THE SYMBOL “*****” DENOTES PLACES
WHERE PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT. SUCH MATERIAL HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
Exhibit 10.25
LICENSE AGREEMENT
This License
Agreement (this “Agreement”) is made and entered into
as of the 6 th day of February, 2008, by and between
AlphaKat - Global Energy GmbH, a company organized and existing
under the laws of Germany (“Licensor”), and Covanta
Energy Corporation, a corporation organized and existing under the
laws of the State of Delaware (“Covanta”).
WHEREAS, AlphaKat
GmbH, a company organized and existing under the laws of Germany
(as further defined below, “AK”), has granted certain
rights to Licensor with respect to a proprietary technology to
convert waste material that contains hydrocarbons into diesel oil
(as further defined below, the “Technology”) in various
countries, including the United States, China, the United Kingdom
and the Republic of Ireland;
WHEREAS, Covanta
is interested in obtaining license rights from Licensor with
respect to the Technology, all on the terms and conditions set
forth herein; and
WHEREAS, Licensor is willing to grant such
license rights to Covanta, all on the terms and conditions set
forth herein;
NOW, THEREFORE, in light of the mutual premises
set forth herein and other good and valuable consideration, the
receipt and the sufficiency of which are hereby acknowledged, the
parties hereto, intending to be legally bound hereby, agree as
follows.
ARTICLE 1 – DEFINITIONS AND
INTERPRETATION
Section 1.1 Capitalized Terms . Unless
otherwise specified herein, the following capitalized terms shall
have the following meanings:
“
Affiliate ” means, in relation to any Person, any
other Person that controls, is controlled by, or is in common
control with, such Person. For the purpose of this definition,
control means the direct or indirect control of fifty percent (50%)
or more of the voting rights in such Person or the power to direct
the management or policies of such Person, whether by operation of
law, by contract or otherwise. Except as shall otherwise be
expressly provided in this Agreement, and for the avoidance of any
doubt, as of the Effective Date, (i) Licensor and AK are Affiliates
and (ii) Licensor and Global are Affiliates, but AK and Global are
not Affiliates.
“
Agreement ” has the meaning set forth in the first
paragraph hereof.
“ AK
” means AlphaKat GmbH, a company organized and existing under
the laws of Germany, and its successors and permitted assigns.
“
Commercial Waste ” means all non-hazardous solid waste
that is collected from commercial establishments, including
residential apartment buildings, office buildings, restaurants,
industrial parks, all other business facilities and all recyclable
materials from recycling facilities.
“
Competitor ” means a Competitor of Covanta or a
Competitor of Licensor, as the context requires.
“
Competitor of Covanta ” means a Person, directly or
through Affiliates, engaged primarily in the waste disposal
business, including the energy from waste business.
“
Competitor of Licensor ” means a Person, directly or
through Affiliates, engaged primarily in the business of selling
equipment that converts waste or organic feedstock(s) containing
hydrocarbon materials into diesel fuel or any Person that is
involved primarily in the development of such equipment or the
technology on which it is based.
“
Contracted Waste” means all non-hazardous waste,
regardless of the source of such waste, which is under contract to
be delivered to Covanta or any of its Affiliates for disposal in,
or processing by, one of the facilities owned or operated by
Covanta or any of its Affiliates.
“
Covanta ” has the meaning set forth in the first
paragraph hereof and includes its successors and permitted
assigns.
“
Default ” has the meaning set forth in Section
10.1.
“
Demonstration Plant ” has the meaning set forth in
Section 2.2.
“
Dispute ” has the meaning set forth in Section
9.1.
“
Document Package ” has the meaning set forth in
Section 4.5(b)(iii) .
“
Effective Date ” has the meaning set forth in Section
5.1.
“
Extended Period ” means the period that begins on the
date that the Initial Period ends and terminate on the fifth (5
th ) anniversary thereof, as further provided for in
Section 2.1(b) .
“
Feedstock ” means Household Waste, Contracted Waste,
Commercial Waste or Radial Biomass, as the case may be.
“ Full
Right ” means that the Person being granted the right(s)
described herein shall be the only Person that is entitled to
exercise such right(s) so long as this Agreement is in effect and
that no other Person shall be authorized, by the grantor of such
right(s), to exercise such right(s) or be granted such
right(s).
2
“
Global ” means Global Energy, Inc., a Nevada
corporation.
“
Governmental Organization ” has the meaning set forth
in Section 2.5.
“
Household Waste ” means all non-hazardous,
post-recycled municipal solid waste which is collected from
residences, which waste is of the type normally accepted for
processing at waste to energy facilities in the United States,
China, the United Kingdom or the Republic of Ireland, as the case
may be.
“ ICC
” means the International Chamber of Commerce.
“ ICC
Rules ” has the meaning set forth in Section 9.1.
“
Improvements ” means all the techniques, enhancements,
modifications, changes, experience, methods, information, data or
knowledge that will be created or acquired in the future relating
to the Technology and/or the manufacturing of such components for
Systems (whether or not patentable, useful or workable) through the
implementation, development, testing and improvement of the
Technology.
“ Initial
Period ” means the period which begins on the date that
the Interim Period ends and terminates on the tenth (10
th ) anniversary thereof.
