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GRAFTECH INTERNATIONAL LTD. HAS
CLAIMED CONFIDENTIAL
TREATMENT OF PORTIONS OF THIS
AGREEMENT IN ACCORDANCE WITH
RULE 24B-2 UNDER THE SECURITIES
EXCHANGE ACT OF 1934
Exhibit 10.34.0
EXECUTION COPY
TECHNOLOGY LICENSE
AGREEMENT , dated as of December 5, 2006, among
GRAFTECH INTERNATIONAL LTD. , a Delaware corporation
(“ GTI ”), UCAR CARBON COMPANY INC. , a
Delaware corporation (“ UCAR ”), ALCAN
FRANCE , a French société par actions
simplifiée (formerly known as Pechiney) (“
Buyer ”), and CARBONE SAVOIE , a French
société par actions simplifiée (“
Carbone Savoie ”).
W I T N
E S S E T H :
WHEREAS, GTI is
engaged, through its subsidiaries, in the Business (as defined
hereinafter);
WHEREAS, Buyer,
directly or through its subsidiaries, desires to purchase, and GTI
desires to sell, the Business on the terms and subject to the
conditions set forth in a Purchase and Sale Agreement, dated as of
November 27, 2006 (the “ Purchase Agreement
”), among GTI, Buyer and certain subsidiaries of GTI, and the
closing of the transactions contemplated by the Purchase Agreement,
including the sale of all of the stock of Carbone Savoie held by
GTI through its subsidiaries to Buyer, is occurring on the date
hereof;
WHEREAS, in connection
with the purchase and sale of the Business, licenses of certain
Intellectual Property are required in order to permit Buyer and its
subsidiaries (including, following the closing of the transactions
contemplated by the Purchase Agreement, Carbone Savoie) to operate
the Continuing Business (as defined hereinafter) and GTI and its
subsidiaries to operate the Competitive Business (as defined
hereinafter) after the Closing;
WHEREAS, the Parties
desire to grant and obtain such licenses on the terms and subject
to the conditions set forth herein;
NOW, THEREFORE, in
consideration of the premises, representations and warranties and
the mutual covenants and agreements contained herein and in the
Purchase Agreement, and other good, valuable and sufficient
consideration, the receipt of which is hereby acknowledged, the
Parties, intending to be legally bound, hereby agree as
follows:
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ARTICLE 1
DEFINITIONS;
INTERPRETATION
Section 1.1
Definitions . As used herein, the following terms shall have
the following meanings:
“
Affiliate ” with respect to any Person, shall mean any
other Person which Controls, is Controlled by or is under common
Control with, directly or indirectly, such Person, and, if such
Person is a natural person, includes any member of such
Person’s immediate family, or, if such Person is an entity,
includes any trustee, member, general partner, manager, director or
executive officer of, or any Person performing similar functions
for, such Person.
“
Agreement ” shall mean this Technology License
Agreement, including the Schedules, in each case, as amended or
supplemented from time to time.
“ Analyses
” shall have the meaning given to such term in
Section 6.1(a).
“ Business
” shall mean the development, manufacturing, marketing and
sale of Cathodes by the Seller Group, including Carbone Savoie and
the CS Brazil Companies.
“ Business
Day ” shall mean any day of the year other than
(a) any Saturday or Sunday or (b) any other day on which
the banks located in the State of New York, United States of
America, or France, generally are closed for business.
“ Buyer
” shall have the meaning given to such term in the
title.
“ Buyer Field
of Use ” shall mean the development, manufacturing,
marketing and sale of Cathodes.
“ Buyer
Group ” shall mean Buyer, the Affiliates of Buyer
(including Carbone Savoie), the respective Representatives of Buyer
and such Affiliates and the respective permitted successors and
permitted assigns of Buyer, such Affiliates and such
Representatives.
“ Buyer
Maintained IP ” shall have the meaning given to such term
in Section 5.1(c).
“ Carbone
Savoie ” shall have the meaning given to such term in the
title.
“ Carbone
Savoie Brazil ” shall mean Carbone Savoie Brasil S.A., a
company organized under the laws of the Federative Republic of
Brazil.
“ Cathodes
” shall mean cathode bottom blocks, graphitized and
non-graphitized carbon blocks, sidewall blocks, preformed sidewall
blocks (combining carbon and silicon carbide materials), materials
(glue and ramming paste), as well as all other carbon or graphite
based materials used for the lining of aluminum electrolysis cells
(which for clarity does not include anodes).
