EXHIBIT 10.1
PATENT AND KNOW HOW LICENSE AGREEMENT
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This License Agreement, dated as of September 30, 1998, is among Owens-
Corning Fiberglas Technology, Inc., an Illinois corporation, having its
principal place of business at 7734 West 59th St., Summit, IL 60501 ("OC Tech"),
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Owens Corning, a Delaware corporation, having its principal place of business at
One Owens Corning Parkway, Toledo, Ohio 43659 ("Parent" and, together with OC
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Tech, the "Seller"), and Advanced Glassfiber Yarns LLC, a Delaware limited
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liability company (the "Company").
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WHEREAS, pursuant to an LLC Interest Sale and Purchase Agreement, dated as
of July 31, 1998 (the "SPA"; capitalized terms not defined herein shall have the
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meanings ascribed to them in the SPA or the Non-Compete Agreement, as
applicable) among Parent, Company, and AGY Holdings, Inc. (as assignee of Glass
Holdings Corp. under an assignment agreement dated
as of September 28th, 1998), AGY Holdings, Inc. agreed to purchase from Seller a
51% membership interest ("Interest") in the Company;
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WHEREAS, Seller and its Affiliates have technology (including patents and
technical and business know how) related to the Business, and the parties have
agreed that certain of the rights will be licensed from Seller to Company; and
WHEREAS, Company has technology (including patents and technical and
business know how) related to the Business, certain of which is also related to
Seller's business and the parties have agreed that certain of the rights will be
licensed by Company to Seller.
NOW, THEREFORE, in consideration of the premises of and the mutual promises
and agreements in the SPA and contained herein, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties hereby agree as follows:
1. DEFINITIONS
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As used in this License Agreement, the following defined terms shall have
the meanings indicated below:
(a) "Business Know How" means the know how assigned to Company by the
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Master Patent and Know How Assignment between the parties.
(b) "Business Products" has the meaning given thereto in the SPA and
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further includes products made of High Strength Glass (as defined in Seciton
3.1(d) of the Non-Compete Agreement).
(c) "Business Patents" means all of the patents and patent
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applications assigned to Company by, or pursuant to, the Master Patent and Know
How Assignment.
(d) "Business Manufacturing Technology" has the meaning given thereto
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in the SPA.
(e) "Effective Date" means the date first above written.
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(f) "Manufacturing Facilities" means the portions of Seller's
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facilities at Aiken, South Carolina, Huntingdon, Pennsylvania, and South Hill,
Virginia to be transferred to Company which do not include the portions of the
Aiken and Huntingdon facilities at which Seller manufactures continuous filament
mat or wet process mat.
(g) "Restricted Products" has the meaning given thereto in Section
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1.2(a) of the Non-Compete Agreement.
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(h) "Seller Licensed Know How" means such of Seller's and Seller's
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Affiliates' technical knowledge and data, formulations, processes, techniques,
drawings and designs, unpatented inventions, operating manuals, manufacturing
and quality control procedures, trade secrets, plans, accumulated experience,
plant and tool design, installation instructions, raw material specifications,
advertising procedures, sales promotion literature, and other know how of any
kind as: (a) is in use, or has been used, or is or was under development for
use, in the Manufacturing Facilities to manufacture Business Products on or
before the Effective Date; (b) is necessary to the use of the Business
Manufacturing Technology; or (c) is necessary to the continued manufacture of
the Business Products using the Business Manufacturing Technology. Seller
Licensed Know How does not include Business Know How, but does include, without
limitation, the know how listed on Schedule C to this Patent and Know How
License Agreement Notwithstanding the foregoing, Seller Licensed Know How does
not include any know how relating to the coating of a glass fiber product with a
conductive material, to the composition of such conductive material, or to any
glass fiber product to be coated with a conductive material, except know how
relating to the graphite coating process employed at the Huntingdon,
Pennsylvania facility before the Effective Date.
(i) "Seller Licensed Patents" means all patents issued as of the
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Effective Date and all patents issuing worldwide in the future on patent
applications pending as of the Effective Date, as well as patents issuing
worldwide from later filed continuations, substitutions, or divisionals thereof,
and any reissues thereof, that Seller owns as of the Effective Date, which are
necessary to: (i) the use of the Business Manufacturing Technology; (ii) the
continued manufacture of the Business Products using the Business Manufacturing
Technology; or (iii) the
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use or sale of the Business Products, which patents and patent applications are
listed in Schedule A to this Patent and Know How License Agreement.
Notwithstanding the foregoing, Seller Licensed Patents does not include any
patents or patent applications relating to the coating of a glass fiber product
with a conductive material, to the composition of such conductive material, or
to any glass fiber product to be coated with a conductive material, except
patents or patent applications relating to the graphite coating process employed
at the Huntingdon, Pennsylvania facility before the Effective Date.