“
Intellectual Property ” means any intellectual
property and/or proprietary information and materials relating to
the Technology along with all rights therein, whether existing
before or conceived or developed after the Effective Date (except
as otherwise expressly provided), including: (i) patents, patent
applications, patent disclosures and inventions (whether or not
patentable and whether or not reduced to practice), including the
Patents; (ii) trademarks, service marks, trade dress, trade names,
corporate names, logos, slogans and Internet domain names, together
with all goodwill associated with each of the foregoing; (iii)
copyrights and copyrightable works; (iv) trade secrets,
confidential information and know-how (including ideas, formulae,
compositions, manufacturing and production processes and
techniques, research and development information, test data and
results, drawings, specifications, designs, supplier lists and
related information); and (vi) registrations, applications,
divisionals, continuations, continuations-in-part, foreign
counterparts and renewals for any of the foregoing.
“ Interim
Period ” means the period which begins on the Effective
Date and ends twelve (12) months following the date that the
Demonstration Plant has been successfully commissioned and is ready
for commercial operation; provided , however , that
if the Demonstration Plant passes the performance test agreed to by
the Parties as provided for in Section 2.2(c) more than thirty (30)
days prior to the scheduled end of the Interim Period, the Interim
Period shall terminate thirty (30) days following the date that the
Demonstration Plant has passed such performance test.
3
“ KDV
500 ” means the system of components, including all of
the structural steel, piping, pumps, vessels, control systems,
wiring, two proprietary “mixing turbine pumps” and the
operations, maintenance and start-up manuals provided by AK, to
convert hydrocarbon feedstock, including any Feedstock, into diesel
oil using the Technology which is capable of producing a minimum of
500 liters of diesel oil per hour.
“
Licensor ” has the meaning set forth in the first
paragraph hereof and includes its successors and permitted
assigns.
“
Parties ” means Licensor and Covanta.
“
Party ” means Licensor or Covanta, as the case may
be.
“
Patents ” means any existing or future patent
applications, patents, registrations, utility models and utility
model applications relating to the Technology which are necessary
or useful to manufacture or to sell, offer for sale, use or
otherwise make available Systems or the components of Systems,
including those set forth in Exhibit 2 attached hereto.
“
Person ” means any natural person, corporation,
company, partnership, business trust, governmental authority or
other entity.
“
Project ” means a project which is owned by Covanta, a
Covanta Affiliate or a Governmental Organization, in whole or in
part, to convert a Feedstock to diesel oil using the Technology in
Territory A or Territory B.
“
Purchase Order ” has the meaning set forth in Section
2.6.
“
Purchaser ” has the meaning set forth in Section
2.6.
“
Qualified Right ” means that the Person being granted
the right(s) described herein shall be entitled to exercise such
right(s) so long as this Agreement is in effect, but the grantor of
such right(s) shall be entitled to grant such right(s) or allow
such right(s) to be exercised by all other Persons except a Person
that is precluded from exercising such right(s) under the express
terms hereof.
“ Radial
Biomass ” means biomass, including wood, wood waste and
other types of cellulosic materials which are collected within or
from an area within a 100 mile radius of any biomass facility that
is owned by Covanta or an Affiliate of Covanta in the states of
California or New York as of the Effective Date.
“ Rights
Agreements ” means (i) the “Terms of
Agreement” dated May 2, 2007, (ii) the
“Shareholders’ Agreement” dated July 10, 2007 and
(iii) the Articles of Association of Licensor dated November 14,
2007 and November 22, 2007, a copy of each of which is attached
hereto in Exhibit 1.
4
“
System ” means any system of components, whether it is
in existence today or developed hereafter, including all of the
structural steel, piping, pumps, vessels, control systems, wiring,
the proprietary “mixing turbine pump(s),” any new
components of any future system of components and all of the
operations, maintenance and start-up manuals provided by AK, to
convert hydrocarbon feedstock, including any Feedstock, into diesel
oil using the Technology, including, for the avoidance of doubt,
the KDV 500.
“
Technology ” means the proprietary, renewable diesel
technology developed by Dr. Christian Koch (as well as any related
technology licensed to Dr. Christian Koch or to AK) to convert
municipal solid waste, organic materials, sludge and other
hydrocarbon materials, including Feedstock, to diesel oil,
including all Improvements to such technology made or acquired from
time to time, including Intellectual Property, Systems, the
formulation of catalysts used in Systems and all related materials
and information, including the Document Package.
“
Territory A ” means the United States.
“
Territory B ” means China, the United Kingdom and the
Republic of Ireland.
“ Third
Party Purchaser ” has the meaning set forth in Section
2.6.
Section 1.2 Interpretation . In this
Agreement, unless otherwise indicated or required by the
context:
(a) Reference to
and the definition of any document (including this Agreement) or
any applicable law shall be deemed a reference to such document or
applicable law as it may be amended, supplemented, revised or
modified from time to time;
(b) All references
to an “Article,” “Section” or
“Exhibit” are to an Article or Section hereof or to an
Exhibit attached hereto;
(c) Article and
Section headings and other captions are for the purpose of
reference only and do not limit or affect the meaning of the terms
and provisions hereof;
(d) Defined terms
in the singular include the plural and vice versa, and the
masculine, feminine and neuter gender include all genders;
(e) The words
“hereof,” “herein” and
“hereunder” and words of similar import refer to this
Agreement as a whole and not to any particular provision of this
Agreement; and
(f) The words
“include,” “includes” and
“including” mean include, includes, and including
“without limitation” and “without limitation by
specification.”
5
ARTICLE 2 – LICENSE RIGHTS
Section 2.1 Grant of License Rights .
