Exhibit 10.23
EXECUTION VERSION
INTELLECTUAL PROPERTY LICENSE AGREEMENT
BY AND BETWEEN
NANODYNAMICS, INC. ("NDI"),
AND EPIC ENERGY SOLUTIONS, LLC ("EPIC")
EFFECTIVE AS OF JUNE 21, 2007
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Intellectual Property License Agreement (the "AGREEMENT") is effective
as of June 21, 2007 (the "EFFECTIVE DATE"), between NanoDynamics, Inc. ("NDI"),
and Epic Energy Solutions, LLC ("EPIC").
RECITALS
WHEREAS, NDI-1 Partners, LLC, a wholly-owned subsidiary of NDI ("NDI-1"),
and Nano-applications Holdings B.V. ("NANO-APPLICATIONS"), a wholly-owned
subsidiary of Shell Technology Ventures Fund 1 B.V. ("STV"), have formed Epic to
facilitate their cooperation to develop and commercialize nano-enabled
applications in the field of exploration, production, and processing of oil,
gas, and related hydrocarbons and, the field of solar energy;
WHEREAS, in furtherance thereof, some or all of the parties hereto or their
Affiliates have entered into that certain Debenture dated as of June 21, 2007
("DEBENTURE"), Debenture Purchase Agreement dated as of June 15, 2007
("DEBENTURE PURCHASE AGREEMENT"), Investor's Rights Agreement dated as of June
21, 2007 ("INVESTOR'S RIGHTS AGREEMENT"), Limited Liability Company Agreement
dated as of June 21, 2007 ("THE LLC AGREEMENT"), Services Agreement dated as of
June 21, 2007 ("SERVICES AGREEMENT") and Master Development Agreement effective
as of June 21, 2007 ("MASTER DEVELOPMENT AGREEMENT") of even date herewith,
(collectively, the "DEFINITIVE AGREEMENTS");
WHEREAS, NDI and Epic intend to mutually agree upon written project
descriptions to be prepared by the parties that identify technology and
applications for Epic to commercialize, and wish to facilitate such
commercialization via the granting of intellectual property licenses and options
for intellectual property licenses as described herein; and
WHEREAS, the operation of Epic's business will require the use and
exploitation of certain intellectual property owned by NDI, or improvements
thereto developed by NDI, and to the extent such intellectual property is
related to a project agreed upon by the parties as described above, NDI wishes
Epic to be able to use and exploit such intellectual property pursuant to the
licenses granted herein.
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE 1
DEFINITIONS AND CONSTRUCTION
1.1 DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1(a) "AFFILIATE" means, with respect to NDI, any entity that is
owned or controlled by, or is under common control with, such party, excluding
Epic and its Subsidiaries.
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1.1(b) "CLOSING DATE" is defined in the Debenture Purchase Agreement.
1.1(c) "CHANGE OF CONTROL" means the occurrence after the date hereof
of any of (i) an acquisition after the date hereof by an individual or legal
entity or "group" (as described in Rule 13d-5(b)(1) promulgated under the
Exchange Act) of beneficial ownership of in excess of 51% of the voting
securities of Epic, or (ii) Epic merges into or consolidates with any other
person or entity, or any person or entity merges into or consolidates with Epic
and, after giving effect to such transaction, the stockholders of Epic
immediately prior to such transaction own less than 33% of the aggregate voting
power of Epic or the successor entity of such transaction, or (iii) Epic sells
or transfers its assets, as an entirety or substantially as an entirety, to
another person or entity and the stockholders of Epic immediately prior to such
transaction own less than 33% of the aggregate voting power of the acquiring
entity immediately after the transaction, or (iv) a replacement at one time or
within a three year period of more than one-half of the members of Epic's board
of managers which is not approved by a majority of those individuals who are
members of the board of managers on the date hereof (or by those individuals who
are serving as members of the board of managers on any date whose nomination to
the board of managers was approved by a majority of the members of the board of
managers who are members on the date hereof).
1.1(d) "CONFIDENTIAL INFORMATION" means: information, technical data,
and know-how that is not otherwise in the public domain and as to which the
owner actively undertakes to restrict or control the disclosure to Third Parties
in a manner reasonably intended to maintain its confidentiality, and that is
disclosed or transferred pursuant to, this Agreement. "CONFIDENTIAL INFORMATION"
excludes information that: (A) was in the Receiving Party's possession before
receipt from the Disclosing Party or was obtained from a source other than the
Disclosing Party; (B) is or becomes a matter of public knowledge through no
fault of the Receiving Party; (C) is rightfully received by the Receiving Party
from a Third Party without a duty of confidentiality; (D) is independently
developed by the Receiving Party without reference to or utilization of the
Disclosing Party's Confidential Information; (E) is disclosed under operation of
law or by order of a court or other authority, so long as the obligations of
Section 7.5 have been met; or (F) is disclosed by the Receiving Party with the
Disclosing Party's prior written approval.
1.1(e) "COPYRIGHT" means: (i) any copyright in any original works of
authorship fixed in any tangible medium of expression as set forth in 17 U.S.C.
Section 101 et. seq., whether registered or unregistered, including any
applications for registration thereof; (ii) any corresponding foreign copyrights
under the laws of any jurisdiction, in each case, whether registered or
unregistered, and any applications for registration thereof; and (iii) moral
rights under the laws of any jurisdiction.
1.1(f) "DISCLOSING PARTY" means the party disclosing particular
Confidential Information.
1.1(g) "DISTRIBUTOR" means any distributor, dealer, reseller, OEM
customer, VAR customer, or systems integrator.
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1.1(h) "EPIC FIELD OF USE" means the exploration, transmission via
pipeline, production, and processing of oil, gas, and related hydrocarbons,
including all steps from identification, extraction and production from the
earth through and including the processing of hydrocarbons in a refining or
petrochemical facility, plus the means of conveying, via pipeline, the output
from the refining or petrochemical facility. For avoidance of doubt, the sale of
nano-materials is included in the NDI Field of Use and the use of such materials
in or for value enhanced, commercial applications in exploration, transmission
via pipeline, production and processing as described above is included in the
Epic Field of Use. The Epic Field of Use also includes the Solar Field of Use,
which shall remain part of the Epic Field of Use subject to the requirements of
Section 4.8.
1.1(i) "EPIC PRODUCTS" means products designed and manufactured for
use in the Epic Field of Use, excluding products consisting of nano-materials
without any significant value enhancement regardless of the potential for use of
such nano-materials in the Epic Field of Use. By way of example and not
limitation, Epic Products may include products incorporating nano-materials, but
not nano-materials themselves.
1.1(j) "EPIC TECHNOLOGY" means Technology prepared, conceived, or
reduced to practice by Epic, during the term of this Agreement, or otherwise
owned or controlled by Epic. For avoidance of doubt, Epic Technology does not
include NDI Background Technology, NDI Improvements, or New NDI Technology.
