EXHIBIT 10.10
PATENT LICENSE AGREEMENT
This Patent License Agreement ("Agreement"), effective as of January 20,
1996, between XXXXX RIVER CORPORATION OF VIRGINIA and its wholly owned
subsidiary, XXXXX RIVER PAPER COMPANY, INC., both corporations of the
Commonwealth of Virginia, hereinafter collectively referred to as "LICENSOR";
and WINCUP HOLDINGS, L.P., hereinafter referred to as "LICENSEE," a State of
Delaware limited partnership comprised of WINCUP HOLDINGS, INC. and XXXXX RIVER
PAPER COMPANY, INC. wherein WINCUP HOLDINGS, INC. is the general partner and
XXXXX RIVER PAPER COMPANY, INC. is a limited partner.
WHEREAS, LICENSOR owns and has right to license certain technical
information and patent rights relating to lift tabs with accordion hinges for
use in beverage containers.
WHEREAS, LICENSEE desires to obtain from LICENSOR a license under
LICENSOR's technical information and patent rights relating to Licensed Products
(as defined below).
NOW, THEREFORE, in consideration of the mutual covenants contained herein,
the parties agree as follows:
ARTICLE
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1 -- DEFINITIONS
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For the purposes of this Agreement and its attachments, the following terms
shall have the meanings ascribed to them below unless otherwise specifically
defined within the context of individual articles:
1.1 Affiliate as used in this Agreement in connection with a designated
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company shall mean any company of which the designated company now or hereafter
owns, manages, or controls, directly or indirectly, 50% or more of all the
voting power of the shares (or other securities or rights) entitled to vote for
the election of directors or other governing authority thereof.
1.2 Patent Rights means the patent listed in the attached Exhibit A which
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relates to a beverage container lift tab lid with accordion hinge, and any
patent applications, registered designs and design applications, and any patents
or registered designs which may issue on such applications, and any reissues,
reexaminations, continuations, divisionals, extensions or renewals thereof.
1.3 Technical Information means any information, know-how, ideas, methods
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and procedures proprietary to LICENSOR which are
useful in the design, development, production and use of a Licensed Product and
which may not be covered under the Patent Rights.
1.4 Intellectual Property Rights means any Patent Rights, rights in
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Confidential Information, rights in Technical Information and all other
intellectual property rights, and any modifications, changes, improvements,
variations, enhancements or refinements made thereto, which LICENSOR owns or
otherwise has the right to license or disclose to LICENSEE pursuant to the
provisions of this Agreement.
1.5 Confidential Information means the trade secrets, confidential
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information, confidential know-how that either party owns or has the right to
disclose to the other Party, relating to the Intellectual Property Rights.
1.6 Licensed Product(s) means a container for beverage with a lift tab
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with an accordion hinge as set forth in the Patent Rights.
ARTICLE 2 -- BUSINESS ARRANGEMENT AND LICENSE GRANTS
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2.1 Scope. This Agreement concerns the protection of the LICENSOR's
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Intellectual Property Rights, and the licensing to LICENSEE under certain of
such rights, all as more fully set forth below.
2.2 Grant. Subject to the terms and conditions of this Agreement,
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LICENSOR hereby grants LICENSEE a nonexclusive, nontransferable royalty free
license (without right to sublicense) under the Intellectual Property Rights:
2.2.1 to make, have made, use, sell, distribute or otherwise dispose
of the Licensed Product; and
2.2.2 to use Licensor's Confidential Information solely in connection
with the terms set forth in Article 2.2.1 and not for any other purpose,
except as permitted in writing by Licensor.
2.3 Indemnification. LICENSEE agrees for itself, its Affiliates, its
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customers, its successors and assigns, to indemnify, defend and hold harmless
LICENSOR, its Affiliates, and all officers, directors, shareholders, employees,
servants or agents, of and from any and all liabilities, loss, cost and expense
of any kind (including without limitation attorneys fees and expert witness
fees) arising out of or relating to LICENSEE'S or its Affiliates' use, sale or
other disposition of any Licensed Product or beverage container covered by
LICENSOR'S Intellectual Property Rights, and:
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2.3.1 any termination of this Agreement pursuant to Article 4.3;
2.3.2 any termination of any agreements between LICENSOR and
LICENSEE, which arises out of or relate to either (i) a termination of this
Agreement pursuant to Article 4.3 or (ii) (regardless of whether, or by
whom, this Agreement has been terminated) circumstances which would give
LICENSOR a right to terminate this Agreement pursuant to Article 4.3; or
2.3.3 this Agreement and its attachments.