Subject to the further terms of this Agreement, Licensor hereby
grants the following license rights to Covanta: Until Covanta has
satisfied the two (2) conditions which are set forth in Section
2.1(a) (relating to the purchase of the Demonstration Plant and an
additional five (5) Systems), Covanta shall have the Qualified
Right in Territory A and Territory B to use, practice and make
Improvements to the Technology in connection with Projects using
any Feedstock. Once Covanta has satisfied the two (2) conditions
which are set forth in Section 2.1(a), Covanta shall have the
following rights during the Initial Period and, if the election
provided for in Section 2.1(b) is timely made by Covanta, during
the Extended Period: (i) the Full Right in Territory A and the
Qualified Right in Territory B to use, practice and make
Improvements to the Technology in connection with Projects using
Household Waste; (ii) the Full Right in Territory A and Territory B
to use, practice and make Improvements to the Technology in
connection with Projects using Contracted Waste; (iii) the Full
Right in the applicable areas of Territory A to use, practice and
make Improvements to the Technology in connection with Projects
using Radial Biomass; and (iv) the Qualified Right in Territory A
and Territory B to use, practice and make Improvements to the
Technology in connection with Projects using Commercial Waste. As
further provided for in Sections 2.5 and 2.6, Covanta shall have
the right to arrange for the sale of Systems to Governmental
Organizations pursuant to a Purchase Order with AK. Furthermore,
nothing which is contained herein shall restrict the sale of any
Project by Covanta at any time to any Person other than a
Competitor of Licensor. For the avoidance of doubt, Covanta shall
be entitled to exercise any or all of the license rights that are
granted to it hereunder itself or through any of its Affiliates,
but Covanta shall not have the right to issue sublicenses to any
Person other than an Affiliate. The Parties further agree as
follows:
(a) To secure its
rights hereunder, Covanta shall satisfy the following two (2)
conditions: (i) issue a Purchase Order for the Demonstration Plant
by the date that is specified in Section 4.5 and make the payments
required pursuant to such Purchase Order as and when due
thereunder; and (ii) place one or more additional Purchase Order(s)
for a total of five (5) Systems (excluding the Purchase Order for
the Demonstration Plant) no later than one year after the start of
the Initial Period and make a down payment equal to ten percent
(10%) of the Purchase Price to Licensor at the time that such
Purchase Order(s) are placed for Licensor to hold in escrow pending
finalization of the Purchase Order(s) between AK and Covanta, it
being agreed that Licensor can release the sum of [*****] to AK for
preliminary engineering work associated with the Purchase Order(s)
and the balance of the deposit shall be released to AK as is
provided for in the Purchase Order(s) once it is finalized by AK
and Covanta. If Covanta decides, for any reason, to terminate this
Agreement and to give up its license rights hereunder after placing
such Purchase Order(s) and making the required down payment to
Licensor, the Licensor shall refund such deposit to Covanta.
(b) Covanta shall
have the right to elect, in its sole discretion, to extend the term
of the Initial Period for an additional five (5) years, (such
extended term defined in
6
Section 1.1 as the “Extended
Period”), Covanta to notify Licensor in writing at least
ninety (90) days prior to the end of the Initial Period if it wants
to extend the Initial Period for an additional five (5) years.
(c) During the
period that starts on the Effective Date and ends on the earlier to
occur of (i) the termination hereof and (ii) the date that Covanta
has satisfied the two (2) conditions which are set forth in Section
2.1(a), Licensor shall not (i) grant any rights to any Person
(other than Global) with respect to the Technology in Territory A
in connection with any projects using Household Waste or any
projects using Radial Biomass or (ii) sell Systems to any Person
for delivery to or use in Territory A if such Systems are to be
used to process Household Waste or Radial Biomass unless each of
the requirements that are specified in Section 2.1(d) are complied
with.
(d) If any Person
contacts Licensor at any time during the period specified in
Section 2.1(c) to purchase one or more Systems for any purpose
specified in clause (ii) of Section 2.1(c), Licensor shall (i)
provide a written notice of such contact to Covanta and (ii) notify
such Person in writing (with a copy of such notice to Covanta) that
no Systems can be sold for such purpose unless Covanta is given a
“right of first offer” with respect to such Systems.
The term “right of first offer” means that such Person
offers Covanta, in writing, the right to invest 50 percent of the
cost of the project to be developed with such Systems and to own 50
percent of such project (on an equal basis and terms with such
Person) and the right to operate such project or such other
arrangement acceptable to such Person and Covanta. Covanta shall
notify such Person and Licensor, in writing, whether Covanta wants
to be involved in such project as a 50 percent owner and operator
or waive its right to do so. AK shall not enter into a Purchase
Order with such Person unless Licensor has satisfied the notice
requirements of this Section 2.1(d) and Covanta elects to not
participate in the project.