1.1(k) "IMPROVEMENTS" means: (i) with respect to any work of
authorship protected by Copyright, any derivative work thereof; and (ii) with
respect to any Technology, any modifications or improvements of such Technology.
For the purposes of clarification, Technology will be deemed to be an
Improvement of an underlying Technology only if: (1) it is actually developed
from, with or utilizing, and not merely because it may have the same or similar
functionality or use as, the underlying Technology; (2) the manufacture, use, or
sale of a device or system embodying, or the practice of a method embodied in or
embodying, the underlying Technology is necessary to practice the development;
or (3) the development is necessary to practice the underlying Technology. In
the foregoing, "necessary" means necessary to exploit the applicable Technology
in a commercially feasible manner.
1.1(l) "INTELLECTUAL PROPERTY RIGHTS" means: (i) Copyrights; (ii)
rights in Inventions, trade secrets, proprietary information and know-how; (iii)
Patents and Patent applications; (iv) and any other intellectual property
rights, but does not include any rights in any trademark, service xxxx, trade
name, or other similar right related to source designation.
1.1(m) "INVENTION" means any invention, design, specification, or
idea, whether or not patentable.
1.1(n) "LICENSEE" means any party to which a license is granted under
this Agreement, as the context may require.
1.1(o) "LICENSED EPIC TECHNOLOGY" means Epic Technology to be licensed
as described in Section 4.2.
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1.1(p) "LICENSED TECHNOLOGY" means any Technology that is the subject
of a license grant under this Agreement, as the context may require.
1.1(q) "LICENSOR" means any party that has granted a license under
this Agreement, as the context may require.
1.1(r) "NDI BACKGROUND INTELLECTUAL PROPERTY RIGHTS" means:
(i) all Intellectual Property Rights that upon the Closing Date,
NDI or any Affiliate of NDI owns or controls or as to which NDI otherwise has
the right to grant any licenses of the type and on the terms herein granted to
NDI; and
(ii) all Intellectual Property Rights that would be infringed by
the making, using, offering for sale, selling, importing of products embodying,
or other exploitation of, the NDI Background Technology; and
(iii) including any Patents listed in EXHIBIT A under the
applicable Technology (or otherwise identified in a Project Description).
1.1(s) "NDI BACKGROUND TECHNOLOGY" means Technology in the Epic Field
of Use, prepared, conceived, or reduced to practice by NDI prior to the Closing
Date that is: (a) related to Projects listed in EXHIBIT A; or (b) related to a
Project addressing a technology problem area identified in EXHIBIT B, to the
extent and when the applicable Project Description is agreed upon as described
in Section 1.1(bb); or (c) related to any other Project, subject to NDI's
advance written approval of inclusion of such Technology in the NDI Background
Technology for purposes of this Agreement.
1.1(t) "NDI FIELD OF USE" means all fields of use other than the Epic
Field of Use.
1.1(u) "NDI IMPROVEMENTS" means Improvements to the NDI Background
Technology prepared, conceived, or reduced to practice by NDI during the term of
this Agreement, excluding Technology related to fuel cells.
1.1(v) "NET SALES" is defined in Section 9.1(b).
1.1(w) "NEW NDI TECHNOLOGY" means Technology related to the Epic Field
of Use prepared, conceived, or reduced to practice by NDI, or whose ownership is
otherwise owned by NDI during the term of this Agreement, that is not an NDI
Improvement.
1.1(x) "NEW THIRD PARTY TECHNOLOGY" means Technology related to the
Epic Field of Use, and that is useful in the Epic Field of Use, that is not
owned or controlled by NDI but that NDI acquires, during the term of this
Agreement, the right to license to Epic in the Epic Field of Use.
1.1(y) "PATENTS" means patents, utility models, design patents, design
registrations, certificates of invention and other governmental grants for the
protection of
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inventions or industrial designs anywhere in the world and all reissues,
renewals, re-examinations and extensions of any of the foregoing.
1.1(z) "PROJECT" means a project to commercialize nano-enabled
applications in the Epic Field of Use, as agreed to from time to time by the
management of Epic in accordance with the procedures set forth in the LLC
Agreement. The six projects described in EXHIBIT A are deemed to have been
approved by the Management of Epic. The technology problems contemplated as of
the Closing Date to be addressed in other possible future Projects are listed in
EXHIBIT B. The approvals required for such problems to become the subject of
future Projects will be as set forth in the LLC Agreement.
1.1(aa) "PROJECT COMMENCEMENT DATE" means the date NDI and management
of Epic executes a Project Description.
1.1(bb) "PROJECT DESCRIPTION" means a document agreed to in writing by
NDI and the management of Epic, in accordance with the procedures set forth in
the LLC Agreement, setting forth the nature of the NDI Background Technology for
the applicable Project, expressly stating that is intended to be deemed a
Project under this Agreement, describing, at a minimum, the Project and
applicable NDI Background Technology, and indicating an intent to develop or
commercialize the applications which are the subject of the Project within five
years after the Project Commencement Date.
1.1(cc) "RECEIVING PARTY" means the recipient of particular
Confidential Information.
1.1(dd) "SUBSIDIARY" means with respect to a party, any entity such
party owns, directly or indirectly, more than 50% of the stock or other equity
interest entitled to vote on the election of the members of the board of
directors or similar governing body.
1.1(ee) "TECHNOLOGY" means all technology, including all know how,
show how, techniques, design rules, trade secrets, Inventions, algorithms,
formulas, processes, methods, routines, software, processes, devices,
prototypes, schematics, test methodologies, and hardware development tools, and
any other tangible embodiments of any of the foregoing.
1.1(ff) "THIRD PARTY" means any person or entity other than NDI,
NDI-1, STV, Nano-applications, Epic or their Affiliates or Subsidiaries.
1.2 CONSTRUCTION
1.2(a) For purposes of this Agreement, whenever the context requires:
the singular number will include the plural, and vice versa.
1.2(b) Any rule of construction to the effect that ambiguities are to
be resolved against the drafting party will not be applied in the construction
or interpretation of this Agreement.
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1.2(c) As used in this Agreement, the words "include" and "including"
and variations thereof, will not be deemed to be terms of limitation, but rather
will be deemed to be followed by the words "without limitation."
1.2(d) Except as otherwise indicated, all references in this Agreement
to "Attachments," "Schedules," "Sections" and "Exhibits" are intended to refer
to Attachments, Schedules, Sections and Exhibits to this Agreement.