2.4 No consequential damages. EXCEPT AS EXPRESSLY PROVIDED IN THIS
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AGREEMENT, NEITHER PARTY SHALL IN ANY EVENT BE LIABLE TO THE OTHER PARTY UNDER
THIS AGREEMENT OR UNDER ANY CONTRACT BETWEEN THE PARTIES CONCLUDED PURSUANT TO
THIS AGREEMENT FOR LOSS OF PRODUCTION, LOSS OF USE, LOSS OF BUSINESS, LOSS OF
REVENUE OR FOR ANY SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES,
WHETHER OR NOT THE POSSIBILITY OF SUCH DAMAGES COULD HAVE BEEN REASONABLY
FORESEEN.
ARTICLE 3 -- REPRESENTATIONS AND WARRANTIES
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3.1 Title. LICENSOR represents and warrants that it is the owner of
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Patent Rights and Intellectual Property Rights and has the right to license the
Intellectual Property Rights.
3.2 Disclaimer. LICENSOR MAKES NO EXPRESS WARRANTY OR REPRESENTATION, AND
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NO WARRANTY SHALL BE IMPLIED, AS TO:
3.2.1 THE ADEQUACY, INTERPRETATION, USEFULNESS, MERCHANTABILITY,
OR FITNESS FOR A PARTICULAR PURPOSE OF INVENTIONS OR DESIGNS
COVERED BY LICENSOR'S PATENT RIGHTS OR ANY SUCH TECHNOLOGY;
3.2.2 THE FREEDOM FROM INFRINGEMENT OF THIRD PARTY PATENTS,
DESIGNS, COPYRIGHTS OR ANY INTELLECTUAL PROPERTY RIGHTS BY
USE OF LICENSOR'S TECHNICAL INFORMATION OF CONFIDENTIAL
INFORMATION FURNISHED HEREUNDER OR UNDER CONTRACTS BETWEEN
THE PARTIES CONCLUDED PURSUANT HERETO OR BY USE OF
INVENTIONS OR DESIGNS COVERED BY LICENSOR'S PATENT RIGHTS OR
ANY SUCH TECHNOLOGY, PROVIDED THAT IN THE EVENT OF A
CONFLICT BETWEEN THE TERMS OF THIS SECTION 3.2.2 AND SECTION
2.1(o) OF THE JR CAPITAL CONTRIBUTION AGREEMENT, SECTION
2.1(o) OF THE JR CAPITAL CONTRIBUTION AGREEMENT SHALL
CONTROL; OR
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3.2.3 THE VALIDITY OF ANY PATENT, DESIGN, OR PATENT OR DESIGN
CLAIM INCLUDED IN LICENSOR'S PATENT RIGHTS OR OTHER
INTELLECTUAL PROPERTY RIGHTS.
LICENSEE agrees to hold LICENSOR harmless from and indemnify LICENSOR
against any and all liabilities, demands, expenses or damages arising out of or
resulting from any claims in connection with the infringement of any third
party's intellectual property rights by or as a result of LICENSEE's or its
Affiliates' manufacture, use, sale or other disposition of any Licensed Product
or beverage container covered by LICENSOR's Intellectual Property Rights.
Without limiting the generality of the foregoing, it is expressly
understood and agreed that LICENSEE is fully and solely responsible for the
Licensed Product and that LICENSOR does not take any responsibilities whatsoever
for, and shall not be liable, either directly or as an indemnitor for any
liabilities, demands, expenses, costs or damages, including special and
consequential damages, regardless of the fault or concurrent negligence of
direct or indirect parties arising from the Licensed Product, its use or
performance.
3.3 Infringements.
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3.3.1 With respect to any Patent Rights now or hereafter licensed by
LICENSOR to LICENSEE under the provisions of this Agreement or under contracts
between the parties concluded pursuant to this Agreement, if LICENSEE becomes
aware of any product or activity of any third party that involves infringement
or violation of LICENSOR's Patent Rights, then LICENSEE shall promptly notify
LICENSOR in writing of such infringement or violation. LICENSOR may in its
discretion take or not take whatever action it reasonably believes is
appropriate; if LICENSOR elects to take action, LICENSEE will fully cooperate
therewith at LICENSOR's expense. LICENSOR shall have the sole right to control
or compromise any such actions.