(j) "Seller Products" means glass fiber products including glass
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fibers, direct roving, conventional roving, sliver, tow or skein, and mats and
veils made from any of the foregoing, and whether or not coated, cut, sized,
bonded, shaped, texturized, cured, lubricated, or treated, including without
limitation all products manufactured by Seller or any Affiliates of Seller
before the Closing Date, but excluding Business Products.
(k) "S Glass" means glass having at least all of the following
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constituents in the indicated ranges:
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Component Lower Weight % Upper Weight %
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SiO/2/ 63.5 72.0
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Al/2/O/3/ 18.0 26.0
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MgO 9.0 11.0
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Na/2/O 0.0 0.5
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(l) "ZTY Winders" winders used at the Manufacturing Facilities and
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Guelph to wind Zero Twist Yarn products.
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(m) "ZTY Winder Technology" has the meaning given thereto in Section
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3.4 of this Patent and Know How License Agreement.
2. TERM AND TERMINATION
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2.1 Term
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Unless otherwise earlier terminated as provided below, this License
Agreement shall remain in effect (i) with respect to the patent license and
sublicense under Sections 3.1 and 3.3, until the expiration of the last to
expire of the Seller Licensed Patents, (ii) with respect to the patent license
and sublicense under Sections 5.1 and 5.3, until the expiration of the last to
expire of the Business Patents, and (iii) with respect to the know how license
under Sections 3.2 and 5.2, perpetually.
2.2 Remedies for Breach
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(a) If either party commits a material breach of any provision of this
License Agreement and fails to correct such breach within thirty (30) days after
written notice from the other party, neither party shall have the right to
terminate this agreement or to suspend its performance hereunder and this
Agreement shall not be terminable, but such party shall have available all other
legal and equitable remedies to which it may be entitled.
(b) Without limiting the foregoing, each party recognizes that irreparable
injury will result from a breach of any provision of this Agreement not curable
solely by the payment of money damages and that money damages will be inadequate
to fully remedy such injury. Accordingly, in the event of a breach or
threatened breach of one or more of the provisions of this Agreement, either
party, in addition to any other remedies available to it, will be entitled to
one or more preliminary or permanent orders (i) restraining and enjoining any
act which would constitute
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a breach, or (ii) compelling performance of any obligations which, if not
performed, would constitute a breach. Nothing contained in Section 2.2(b) is
intended to limit the rights of either party to seek or any court to enter any
lawful form of equitable relief or any available provision of such relief
ordered by the court, other than termination of this Agreement.
2.3 Termination
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Unless otherwise agreed by the parties before such transfer, this Patent
and Know How License Agreement shall terminate immediately upon: (a) the
transfer by the Company of any rights in any or all of the Business Patents,
Business Know How, Seller Licensed Patents or Seller Licensed Know, or any
tangible assets of the Company that incorporate any of the foregoing, to
Compagnie Saint Gobain ("CSG") or any Affiliate thereof (unless Company believed
in good faith, based upon reasonable inquiry, that the transferee entity was not
at the time of the transfer an Affiliate of CSG); or (b) upon the Company
becoming an Affiliate of CSG: (i) by CSG acquiring a majority of the voting
rights or the right to elect a majority of the board of directors of the
Company, Buyer or Porcher Industries; or (ii) through actions directly initiated
or directly facilitated by the Company, Buyer or Porcher Industries. Contingent
upon such termination, and in addition to the license grants in Sections 5.1 and
5.2 of this Patent and Know How License Agreement, Company hereby grants to
Seller a worldwide, paid-up, royalty-free, non-exclusive license under the
Business Patents and the Business Know How to make, have made, use, sell,
import, and offer to sell Restricted Products.
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3. SELLER LICENSE GRANTS
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3.1 Seller Patent License
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Seller grants to Company a worldwide, paid-up, royalty-free license under
the Seller Licensed Patents to make, have made, use, sell, import, and offer to
sell Business Products and products other than Seller Products. With regard to
Restricted Products, such license is exclusive, and with regard to Business
Products other than Restricted Products, such license is sole (as to Seller and
its Affiliates) for the Term of the Non-Compete Agreement, subject to the
licenses listed in Schedule B of the Non-Compete Agreement and subject to the
need for rights under the Seller Licensed Patents for Seller and/or its
Affiliates to perform their obligations to Company and its Affiliates to
manufacture and supply Business Products, glass marbles, and sliver and to
fabricate and/or repair bushings pursuant to the various agreements pursuant to
the SPA, including without limitation the Guelph Facility Supply Agreement,
Battice Facility Supply Agreement, Glass Marble Supply Agreement, Sliver Supply
Agreement, and Alloy Services Agreement (the "Seller Agreement Obligations"),
and is non-exclusive thereafter. With regard to products other than Restricted
Products, Business Products, and Seller Products, such license is non-exclusive.