Section 2.2 Obligations During Interim
Period . During the Interim Period, Covanta shall:
(a) Purchase and
install, at its sole cost and expense, a demonstration plant (the
“Demonstration Plant”) using Household Waste and/or
Contracted Waste which shall be comprised of a single KDV 500 (it
being agreed that Covanta shall determine, in its sole discretion,
whether to order the KDV 500 with a single proprietary mixing
turbine pump or two such pumps) at a site designated by Covanta in
Territory A;
(b) Use
commercially reasonable efforts to permit and complete installation
of the Demonstration Plant to enable it to achieve commercial
operation on or before October 1, 2008, subject to the commitment
of AK to deliver the KDV 500 (with one or two proprietary mixing
turbine pumps as is ordered by Covanta) on or before such date and
such other factors that are outside of the control of Covanta;
(c) Working
together in good faith with Licensor, within thirty (30) days of
the Effective Date, develop a plan which will define the
requirements for a performance test for the Demonstration Plant,
including the duration of the test, the availability,
7
reliability, conversion efficiency and other
relevant factors and such other parameters as the Parties and AK
may agree, consistent with prudent engineering practices;
(d) Use
commercially reasonable efforts to conduct the performance test
during the first six (6) months following the commissioning of the
Demonstration Plant or as soon as thereafter possible;
(e) Operate and
maintain the KDV 500 (with one or two proprietary mixing turbine
pumps as is ordered by Covanta); and
(f) Notify
Licensor in writing whether it wants to proceed to the Initial
Period at least sixty (60) days prior to the expiration of the
Interim Period, unless the Interim Period is being terminated
earlier in accordance with the proviso in the definition of the
term “Interim Period,” in which case such notice shall
be given at least fifteen (15) days prior to the end of the Interim
Period.
Section 2.3 Retention of Full Rights . In
order for Covanta to retain the Full Rights in Territory A that are
being granted to it by Licensor pursuant to Section 2.1, following
the satisfaction of the two (2) conditions set forth in Section
2.1(a), during the Initial Period and the Extended Period, the
following shall apply:
(a) During the
Initial Period, Covanta shall be required to place Purchase Orders
for a number of KDV 500s, on a cumulative basis, measured at the
end of each calendar year (such number to be pro-rated to account
for any partial years) as follows:
| Year 1 |
Total of 5 KDV
500s; |
| Year 2 |
Total of 20 KDV 500s; |
| Year 3 |
Total of 40 KDV
500s; |
| Year 4 |
Total of 70 KDV 500s; |
| Year 5 |
Total of 110 KDV
500s; |
| Year 6 |
Total of 170 KDV 500s; |
| Year 7 |
Total of 250 KDV
500s; |
| Year 8 |
Total of 350 KDV 500s; |
| Year 9 |
Total of 475 KDV
500s; and |
| Year 10 |
Total of 600 KDV 500s. |
During the Extended Period, Covanta shall be
required to place Purchase Orders for a number of KDV 500s, on a
cumulative basis, measured at the end of each calendar year (such
number to be pro-rated to account for any partial years) as
follows:
| Year 1 |
Total of 150 KDV
500s; |
| Year 2 |
Total of 300 KDV 500s; |
| Year 3 |
Total of 450 KDV
500s; |
| Year 4 |
Total of 600 KDV 500s; and |
| Year 5 |
Total of 750 KDV
500s; |
8
(b) For purpose of
meeting any of the minimum order thresholds for KDV 500s which are
set forth in Section 2.3(a), if a System is developed by AK (such
as the “KDV 2000” which is currently under development
by AK) that is capable of producing a higher amount of diesel oil
per hour than a KDV 500 (expected to be 2,000 liters per hour in
the case of a “KDV 2000” as compared to 500 liters per
hour for a KDV 500), then such System will count as more than one
KDV 500 based on the amount of diesel oil per hour capable of being
provided (expected to be four KDV 500s in the case of a “KDV
2000”).
(c) If the
Feedstock for any Project installed by Covanta requires Covanta to
secure more than 25 tons per day of Feedstock per KDV 500 to
produce 500 liters per hour of diesel oil output, then the number
of KDV 500s credited towards meeting the minimum order threshold
for KDV 500s set forth in Section 2.3(s) in connection with such
Project shall be adjusted upwards to account for the incremental
Feedstock that has to be secured by Covanta. For example, if
Covanta purchases five KDV 500s for a Project that will use
Household Waste and Covanta has to secure 150 tons of Household
Waste per day instead of 125 tons of Household Waste per day to
produce 2,500 liters of diesel oil per hour from such Project, then
Covanta will be credited as having ordered six KDV 500s for such
Project instead of five KDV 500s.
(d) If Covanta
fails to order the minimum number of KDV 500s (or equivalent
Systems) in any given year to satisfy the cumulative requirements
for such year set forth in Section 2.3(a), then Covanta shall be
given one year (the “Recovery Year”) to regain its Full
Rights in Territory A by achieving the cumulative threshold
requirement that is applicable as of the end of such Recovery Year.
During the Recovery Year, Covanta’s license rights in
Territory A shall be Qualified Rights with respect to Licensor.
However, Licensor shall not be entitled to grant Full Rights to any
other Person with respect to those rights that were formerly Full
Rights of Covanta hereunder. During the Recovery Year, Licensor
shall have the right to sell Systems to Persons other than a
Competitor of Covanta. If Covanta satisfies the cumulative
requirement at the end of the Recovery Year (or Licensor accepts
that the cumulative requirement has been satisfied), Covanta shall
regain it Full Rights in Territory A. If Covanta fails to regain
its Full Rights during the Recovery Year, its license rights in
Territory A thereafter shall be Qualified Rights thereafter.
(e)
Notwithstanding anything contained herein to the contrary, Covanta
shall not lose its Full Rights in Territory A if Covanta fails to
meet the cumulative order requirements in Section 2.3(a) if (i) AK
is not able to produce enough Systems to meet Covanta’s
Purchase Orders or (ii) any problems experienced with the
Technology in the Systems installed by AK make it commercially
unreasonable for Covanta to order any additional Systems until such
problems are resolved, in which case the Parties shall agree to an
equitable adjustment, in good faith, to the cumulative requirements
provisions of Section 2.3(a) .
