemnified Party shall, and shall cause each of its
Affiliates, directors, officers, employees, and agents to, cooperate fully with
the Indemnifying Party in connection with any Third Party Claim.
(c) The
Indemnifying Party shall be authorized to consent to a settlement of, or the
entry of any judgment arising from, any Third Party Claims, and the Indemnified
Party shall consent to a settlement of, or the entry of any judgment arising
from, such Third Party Claims; provided, that the Indemnifying Party shall (1)
pay or cause to be paid all amounts arising out of such settlement or judgment
concurrently with the effectiveness thereof; (2) shall not encumber any of the
assets of any Indemnified Party or agree to any restriction or condition that
would apply to such Indemnified Party or to the conduct of that party’s
business; and (3) shall obtain, as a condition of any settlement or other
resolution, a complete and irrevocable release of each Indemnified Party and
such settlement or judgment (x) shall not require any admission of liability,
fault or wrongdoing by any Indemnified Party or impose any non-monetary
obligation on an Indemnified Party (such as, by way of example, and not in
limitation, injunctive relief) and (y) shall not require any admission or
statement that could reasonably be expected to materially impair, disparage or
otherwise adversely affect, the business reputation of the Indemnified Party.
Except to the extent of the foregoing, no settlement or entry of judgment in
respect of any Third Party Claim shall be consented to by any Indemnifying Party
or Indemnified Party without the express written consent of the other party,
which consent shall not be unreasonably withheld or delayed.
15
(d) If an
Indemnifying Party makes any payment on an Indemnified Claim, the Indemnifying
Party shall be subrogated, to the extent of such payment, to all rights and
remedies of the Indemnified Party to any insurance benefits or other claims or
benefits of the Indemnified Party with respect to such claim.
14.5. Limitation. DOW
SHALL NOT UNDER ANY CIRCUMSTANCES BE LIABLE TO MCEL FOR ANY INDIRECT,
INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES (INCLUDING LOSS OF PROFITS,
REVENUE, OR BUSINESS) RESULTING FROM OR IN ANY WAY RELATED TO THIS AGREEMENT, OR
THE TERMINATION OF THIS AGREEMENT, OR ARISING OUT OF OR ALLEGED TO HAVE ARISEN
OUT OF A BREACH OF THIS AGREEMENT. THIS LIMITATION APPLIES REGARDLESS OF WHETHER
SUCH DAMAGES ARE SOUGHT BASED ON THEORIES OF CONTRACT OR TORT OR ANY OTHER LEGAL
THEORY. THE LIMITATIONS IN THIS SECTION 14.5 SHALL APPLY NOTWITHSTANDING ANY
FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY. NOTWITHSTANDING ANY OTHER
PROVISION IN THIS AGREEMENT TO THE CONTRARY, DOW’S AGGREGATE LIABILITY TO MCEL
AND ANY THIRD PERSONS FOR ALL DAMAGES AND LOSSES, DIRECT OR INDIRECT, ARISING
UNDER OR IN CONNECTION WITH THIS AGREEMENT AND THE JOINT DEVELOPMENT AGREEMENT,
WHETHER IN CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE SHALL BE LIMITED
TO ONE MILLION U.S. $250,000.
14.6. Exclusion
of Warranties. THE
DOW-LICENSED INTELLECTUAL PROPERTY IS PROVIDED TO MCEL “AS IS,” WITH ALL FAULTS
AND WITHOUT ANY WARRANTY, CONDITION, GUARANTY OR REPRESENTATION OF ANY KIND
WHATSOEVER, EXPRESS OR IMPLIED, IN LAW OR IN FACT, ORAL OR IN WRITING, INCLUDING
WITHOUT LIMITATION ANY WARRANTY, CONDITION, GUARANTEE OR REPRESENTATION OF
ACCURACY, COMPLETENESS, MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR
NON-INFRINGEMENT OR THE LIKE. NO ORAL OR WRITTEN INFORMATION OR ADVICE GIVEN BY
DOW OR ITS EMPLOYEES SHALL CREATE A WARRANTY, CONDITION, GUARANTEE OR
REPRESENTATION, OR IN ANY WAY INCREASE THE SCOPE OF THIS WARRANTY, AND MCEL
SHALL NOT RELY ON ANY SUCH INFORMATION OR ADVICE.
14.7. Exclusion
of Warranties. EXCEPT
AS OTHERWISE SET FORTH IN THIS AGREEMENT, THE MCEL-CONTRIBUTED INTELLECTUAL
PROPERTY AND JDA INTELLECTUAL PROPERTY IS PROVIDED TO DOW WITHOUT ANY WARRANTY,
CONDITION, GUARANTY OR REPRESENTATION OF ANY KIND WHATSOEVER, EXPRESS OR
IMPLIED, IN LAW OR IN FACT, ORAL OR IN WRITING, INCLUDING WITHOUT LIMITATION ANY
WARRANTY, CONDITION, GUARANTEE OR REPRESENTATION OF ACCURACY, COMPLETENESS,
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR THE LIKE. NO ORAL OR
WRITTEN INFORMATION OR ADVICE GIVEN BY MCEL OR ITS EMPLOYEES SHALL CREATE A
WARRANTY, CONDITION, GUARANTEE OR REPRESENTATION, OR IN ANY WAY INCREASE THE
SCOPE OF THIS WARRANTY, AND DOW SHALL NOT RELY ON ANY SUCH INFORMATION OR
ADVICE.
