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EXECUTION COPY TECHNOLOGY LICENSE AGREEMENT

Technology License Assignment Agreement

EXECUTION COPY TECHNOLOGY LICENSE AGREEMENT | Document Parties: GRAFTECH INTERNATIONAL LTD | UCAR CARBON COMPANY INC You are currently viewing:
This Technology License Assignment Agreement involves

GRAFTECH INTERNATIONAL LTD | UCAR CARBON COMPANY INC

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Title: EXECUTION COPY TECHNOLOGY LICENSE AGREEMENT
Governing Law: New York     Date: 3/16/2007
Industry: Electronic Instr. and Controls     Law Firm: Kelley Drye;Shearman Sterling     Sector: Technology

EXECUTION COPY TECHNOLOGY LICENSE AGREEMENT, Parties: graftech international ltd , ucar carbon company inc
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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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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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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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