Section 2.4 Other Projects . Covanta is
not authorized hereunder to develop a project using the Technology
for a feedstock that is not included in the definition of Feedstock
in
9
Territory A or Territory B or in a location
(regardless of feedstock) outside of Territory A or Territory B. If
Covanta wants to develop any such project, Covanta shall first be
required to contact Licensor for its prior approval. Licensor shall
determine whether the proposed project would violate any rights
that have been granted by Licensor to any Person and, if not,
whether Licensor is willing to agree to have Covanta pursue such
project, any such approval to be provided in writing.
Notwithstanding anything which is contained herein to the contrary,
Covanta shall have the right to purchase up to ten (10) KDV 500s to
install at any of Covanta’s waste to energy facilities.
Section 2.5 Sale of Systems to Certain
Governmental Organization . Licensor is aware that Covanta
often deals with municipalities and governmental organizations
(collectively referred to as “Governmental
Organizations”) which have the responsibility to dispose of
waste in their jurisdiction and that such Governmental
Organizations sometimes insist on owning the systems and facilities
that process or dispose of such waste. In such cases, Covanta will
seek to arrange for the procurement and installation of such
systems and facilities and operate them under a long-term contract.
If Covanta has an opportunity to sell one or more Systems to a
Governmental Organization that insists on owning such Systems,
Covanta shall be entitled to arrange for the sale of such Systems
pursuant to a Purchase Order as provided for in Section 2.6, but
only if Covanta or one of its Affiliates has entered into an
agreement with the Governmental Organization providing that the
Systems will be operated by Covanta for a minimum period of ten
(10) years.
Section 2.6 Purchase Orders . All
purchase orders for System(s) (“Purchase Orders”) shall
be entered into by and between AK (or its designee) and the
ultimate purchaser of such System(s) (the “Purchaser”),
although all Purchase Orders shall be placed through Licensor. Each
Purchase Order shall include a set of representations and
warranties made by AK to the Purchaser which are consistent with
those provided by Licensor to Licensee in Article 8 and a
non-exclusive, irrevocable and perpetual license (a “Use
License”) for the Purchaser to (i) use, practice, operate,
maintain, repair and make Improvements to the System(s), (ii)
purchase the catalyst that is required for the operation of the
System(s) from AK and/or any Person that is authorized to
manufacture and/or sell such catalyst by AK, (iii) purchase
components and spare parts for the System(s) from AK and/or any
Person that is authorized to manufacture and/or to sell such
components and spare parts and (iv) reproduce, modify and
internally distribute copies of any and all materials and
information received by Licensee from Licensor and/or AK relating
to the System(s), in whole or in part. In addition, if the
Purchaser sells or transfers any of the System(s) to any Person (a
“Third Party Purchaser”), the Purchaser shall be
entitled to transfer its Use License to such Third Party Purchaser
and each Third Party Purchaser shall be entitled to transfer such
Use License to another Third Party Purchaser. Notwithstanding
anything to the contrary contained or implied in clauses (ii) or
(iii) of this Section 2.6, all Purchasers and all Third Party
Purchasers shall be entitled to procure components, spare parts and
catalysts that are commercially available from any Person. Further,
if AK and the Persons authorized to make spare parts and components
that are not commercially available are unable to timely supply the
spare parts and components ordered by a Purchaser or a Third Party
Purchaser, such Purchaser or Third Party Purchaser shall be
10
authorized to purchase such spare parts and
components from any other Person and to make such spare parts and
components itself.
ARTICLE 3 – CONSIDERATION
Section 3.1 System Price of Demonstration
Plant . The purchase price of the KDV 500 to be ordered for the
Demonstration Plant shall be [*****], which includes the cost of
the equipment and components that are required to recover the
catalyst, and the cost of delivering the KDV 500 to the
Demonstration Plant site in the United States, assembling it,
starting it up and making it ready for commercial operation. Such
price does not include (i) a [*****] percent sales commission due
to Licensor or others, (ii) the additional cost for any sulfur
reduction equipment or (iii) the additional cost for the equipment
that is needed to process the Feedstock. Licensor agrees that no
commission shall be due to it with respect to the Demonstration
Plant. If Covanta decides to order the KDV 500 with a single
proprietary mixing turbine pump, the price of the KDV 500 shall be
[*****].
Section 3.2 Sulfur Reduction Equipment .
If sulfur reduction equipment is required for the Demonstration
Plant, Covanta shall have the right to require AK to provide such
equipment as part of the System being delivered, assembled, started
up and made ready for commercial operation, the cost of which shall
not exceed [*****].
Section 3.3 Reduction in Cost of Systems
. Licensor anticipates that the base price of Systems will decrease
as AK expands the production facilities for manufacturing Systems
and puts arrangements in place with third party suppliers for
pipes, valves and other basic components of the System that can be
purchased from such third party suppliers and once it is no longer
necessary for Licensor to build and test each System and then
disassemble it for shipment. Licensor and Covanta will cooperate
together in good faith and with AK to seek ways to help reduce the
cost of manufacturing and delivering Systems.
