Exhibit 10.45
LICENSE AGREEMENT-ILION TO LTC
This License Agreement ("Agreement") is made and entered into as of
December 31, 2001 between Lithium Technology Corporation, a Delaware corporation
("LTC"), and Ilion Technology Corporation, a Delaware corporation ("Ilion").
RECITALS
WHEREAS, LTC and Ilion have entered into an Agreement to terminate the
LTC-Ilion Merger Agreement (the "Merger Agreement"), and all related agreements
(the "LTC-Ilion Termination Agreement").
WHEREAS, the execution and delivery of this Agreement is a condition to
the LTC-Ilion Termination Agreement.
NOW, THEREFORE, in consideration of these premises and the mutual
agreements contained in this Agreement, Ilion and LTC agree as follows:
1. DEFINITIONS
Unless the context clearly indicates otherwise, the following terms,
when used in this Agreement, shall have the meanings set forth in this Section.
1.1. "Affiliate" means (a) any company or other entity of which either
party to this Agreement now or hereafter owns fifty percent (50%) or more of the
stock entitled to vote for the election of directors of such company or
otherwise has voting control over such entity; (b) any company or other entity
of which either party to this Agreement now or hereafter directly or indirectly
owns fifty percent (50%) or more of the ownership interest (a "majority economic
interest") in such company; or (c) any company or other entity in which voting
control or a majority economic interest is directly or indirectly held by a
parent company or other entity which also holds voting control of, or a majority
economic interest in either party to this Agreement.
1.2. "Licensed Products" means lithium-ion/lithium-ion polymer battery
products, the manufacture, use, sale or other disposition of which would, but
for the License granted hereunder, employ Technology licensed hereunder.
Licensed Products does not include lithium metal polymer battery products.
1.3. "Technology" means all product designs, processing techniques and
knowledge known to "those skilled in the art" whether or not patented or
patentable which Ilion owns or possesses on the date hereof and (1) has
communicated to LTC or (2) was developed by LTC pursuant to the Merger Agreement
between LTC and Ilion, solely as the foregoing relates to the materials, design
and architecture of lithium-ion/lithium-ion polymer batteries and excluding any
improvements to the Technology after the date of this Agreement. Schedule 1.3
hereto sets forth a
list of certain, but not all, of the items included within the definition of
Technology.
2. LICENSE AND AGREEMENTS
2.1 Non-Exclusive License. Subject to the terms and conditions stated
herein, Ilion hereby grants, and LTC hereby accepts, a worldwide, non-exclusive,
royalty-free, perpetual license under the Technology to make, have made for LTC,
use, sell or otherwise dispose of the Licensed Products and to use the
Technology solely in connection with the license granted herein (the "License").
The License shall continue until the termination of this Agreement in accordance
with Section 4 hereof.
2.2 Sublicense. LTC shall not have the right to sublicense the
Technology except as may be necessary to have a third party manufacture,
maintain or develop a Licensed Product for LTC. In addition, LTC may sublicense,
assign or otherwise transfer the License to any entity that is directly or
indirectly controlled by, controlling, or under common control with LTC.
2.3 HPD Products. LTC agrees not to duplicate Ilion's High Power Device
("HPD") product or design or any other aspect of the HPD system that can be
protected by patent or may not be determined by outside analysis.
2.4 Power Conditioning Reliability Market. LTC agrees not to enter the
power conditioning-reliability market for a period of two years after Proteus
Power LLC (or its successor) ("Proteus") enters commercial production or three
years after the date of this Agreement, whichever is earlier.
2.5 LTC's Right to Use Certain Items. Subject to the above, Ilion
acknowledges that LTC has the right to use all standard items of commerce in
their products. Ilion also acknowledges LTC's right to use known conventional
construction designs which exist in the commercial marketplace outside of
Ilion-Proteus.
3. TECHNOLOGY PROTECTION
3.1. Inspection/Manufacture. If Ilion has reasonable grounds to believe
that LTC is infringing on Ilion's intellectual property rights, then Ilion shall
provide notice of such to LTC. The notice shall set forth in reasonable detail
the nature of the alleged infringement and the evidence supporting such. In such
event, LTC shall permit a third party, to be mutually agreed upon by Ilion and
LTC, to enter upon LTC's premises during normal business hours and upon
reasonable advanced notice for the limited purpose of inspecting the alleged
infringing manufacturing process and/or component as set forth in the aforesaid
notice.
3.2. Compliance with Laws. LTC shall comply with all applicable laws of
the United Sates and all other appropriate jurisdiction and the regulations
promulgated thereunder, in the manufacture, sales, use, disposition and
installation of Licensed Products.