ARTICLE 2
LICENSE OF NDI BACKGROUND TECHNOLOGY
2.1 INTELLECTUAL PROPERTY RIGHTS LICENSES TO EPIC
NDI grants (and agrees to cause its appropriate Affiliates to grant)
to Epic personal, irrevocable, exclusive, worldwide, royalty-free (except as set
forth in Section 4.3 and subject to Section 2.4) and non-transferable (except as
specified in Sections 4.7 and 13.8 below) licenses, solely in the Epic Field of
Use, under its and their NDI Background Intellectual Property Rights related to
the NDI Background Technology related to any Project, to make (including the
right to practice any method), have made, use, lease, sell, offer for sale and
import Epic Products embodying the NDI Background Technology. For avoidance of
doubt, the parties acknowledge that nothing in this Agreement will be construed
to prevent the parties from entering into an agreement under which NDI sells to
Epic nano-materials without any significant value enhancement, nor the resale by
Epic of nano-materials purchased pursuant to such agreement within the Epic
Field of Use The NDI Background Technology related to the technology problem
areas identified on Exhibit A are licensed hereunder as of the Effective Date.
Any license of NDI Background Technology for a Project with a Project
Commencement Date during the first 2 years after the Effective Date shall be
royalty-free (except as set forth in Section 4.3 and subject to Section 2.4).
Any license for NDI Background Technology for a Project with a Project
Commencement Date later than two years after the Effective Date shall be
provided under the same license terms as provided for licenses of New NDI
Technology, as set forth in Section 4.3.
2.2 SUBLICENSING AND CONTRACT MANUFACTURING
All licenses granted in this Article 2 will be sublicenseable only with
NDI's prior written consent, which will not be unreasonably withheld. All
licenses granted in this Article 2 include the right to have contract
manufacturers and foundries manufacture the Epic Products for Epic or its
Subsidiaries with NDI's prior written consent, which will not be unreasonably
withheld. The parties acknowledge that the resale or distribution of Epic
Products by Distributors will not be deemed a sublicense for purposes of this
Section.
2.3 DURATION OF LICENSES
All licenses granted in this Article 2 shall commence on the Closing Date
(or, as applicable, the Project Commencement Date for the Project relating to
the applicable
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Technology) and continue in perpetuity, or, in the case of Patents and
Copyrights, until the expiration of the term thereof.
2.4 THIRD PARTY RESTRICTIONS
All licenses granted in this Article 2 will be subject to any: (a) licenses
granted to or obligated to be granted by NDI or its Affiliates to Third Parties;
or (b) restrictions in favor of Third Parties in contracts entered into by NDI
or its Affiliates; in each case existing prior to the Closing Date (or, as
applicable, the Project Commencement Date for the Project relating to the
applicable Technology). To the extent any rights granted in this Article 2
constitute sublicenses of Intellectual Property Rights of Third Parties that are
subject to royalty obligations, Epic shall either pay any royalty obligations
incurred as a result of Epic's exercise of such Intellectual Property Rights or
forego the exercise of those Intellectual Property Rights. NDI agrees that after
the Closing Date and until a date two years following the Effective Date it
shall not encumber any NDI Background Technology with any Third Party
restriction as described in subsection (a) or (b) above that would limit the
ability of NDI to grant to Epic the rights contemplated herein for Epic to
commercialize that Technology in the Epic Field of Use unless it has first
provided Epic an opportunity to identify any Projects it may wish to pursue
utilizing such NDI Background Technology. During this period, NDI will provide
Epic with six months notice of its desire or intent to so encumber any NDI
Background Technology in the Epic Field of Use, and Epic may at any time before
the expiration of 60 days following such notice identify a Project that would
result in that NDI Background Technology being licensed to Epic under this
Article 2.
ARTICLE 3
LICENSE OF NDI IMPROVEMENTS
3.1 INTELLECTUAL PROPERTY RIGHTS LICENSES TO EPIC
NDI grants (and agrees to cause its appropriate Affiliates to grant) to
Epic the following personal, irrevocable, exclusive, worldwide, royalty-free
(except as set forth in Section 4.3 and subject to Section 3.4 and
non-transferable (except as specified in Sections 4.7 and 13.8 below) licenses,
solely in the Epic Field of Use, under its and their Intellectual Property
Rights related to the NDI Improvements, to make (including the right to practice
any method), have made, use, lease, sell, offer for sale and import Epic
Products embodying the NDI Improvements on NDI Background Technology licensed to
Epic hereunder.
3.2 SUBLICENSING AND CONTRACT MANUFACTURING
All licenses granted in this Article 3 will be sublicenseable only with
NDI's prior written consent, which will not be unreasonably withheld. All
licenses granted in this Article 3 include the right to have contract
manufacturers and foundries manufacture the Epic Products for Epic or its
Subsidiaries only with NDI's prior written consent, which will not be
unreasonably withheld. The parties acknowledge that the resale or distribution
of Epic Products by Distributors will not be deemed a sublicense for purposes of
this Section.
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3.3 DURATION OF LICENSES
All licenses granted in this Article 3 shall commence on the Closing Date
(or, as applicable, the Project Commencement Date for the Project relating to
the applicable Technology) and continue in perpetuity, or, in the case of
Patents and Copyrights, until the expiration of the term thereof.
3.4 THIRD PARTY RESTRICTIONS
All licenses granted in this Article 3 will be subject to any (a) licenses
granted to or obligated to be granted by NDI or its Affiliates to Third Parties;
or (b) restrictions in favor of Third Parties in contracts entered into by NDI
or its Affiliates; in each case existing prior to the Closing (or, as
applicable, the Project Commencement Date for the Project relating to the
applicable Technology). To the extent any rights granted in this Article 3
constitute sublicenses of Intellectual Property Rights of Third Parties that are
subject to royalty obligations, Epic shall either pay any royalty obligations
incurred as a result of Epic's exercise of such Intellectual Property Rights or
forego the exercise of those Intellectual Property Rights.
ARTICLE 4
ADDITIONAL ROYALTY-BEARING LICENSES
4.1 ELECTION BY EPIC NOT TO COMMERCIALIZE TECHNOLOGY
From time to time Epic may elect not to commercialize certain Epic
Technology. In such case, Epic may provide notice of such intention to NDI. In
addition, beginning two years after the Effective Date, NDI may request Epic to
respond whether Epic has a good faith intention to commercialize certain Epic
Technology, and Epic shall respond affirmatively or negatively to such request
within 90 days, such notice to be provided in writing to NDI. For purposes of
this Section, a good faith intention to commercialize will require that Epic has
identified in writing plans to develop or commercialize such technology, and has
a good faith belief that it has sufficient funding, or is able to receive
sufficient funding, to initiate efforts to commercialize the technology, and
after initiation move expeditiously to commercialize the technology within the
next five years after such notice to NDI. For purposes of this Article: (a)
Epic's notice to NDI of its election not to commercialize certain Epic
Technology; or (b) Epic's response to NDI of its election not to commercialize
certain Epic Technology in response to the request of NDI, will constitute a
"NO-GO ELECTION."
4.2 OPTIONAL LICENSES TO NDI
In the event Epic makes a No-Go Election, NDI may request, by written
notice no later than 30 days after receipt of the notice of No-Go Election, that
Epic negotiate in good faith an irrevocable, worldwide, royalty-bearing license
to such Epic Technology to be granted to NDI and its Affiliates under the terms
in Article 5. Such license will be exclusive outside the Epic Field of Use, and
its exclusivity in the Epic Field of Use will be as negotiated by the parties.