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“ Claim
” shall mean any complaint, allegation, charge, petition,
appeal, demand, notice, filing or claim of any kind that commences,
alleges a basis to commence or threatens to commence any Proceeding
by or before any Governmental Authority or Judicial Authority or
that asserts, alleges a basis to assert or threatens to assert any
right, breach, default, violation, noncompliance, termination,
cancellation or other action or omission that could result in a
Liability or Loss.
“ Closing
” shall have the meaning given to such term in
Section 3.1(a) of the Purchase Agreement.
“ Confidential
Information ” shall have the meaning given to such term
in Section 6.1(a).
“ Competitive
Business ” shall mean a Person conducting the commercial
development, manufacturing, marketing and/or sale of GTI Products
or a Person listed in Schedule C.
“ Continuing
Business ” shall mean the development, manufacturing,
marketing and sale of Cathodes by the Buyer Group after the
Closing.
“ Contract
” shall mean any written or oral contract, agreement, note,
bond, mortgage, indenture, deed of trust, lease, sublease, license,
sublicense, purchase or sale order, quotation or other commitment,
obligation or instrument of any kind that is or is intended to be
(or, upon acceptance by the other intended party or parties
thereto, would be) legally binding or enforceable under applicable
Law.
“ Control
” of a Person shall mean possession, directly or indirectly,
of the right or power to direct or cause the direction of the
management or policies of such Person, whether through ownership of
voting securities, through rights under Contracts, or
otherwise.
“ Court
” shall have the meaning given to such term in
Section 6.4(c)(1).
“ CS Brazil
Companies ” shall mean Carbone Savoie Brazil and CS
Brazil Holding.
“ CS Brazil
Holding ” shall mean Carbone Savoie Brasil Holding S/A, a
company organized under the laws of the Federative Republic of
Brazil.
“ CS
Intellectual Property ” shall mean the graphitization and
other process technology currently owned, used or being developed
by or for Carbone Savoie and the CS Brazil Companies (excluding in
each case Intellectual Property developed, used or owned prior to
the GTI Acquisition Date) and that is described in Schedule
B.
“ Disclosing
Party ” shall have the meaning given to such term in
Section 6.1(a).
“ Effective
Date ” shall mean the date first set forth
hereinabove.
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“ Equity
Interests ” of a Person shall mean capital stock, capital
stock equivalents (including stock options, restricted stock units,
stock appreciation rights and phantom stock), partnership
interests, membership interests, participations, shares and other
equity interests of any class or kind (however designated) of such
Person.
“ First
Notice ” shall have the meaning given to such term in
Section 6.4(c)(2).
“ France
” shall mean the French Republic.
“ GTI
” shall have the meaning given to such term in the
title.
“ GTI
Acquisition Date ” mean January 2, 1997, which is
the date on which UCAR Holdings acquired 70 % of the
outstanding Equity Interests in Carbone Savoie.
“ GTI
Products ” shall mean carbon or graphite foam,
carbon/carbon and carbon composites, refractory brick, graphite
electrodes and Graphite Specialties, but does not include
Cathodes.
“ Governmental
Authority ” shall mean any government (including any
United States, French or Brazilian Federal, foreign, state,
provincial, city, municipal, cantonal or county government), any
political subdivision thereof and any governmental, administrative,
ministerial, regulatory, central bank, self-regulatory,
quasi-governmental, taxing, executive or legislative department,
commission, body, agency, authority or instrumentality of any
thereof.
“ Graphite
Specialties ” shall mean graphite molds for high
temperature applications, graphite crucibles, graphite heating
elements, graphite anodes and graphite dies, in each case, used in
applications such as the casting of railcar wheels, production of
diamond drill bits, production of boron nitride for cosmetics,
production of magnesium, fluorine and lithium, production of boron
carbide for bullet proof vests and fiber optic cables and
production of coins, keys and electrical connectors. Graphite
Specialties shall also include rigid insulation board made from
natural graphite used in the insulation of vacuum furnace and heat
treating furnace applications.
“ ICC
Rules ” shall have the meaning given to such term in
Section 6.4(c)(1).
“ Infringed
IP ” shall have the meaning given to such term in
Section 5.3.