4. TERM AND TERMINATION
4.1 Term and Termination Dates. (a) This Agreement shall commence on
December 31, 2001 and shall terminate simultaneously with and upon the earliest
to occur of (i) any breach by LTC of any material provision of this Agreement
and the failure by LTC to cure such breach within ten (10) days of notice of
such breach or (ii) December 31, 2021.
(b) In addition to the provisions of Section 4.1(a) , Ilion may
terminate this Agreement immediately by notice to LTC, if voluntary or
involuntary proceedings are instituted against LTC under any bankruptcy or
insolvency laws by a party other than Ilion, an Ilion Affiliate or a party
acting in conjunction with Ilion which proceedings are not dismissed or
withdrawn within 60 days, or LTC makes an assignment for the benefit of its
creditors or receiver or custodian is appointed for LTC or LTC's business is
placed under attachment, garnishment or other process involving a significant
portion of the business of LTC.
4.2. Confidentiality. The termination of this Agreement shall not
relieve LTC of its obligations of confidentiality pursuant to Section 5.1 of
this Agreement.
5. CONFIDENTIALITY
5.1 Confidentiality.
(a) LTC hereby acknowledges that the Technology is a valuable
trade secret of Ilion. LTC shall maintain the Technology in confidence and shall
cause its employees and agents to maintain the Technology in confidence during
the term of this Agreement and thereafter following termination of this
Agreement for a period of two (2) years. The foregoing confidentiality
obligation shall not apply to Technology which:
(i) is or becomes public knowledge (through no failure of LTC
to perform its obligations hereunder);
(ii) is in the future rightfully received from third parties
by LTC free of any obligation to keep it confidential;
(iii) is now or in the future approved in writing by Ilion for
release, publication, dissemination or use;
(iv) was rightfully known to LTC prior to its receipt from
Ilion; or
(v) is required by applicable law to be disclosed to a
governmental authority; provided, that to the extent permitted
by applicable law, LTC shall use its reasonable efforts to
obtain the agreement of such governmental authority to
maintain the confidentiality of any such proprietary
information.
The parties hereto acknowledge that the Licensed Products
contain a high degree of proprietary Technology, and LTC shall treat and handle
all technical information, design data,
specifications and like material pertaining to the Licensed Products or any
Improvement in confidence and will use such material only to make, have made,
use, sell or otherwise dispose of the Licensed Products. LTC shall return all
Technology which is embodied in physical form to Ilion promptly upon the
termination of this Agreement.
The parties shall take all reasonable steps to eliminate the
risk of disclosure of the Technology, including, without limitation, ensuring
that only employees with a need to know the Technology have access to the
Technology and that such employees shall sign confidentiality agreements to
treat the Technology as confidential information. LTC shall provide proper and
secure storage for papers, drawings and other confidential matters.
LTC shall require any permitted sublicensee to sign an
Agreement containing the same confidential provisions as are contained herein.
(b) LTC shall maintain any technology of Ilion in confidence
and shall cause its employees and agents to maintain the Ilion technology in
confidence during the term of this Agreement and thereafter following
termination of this Agreement for a period of two (2) years on the terms set
forth in Section 5.1(a).
5.2 Injunctive Relief. LTC hereby acknowledges that damages at law may
be an inadequate remedy for the breach of any of the covenants, promises and
agreements contained in Sections 3 and 5.1 and, accordingly, Ilion shall be
entitled to injunctive relief with respect to any such breach, including
specific performance of such covenants, promises or agreements or an order
enjoining LTC from any threatened, or from the continuation of any actual,
breach of covenants, promises or agreements. The rights set forth in this
Section shall be in addition to any other rights which Ilion may have at law or
in equity.
6. MISCELLANEOUS
6.1 Notices. Except as otherwise provided herein, all notices,
requests, demands, consents, instructions or other communications to or upon LTC
or Ilion under this Agreement shall be by telecopy or in writing and telecopied,
mailed or delivered to each party at the telecopier number or its address as
provided below (or to such other telecopy number or address as the recipient of
any notice shall have notified the other in writing). All such notices and
communications shall be effective (a) when sent by Federal Express or other
overnight service of recognized standing, on the Business Day following the
deposit with such service; (b) when mailed, by registered or certified mail,
first class postage prepaid and addressed as aforesaid through the United States
Postal Service, upon receipt; (c) when delivered by hand, upon delivery; and (d)
when telecopied, upon confirmation of receipt to the following:
Lithium Technology Corporation
0000 Xxxxxx Xxxxx
Xxxxxxxx Xxxxxxx, XX 00000-0000
Attention Xxxxx X. Xxxx
Fax: 000-000-0000
with a copy to:
Xxxxxxxxx, Xxxxxx & Xxxxxx
000 Xxxxxxx Xxxx.
0xx Xxxxx
Xxxxxxxxx, XX 00000
Fax: 000-000-0000
Attention: Xxxxxx X. Xxxxxxxxx
Ilion Technology Corporation
Royal & SunAlliance Centre
Xxxxx 00
00 Xxxxxxxxx Xxxxxx
Xxxxxxxx, Xxx Xxxxxxx
Attention: Xxxxx Xxxxxxxxx
Fax: 000-00-0-000-0000
with a copy to:
Xxxxx Young
ASB Bank Centre
Xxxxx 00
000 Xxxxxx Xxxxxx
Xxxxxxxx, Xxx Xxxxxxx
Fax: 000-00-0-000-0000
6.2 Nonwaiver. No failure or delay on either LTC or Ilion's part in
exercising any right hereunder shall operate as a waiver thereof or of any other
right nor shall any single or partial exercise of any such right preclude any
other further excise thereof or of any other right.
6.3 Amendments and Waivers. This Agreement may not be amended or
modified, nor may any of its terms be waived, except by written instruments
signed by LTC and Ilion. Such waiver or consent under any provision hereof shall
be effective only in the specific instances for the purpose for which given.
6.4 Assignments. No rights hereunder may be assigned and no duties
hereunder may be delegated by LTC except with the express prior written consent
of Ilion; provided, however, that a successor in interest by merger, by
operation of law, assignment, purchase or otherwise of the entire business of
either party, shall acquire all interest of LTC hereunder, without the necessity
of obtaining prior written consent.
6.5 Partial Invalidity. If at any time any provision of this Agreement
is or becomes illegal, invalid or unenforceable in any respect under the law of
any jurisdiction, neither the legality, validity or enforceability of the
remaining provisions of this Agreement nor the legality, validity or
enforceability of such provision under the law of any other jurisdiction shall
in any way be affected or impaired thereby.
6.6 Headings. Headings in this Agreement are for convenience of
reference only and are not part of the substance hereof or thereof.
6.7 Entire Agreement. This Agreement constitutes and contains the
entire agreement of LTC and Ilion and supersedes any and all prior agreements,
negotiations, correspondence, understandings and communications among the
parties, whether written or oral, respecting this License Agreement.
6.8 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of New York without reference to conflicts
of law rules.
6.9 Jurisdiction. Any suit, action or proceeding seeking to enforce any
provision of, or based on any matter arising out of or in connection with, this
Agreement or the transactions contemplated hereby may be brought in the courts
of the State of New York located in the County of New York and the federal
courts of the United States of America located in such State and County. Each of
the parties (i) consents to the exclusive jurisdiction of such courts (and of
the appropriate appellate courts therefrom) in any such suit, action or
proceeding, (ii) irrevocably waives, to the fullest extent permitted by Law, any
objection which it may now or hereafter have to the laying of the venue of any
such suit, action or proceeding in any such court or that any such suit, action
or proceeding which is brought in any such court has been brought in an
inconvenient forum, (iii) will not attempt to deny or defeat such personal
jurisdiction by motion or other request for leave from any such court, and (iv)
will not bring any action relating to this Agreement or any of the transactions
contemplated by this Agreement in any other court. Process in any such suit,
action or proceeding may be served on any party anywhere in the world, whether
within or without the jurisdiction of any such court. Without limiting the
foregoing, each party agrees that service of process on such party as provided
in Section 6.1 will be deemed effective service of process on such party.
6.10 JURY TRIAL. EACH OF LTC AND ILION, TO THE FULLEST EXTENT PERMITTED
BY APPLICABLE LAW, HEREBY IRREVOCABLY WAIVES ALL RIGHT TO TRIAL BY JURY AS TO
ANY ISSUE.
6.11 Counterparts. This Agreement may be executed in several
counterparts, each of which shall be deemed an original, but such counterparts
shall together constitute but one and the same agreement.
IN WITNESS WHEREOF, the parties have executed and delivered this
Agreement as of the date first above written.
LITHIUM TECHNOLOGY CORPORATION
By: /s/ Xxxxx X. Xxxx
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Xxxxx X. Xxxx
Chairman and Chief Executive Officer
ILION TECHNOLOGY CORPORATION
By: /s/ Xxxxx X. Xxxxxxxxx
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Xxxxx Xxxxxxxxx
Chairman and Chief Executive Officer