In addition, at any time, NDI may request that Epic negotiate in good faith an
irrevocable, exclusive, worldwide, license in any Epic Technology to be granted
to NDI and its Affiliates
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under the terms in Article 5 for any field outside the Epic Field of Use, which
license will bear royalties on Net Sales. In each case, NDI and Epic shall
negotiate in good faith for a period of no less than 30 days a reasonable
royalty for such license. Any dispute regarding what constitutes a reasonable
royalty may be submitted to fast-track arbitration as described in Section 4.6.
Such reasonable royalty will take into account, inter alia, the exclusivity
terms of such license. Upon determination of such royalty, the applicable
Technology will be deemed Licensed Epic Technology.
4.3 OPTIONAL LICENSES TO NEW NDI TECHNOLOGY
In the event NDI acquires ownership of New NDI Technology, or files any
patent application reflecting New NDI Technology, that it believes is useful in
the Epic Field of Use, NDI shall promptly send Epic written notice identifying
such New NDI Technology. Epic shall have the right of first negotiation for six
months after the receipt of such notice, to negotiate a royalty bearing,
exclusive, irrevocable, worldwide license to such New NDI Technology in the Epic
Field of Use, which license will bear royalties on Net Sales, but will not
include any upfront, milestone or minimum royalty payments. Either party may
exercise such right of first negotiation by written notice. In such case, NDI
and Epic shall negotiate in good faith for a period of no less than 30 days a
reasonable royalty rate for such license. Such royalty rate shall not exceed 5%.
The obligations of this Section will remain in effect only for so long as NDI
holds at least 30% of the Outstanding Percentage Interests of Epic, as such term
is defined in the LLC Agreement. For avoidance of doubt, (a) unless and until
Epic exercises its right of first negotiation by written notice, NDI will have
no obligation to negotiate with Epic for such license; (b) nothing in this
Section will be construed to restrict NDI's right to negotiate for such a
license with any Third Party, including during the 30 day period referenced
above; and (c) all licenses to be negotiated hereunder are subject to the terms
of Section 2.4. However, NDI shall not, for a period of six months after the
commencement of such 30-day period, grant a license to New NDI Technology to any
Third Party on terms more favorable than the best terms offered by Epic during
the 30-day negotiation period. Any dispute regarding what constitutes a
reasonable royalty may be submitted to fast-track arbitration as described in
Section 4.6. Upon determination of such royalty rate, the applicable Technology
will be subject to the licensing terms that are applicable to NDI Background
Technology in Article 2 of this Agreement. Epic and NDI acknowledge that any
third party restrictions related to New Technology will be identified and made a
condition of the license as part of such negotiation process.
4.4 OPTIONAL LICENSES TO THIRD PARTY TECHNOLOGY
In the event NDI acquires the right to license to Epic any New Third Party
Technology that is useful in the Epic Field of Use, NDI shall promptly send Epic
written notice identifying such Technology, subject to any obligations of
confidentiality to which NDI may be bound. Epic shall have the right of first
negotiation for six months after the receipt of such notice, to negotiate a
license to such New Third Party Technology in the Epic Field of Use, which
license will bear royalties on Net Sales, in amounts at least as high as those
payable by NDI to any applicable Third Party. Either party may exercise such
right of first negotiation by written notice. In such case, NDI and Epic shall
negotiate in good faith for a period of no less than 30 days a reasonable
royalty rate and other terms for such license. In no event will NDI be
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obligated to agree to any terms for such license that conflict with any terms or
obligations to which NDI is bound with respect to such New Third Party
Technology. For avoidance of doubt, (a) unless and until Epic exercises its
right of first negotiation by written notice, NDI will have no obligation to
negotiate with Epic for such license; (b) nothing in this Section will be
construed to restrict NDI's right to negotiate for such a license with any Third
Party, including during the 30 day period referenced above; and (c) nothing in
this Agreement will be construed to obligate NDI to acquire any rights in the
New Third Party Technology that are sublicenseable to Epic, nor to secure the
right to disclose the terms or existence of such license to Epic. However, NDI
shall not, for a period of six months after the commencement of such 30-day
period, grant a license to such New Third Party Technology to any Third Party on
terms more favorable than the best terms offered by Epic during the 30-day
negotiation period. Epic and NDI acknowledge that any third party restrictions
and other terms and conditions related to New Technology will be identified and
reduced to a written license agreement as part of such negotiation process.
4.5 MANUFACTURING
If the manufacture of nano-materials by Epic for the execution or
commercialization of any Project requires a sublicense or other extension of
rights licensed to NDI by a Third Party which requires consent for that
sublicense or extension of rights, NDI shall take commercially reasonable steps
to obtain consent to have Epic licensed to use those rights at the same royalty
payable, if any, by NDI under its license agreement with that Third Party. For
the first three years following the Closing Date, NDI, upon request by Epic,
shall, to the extent it manufactures such nano-materials, supply Epic with
nano-materials which Epic is unable to manufacture as a result of Epic's
inability to obtain sublicenses or other necessary extensions of rights under
NDI's license under those terms. NDI shall sell such nano-materials to Epic at
the lowest price for which NDI supplies the same or similar nano-materials to
any other entity at similar volumes, and in no event for more than the price
charged for the same or substantially similar nano-materials at similar volumes
from any other third party supplier. If NDI is unable to supply Epic with such
nano-materials, then Epic may identify another entity capable of supplying those
nano-materials. In such event NDI will take commercially reasonable steps to
arrange for Epic to purchase directly from such entity or will purchase such
nano-materials from that entity on Epic's behalf and supply them to Epic at
NDI's out-of-pocket third party cost, with no xxxx-up except for administrative
and handling costs incurred. At the end of such three-year period, this
provision shall automatically extend for up to two additional one year extension
terms unless terminated by written notice of one party to the other no less than
30 days before the end of the then-current term.
4.6 FAST-TRACK ARBITRATION
Either party may elect to resolve a dispute as to the royalty to be paid
under Section 4.2 or 4.3 by binding fast-track arbitration in accordance with
the JAMS Streamlined Arbitration Rules and Procedures, such arbitration to be
held before a single arbitrator agreed upon by the parties to such dispute in
New York, New York. The arbitration shall commence no later than 30 days after
selection of the arbitrator, subject only to the arbitrator's availability or
the
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arbitrator's decision to delay the proceeding. The costs of arbitration shall be
shared equally by the parties to the arbitration. Any settlement reached by
arbitration shall be recorded in writing, signed by the parties, and shall be
binding on them. The parties shall instruct the arbitrator to deliver a decision
no later than 30 days after the completion of the arbitration hearing or the
completion of the written submissions of the parties if a hearing is waived.
