LICENSE OF INTELLECTUAL PROPERTY
BY AND BETWEEN
FIBERITE, INC.
(AS LICENSOR)
AND
HEXCEL CORPORATION
(AS LICENSEE)
LICENSE OF INTELLECTUAL PROPERTY
THIS AGREEMENT is made and entered into as of this 29th day of August,
1997 by and between:
HEXCEL CORPORATION, a Delaware corporation, having a place of business
at Two Stamford Plaza, 000 Xxxxxxx Xxxx., 00xx Xxxxx, Xxxxxxxx, XX
00000, (hereinafter referred to as "Hexcel" or "Licensee")
AND
FIBERITE, INC., a Delaware corporation, having a place of business at
0000 Xxxx Xxxxxxxxxx Xxxxxx, Xxxxx, XX 00000 (hereinafter referred to
as "Fiberite" or "Licensor") (Licensee and Licensor are hereinafter
collectively referred to as the "Parties" and each individually a
"Party").
W I T N E S S E T H:
RECITALS
WHEREAS, Stamford FHI Acquisition Corp. ("Stamford") entered into a
Stock Purchase and Sale Agreement (the "Stock Purchase Agreement"),
dated as of April 20, 1997, by and among Stamford, Fiberite Holdings,
Inc., a Delaware corporation ("Fiberite Holdings") and the holders of
the capital stock of Fiberite Holdings, pursuant to which Stamford has
acquired 100% of the outstanding capital stock of Fiberite Holdings on
the date hereof;
WHEREAS, Fiberite Holdings owns 100% of the outstanding capital stock of
Fiberite.;
WHEREAS, Stamford has entered into an Amended and Restated Asset
Purchase Agreement (the "Hexcel Asset Purchase Agreement"), dated as of
August 25, 1997, by and among Stamford and Hexcel, pursuant to which
Stamford has, as of the date hereof, caused Fiberite to enter into the
Hexcel Asset Purchase Agreement and, subject to the terms and conditions
of the Hexcel Asset Purchase Agreement, to sell to Hexcel certain of
Fiberite's assets (the
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"Hexcel Assets") as more fully described in the Hexcel Asset Purchase
Agreement;
WHEREAS, Licensee desires to have the right to obtain a license to
certain intellectual property and to certain improvements thereon, and
Licensor is willing to grant such license upon the terms and conditions
hereinafter set forth;
NOW, THEREFORE, in consideration of the above, and the mutual promises set forth
below, Licensor and Licensee agree as follows:
1. DEFINITIONS
1.1 "Affiliate" shall mean, when used with respect to a specified Person,
any other Person that directly, or indirectly through one or more
intermediaries, Controls or is Controlled by or is under direct or indirect
common Control with the Person specified.
1.2 "Control" (including, with correlative meanings, "controlling",
"controlled by" and under "common control with") shall mean the possession,
directly or indirectly, of the power to direct or cause the direction of the
management and policies of a Person, whether through the ownership of voting
securities, by contract or otherwise.
1.3 "Effective Date" shall mean the later of the date of the closing of the
Hexcel Asset Purchase Agreement or the date on which the Remainder portion of
the Purchase Price is due pursuant to the Hexcel Asset Purchase Agreement.
1.4 "Improvements" shall mean evolutionary, but not revolutionary,
improvements in the Intellectual Property developed by Licensor or its
Affiliates on the one hand, or Licensee or its Affiliates on the other hand,
in each case, on or before the third anniversary of the Effective Date.
1.5 "Intellectual Property" shall mean, as shall exist on the Effective
Date, the formulations for the Products together with all classes or types of
patents and patent applications (including all reissues, divisions,
continuations and extensions thereof), test data, know how (whether
patentable or
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not), trade secrets, process control documents, qualification procedures,
tests and data and other technical information of Fiberite and its Affiliates
relating to the Products or prepregs based on the Products.
1.6 "Person" shall mean any natural person, firm, trust, unincorporated
organization, corporation, business trust, joint venture, association,
company, partnership or government, or any agency or political sub-division
thereof.
1.7 "Products" shall mean the Resin Systems and the Winona carbon/phenolic
mat material.
1.8 "Resin Systems" shall mean the Fiberite resin system families listed on
Schedule A.
1.9 "Satellite Business" shall mean the business of developing,
manufacturing and selling composite materials, or components thereof, for
incorporation into satellites.
1.10 "Satellite Intellectual Property" shall mean all classes or types of
patents and patent applications (including all reissues, divisions,
continuations and extensions thereof), test data, know how (whether
patentable or not), trade secrets, process control documents and other
technical information including without limitation, research and development
information, of Fiberite and its Affiliates used or under development for use
in the Satellite Business on or before the Effective Date, but not acquired
by Licensee under the Hexcel Asset Purchase Agreement.