3.3.2 Provided that the LICENSOR'S use of the License is in
compliance herewith, in the event that any action, proceeding or claim of any
kind or nature is instituted against the LICENSEE relating to the LICENSEE'S
operations or conduct under the license granted herein regarding the use or sale
of the Licensed Products, then LICENSEE agrees to take timely steps to defend
same and to promptly notify LICENSOR in writing with reasonable detail of the
date and nature of such action, proceeding or claim and, from time to time, of
the progress thereof. The LICENSEE shall permit (to the extent permissible by
the laws of the relevant jurisdiction) LICENSOR at LICENSOR'S sole option to
intervene or otherwise appear in such action, proceeding, or claim, but at
LICENSOR'S own expense.
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ARTICLE 4 -- TERM; TERMINATION
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4.1 Effective Date. This Agreement shall automatically become effective
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as of its execution and delivery by the parties hereto.
4.2 Term. Once effective, this Agreement shall continue in effect until
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the expiration of the latest patent or patent to be granted on the patent
applications within the definition of the Patent Rights ("expiration of the
patents").
4.3 Termination. In addition to any other remedies it may have, LICENSOR
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may terminate this Agreement at any time without penalty of any kind, upon
written notice to LICENSEE of its breach of any of its obligations, which breach
is not corrected within fifteen (15) days following notice of such breach from
LICENSOR, or if LICENSEE should at any time challenge the validity of any of the
Patent Rights.
4.4 Discharge of obligations. After termination of this Agreement,
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LICENSEE shall have no rights hereunder or in the Patent Rights, and neither
party shall have any obligations hereunder, except as set forth below:
4.4.1 Upon the termination of this Agreement, the LICENSEE shall:
4.4.1.1 subject to the provision of Article 4.5 immediately
cease and refrain from the distribution, sale and use of the Licensed
Product until the expiration of the patents;
4.4.1.2 immediately cease the use of the Technical Information,
LICENSOR Confidential Information and any Intellectual Property
Rights licensed hereunder, and provide all modifications,
improvements to such Technical Information, LICENSOR Confidential
Information and Intellectual Property Rights to LICENSOR all of which
shall inure to benefit of LICENSOR;
4.4.1.3 return to LICENSOR or destroy (at the option of the
LICENSOR) any material or documents provided by LICENSOR in
connection with this Agreement.
4.5 On termination of this Agreement and provided such termination is
not the result of a breach of this Agreement, the LICENSEE shall have ninety
(90) days in which to sell inventory of Licensed Product.
4.6 Articles 2.3, 2.4, 3.2, 3.3, 6.9, 6.10 and 6.11 shall survive any
expiration or termination of this Agreement.
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ARTICLE 5 -- NOTICE
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Unless otherwise specified in writing, the mailing addresses of the parties
hereto are as follows:
LICENSOR: Xxxxx River Corporation of Virginia and
Xxxxx River Paper Company, Inc.
0000 Xxxxxxxx Xxxxxx
X.X. Xxx 000
Xxxxxx, XX 00000-0000
Fax 000-000-0000
Attention: Xxxxxx X. Xxxxxxxxx, Chief Patent Counsel
LICENSEE: WinCup Holdings, L.P.
000 Xxxxxxxxxxxx Xxxxxxxxx
Xxxxx, XX 00000-0000
Attention: Xxxxxxx X. Xxxxxxx, Chairman
Notices hereunder shall be deemed to have been duly given and served five
(5) days after the mailing thereof by Registered or Certified Mail, postpaid, to
the party entitled thereto at its above address, or at such other address as it
may from time to time designate in writing to the other party.
ARTICLE 6 -- MISCELLANEOUS
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6.1 Entire agreement. The making, execution and delivery of this Agreement by
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LICENSOR and LICENSEE have been induced by no representations, statements,
warranties or agreements other than those expressed herein. This Agreement
embodies the entire understanding of the parties and there are no further or
other agreements or understandings, written or oral, in effect between the
parties relating to the subject matter hereof.
6.2 Waiver. Waiver of a breach of this Agreement or the failure of
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LICENSOR to exercise any right under this Agreement shall in no event constitute
a waiver as to any future breach, whether similar or dissimilar in nature, or as
to the exercise of any future right under this Agreement.