4.7 CHANGE OF CONTROL OR DISSOLUTION
In the event of a Change of Control in Epic approved and affected in
accordance with the provisions of the LLC Agreement, if Epic is not the
surviving entity, NDI shall consent, effective as of such Change of Control, to
the assignment to the acquiror of Epic ("BUYER") of the licenses granted by NDI
or its Affiliates to Epic and its Subsidiaries hereunder prior to such Change of
Control, subject to: (a) any licenses granted to or obligated to be granted by
NDI or its Affiliates to Third Parties existing prior to such Change of Control
and still in effect; and (b) any restrictions in favor of Third Parties in
contracts entered into by NDI or its Affiliates existing prior to such Change of
Control. In the event of a dissolution of Epic, the rights of NDI and STV to
Epic Technology, and the Intellectual Property Rights therein, shall be governed
by Section 14.03 of the LLC Agreement and Section 2.3 of Exhibit C.
4.8 ADDITION OF SOLAR TECHNOLOGY AND FIELD
4.8(a) As described in Section 4.01(b) of the LLC Agreement, STV
has the option to contribute two additional milestone payments to Epic dedicated
to allow Epic to develop and exploit solar technology (the "SOLAR FIELD OF
USE").
4.8(b) Notwithstanding Section 4.8(a), if either of such
milestone payments do not occur in full by their specified due dates, then: (a)
Epic and its Subsidiaries hereby unconditionally and irrevocably assign to NDI
all Epic Technology and all Intellectual Property Rights in the Solar Field of
Use that was conceived, developed or reduced to practice by NDI or its
Affiliates under research and development agreements with Epic, (b) the Solar
Field of Use will be deemed excluded from the Epic Field of Use, and (c) the NDI
Background Technology related to the Solar Field of Use will be deemed excluded
from the NDI Background Technology except to the extent that it also relates to
a Project outside the Solar Field of Use. Epic shall cause its personnel and
subcontractors to comply with the terms of this Section. Epic shall take all
reasonable steps, including causing the execution of appropriate documents, at
NDI's request and expense, to effect the transfer of ownership and rights
contemplated in this Section.
4.9 OPTIONAL LICENSES TO STV
Concurrent with this Agreement, Epic, STV and NDI shall enter into the STV
License Agreement attached hereto as EXHIBIT C.
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ARTICLE 5
LICENSES-BACK TO NDI
5.1 LICENSE-BACK TO NDI
Epic agrees to grant and hereby grants (and agrees to cause its appropriate
Subsidiaries to grant) to NDI the following personal, irrevocable, worldwide,
royalty-bearing and non-transferable (except as specified in Section 13.8 below)
licenses: under its and their Intellectual Property Rights in and to the
Licensed Epic Technology, to make, have made, use, lease, sell, offer for sale
and import products embodying the Licensed Epic Technology, in whole or in part,
including the right to practice any method. Such license will be limited as to
field of use as described in Section 4.2, and shall be exclusive and agreed upon
by the parties as described in Section 4.2.
5.2 SUBLICENSING AND CONTRACT MANUFACTURING
All licenses granted in this Article 5 will be sublicenseable only with
Epic's prior written consent, which will not be unreasonably withheld. All
licenses granted in this Article 5 include the right to have contract
manufacturers and foundries manufacture products for NDI or its Affiliates. The
parties acknowledge that the resale or distribution of products by Distributors
will not be deemed a sublicense for purposes of this Section.
5.3 DURATION OF LICENSES
All licenses granted in this Article 5 shall commence as designated in
Section 4.2 and continue in perpetuity, or, in the case of Patents and
Copyrights, until the expiration of the term thereof.
5.4 THIRD PARTY RESTRICTIONS
All licenses granted in this Article 5 will be subject to any (a) licenses
granted to or obligated to be granted by Epic or its Subsidiaries to Third
Parties; or (b) restrictions in favor of Third Parties in contracts entered into
by Epic or its Subsidiaries; in each case existing prior to effective date of
grant of the license. To the extent any rights granted in this Article 5
constitute sublicenses of Intellectual Property Rights of Third Parties that are
subject to royalty obligations, NDI shall either pay any royalty obligations
incurred as a result of NDI's exercise of such Intellectual Property Rights or
forego the exercise of those Intellectual Property Rights.
ARTICLE 6
OWNERSHIP
6.1 OWNERSHIP OF IMPROVEMENTS
Subject to any agreement to the contrary in and the Master Development
Agreement, as between Epic and NDI, subject only to the licenses explicitly set
forth in this Agreement, each party hereby retains all right, title and
interest, including all Intellectual Property Rights, in and
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to any Technology to the extent it was developed, prepared, conceived, or
reduced to practice solely by such party.
6.2 NO TRADEMARK LICENSE GRANT
Nothing in this Agreement will be construed to assign, grant, or license to
any party any right in any trademark, service xxxx, or trade name of the other
party.
ARTICLE 7
CONFIDENTIALITY
7.1 CONFIDENTIALITY AND NON-USE OBLIGATIONS
Each Receiving Party shall (i) protect the Confidential Information of the
Disclosing Party by using the same degree of care, but no less than a reasonable
degree of care, to prevent the unauthorized use, dissemination, or publication
of the Confidential Information as Receiving Party uses to protect its own
confidential information of a like nature, (ii) not use such Confidential
Information except to exercise the licenses granted to it hereunder, and (iii)
not disclose such Confidential Information to any Third Party, except as
expressly permitted under this Agreement, without prior written consent of the
Disclosing Party.
7.2 DISCLOSURE TO SUBLICENSEES
The Receiving Party has the right to disclose to its sublicensees permitted
under this Agreement portions of Confidential Information as reasonably
necessary in the exercise of the Receiving Party's sublicense rights under this
Agreement, subject to the sublicensee's agreement in writing to confidentiality,
protection, and non-use terms at least as protective of the Disclosing Party as
the provisions of this Agreement.
7.3 CONTRACT MANUFACTURERS
The Receiving Party has the right to disclose to its contract manufacturers
and foundries permitted under this Agreement portions of the Confidential
Information as reasonably necessary in the exercise of the Receiving Party's
"have made" rights under this Agreement, subject to the contract manufacturer's
agreement in writing to confidentiality and non use terms at least as protective
of the Disclosing Party as the provisions of this Agreement.
7.4 RESIDUALS
Notwithstanding any other provision of this Agreement, the Receiving Party
shall be free, and the Disclosing Party hereby grants to the Receiving Party the
right, to use for any purpose the Residuals resulting from access to or work
with the Confidential Information of the Disclosing Party. "RESIDUALS" means
information retained in the unaided memory of an individual who has had access
to Confidential Information without conscious attempt by such individual to
memorize such information.