“ Intellectual
Property ” or “ IP ” shall mean any
and all (a) designs, styles, concepts, inventions and
discoveries of any kind, whether or not entitled to registration or
protection under any patent, copyright, trademark, trade secret or
Law, (b) invention rights, shop rights, utility models,
patents, patent applications and statutory invention registrations,
(c) trademarks, service marks, trade dress, logos, trade
names, corporate names and other identifiers of source or goodwill
of any kind, including registrations and applications for
registration thereof, (d) domain names, websites, mask works
and copyrights of any kind, including copyrights in computer
software and published and unpublished works, and registrations and
applications for registration thereof, and (e) confidential
and proprietary information, including trade secrets, know-how
(including mix formulations, processing conditions and
manufacturing
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TREATMENT
and engineering information),
process technology, technical information, data, customer lists,
plans, strategies and methodologies, in the case of each clause
above, regardless of the form in which embodied or evidenced and
including all databases, books, records, papers, files, recordings,
imprints, pictures, drawings and blue prints associated therewith
or related thereto.
“ Judicial
Authority ” shall mean any court, arbitrator, special
master, receiver, tribunal or similar body of any kind.
“ Law
” shall mean any treaty, code, statute, law (including common
law), rule, regulation, or ordinance of any kind of any
Governmental Authority.
“
Liability ” shall mean any liability, duty,
responsibility, obligation, assessment, cost, expense, expenditure,
charge, fee, penalty, fine, contribution, premium or obligation of
any kind, whether known or unknown, asserted or unasserted,
absolute or contingent, accrued or unaccrued, liquidated or
unliquidated, or due or to become due, and regardless of when
sustained, incurred or asserted or when the relevant events
occurred or circumstances existed.
“ Licensing
Party ” shall have the meaning given to such term in
Section 5.3.
“ Loss
” shall mean any Liability, shortage, damage, diminution in
value, deficiency or loss of any kind.
“
Manufacturing Facility ” shall mean a facility in
which Cathodes or GTI Products are manufactured.
“
Non-Licensing Party ” shall have the meaning given to
such term in Section 5.3.
“ Order
” shall mean any judgment, writ, decree, directive, decision,
injunction, ruling, award or order (including any consent decree or
cease and desist order) of any kind of any Governmental Authority
or Judicial Authority.
“ Ordinary
Course ” shall mean the ordinary course of business,
operations and activities conducted by the Business prior to the
date hereof consistent with past practice.
“ Parties
” shall mean GTI, UCAR, Buyer and Carbone Savoie.
“ Person
” shall mean an individual, a partnership, a sole
proprietorship, a company, a firm, a corporation, a limited
liability company, an association, a joint stock company, a trust,
a joint venture, an unincorporated organization, a union, a group
acting in concert, a Judicial Authority, a Governmental Authority
or any other entity or association of any kind.
“
Principals ” shall mean Buyer and GTI.
“
Proceedings ” shall mean any action, suit,
arbitration, mediation, litigation, hearing, investigation, inquiry
or other proceeding of any kind involving any Governmental
Authority, any Judicial Authority or any other Person.
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TREATMENT
“ Protected
Information ” shall have the meaning given to such term
in Section 6.1(b).
“ Protected
Party ” shall have the meaning given to such term in
Section 6.1(b).
“ Protecting
Party ” shall have the meaning given to such term in
Section 6.1(b).
“ Purchase
Agreement ” shall have the meaning given to such term in
the preamble.
“ Receiving
Party ” shall have the meaning given to such term in
Section 6.1(a).
“ Related
Agreements ” shall mean (a) the SNC Asset Purchase
Agreements, (b) the IT Services Agreement, (c) the
Tolling Agreement, (d) the Transition Services Agreement,
(e) the Property License, (f) the Machining Services
Agreement, (g) the Brazil Purchase Agreement, (h) the
Mutual Release, as each such term is defined in the Purchase
Agreement, and (i) this Agreement.
“
Representatives ” of a Person shall mean controlling
persons, partners, directors, officers, managers, trustees,
employees, agents, representatives, consultants, affiliates,
advisors, counsel or nominees of such Person.
“ Request
” shall have the meaning given to such term in
Section 6.4(c)(2).
“ Seller Field
of Use ” shall mean all fields other than the
development, manufacturing, marketing and sale of
Cathodes.
“ Seller
Group ” shall mean GTI, the Affiliates of GTI (other than
Carbone Savoie) including UCAR, the respective Representatives of
GTI and such Affiliates and the respective permitted successors and
permitted assigns of GTI, such Affiliates and such
Representatives.