Section 3.4 Annual Pricing . Licensor,
Covanta and AK shall agree on a procedure to establish the price,
at the end of each November, for the following year, of (i)
Systems, (ii) the catalyst that is used with the Technology, (iii)
replacement/spare parts for Systems and (iv) the cost for AK or
Licensor to provide services on Systems or other engineering
services in order to (a) ensure that such prices are not increased
inappropriately from year to year and (b) to provide price
certainty to Covanta for the upcoming year in connection with the
Projects that it has under development. The Parties are aware that
the current price of a KDV 500 includes a technology fee of [*****]
and acknowledge that the minimum technology fee to AK from the sale
of a System in the future, as arrangements are put in place by AK
to broaden the manufacturing base and reduce the total cost of the
Systems will include a technology fee not to exceed [*****].
Licensor, Covanta and AK shall use their best efforts to negotiate
in good faith and agree as soon as practicable to the terms of such
procedure and any other mechanisms that may be necessary or helpful
to determine the pricing for the Systems or any other items.
Licensor shall provide Covanta, prior to the end of each November,
with the updated pricing for the following year. Licensor further
agrees (and AK, by its execution of this Agreement in the space
provided below, agrees) that Covanta will not be charged more
during any year for a
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purchase of one or more Systems for delivery in
a country than the lowest price that is paid by any other licensee
of Licensor or customer of AK for delivery in such country in
connection with a purchase of a comparable number of Systems in
such year.
Section 3.5 No Royalties . Neither
Covanta (or its Affiliates) nor any Purchasers or Third Party
Purchasers shall be required to pay royalties to Licensor, AK,
Global or any other Person in connection with the exercise by
Covanta or its Affiliates of any of the license rights in the
Technology granted under this Agreement.
Section 3.6 Payment to AK . Upon the
execution of this Agreement by Licensor and the execution of the
Acknowledgment and Agreement by Dr. Christian Koch and AK in the
space provided below, Covanta shall pay the sum of [*****] to AK,
the full amount of such payment to AK to be credited against the
Purchase Price for the Demonstration Plant under the Purchase Order
for the Demonstration Plant.
ARTICLE 4 – CERTAIN OBLIGATIONS OF THE
PARTIES
Section 4.1 Supply of Information .
Licensor shall supply Covanta from time to time with all
information relating to the installation and operation of Systems
reasonably required or requested by Covanta. Further, Licensor
and/or AK shall provide Covanta with any revised or updated
installation or operating manuals or bulletins as soon as such
materials are completed and available for distribution.
Section 4.2 Provision of Technical
Assistance . Notwithstanding Section 4.1, Licensor shall not
have any obligation to provide any engineering services or
technical assistance regarding the Technology or the Systems under
this Agreement. Any such services and assistance may be provided
under other agreements with Licensor or with AK.
Section 4.3 Acknowledgment and Agreement
. Licensor shall arrange for Dr. Christian Koch to execute this
Agreement in the space that is provided below, on behalf of himself
and in his capacity as the President of AK, to evidence (i) their
acknowledgement that they have reviewed this Agreement and agree to
any obligations on their parts, (ii) their consent to the terms of
this Agreement and (iii) their agreement for AK to enter into a
substantially similar form of license agreement with Covanta if the
rights of Licensor pursuant to or as contemplated by the Rights
Agreements are not supplemented to the extent necessary to enable
Licensor to grant all of the rights being granted to Covanta
hereunder or if any such rights granted to Licensor are terminated
for any reason, such new license agreement to preserve
Covanta’s Full Rights and/or Qualified Rights in Territory A
and Territory B.
Section 4.4 Cooperation with Demonstration
Plant . Licensor acknowledges that there are a number of
Improvements that could be made with respect to the design and
fabrication of the Technology that will enable the Demonstration
Plant to be more effective and that feedback from the initial
start-up and operation of the Demonstration Plant may yield
additional possibilities for design and fabrication Improvements.
Licensor agrees that Licensor and AK shall cooperate with Covanta
to work on any such
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Improvements to the Technology prior to AK
completing the manufacturing of the System that is ordered for the
Demonstration Plant, as well as following the delivery, start-up
and operation of such System.
Section 4.5 Purchase of the System for the
Demonstration Plant . Covanta shall place the Purchase Order
for the System required for the Demonstration Plant, and the
Parties shall cooperate with one another in good faith in
connection therewith, as follows:
(a) During the
ninety (90) day period following the execution hereof, Covanta and
Licensor shall perform a detailed review of the results of the
testing of the facility in Eppendorf, Germany and all other
relevant information that is available to the Parties and their
Affiliates, and provide all such information, along with
suggestions for any potential Improvements that can be made to the
System, to AK to ensure that the System which is ordered for the
Demonstration Plant will take into account all of such information
and suggestions. During such period, it is the expectation of the
Parties that they and their Affiliates will review and evaluate the
mechanical process of the System and provide all information
regarding such review and evaluation to AK.