6.3 Amendment, modification. This Agreement may be amended or
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modified only by an instrument signed by the duly authorized representative of
each of the respective parties hereto and expressly stating that it is the
intent of that document to amend or modify the terms hereof.
6.4 Assignment. LICENSEE shall not, without the prior written
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consent of LICENSOR, assign, transfer or sublicense its
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rights or obligations hereunder to a third party. LICENSOR shall however be
entitled to transfer or assign the Agreement to its parent company or any
Affiliate of its parent company.
6.5 Titles. The titles of each Article in this Agreement are for the
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convenience of the parties and are not intended to modify the terms and
conditions contained herein.
6.6 Severability. If any provision of this Agreement, or the
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application thereof, shall for any reason and to any extent be invalid or
unenforceable, the remainder of this Agreement and application of such provision
to other persons or circumstances shall be interpreted so as not to invalidate
the remaining provisions of this Agreement and so as best to reasonably effect
the intent of the parties.
6.7 No further grants. Nothing contained in this Agreement shall be
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construed to grant LICENSEE any rights or licenses other than those expressly
stated therein.
6.8 Applicable law. This Agreement shall be construed and the legal
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relations between the parties determined in accordance with the laws of the
State of Delaware, excluding any choice of law rules which may direct the
application of the laws of any other jurisdiction.
6.9 Limitation of actions. No action, regardless of form, arising
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out of any alleged breach of this Agreement or obligations under this Agreement
may be brought by either party more than two (2) years after the cause of action
has occurred unless this Agreement has been terminated pursuant to Article 4 and
LICENSEE has not ceased or refrained from making, using, selling or otherwise
disposing of the Licensed Product as set forth in Articles 4.4 and 4.5, then
LICENSOR shall have the right to any remedy including, but not limited to,
instituting any action which it deems to be appropriate.
6.10 Ownership. Any invention, discovery, improvement, design,
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machine, device, component, process or know-how which relates to the
Intellectual Property Rights regardless of whether it is conceived solely by
LICENSOR or LICENSEE, or jointly by LICENSOR and LICENSEE, or jointly with
anyone working in cooperation with LICENSOR or LICENSEE with respect to the
Intellectual Property Rights (hereinafter collectively referred to as
"Inventions"), shall be the sole and exclusive property of LICENSOR whether
patented or not. LICENSEE agrees to assist LICENSOR, both during and subsequent
to this Agreement, in perfecting and securing LICENSOR's rights in the
Inventions, and LICENSEE will execute, acknowledge and deliver any and all
documents and instruments requested by LICENSOR for such purpose including, but
not limited to, assignments for vesting title in LICENSOR.
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6.11 Confidentiality.
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6.11.1 The Confidentiality Agreement dated as of the date
hereof between Xxxxx River Paper Company, Inc., LICENSEE and WinCup
Holdings, Inc. (the "Confidentiality Agreement") is incorporated
herein by reference.
6.11.2 The parties agree that the existence of this Agreement
is not confidential, but the terms of this Agreement are confidential
and shall not be disclosed by one party without the written consent of
the other party.
6.11.3 The LICENSEE further agrees that any information
provided to the LICENSEE during the term of this Agreement and the
Confidentiality Agreement (collectively referred to as "Agreements"),
including any Confidential Information and any INVENTIONS, is
confidential proprietary information belonging to the LICENSOR, and
without the LICENSOR's prior written consent, it shall not be
disclosed to any third party during the terms of the Agreements and
thereafter or used by LICENSEE outside the scope of the rights granted
by the Agreements.
6.11.4 The LICENSEE further agrees that it will not make or
permit any third party to make any public announcements or issue or
permit any third party to issue any press release relating to the
Agreements and the subject matter hereof, or otherwise provide details
of the Agreements, the Licensed Product, Licensor Confidential
Information, Inventions on Intellectual Property Rights to any person
or entity without prior written agreement of the LICENSOR.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed in their respective corporate names by their duly authorized
representatives as of the date and year first written above.
XXXXX RIVER CORPORATION OF WINCUP HOLDINGS, L.P.
VIRGINIA By its general partner,
WINCUP HOLDINGS, INC.