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7.5 COMPELLED DISCLOSURE
If the Receiving Party or any of its respective Affiliates or Subsidiaries
believes that it will be compelled by law or by a court or other authority to
disclose Confidential Information of the Disclosing Party, it shall (i) give the
Disclosing Party prompt written notice so that the Disclosing Party may take
steps to oppose such disclosure, (ii) take reasonable steps to limit the scope
of any required disclosure of Confidential Information, and (iii) cooperate with
the Disclosing Party in its attempts to oppose such disclosure, but in any event
the Receiving Party shall not be prohibited from complying with such
requirement.
ARTICLE 8
EXERCISE OF LICENSES
8.1 DURATION OF LICENSES TO AFFILIATES
Any license to a particular Affiliate or Subsidiary of Licensee granted
hereto shall terminate upon the date that such Affiliate or Subsidiary ceases to
be an Affiliate or Subsidiary.
8.2 LICENSES GRANTED TO DISTRIBUTORS
Any sublicenses granted by Licensee to its Distributors with respect to any
product may include a sublicense under the applicable Patents within the scope
of Licensee's license hereunder, provided that the scope of such sublicense is
limited to the exercise of the rights granted hereunder.
8.3 NO IMPLIED LICENSES
Nothing contained in this Agreement shall be construed as conferring any
rights by implication, estoppel or otherwise, under any Intellectual Property
Rights, other than the rights expressly granted in this Agreement.
8.4 TECHNOLOGY TRANSFER
Delivery of Technology subject to the licenses granted herein to the
Licensee will be handled by the parties in a reasonable manner consistent with
the operational policies of Epic and the LLC Agreement.
8.5 NO WARRANTIES
ALL TECHNOLOGY AND INTELLECTUAL PROPERTY IS LICENSED HEREUNDER "AS IS."
EACH PARTY HEREBY DISCLAIMS ALL IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE AND NON INFRINGEMENT WITH RESPECT TO THE LICENSED
TECHNOLOGY AND INTELLECTUAL PROPERTY.
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8.6 CONTINUATION OF RIGHTS IN BANKRUPTCY
The parties acknowledge that if Licensor as a debtor-in-possession or its
trustee in bankruptcy in a case under Title 11 of the United States Code (the
"BANKRUPTCY CODE") rejects this Agreement or any of the Intellectual Property
Rights licensed hereunder, as provided in Section 365(n) of the Bankruptcy Code,
Licensee may elect to retain its rights under the license granted hereunder.
Licensor or its trustee shall not interfere with the rights of the Licensee as
to continue its exercise of the licenses granted herein.
ARTICLE 9
ROYALTIES
9.1 ROYALTIES
9.1(a) ROYALTY PAYMENTS. This Article governs the terms for payment of
royalties for all royalty-bearing licenses granted in this Agreement. Licensee
shall pay to Licensor a royalty on the Net Sales accruing to Licensee in each
Licensee fiscal quarter.
9.1(b) ROYALTY BASE. "NET SALES" means the gross invoice price from
sales, distribution, or other exploitation of products or services embodying, in
whole or in part, the Licensed Technology, excluding: (A) charges for handling,
freight, sales taxes, insurance costs and import duties where such items are
included in the invoiced price; (B) commercially reasonable discounts or credits
(or other similar adjustments to price); and (C) credits actually granted or
refunds actually given for returns. In the event that the products or services
are provided for no or nominal consideration or to an Affiliate or Subsidiary or
in any other circumstances in which the selling price is established on other
than an arms-length basis, the Net Sales will be the average selling price
during the preceding fiscal quarter on sales of like volumes of the applicable
products or services to unaffiliated customers in arms-length sales. However, in
the event that products or services are sold to Affiliates or Subsidiaries for
resale to Third Parties, then the royalties will be based on Net Sales from the
Affiliates or Subsidiaries to the Third Parties and no royalties will be due on
the sales from the Licensee to the Affiliates or Subsidiaries.
9.2 PAYMENTS AND ACCOUNTING
9.2(a) RECORDS AND AUDITS. Licensee shall keep full, clear and
accurate records showing the means and basis of calculating the royalties
required hereunder. These records shall be retained for a period of three years
after the date of payment notwithstanding the expiration or other termination of
this Agreement. Licensor shall have the right, through a mutually agreed upon
independent certified public accountant (consent to which shall not be
unreasonably withheld or delayed by Licensee), and at Licensor's expense, to
examine and audit, not more than once a year, and during normal business hours,
all such records and such other records and accounts as may under recognized
accounting practices contain information bearing upon the amount of royalty
payable to Licensor under this Agreement. Prompt adjustment shall be made by
either party to compensate for any errors and/or omissions disclosed by such
examination or audit. Should any such error and/or omission result in an
underpayment of more than 5% of the
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total royalties due for the period under audit, Licensee shall upon Licensor's
request pay for the cost of the audit and pay Licensor an additional fee equal
to a compound annual interest rate of 1% per month or the highest rate then
allowed by New York law, whichever is lower..
9.2(b) DELIVERY OF STATEMENTS. No later than 30 days after the end of
each Licensee fiscal quarter, Licensee shall furnish to Licensor a statement in
suitable form showing all Licensee products and services subject to royalties
that were sold, during such quarter, and the amount of royalty payable thereon,
or if no products or services subject to royalty have been sold, that fact shall
be shown on such statement. Also, within such 30 days, Licensee shall pay to
Licensor the royalties payable hereunder for such quarter. Licensor and Licensee
will determine the form of the statement prior to submission of the first such
statement. All royalty and other payments to Licensor hereunder shall be in
United States dollars. Royalties based on sales in other currencies shall be
converted to United States dollars according to the official rate of exchange
for that currency, as published in the Wall Street Journal on the last day of
the calendar month in which the royalty accrued (or, if not published on that
day, the last publication day for the Wall Street Journal during that month).
ARTICLE 10
PATENT PROSECUTION AND ENFORCEMENT
10.1 PROSECUTION
10.1(a) The Licensor will be primarily responsible for and will
control prosecution and maintenance of Patent applications and Patents claiming
the Licensed Technology (for purposes of this Section, "LICENSED PATENTS").
Licensor shall refrain from taking any proposed action for prosecution and
maintenance of the Licensed Patents: (i) to which Licensee objects within the
time frames set forth in Section 10.1(c); or (ii) that would materially
undermine the validity or overall objective commercial value of the Licensed
Patents in the Licensee's field of use. Licensor will be responsible for filing
and other prosecution fees and the fees of its attorneys for any prosecution and
maintenance which it pursues under this Section
10.1(b) The Licensor shall not finally abandon prosecution of any
Licensed Patent without informing Licensee in writing of its intention to do so
no later than 30 days prior to the deadline for actions to be taken to prevent
such abandonment. Licensee may, in its sole discretion, elect to continue the
prosecution at its own expense, and if it does so, Licensee will have the right
to have such Licensed Patent assigned to it, subject to Licensor's retention of
a personal, irrevocable, worldwide, royalty-free, sublicenseable license under
all rights of the Licensed Patent. As used in this Section, "finally abandon"
means to abandon a patent or patent application such that all rights thereunder
are lost and may not be pursued through another application or appeal.