(b) During the
ninety (90) day period provided for in Section 4.5(a), Licensor
shall assist Covanta in negotiating the terms of the Purchase Order
for the System for the Demonstration Plant with AK. The Purchase
Order shall reflect the following terms and conditions and
otherwise be acceptable to AK and Covanta:
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(i) |
A purchase price (the “Purchase
Price”) consistent with the terms of this Agreement,
including Section 3.1 and 3.2;
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(ii) |
A down payment equal to [*****] to AK by Covanta
at the time this Agreement is signed as provided for in Section
3.6;
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(iii) |
The delivery by AK of a comprehensive package of
documents for the System (the “Document Package”),
including all preliminary drawings, detailed heat and material
balances, interface control documents, equipment specifications,
piping and instrumentation diagrams, a System manufacturing plan
and such other documents as the Parties agree should be made
available by AK for review by Covanta;
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(iv) |
Within twenty-one (21) days following the
delivery of a complete Document Package, AK, Licensor and Global
shall meet to review the Document Package and discuss any comments
of, or changes being proposed by, Covanta and work out any final
changes to the Document Package;
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(v) |
Within fifteen (15) days of agreeing on the
Document Package, a payment of [*****]by Covanta to AK if the KDV
500 is being ordered with two proprietary mixing turbine pumps or a
payment
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of [*****] by Covanta to AK if the KDV 500 is
being ordered with only one proprietary mixing turbine pump;
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(vi) |
The right for Covanta to make one or more visits
to AK’s facility to review the fabrication of the System to
confirm that the System is being fabricated in accordance with the
Document Package;
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(vii) |
The obligation for AK to successfully test the
completed System at AK’s fabrication facility in Germany, it
being agreed that Covanta shall be given at least fifteen (15) days
prior written notice of such test and the right to have one or more
individuals attend the test to verify that such test was
successfully completed, following which AK shall disassemble the
System, prepare the System for shipment and ship the System;
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(viii) |
A payment of fifty percent (50%) of the balance
of the Purchase Price ( i.e. , the difference between the
Purchase Price and all of the amounts paid previously by Covanta to
AK, such balance amount to be referred to herein as the
“Purchase Price Balance”) to AK by Covanta once the
System has been successfully tested at AK’s fabrication
facility, disassembled for shipment and placed on a ship for
delivery to the United States;
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(ix) |
A payment of twenty-five percent (25%) of the
Purchase Price Balance to AK by Covanta once the System has been
physically delivered to the site of the Demonstration Plant and it
has been erected, assembled and deemed to be mechanically complete;
and
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(x) |
A final payment of twenty-five percent (25%) of
the Purchase Price Balance to AK by Covanta once the System has
passed all tests required for it to be deemed to be ready for
commercial operation.
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(c) At the end of
the ninety (90) day period provided for in Section 4.5(a), the
Purchase Order for the System for the Demonstration Plant shall be
placed by Covanta through Licensor, such Purchase Order to reflect
a credit for the [*****] payment made by Covanta to AK at the time
this Agreement is signed in accordance with the provisions of
Section 3.6.
ARTICLE 5 – EFFECTIVE DATE AND
TERM
Section 5.1 Effective Date . This
Agreement shall become effective on the date that it has been
signed by both of the Parties and by Dr. Christian Koch (the
“Effective Date”).
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Section 5.2 Term of the Agreement . This
Agreement shall continue in effect from the Effective Date until
July 1, 2028 unless it is terminated earlier by the provisions
hereof or by either Party in accordance with its rights
hereunder.
ARTICLE 6 – INTELLECTUAL
PROPERTY
Section 6.1 No Transfer of Ownership of the
Technology . The Parties agree that this Agreement shall not
transfer the ownership of the Technology or any of the Intellectual
Property therein, and that Covanta will not have any right, title
or interest in or to the Technology, except as set forth in Section
6.2 or as expressly licensed to Covanta pursuant to this Agreement
or any separate agreement.
Section 6.2 Improvements . All
Improvements conceived, developed or acquired by AK or Licensor
during the term hereof shall be included under the license rights
granted herein. All such Improvements conceived, developed or
acquired exclusively by AK or Licensor shall remain the property of
AK or Licensor, respectively. All processes, components, systems or
other technology, whether or not constituting an Improvement,
conceived, developed or acquired exclusively by Covanta shall
remain the property of Covanta.
Section 6.3 Covanta Technologies .
Licensor acknowledges that Covanta is engaged in operating,
developing, creating, manufacturing, marketing, reproducing,
distributing, using, licensing and otherwise commercializing a
variety of technologies, components and applications relating to
processing waste and creating energy from a variety of waste
sources. In connection with this line of business, Covanta owns or
otherwise has rights in intellectual property as of the Effective
Date and may acquire other ownership or rights in other
intellectual property after the Effective Date. Licensor
acknowledges and agrees that Covanta shall not have any obligation
under this Agreement to disclose to Licensor or make available for
use by Licensor any such intellectual property.
Section 6.4 Sharing of Intellectual
Property . If either Party wants to expand the scope of their
business relationship and disclose to the other Party intellectual
property that has been independently developed or acquired, but
which is not otherwise expressly covered by the terms of this
Agreement and the other Party is interested in such disclosure, the
Parties shall enter into a written agreement identifying such
intellectual property and the terms and conditions relating to the
disclosure and use thereof.
ARTICLE 7 – INFRINGEMENT AND
DESIGNATIONS
Section 7.1 Notice of Infringements .
During the term hereof, Licensor and Covanta shall promptly notify
each other in writing with respect to any claim of infringement of
any Patent or other right asserted against it by any Person arising
out of the exercise of the rights being granted hereunder.