2. LICENSES
2.1 LICENSE OF INTELLECTUAL PROPERTY
(a) Licensor for itself and its Affiliates hereby grants to Licensee
the following licenses on an irrevocable, perpetual, worldwide, royalty free
basis:
(i) The non-exclusive rights to use the Intellectual Property and
the Improvements developed by Licensor and its Affiliates in any field of
use, provided that with respect to Winona carbon/phenolic mat materials,
Licensee shall have no rights in the field of aircraft interiors.
(ii) The exclusive rights to use the Satellite Intellectual
Property in the Satellite Business.
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The license granted under this Section 2.1(a) may not be
sublicensed other than to Affiliates of Licensee for as long as such
sublicensee remains an Affiliate and each sublicense shall expressly state
that it is subject to the terms and conditions hereof. Licensee agrees to be
liable for any activities of a sublicensee which, if performed by Licensee,
would be a violation of this Agreement. Licensee shall give Licensor prompt
notice and a copy of any such sublicense and any amendment or modification
thereof.
(b) Licensee for itself and its Affiliates hereby grants to Licensor an
irrevocable, perpetual, worldwide, royalty-free, nonexclusive license to use
the Improvements developed by Licensee or its Affiliates in any field of use.
The license granted under this Section 2.1(b) may not be sublicensed other
than to Affiliates of Licensor for as long as such sublicensee remains an
Affiliate and each sublicense shall expressly state that it is subject to the
terms and conditions hereof. Licensor agrees to be liable for any activities
of a sublicensee which, if performed by Licensor, would be a violation of
this Agreement. Licensor shall give Licensee prompt notice and a copy of any
such sublicense and any amendment or modification thereof.
2.2 EXISTING RIGHTS OF PERSONS
The licenses granted pursuant to Section 2.1 (including any sublicense) shall
be subject to the rights of any Person who is not an Affiliate of Fiberite
Holdings or Fiberite under, or pursuant to, any agreement entered into by
Fiberite Holdings or Fiberite or any Affiliate or predecessor of any of them,
prior to the date hereof (including, without limitation that certain
agreement between Mitsubishi Kasei and ICI Composites Inc. dated September
25, 1992 (the "Mitsubishi Agreement")), or otherwise arising by operation of
law. Licensor and Licensee shall endeavor to meet with Mitsubishi and
discuss in good faith appropriate clarification and separation of rights and
obligations under the Mitsubishi Agreement to reflect the respective
ownership by Licensee of the Hexcel Assets and by Licensor of the remaining
assets of Fiberite, but in any event Licensor will obtain all rights
thereunder to Mitsubishi's Replark system.
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3. DISCLOSURE
3.1 DELIVERY OF DOCUMENTARY MATERIALS
(a) Licensor agrees to deliver to Licensee (i) as soon as reasonably
practicable after the Effective Date, copies of all documentary materials
listed on Schedule B, but only to the extent containing Intellectual Property
or Satellite Intellectual Property, and (ii) as soon as reasonably
practicable after the development of an Improvement by Licensor or any of its
Affiliates, all documentary materials similar to those listed on Schedule B
to the extent containing Improvements.
(b) Licensee agrees to deliver to Licensor as soon as reasonably
practicable after the development of an Improvement by Licensee or any of its
Affiliates, all documentary materials similar to those listed on Schedule B
to the extent containing Improvements.
3.2 TECHNICAL ASSISTANCE
During the period from the Effective Date to the 18-month anniversary
thereof, Licensor shall furnish Licensee up to 2,500 man hours of technical
assistance, at such times and locations as shall be reasonably requested by
Licensee for the purpose of instructing Licensee's employees in the
manufacture of prepregs based on the Products and using the Intellectual
Property and Improvements and Satellite Intellectual Property in connection
therewith. An additional 1,000 man hours of technical assistance shall be
provided upon reasonable request of Licensee within 36 months after the
Effective Date at a rate of $100 dollars per man hour. Licensee shall
reimburse Licensor for the reasonable costs of travel and subsistence by
Licensor's employees and other direct out-of-pocket expenses (but not
salaries, benefits, overhead and the like) incurred in connection with such
technical assistance.
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4. SUPPLY OF KM POLYMER
Licensor agrees to supply to Licensee its requirements of KM Polymer from the
Effective Date, solely for use in Products containing KM Polymer; provided,
however, that Licensor's supply obligations shall be subject to equitable
allocation between Licensor and Licensee in the event the quantity of KM
Polymer reasonably available to Licensor is insufficient to meet the needs of
both. The pricing of such KM Polymer shall be at Licensor's out-of-pocket
cost (including without limitation, transportation, handling and similar
costs). Other related terms (such as minimum/maximum orders and timing of
orders) shall be mutually agreed upon by the parties. Licensee agrees that
it will purchase KM Polymer from Licensor solely to meet its own needs (or
the needs of any permitted sublicensee) pursuant to the license granted under
Section 2.1(a) hereof and that it will not sell the KM Polymer purchased
hereunder to any other Person. Licensor will have no liability to Licensee
with respect to the quality of KM Polymer supplied hereunder. Licensor and
Licensee shall cooperate in an effort to arrange for Licensee to acquire all
necessary rights to make, or have made or to purchase, KM Polymer on its own
behalf, without intermediate purchases from Licensor.