Accordingly, amendment of claims during prosecution, abandoning an application
while a related application remains pending, pursuing an appeal, allowing an
application to issue and the like do not constitute "final abandonment."
10.1(c) The Licensor shall promptly provide the Licensee with copies
of all relevant documentation for the Licensed Patents, including drafts of
patent applications prior to filing such patent applications, office actions
rendered during the patent prosecution and
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proposed responses thereto associated with the prosecution of the Licensed
Patents in the U.S. and in any foreign countries as they occur, so that the
Licensee may be informed of the continuing prosecution. The Licensee shall
designate a single contact who shall be responsible for receiving such
documentation and for obtaining comments from the appropriate personnel
(including any inventors) of the Licensee. The Licensee shall keep that
documentation in confidence pursuant to the terms of Article 7. The Licensor
shall give the Licensee an opportunity to comment on and provide suggestions
regarding Patent applications and responses to office actions rendered during
the patent prosecution before any response is actually filed thereto, provided
that if the Licensee has not commented: (i) at least 15 days prior to the
deadline for filing a patent application or the initial deadline for a response
; and (ii) no later than 30 days after being provided with a draft Patent
application for review, as applicable, then the Licensor shall be free to file
the respective Patent application or response, as appropriate. The Licensee may
reasonably request that claims be added to pending Patent applications for the
Licensed Patents to protect the products and processes contemplated to be
licensed under this Agreement, provided that such claims are: (1) consistent
with the requirements for filing such claims in the pertinent application, (2)
consistent with the terminology and overall strategy implemented by the
Licensor; and (3) would not materially undermine the validity or overall
objective commercial value of the Licensed Patents in the Licensor's field of
use. With respect to such claims, the Licensor will at its option either: (x)
add such claims to the applicable Patent application (or a continuing
application if other claims are in condition for allowance) and use reasonable
efforts to obtain allowance of such claims; or (y) in the event that a claim of
priority for such claims can be maintained, provide the Licensee with the
opportunity to pursue such claims in a separate application which the Licensee
will prosecute and maintain at its own expense. It is understood that additional
fees, and in some cases new divisional or continuing applications, may be
required to pursue additional claims, particularly in certain foreign countries.
The Licensee shall be responsible for paying all incremental costs and expenses
(including reasonable attorneys' fees) incurred in connection with additional
requested claims, except to the extent the Licensor agrees in good faith that
such additional requested claims are desirable for its prosecution strategy and
are not unduly duplicative or expensive.
10.2 ENFORCEMENT
10.2(a) In the event that Licensor or Licensee learns of a substantial
infringement of the Licensed Patents, the party that learned of the infringement
shall bring it to the attention of the other party and provide written notice
describing the circumstances of such infringement.
10.2(b) Licensor shall have the initial right (but not the obligation)
to enforce the Licensed Patents against the infringer. The party having the
initial right to enforce the Licensed Patents (the "ENFORCING PARTY") may: (i)
commence suit on its own account; or (ii) permit the other party to commence
suit on its own account; or (iii) request that the other party join as party
plaintiff in a patent infringement litigation brought by the Enforcing Party and
share the expense of the litigation.
10.2(c) The other party shall have 30 days to inform the Enforcing
Party of its decision to join or not join in such litigation. In no event may
such other party be joined in any
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suit without its prior written consent; provided, however, that such consent
shall be given where necessary for standing or other requirements to file or
maintain the action. In the event that the Enforcing Party chooses not to
commence suit in a commercially reasonable time, the other party may do so at
its own election, and the Enforcing Party agrees, to the extent it is a
necessary party to the litigation, to join as a party plaintiff in such a suit.
Unless the other party agrees to share the expenses of litigation, all
out-of-pocket litigation expenses of such other party will be born by such other
party and all amounts recovered in such a legal action will be retained by such
other party.
10.2(d) All amounts recovered in such a legal action brought jointly
by the parties and fully participated in by both parties will be at the joint
expense of the parties (in equal shares unless otherwise mutually agreed upon),
and all recoveries will be shared jointly by them in direct proportion to the
share of expense paid by each party; provided, however, that any amounts
received by the Licensee that are subject to the payment of royalties hereunder
will be deemed part of Net Sales for the purposes of calculating such royalties.
10.2(e) Each party will reasonably cooperate with and assist the other
in litigation proceedings instituted under this Agreement. The litigation will
be controlled by the party bringing the suit, except that either party may be
represented by counsel of its choice, at its own expense, in any suit brought by
the other party.
ARTICLE 11
TERM AND TERMINATION
11.1 VOLUNTARY TERMINATION
By written notice to the other party, each party may voluntarily terminate
all or a specified portion of the licenses and rights granted to it hereunder by
such other party. Such notice shall specify the effective date of such
termination and shall clearly specify any affected Technology, and Intellectual
Property Rights.
11.2 SURVIVAL
Any voluntary termination of licenses and rights of a party under Section
11.1 shall not affect such party's licenses and rights with respect to any
product made or service furnished prior to such termination, and shall not
affect the licenses and rights granted to the other party hereunder.
11.3 NO OTHER TERMINATION
Each party acknowledges and agrees that its remedy for breach by the other
party of the licenses granted to it hereunder or of any other provision hereof,
shall be to bring a claim to recover damages subject to the limits set forth in
this Agreement and to seek any other appropriate equitable relief, other than
termination of the licenses granted by it in this Agreement.
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ARTICLE 12
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS AFFILIATES OR SUBSIDIARIES BE LIABLE
TO THE OTHER PARTY OR ITS AFFILIATES OR SUBSIDIARIES FOR ANY SPECIAL,
CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY
OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS
SHALL NOT LIMIT DAMAGES FOR INTELLECTUAL PROPERTY INFRINGEMENT AVAILABLE TO
EITHER PARTY UNDER APPLICABLE LAW AND SHALL NOT LIMIT EITHER PARTY'S OBLIGATIONS
EXPRESSLY ASSUMED IN ARTICLE 7 (CONFIDENTIALITY); PROVIDED FURTHER THAT THE
EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY IN ANY EVENT.
ARTICLE 13
MISCELLANEOUS PROVISIONS
13.1 ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the parties with
respect to the subject matter hereof and shall supersede all prior written and
oral and all contemporaneous oral and written agreements and understandings with
respect to the subject matter hereof. To the extent there is a conflict between
this Agreement and the Definitive Agreements, the terms of this Agreement shall
govern.
13.2 DESCRIPTIVE HEADINGS
Any descriptive headings herein are inserted for convenience of reference
only and are not intended to be part of or to affect the meaning or
interpretation of this Agreement.