16
14.8. Third
Parties. Neither
Licensee Party shall provide any third party with any warranty on behalf of
Licensor Party, and each Licensee Party shall include the Licensor Party
exclusions and limitations set forth in this Section
14 in any
agreement with any third party regarding the Licensed Intellectual
Property.
15. Termination.
15.1. Termination
by Dow as Licensor Party. Dow, as
Licensor Party, may terminate any or all of the licenses granted by it to MCEL,
as Licensee Party, if:
(a) MCEL
fails to comply in any material respect with any of its obligations hereunder as
Licensee Party and such noncompliance shall not have been remedied within 30
days following receipt by MCEL of written notice from Dow specifying the nature
of such failure; provided,
however, that in
the event such material noncompliance relates solely to one or more of the
licenses granted hereunder and not all of such licenses, then only those
license(s) to which such noncompliance so relates shall terminate and such other
licenses shall remain in full force and effect, unless such noncompliance was
willful, in which case all such licenses granted to MCEL shall terminate;
or
(b) A
Bankruptcy Event occurs with respect to MCEL.
15.2. Termination
by MCEL as Licensor Party. MCEL,
as Licensor Party, may terminate any or all of the licenses granted by it to
Dow, as Licensee Party, if:
(a) Dow fails
to comply in any material respect with any of its obligations hereunder as
Licensee Party and such noncompliance shall not have been remedied within 30
days following receipt by Dow of written notice from MCEL specifying the nature
of such failure; provided,
however, that in
the event such material noncompliance relates solely to one or more of the
licenses granted hereunder and not all of such licenses, then only those
license(s) to which such noncompliance so relates shall terminate and such other
licenses shall remain in full force and effect, unless such noncompliance was
willful, in which case all such licenses granted to Dow shall terminate;
or
(b) A
Bankruptcy Event occurs with respect to Dow.
15.3. Termination
of License by Licensee. In each
case, the Licensee Party may terminate any or all of the licenses granted to it
hereunder upon ninety (90) days’ written notice to Licensor.
15.4. Effect
of Termination. Upon
termination of the licenses to any Licensed Intellectual Property granted to the
Licensee Party under this Agreement, (i) all rights granted hereunder to the
Licensee Party in relation to such license(s) shall cease and shall revert to
the Licensor Party, (ii) the Licensee Party shall cease to use such Licensed
Intellectual Property which is the subject of such termination, (iii) any
Proprietary Information relating to the Licensed Intellectual Property of the
Licensor Party shall by returned to the Licensor and (iv) the Licensee Party
shall deliver to the Licensor Party a certification made by an officer of the
Licensee Party, certifying that the Licensee Party has complied with all of its
termination obligations contemplated by this Section
15.
17
15.5. Alternative
Dispute Resolution. Any
unresolved controversy or claim arising out of or relating to this Agreement,
except as (a) otherwise provided in this Agreement, or (b) any such
controversies or claims arising out of either party’s intellectual property
rights for which a provisional remedy or equitable relief is sought, shall be
submitted to arbitration by one arbitrator mutually agreed upon by the Parties,
and if no agreement can be reached within 30 days after names of potential
arbitrators have been proposed by the American Arbitration Association (the
“AAA”), then
by one arbitrator having reasonable experience in corporate finance transactions
of the type provided for in this Agreement and who is chosen by the AAA. The
arbitration shall take place in the District of Columbia, in accordance with the
AAA rules then in effect, and judgment upon any award rendered in such
arbitration will be binding and may be entered in any court having jurisdiction
thereof. There shall be limited discovery prior to the arbitration hearing as
follows: (a) exchange of witness lists and copies of documentary evidence and
documents relating to or arising out of the issues to be arbitrated,
(b) depositions of all party witnesses and (c) such other depositions as
may be allowed by the arbitrators upon a showing of good cause. Depositions
shall be conducted in accordance with the Federal Rules of Civil Procedure, the
arbitrator shall be required to provide in writing to the Parties the basis for
the award or order of such arbitrator, and a court reporter shall record all
hearings, with such record constituting the official transcript of such
proceedings. The arbitrator shall award reasonable attorney’s fees, costs, and
necessary disbursements in addition to any other relief to which the arbitrator
determines a party to be entitled. Each of the Parties to this Agreement
consents to personal jurisdiction for any equitable action sought in the U.S.
District Court for the District of Columbia or any court of the District of
Columbia having subject matter jurisdiction.
16. General
Provisions.
16.1. Transfer;
Successors and Assigns. No Party
shall assign any rights or obligations under this Agreement without the prior
written consent of the other Party, provided,
however, that
Dow may assign any and all rights and obligations under this Agreement to any of
its Affiliates. The terms and conditions of this Agreement shall inure to the
benefit of and be binding upon the respective successors and assigns of the
parties. Nothing in this Agreement, express or implied, is intended to confer
upon any Party other than the parties hereto or their respective successors and
assigns any rights, remedies, obligations, or liabilities under or by reason of
this Agreement, except as expressly provided in this Agreement.