5. CONFIDENTIALITY
5.1 CONFIDENTIALITY OBLIGATION
Each of Licensor and Licensee agrees to maintain as confidential, and not to
disclose to any Person (other than any permitted sublicensee or assignee or
their respective Affiliates or representatives of any such Person), all
information it receives from the other Party or its Affiliates under or
pursuant to this Agreement that is designated confidential ("Confidential
Information") to the same extent that it similarly treats its own
confidential information of like nature. The obligations of secrecy imposed
hereby shall survive for 10 years following termination of this Agreement.
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5.2 EXCEPTIONS
The obligation set forth in Section 5.1 shall not apply with respect to any
Confidential Information which: (a) is generally available to the public
through no breach by the disclosing Party of its obligations hereunder; (b)
is received from a third party who, to the knowledge of the person receiving
such disclosure, is not under a non-disclosure obligation to Licensor or
Licensee, (c) is independently developed by a Party or its Affiliates without
reference to the Confidential Information received from the other Party. A
Party may disclose Confidential Information pursuant to a subpoena or demand
for production of documents in connection with any suit, arbitration
proceeding, or administrative procedure, provided that such Party shall
promptly notify the other Party hereto of the subpoena or demand and provided
further that the disclosing Party will use its commercially reasonable
efforts to maintain the confidential nature of the Confidential Information
by protective order or other means.
6. TERM OF AGREEMENT
Subject to ARTICLE 7.2 hereof, this Agreement shall become effective on the
Effective Date and shall continue in full force and effect in perpetuity.
7. LIABILITY
7.1 NO WARRANTY OR REPRESENTATION
(a) NO WARRANTY OR REPRESENTATION OF ANY KIND, INCLUDING WITHOUT
LIMITATION ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, WHETHER EXPRESS OR IMPLIED, IS GIVEN BY LICENSOR TO LICENSEE WITH
RESPECT TO THE KM POLYMER OR ANY INTELLECTUAL PROPERTY, IMPROVEMENTS OR
SATELLITE INTELLECTUAL PROPERTY. LICENSOR DISCLAIMS ANY WARRANTY OR
REPRESENTATION THAT ANY OF THE INTELLECTUAL PROPERTY THE IMPROVEMENTS OR THE
SATELLITE INTELLECTUAL PROPERTY IS VALID OR ENFORCEABLE OR THAT NO PERSON
(OTHER THAN LICENSOR AND ITS AFFILIATES) HAS OR MAY ASSERT RIGHTS OF ANY
NATURE TO ANY SUCH INTELLECTUAL PROPERTY OR IMPROVEMENTS OR OTHERWISE HAS OR
MAY ASSERT RIGHTS IN CONFLICT WITH THE LICENSE GRANTED BY LICENSOR HEREBY.
TO THE EXTENT PERMITTED, LICENSOR WILL ASSIGN TO LICENSEE ANY WARRANTY THAT
IT RECEIVES WITH RESPECT TO THE KM POLYMER SUPPLIED TO LICENSEE HEREUNDER.
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(b) NO WARRANTY OR REPRESENTATION OF ANY KIND, INCLUDING WITHOUT
LIMITATION ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, WHETHER EXPRESS OR IMPLIED, IS GIVEN BY LICENSEE TO LICENSOR WITH
RESPECT TO ANY IMPROVEMENTS. LICENSEE DISCLAIMS ANY WARRANTY OR
REPRESENTATION THAT ANY IMPROVEMENT IS VALID OR ENFORCEABLE OR THAT NO PERSON
(OTHER THAN LICENSEE AND ITS AFFILIATES) HAS OR MAY ASSERT RIGHTS OF ANY
NATURE TO ANY IMPROVEMENT OR OTHERWISE HAS OR MAY ASSERT RIGHTS IN CONFLICT
WITH THE LICENSE GRANTED BY LICENSEE HEREBY.
7.2 MATERIAL BREACH
If either Party commits a breach of any of the material provisions of this
Agreement, and such breach is not cured within ninety (90) days after the
date on which notice of breach is sent to the breaching Party, the
non-breaching Party shall have the right to pursue all remedies available to
it including termination of this Agreement.