13.3 SEVERABILITY
Any term or other provision of this Agreement is determined by a
nonappealable decision of a court, administrative agency or arbitrator to be
invalid, illegal or incapable of being enforced by any rule of law or public
policy, all other conditions and provisions of this Agreement shall nevertheless
remain in full force and effect so long as the economic or legal substance of
the transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
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13.4 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE
Failure or delay on the part of either party hereto in the exercise of any
right hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement herein,
nor shall any single or partial exercise of any such right preclude other or
further exercise thereof or of any other right. All rights and remedies existing
under this Agreement are cumulative to, and not exclusive of, any rights or
remedies otherwise available.
13.5 AMENDMENT
Change or amendment will be made to this Agreement except by an instrument
in writing signed on behalf of each of the parties to such agreement.
13.6 NOTICES
All notices and other communications hereunder shall be in writing and
shall be deemed to have been duly given when delivered in person, by telecopy
with answer back, by express or overnight mail delivered by a nationally
recognized air courier (delivery charges prepaid), by registered or certified
mail (postage prepaid, return receipt requested) or by e-mail with receipt
confirmed by return e-mail to the respective parties as follows:
if to NDI:
NanoDynamics, Inc.
000 Xxxxxxxx Xxxxxxxxx
Xxxxxxx, Xxx Xxxx 00000
Attention: Chief Executive Officer
With a copy to:
Xxxxxxxxx Traurig, LLP
0000 Xxxxxxxxxx Xxx., 0xx Xxxxx
X. Xxxx Xxxx, XX 00000
Attention: Xxxxxxx Xxxxxx
if to Epic:
Epic Energy Solutions, LLC
000 Xxxxxxxx Xxxxxxxxx
Xxxxxxx, Xxx Xxxx 00000
Attention: Chief Executive Officer
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing in the manner set forth above. Any
notice or communication delivered in person shall be deemed effective on
delivery. Any notice or communication sent by e-mail,
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telecopy or by air courier shall be deemed effective on the first Business Day
following the day on which such notice or communication was sent. Any notice or
communication sent by registered or certified mail shall be deemed effective on
the third Business Day following the day on which such notice or communication
was mailed. As used in this Section 13.6, "BUSINESS DAY" means a day other than
a Saturday, a Sunday or a day on which banking institutions located in the State
of California are authorized or obligated by law or executive order to close.
13.7 GOVERNING LAW AND DISPUTE RESOLUTION
All questions concerning the construction, validity, enforcement and
interpretation of this Agreement shall be governed by and construed and enforced
in accordance with the internal laws of the State of New York, without regard to
the principles of conflicts of law thereof. Each party hereby irrevocably waives
personal service of process and consents to process being served in any such
suit, action or proceeding by mailing a copy thereof via registered or certified
mail or overnight delivery (with evidence of delivery) to such party at the
address in effect for notices to it under this Agreement and agrees that such
service shall constitute good and sufficient service of process and notice
thereof. Nothing contained herein shall be deemed to limit in any way any right
to serve process in any manner permitted by law. Each party hereto hereby
irrevocably waives, to the fullest extent permitted by applicable law, any and
all right to trial by jury in any legal proceeding arising out of or relating to
this Agreement or the transactions contemplated hereby. If either party shall
commence an action or proceeding to enforce any provisions of this Agreement,
then the prevailing party or parties in such action or proceeding shall be
reimbursed by the other party or parties for its or their attorneys fees and
other costs and expenses incurred with the investigation, preparation and
prosecution of such action or proceeding.
13.8 NONASSIGNABILITY
Except as provided below, no party may, directly or indirectly, in whole or
in part, whether by operation of law or otherwise, assign or transfer this
Agreement, without the other parties' prior written consent, and any attempted
assignment, transfer or delegation without such prior written consent shall be
void. Notwithstanding the foregoing, (a) NDI (or its permitted successive
assignees or transferees hereunder), but not Epic, may assign or transfer this
Agreement as a whole, without consent, in connection with and as part of any
Transfer (as defined in the LLC Agreement) of its Membership Interests (as
defined in the LLC Agreement) pursuant to Section 10.01(c) of the LLC Agreement;
and (b) Epic and NDI may assign this Agreement in part, with the consent of the
other party, such consent not to be unreasonably withheld, to a person or entity
that succeeds to all or substantially all of the assets of a business or
business unit of that party to the extent such assignment is necessary for that
business unit to operate as operated and contemplated to be operated at the time
of such succession. Any assignment of this Agreement in whole by Epic in
connection with a Change of Control will be governed by Section 4.7. Without
limiting the foregoing, this Agreement will be binding upon and inure to the
benefit of the parties and their permitted successors and assigns.
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13.9 COUNTERPARTS
Agreement may be executed in two or more counterparts, all of which, taken
together, shall be considered to be one and the same instrument.
[Signature Page Follows]
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WHEREFORE, the parties have signed this NDI License Agreement effective as
of the date first set forth above.
NANODYNAMICS, INC. EPIC ENERGY SOLUTIONS, LLC
By: /s/ XXXXX XXXXXXX By: /s/ XXXXX XXXXXXX
--------------------------------- ------------------------------------
Name: Xxxxx Xxxxxxx Name: Xxxxx Xxxxxxx
Title: Chief Executive Officer Title: Chief Executive Officer
Signature Page to NDI IP License Agreement
EXHIBIT A
TO INTELLECTUAL PROPERTY LICENSE AGREEMENT
LICENSED TECHNOLOGIES AND LICENSED PATENTS
NOTE: PATENTS AND APPLICATIONS ARE REFERENCED BY IPID NUMBER.
PROJECT NANODYNAMICS IPID REFERENCE NUMBER LICENSED TECHNOLOGY DESCRIPTION
------- ---------------------------------- -----------------------------------
High Strength Cement 229 Process for preparing inorganic
Using Nanomaterials cement particles in the sub-200 nm
range useful in additive form for
modifying various mechanical and
physical properties of cement.
High Temperature Battery None at this time N/A
for Down Hole Use
Fluid Flow Monitoring via None at this time N/A
Nanoparticle Tracer
Technologies
High Velocity Deformation 32 High velocity deformation of
(HVD) and Large Strain 33 ductile metal feedstocks to create
Extrusion Machining 34 submicron and nanocrystalline metal
(LSEM) using Nano-Metals 168 and alloy particulate, rod, wire,
and Alloys 205 sheet, and other forms.
(HVD Wire)
Corrosion and Wear 207 Preparation of ceramic coatings
Resistant Ceramic 208 from unagglomerated dispersions of
Coatings of Critical 153 ceramic nanoparticles via dip
Components 152 coating; preparation of ceramic
(Ceramic Coatings) 150 precursors for use in in-situ
149 formation of nanostructured ceramic
147 coatings via plasma spraying
146
154
Nano-Enhanced Filter 212 Preparation of highly porous
Technology to Control 214 ceramic structures (Cell-Pore) and
Contaminants in Water 213 subsequent deposition or
(Removal of Heavy Metals) 209 precipitation of nanoparticles onto
210 ceramic surfaces
215
211
145
92
Exhibit A to NDI IP License Agreement