“ Seller
Improvements ” shall mean, with respect to the Seller
Intellectual Property, all customizations, enhancements, revisions
and modifications thereto invented, discovered, developed or made
by GTI or any of its subsidiaries at any time after the date hereof
and on or before the seventh anniversary of the date
hereof.
“ Seller
Intellectual Property ” shall mean the graphitization and
other process technology currently owned, used or being developed
by or for the Seller Group for the Business and that is described
in Schedule A.
“ Seller
Maintained IP ” shall have the meaning given to such term
in Section 5.1(g).
“ UCAR
” shall have the meaning given to such term in the
title.
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Section 1.2
Interpretation . Unless otherwise expressly specified in
this Agreement:
(a) the words “
hereof ”, “ hereby ” and “
hereunder ,” and correlative words, refer to this
Agreement as a whole and not any particular provision;
(b) the words “
includes ” and “ including ”, and
correlative words, are deemed to be followed by the phrase
“without limitation”;
(c) the word “
written ” and the phrase “ in writing
,” and correlative words and phrases, include electronic and
facsimile transmissions;
(d) the words “
asset ” and “ property ” are
synonymous and include owned, leased and licensed real, personal
and intangible property of every kind, including contractual
rights, tort claims, cash, securities and information;
(e) the masculine,
feminine or neuter form of a word includes the other forms of such
word and the singular and plural forms of a word have correlative
meanings;
(f) the word “
or ” is not exclusive;
(g) the word “
will ” shall be construed to have the same meaning and
effect as the word “ shall ”;
(h) references to a
Person shall include the successors and assigns thereof permitted
by this Agreement;
(i) references to any
Contract, Law or Order mean such Contract, Law or Order, as
amended, modified or supplemented and, in the case of any Law, also
means any successor Law and, in the case of any Contract, includes
any and all exhibits, annexes, schedules and documents attached
thereto or incorporated therein or constituting a part
thereof;
(j) references to a
“ board of directors ” of a Person mean the
board of directors or correlative governing body or authority of
such Person and include any committee thereof, references to an
“ officer ” or “ director ”
of a Person mean an officer, director, executive, manager or
trustee of such Person or an individual performing correlative
functions for such Person the words “ stockholder
” and “ shareholder ” are synonymous and
references to the “ stockholders ” or “
shareholders ” of a Person mean the stockholders,
shareholders or other owners of Equity Interests (including
partners and members) of such Person;
(k) references to an
Article, Section, Schedule or Exhibit mean an Article or Section
of, or a Schedule or Exhibit to, this Agreement;
(l) references to
“ graphite ” mean synthetic graphite only, and
not natural graphite; and
(m) capitalized terms
that are correlative to terms defined in Section 1.1 shall
have correlative meanings.
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ARTICLE 2
GRANT OF RIGHT AND
LICENSE
Section 2.1 License to
Seller Intellectual Property .
(a) Subject to the
terms and conditions set forth herein, the Seller Group (including
each of GTI and UCAR) hereby grants to Carbone Savoie, and Carbone
Savoie hereby accepts, an exclusive (even as to Seller Group),
perpetual, irrevocable, non-transferable (except as specifically
set forth in Section 6.5), royalty-free, worldwide license
under the Seller Intellectual Property in the Buyer Field of Use
(which shall include the right to develop, make and use and sell
Cathodes). UCAR and the other members of the Seller Group shall
retain exclusive rights to the Seller Intellectual Property for use
in the Seller Field of Use as provided herein. Carbone Savoie shall
have the right to sublicense the Seller Intellectual Property and
the Seller Improvements, provided that any such sublicenses are
limited specifically and solely to the Buyer Field of Use; and
provided further that:
(i) any sublicense
granted pursuant hereto shall not be extended to a party in a
Competitive Business unless Carbone Savoie can demonstrate to the
reasonable satisfaction of GTI and UCAR (acting reasonably and in
good faith) that, with respect to a Competitive Business to which
Carbone Savoie wishes to grant a sublicense,
(1) such Competitive Business
does not develop, manufacture, market or sale a * of *,
(2) the development,
manufacturing, marketing and/or sale of * is not * to such
Competitive Business, and
(3) the Competitive Business
has instituted reasonable policies and/or protections for the
protection of Protected Information and to avoid the misuse of the