By: /s/ Xxxxxxx X. Xxxx By: [SIGNATURE APPEARS HERE]
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Title: Senior V.P., CFO Title: Chairman
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Date: January 20, 1996 Date: January 20, 1996
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XXXXX RIVER PAPER COMPANY, INC.
By: /s/ Xxxxxxx X. Xxxx
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Title: Senior V.P., Treasurer
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Date: January 20, 1996
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EXHIBIT A
PATENT RIGHTS
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1. U. S. Patent Number 4,760,934
Issue Date: August 2, 1988
Title: LIFT TAB LID WITH ACCORDION HINGE
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AMENDMENT TO PATENT LICENSE AGREEMENT
This AMENDMENT TO PATENT LICENSE AGREEMENT ("Agreement") is made as of
December 5, 1996 by and between WINCUP HOLDINGS, L.P., a Delaware limited
partnership (the "Licensee"), XXXXX RIVER CORPORATION OF VIRGINIA, a Virginia
corporation ("Xxxxx River") and XXXXX RIVER PAPER COMPANY, INC., a Virginia
corporation ("JR").
BACKGROUND
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A. The Licensee, WinCup Holdings, Inc., ("WinCup"), Radnor Holdings
Corporation ("Radnor") and JR intend to enter into a Partnership Interest
Purchase Agreement pursuant to which Radnor shall purchase the entire limited
partnership interest of JR in the Licensee, as such interest is described in the
Limited Partnership Agreement between WinCup and JR, dated as of January 20,
1996.
X. Xxxxx River and JR (collectively, "Licensor") and the Licensee are
parties to that certain Patent License Agreement, dated as of January 20, 1996
(the "Patent Agreement"), pursuant to which such agreement the Licensor granted
the Licensee, under the Intellectual Property Rights, a license to make, have
made, use, sell, distribute or otherwise dispose of the Licensed Product; which
such right terminates upon the expiration of the last-to-expire patent within
the Patent Rights.
C. The Licensee and the Licensor have determined that it would be in each
of their best interests to enter into an amendment of the Patent Agreement.
D. All capitalized terms not otherwise defined herein shall have the
meanings ascribed to them in the Patent Agreement.
NOW THEREFORE, in consideration of the agreements contained herein and
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereto agree as follows:
1. Assignment of Patent Agreement. The following is added as the second
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and third sentences of Article 6.4 of the Patent Agreement:
"Notwithstanding the foregoing sentence, Licensee shall have the right to
assign the Patent Agreement to any Affiliate of the Licensee without the
consent of Xxxxx River, but after having provided Xxxxx River with prior
written notice thereof; provided that such assignee assumes all of
Licensee's rights, obligations and liabilities in connection
with the Patent Agreement and this Agreement in writing and the Licensee
shall remain primarily obligated for the performance by such assignee of
all of its rights, obligations and liabilities under the Patent Agreement
and this Agreement and any amendments or modifications hereof; provided,
further that in the event the assignee no longer qualifies as an affiliate
it shall reassign the Patent Agreement to WinCup Holdings, L.P. or one of
WinCup Holdings, L.P.'s other Affiliates pursuant to the terms set forth
above.
2. Effect of Amendment. Except as hereby expressly amended, all of the
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terms, conditions, provisions and covenants of the Patent Agreement shall
continue in full force and effect.
3. Successors and Assigns. This Agreement shall bind and enure to the
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benefit of the parties to the Patent Agreement and their respective successors
and assigns.
4. Governing Law. This Agreement shall be governed by, and construed in
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accordance with, the laws of the State of Delaware, excluding any choice of law
rules which may direct the application of the laws of any other jurisdiction.
5. Counterparts. This Agreement may be executed in as many counterparts
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as may be deemed necessary or convenient, and by the different parties hereto on
separate counterparts, each of which, when so executed, shall be deemed an
original, but all of which such counterparts shall constitute but one and the
same instrument.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement by
their duly authorized officers as of the day and year first above written.
XXXXX RIVER PAPER COMPANY,
INC.
By: [SIGNATURE APPEARS HERE]
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Name:
Title:
XXXXX RIVER CORPORATION
OF VIRGINIA
By: [SIGNATURE APPEARS HERE]
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Name:
Title:
WINCUP HOLDINGS, L.P.
By: WinCup Holdings, Inc., its general
partner
By: [SIGNATURE APPEARS HERE]
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Name:
Title:
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