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Section 7.2 Indemnity for Infringement or
Misappropriation . Licensor shall indemnify and hold harmless
Covanta, its Affiliates, any Purchasers and Third Party Purchasers
(collectively, the “Indemnified Parties”) from any and
all claims of infringement or misappropriation and attendant
damages and costs by virtue of the exercise of the rights granted
to an Indemnified Party hereunder or under any Purchase Order. To
secure the indemnity provided for in this Section 7.2, the
Indemnified Party shall: (i) provide notice to Licensor of the
claim giving rise to the liability as soon as reasonably
practicable after receiving a notice of the claim, it being agreed
that any delay in providing such notice to Licensor shall not
relieve Licensor of its indemnity obligations except to the extent
it was prejudiced by such delay; and (ii) use reasonable business
efforts to cooperate fully with Licensor in defending the claim;
provided , however , that Licensor shall not enter
into any settlement or compromise creating any payment obligation,
admission or other obligation on the part of any Indemnified Party
without such Indemnified Party’s prior written consent. The
Indemnified Parties shall permit Licensor to defend and compromise
such claim, but each Indemnified Party may employ its own counsel,
at its own expense, to assist Licensor with respect to any such
claim. Notwithstanding the foregoing, the Indemnified Parties shall
not be entitled to indemnification hereunder if the infringement is
due to the Indemnified Party or its Affiliates: (i) using the
System in violation of the express written operating instructions
that are provided by AK if the subject claim would have been
avoided but for such unauthorized use; or (ii) modifying the System
in a manner which is not authorized by Licensor which actually
causes such infringement if the subject claim would have been
avoided but for such modification.
Section 7.3 Use of Designations . If
requested by Licensor in writing, Covanta shall, in accordance with
the written instructions of Licensor, provide for any System or any
part of the Technology, legible statutory notice of any Patent, the
existence of the license herein granted and the identity of
Licensor and/or AK. Notwithstanding anything contained herein to
the contrary, no rights are being granted by either Party to the
other regarding their respective trade names or trademarks.
Section 7.4 Limitation of Liability . The
Parties expressly waive any claims against each other and their
respective Affiliates for indirect, special, non-compensatory,
incidental, punitive, exemplary or consequential damages of any
type, whether arising in contract or tort (including negligence,
whether sole, joint or concurrent or strict liability), arising out
of or relating to this Agreement or a breach hereof;
provided , however , that this provision shall not
waive any claims that the Parties may have under any other
agreements entered into between the Parties. The limitations on
liability and the remedies set forth in this Agreement have been
expressly bargained for by the Parties and reflect the knowing
allocation of the risks inherent in this Agreement between the
Parties.
ARTICLE 8 – REPRESENTATIONS AND
WARRANTIES
Section 8.1 Party Representations . As of
the Effective Date, each Party represents and warrants to the other
Party that:
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(a) It is duly
organized and validly existing and, where applicable, is in good
standing under the laws of the jurisdiction of its formation and it
has all requisite power and authority to enter into and perform its
obligations under this Agreement;
(b) The execution,
delivery and performance of this Agreement have been authorized and
approved by its Board of Directors and do not and will not (i)
violate any law, rule, regulation, order, decree or permit which is
applicable to it or (ii) violate its organizational documents or
any agreement to which it is a party;
(c) This Agreement
is a legal and binding obligation of such Party, enforceable
against such Party in accordance with its terms, except to the
extent enforceability is modified by bankruptcy, reorganization and
other similar laws affecting the rights of creditors generally and
by general principles of equity; and
(d) There is no
litigation pending or, to the best of its knowledge, threatened to
which such Party, its parent or any of its subsidiaries is a party
that, if adversely determined, would have a material adverse effect
on the financial condition, prospects or business of such Party or
its ability to perform its obligations under this Agreement.
Section 8.2 Licensor Representations
Regarding the Technology . As of the Effective Date, Licensor
represents and warrants to Covanta, its Affiliates and each
Purchaser and Third Party Purchaser that:
(a) A list of all
relevant Patents as of the Effective Date is set forth in Exhibit 2
attached hereto and all such Patents are current and valid as of
the Effective Date with any and all required fees to maintain the
same having been paid;
(b) Licensor has
licensed or otherwise has or otherwise will secure the rights in
and to the existing and future Technology, including Intellectual
Property necessary for Licensor to grant to Covanta the rights
being granted in this Agreement, and there are no rights, options
or other contractual obligations on the part of AK, Dr. Christian
Koch or any other Person that would result in such Technology,
including Intellectual Property, no longer being owned by or
licensed to AK or licensed by Licensor, and AK shall maintain,
prosecute and defend (or cause any other Person that owns any
Patents to maintain, prosecute and defend) all Patents and pay all
fees in connection therewith;
(c) The
Technology, including Intellectual Property, does not use or
include or rely on any third party intellectual property and no
third party owns any rights, including intellectual property
rights, necessary to Covanta’s exercise of any of its rights
under this Agreement that have not been licensed to AK;
(d) Except for any
rights granted to Global or to American Renewable Diesel, LLC, no
rights have been provided to, or authorized for, any Person to
exercise any rights in, the Technology, including the Intellectual
Property, which are inconsistent with the rights granted to Covanta
hereunder;
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(e) The Technology
as currently used by AK and as planned to be used by Licensor and
Covanta in accordance with the terms of this Agreement, does not
infringe, misappropriate or otherwise violate any patent,
copyright, trademark, trade secret or other proprietary or
intellectual property right of any Person, and AK and/or Licensor
have not received, and to its knowledge does not know of any facts
that could give rise to, any charge, complaint, claim, demand,
notice or other communication (i) alleging any such infringement,
misappropriation or other violation, (ii) requesting that AK and/or
Licensor take a license from any Person or (iii) challenging the
validity or enforceability of the Intellectual Property. AK and/or
Licensor has no knowledg
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