7.3 FORCE MAJEURE
Neither Party shall be liable to the other for any failure arising out of a
delay in its performance of this Agreement arising in whole or in part from
causes beyond its reasonable control. Without limiting the generality of the
foregoing, such events include any act of God; accident; explosion; fire;
acts of war; public disorders; earthquake; flood; inability to obtain
supplies; strikes; labor disputes; riots; sabotage; embargo; and any federal,
state, or local legal restriction or limitation. A Party who is prevented
from performing for any reason shall immediately notify the other Party in
writing of the cause for the non-Performance and the anticipated extent of
the delay.
7.4 NO SPECIAL DAMAGES
Neither Party shall be liable to the other for any indirect, special or
consequential damages arising hereunder.
8. NOTICES
Notices or requests to be given or made hereunder shall be delivered in
person or sent by registered mail or telefax or telex acknowledged by the
operator of the addressee that each Party may from time to time designate.
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9. EXPORTATION CONTROL
Each of Licensor and Licensee agrees not to export or reexport, or cause to
be exported, any Intellectual Property or Improvement furnished hereunder by
the other Party or the equipment constructed on the basis of such
Intellectual Property or Improvement or the products manufactured with such
Intellectual Property or Improvement to any country to which, under the laws
of the country of origin of the Intellectual Property or Improvement, it is
or may be prohibited from so doing. Each of Licensor and Licensee also
agrees to comply with all filing and other requirements of applicable export
control laws.
10. ASSIGNMENT
Neither Licensor nor Licensee may assign this Agreement except in its
entirety and then only to (i) an Affiliate or (ii) to a Person that acquires
all or substantially all of Licensee's or Licensor's (or any such assignee
Affiliate's), as applicable, prepreg business. Notwithstanding the
foregoing, either Licensor or Licensee may assign all (but not less than all)
of its rights to the license granted by the other Party hereunder for one or
more Products in conjunction with a divestment of the line of business
comprising prepregs based on such Products. Licensee may assign its rights
to obtain KM Polymer as provided in Article 4 in connection with the
divestment of its prepreg business based on KM Polymer. Any assignment in
violation of this Article 10 shall be considered void.
11. MISCELLANEOUS
11.1 ENTIRE AGREEMENT
The Agreement embodies the entire understanding of the Parties related to the
subject matter hereof. No amendment or modification of the Agreement shall
be valid or binding upon the Parties unless it is in writing and signed by
the respective duly authorized officers of the Parties. Headings and
subheadings are used for convenience only and are not intended as limitations
in the Agreement or for use in interpreting the Agreement.
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11.2 PARTIES ARE INDEPENDENT
The Agreement does not and shall not be deemed to make either Party the
agent, legal representative or partner of the other Party for any purpose
whatsoever, and neither Party shall have the right or authority to assume or
create any obligation or responsibility whatsoever, expressed or implied, on
behalf of or in the name of the other Party or to bind the other Party in any
respect whatsoever.
11.3 WAIVER
The failure of either Party at any time to require performance by the other
Party of any provision hereof shall in no way affect the full right to
require such performance within a reasonable time or thereafter the
performance of that and all other provisions, nor shall the waiver of any
succeeding breach of such provision or any other provision operate as a
waiver of the provision itself.
11.4 SEVERABILITY
The invalidity or unenforceability of any one or more of the provisions of
the Agreement shall not affect the validity or enforceability of the
remaining provisions.
11.5 GOVERNING LAW
This Agreement shall be construed and governed, in all respects, by the law
of the State of New York applicable to contracts made and to be performed in
that state without reference to any provisions relating to conflicts of law.
Each Party hereby irrevocably and unconditionally submits, for itself and its
property, to the nonexclusive jurisdiction of any New York State court or
Federal court sitting in the City of New York.
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11.5.1 COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of which
shall be deemed an original, but all of this shall constitute one and the
same instrument.
IN WITNESS WHEREOF the Parties hereto have caused this Agreement to be
executed in duplicate as of the date first written above.
HEXCEL CORPORATION FIBERITE, INC.
Name Name
---------------- ------------------
Title Title
--------------- -----------------
Date Date
---------------- ------------------
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SCHEDULE A
1. 934
2. 935
3. 970
4. 976
5. 997
6. 7740
7. 3501-6
8. 7714
9. 97714
10. 937A
11. 977
12. E767
13. E773
14. E7K8
15. E7T1-2
The foregoing are intended to represent families of the indicated resin
system such that, for example, 977 would also include 977-2, 977-3 and 977-6
as members of the 977 family. In addition, the license for the hot melt form
of a resin system would also include the corresponding solution form of the
resin system, and vice versa.
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SCHEDULE B
To the extent containing Intellectual Property:
1. Laboratory notebooks
2. Invention disclosures
3. Patent and patent application files
4. Process control documents
5. Xxxx of materials/mix cards
6. Qualification procedures and data
(including applicable test data)
7. Quality control procedures and data
(including applicable test data)
8. Equipment specifications
9. Material purchase specifications
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