Seller Intellectual Property or the Seller Improvements in fields
other than the Buyer Field of Use;
(ii) any sublicense
granted pursuant hereto shall not be extended to a party having a
Manufacturing Facility in any of *, *, * or * unless Carbone Savoie
can demonstrate to the reasonable satisfaction of GTI and UCAR
(acting reasonably and in good faith) that such sublicensee and
such Manufacturing Facility have instituted reasonable policies
and/or protections for the protection of Protected Information and
to avoid the misuse of the Seller Intellectual Property or the
Seller Improvements in fields other than the Buyer Field of
Use;
(iii) any sublicense
granted by Carbone Savoie shall be without the right to further
sublicense the Seller Intellectual Property or the Seller
Improvements and shall include terms binding the sublicensee to
confidentiality provisions equivalent to those set out in
Section 6, for the benefit of both Carbone Savoie and the
Seller Group;
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(iv) when, pursuant to
Section 2.1(a)(i) or 2.1(a)(ii), Carbone Savoie is obligated
to demonstrate a state of facts in respect of a Competitive
Business or a Manufacturing Facility to the reasonable satisfaction
of GTI and UCAR in order to be permitted to grant a sublicense to
the Seller Intellectual Property or the Seller Improvements,
Carbone Savoie shall provide GTI and UCAR with all relevant
information, including documentary evidence, that it believes
demonstrates such state of facts at least sixty (60) days in
advance of the date of the proposed sublicense. If GTI or UCAR do
not notify Carbone Savoie that they are or are not reasonably
satisfied by the expiration of sixty (60) days following the
furnishing of the relevant information, Carbone Savoie may assume
that GTI and UCAR are reasonably satisfied that the demonstrated
state of facts is extant.
(b) The restrictions on
sublicensing of the Seller Intellectual Property and the Seller
Improvements set forth in the preceding paragraph shall not apply
to an Affiliate of Carbone Savoie, where Control shall be
established through ownership of more than 50 % of the Equity
Interest of the relevant Person.
Section 2.2 Seller
Improvements . Commencing on the date hereof and continuing
until the seventh anniversary of the date hereof, each of UCAR and
GTI shall, and GTI shall cause its other subsidiaries to, inform
Carbone Savoie of any Seller Improvements and to offer to license
to Carbone Savoie any Seller Improvements. In connection therewith,
UCAR and GTI shall, and GTI shall cause its other Affiliates to,
also inform Carbone Savoie of the terms on which a license to such
Seller Improvements is available. Neither UCAR nor GTI shall be
obligated, and neither shall be obligated to cause their respective
Affiliates, to inform Carbone Savoie of the existence of any Seller
Improvements more than two times per calendar year. UCAR and GTI
shall and GTI shall cause its Affiliates to negotiate in good faith
the terms of any such license, which shall be commercially
reasonable terms, but, in any event, the terms of such license with
respect to field of use, term, transfers, sublicenses and
termination will be substantially similar in all material terms to
those set forth in this Agreement.
Section 2.3 License to CS
Intellectual Property; Sublicense . Subject to the terms and
conditions set forth herein, Carbone Savoie hereby grants to UCAR,
and UCAR hereby accepts, an exclusive (even as to Carbone Savoie),
perpetual, irrevocable, non-transferable (except as specifically
set forth in Section 6.5), royalty-free, worldwide license
under the CS Intellectual Property, specifically and solely for use
in the Seller Field of Use. Carbone Savoie shall retain exclusive
rights to the CS Intellectual Property for use in the Buyer Field
of Use. UCAR shall have the right to sublicense the CS Intellectual
Property for which it has a license, so long as any such
sublicenses are limited specifically and solely to the Seller Field
of Use. UCAR shall, in respect of any proposed sublicense, secure
from any proposed sublicensee undertakings implementing reasonable
policies and/or protections for the protection of Protected
Information and to avoid the misuse of the CS Intellectual Property
in fields other than the Seller Field of Use.
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Section 2.4
Exclusivity .
(a) UCAR will not, and
GTI will not and not permit any of its other Affiliates to use, or
license or otherwise transfer or convey the Seller Intellectual
Property or the Seller Improvements for use, in the Buyer Field of
Use.
(b) Carbone Savoie will
not, and Buyer will not and will not permit any of its other
Affiliates to, use, or license or otherwise transfer or convey the
CS Intellectual Property for use, in the Se
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