16.2. Governing
Law. This
Agreement shall be governed by and construed in accordance with the laws of the
State of Delaware without regard to its principles of conflicts of
laws.
16.3. Counterparts. This
Agreement may be executed in two (2) or more counterparts, each of which shall
be deemed an original, but all of which together shall constitute one and the
same instrument. This Agreement may also be executed and delivered by facsimile
signature and in two or more counterparts, each of which shall be deemed an
original, but all of which together shall constitute one and the same
instrument.
16.4. Construction
of Certain Terms. The
titles of the articles, sections, and subsections of this Agreement are for
convenience of reference only and are not to be considered in construing this
Agreement. Wherever the words “including,” “include” or “includes” are used in
this Agreement, they shall be deemed followed by the words “without limitation.”
References to any gender shall be deemed to mean any gender. The Parties hereto
have participated jointly in the negotiation and drafting of this Agreement. In
the event an ambiguity or question of intent or interpretation arises, this
Agreement shall be construed as if drafted jointly by the parties hereto, and no
presumption or burden of proof shall arise favoring or disfavoring any Party by
virtue of the authorship of any provisions of this Agreement.
16.5. Notices. All
notices and other communications given or made pursuant to this Agreement shall
be in writing and shall be deemed effectively given: (i) upon personal delivery
to the Party to be notified, (ii) when sent by confirmed electronic mail or
facsimile if sent during normal business hours of the recipient, and if not so
confirmed, then on the next Business Day, (iii) five (5) days after having been
sent by registered or certified mail, return receipt requested, postage prepaid,
or (iii) one (1) day after deposit with a nationally recognized overnight
courier, specifying next day delivery, with written verification of receipt. All
communications shall be sent to the address or facsimile number set forth below
or to such other address or facsimile number as delivered by notice to the other
in accordance with this Section
16.5:
If to
MCEL:
0
Xxxxxxxxxx Xxx Xxxx
Xxxxxxxxx,
Xxx Xxxxxx 00000
Attention:
President
Facsimile:
732.542.4010
With a
copy to:
Dickstein,
Shapiro, Xxxxx & Xxxxxxxx LLP
0000 X
Xxxxxx, X.X.
Xxxxxxxxxx,
X.X. 00000-0000
Attention:
Xxxx Xxxxxxxxx
Facsimile:
202.887.0689
18
If to
Dow:
The Dow
Chemical Company
0000 Xxx
Xxxxxx
Xxxxxxx,
Xxxxxxxx 00000
Attention:
Director, Natural Resources Platform, Dow Ventures
Facsimile:
989.638.7133
With a
copy to:
The Dow
Chemical Company
0000 Xxx
Xxxxxx
Xxxxxxx,
Xxxxxxxx 00000
Attention:
Business Counsel, Dow Ventures
Facsimile:
989.636.7594
King
& Spalding LLP
0000
Xxxxxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx,
X.X. 00000
Attention:
Xxxxx Xxxxxxx
Facsimile:
202.626.3737
16.6. Amendments
and Waivers. Neither
this Agreement nor any term of this Agreement may be amended, terminated or
waived without the written consent of both Parties.
16.7. Severability. The
invalidity of unenforceability of any provision hereof shall in no way affect
the validity or enforceability of any other provision.
16.8. Delays
or Omissions. No
delay or omission to exercise any right, power or remedy accruing to any Party
under this Agreement, upon any breach by or default of the other Party under
this Agreement, shall impair any such right, power or remedy of such
non-breaching or non-defaulting Party nor shall it be construed to be a waiver
of any such breach or default, or an acquiescence therein, or of or in any
similar breach or default thereafter occurring; nor shall any waiver of any
single breach or default be deemed a waiver of any other breach or default
theretofore or thereafter occurring. Any waiver, permit, consent or approval of
any kind or character on the part of any Party of any breach or default under
this Agreement, or any waiver on the part of any Party of any provisions or
conditions of this Agreement, must be in writing and shall be effective only to
the extent specifically set forth in such writing. All remedies, either under
this Agreement or by law or otherwise afforded to any Party, shall be cumulative
and not alternative.
16.9. Entire
Agreement. This
Agreement shall constitute the full and entire understanding and agreement
between the parties with respect to the subject matter hereof, and any other
written or oral agreement relating to the subject matter hereof existing between
the parties are expressly canceled.
16.10. Compliance
with Laws. In
executing the rights hereunder and as a restriction to the rights granted
herein, the Parties shall comply with all applicable laws, regulations and
orders in all applicable jurisdictions.
19
IN
WITNESS WHEREOF, the parties hereto have duly executed and delivered this
Agreement, as of the date first above written.
| MILLENNIUM CELL INC. | ||
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| By: | ||
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| Name Title | ||
| THE DOW CHEMICAL COMPANY | ||
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| By: | ||
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| Name Title | ||
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