3.2 Seller Know How License
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Seller grants to Company a worldwide, paid-up, royalty-free license under
the Seller Licensed Know How to make, have made, use, sell, import, and offer to
sell Business Products and products other than Seller Products. With regard to
Restricted Products, such license is exclusive, and with regard to Business
Products other than Restricted Products, such license is sole (as to Seller and
its Affiliates) for the Term of the Non-Compete Agreement, subject to the
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licenses listed in Schedule B of the Non-Compete Agreement and subject to the
need for rights under the Seller Licensed Know How for Seller and/or its
Affiliates to perform the Seller Agreement Obligations, and is non-exclusive
thereafter. With regard to products other than Restricted Products, Business
Products, and Seller Products, such license is non-exclusive.
3.3 Company Sublicense Rights
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Company shall have the right to sublicense its rights under Sections 3.1
and 3.2, subject to the limitations of Section 3.4, provided that Company shall
not have the right to sublicense its rights to CSG or any Affiliate thereof.
3.4 ZTY Winder Technology
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Company acknowledges that the technology embodied in the ZTY Winders ("ZTY
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Winder Technology") is a particularly sensitive and valuable component of the
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Seller Licensed Know How, that Seller is particularly concerned that ZTY Winder
Technology not be used by a competitor of Seller in the manufacture of Seller
Products, and that the purchase price of the Business reflects Company's access
to, and use of, the ZTY Winder Technology only for products other than Seller
Products. Similarly, Company is concerned that Seller not use the ZTY Winder
Technology to manufacture Restricted Products. Accordingly, each party shall
have the right to inspect the other party's manufacturing facilities for a
period of five years from the Effective Date. Such inspection rights shall be
as follows:
(i) inspections will be conducted by a neutral third party unaffiliated
with either party and reasonably acceptable to both parties;
(ii) the inspector shall prepare a report on the results of each such
inspection, which reports shall include no information regarding
Company's manufacturing facilities
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or operations other than whether ZTY Winder Technology is being, or
has been, employed in the production of Seller Products, and shall
include no information regarding Seller's manufacturing facilities or
operations other than whether ZTY Winder Technology is being, or has
been, employed in the production of Restricted Products, and the
inspector shall supply such reports to both the Company and Seller;
(iii) inspections may be conducted on 72 hours notice, during normal
business hours, no more than one time per calendar year; and
(iv) no inspections may be conducted after five years from the Effective
Date.
Neither Company nor Seller shall initiate any legal proceeding against the other
based on the results of any report within thirty (30) days of the inspector
giving the report to the parties. If by the end of such thirty (30) day period
the party that the inspector has determined to have misused the ZTY Winder
Technology has not satisfied the other party that there was no such misuse or
has not remedied the misuse to the other party's satisfaction, the other party
may then pursue all of its remedies available under this Patent and Know How
License Agreement. The sublicense right of Section 3.3 does not include the
right to sublicense rights in such of the Seller Licensed Patents or Seller
Licensed Know How as relate to the ZTY Winder Technology to any third party
other than an entity which is an Affiliate of the Company on the Effective Date
or a permitted assignee of the Company.
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4. DELIVERY OF KNOW HOW
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4.1 Business Know How At Manufacturing Facilities
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Seller intends that all of the Business Know How will be in place at the
Manufacturing Facilities on the Effective Date. Should Company subsequently
determine that any Business Know How is not at the Manufacturing Facilities,
Seller shall promptly deliver to Company such Business Know How as Company
identifies to Seller.
5. COMPANY LICENSE GRANT
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5.1 Company Patent License
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Company grants to Seller a worldwide, paid-up, royalty-free, license under
the Business Patents to make, have made, use, sell, import, and offer to sell
products other than Restricted Products and to perform all acts required for
Seller and/or its Affiliates to perform the Seller Agreement Obligations. With
respect to Seller Products, such license is exclusive, and with respect to
products other than Restricted Products and Seller Products, such license is
non-exclusive.
5.2 Business Know How License
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Company grants to Seller a worldwide, paid-up, royalty-free, license under
the Business Know How to make, have made, use, sell, import, and offer to sell
products other than Restricted Products and to perform all acts required for
Seller and/or its Affiliates to perform the Seller Agreement Obligations. With
respect to Seller Products, such license is exclusive, and with respect to
products other than Restricted Products and Seller Products, such license is
non-exclusive.
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5.3 Seller Sublicense Rights
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Seller shall have the right to sublicense its rights under Sections 5.1 and
5.2.
5.4 Company's Proprietary Rights to Business Patents and Business Know How
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Except as provided in this Agreement, Company retains all title, patent,
copyrights and other proprietary rights worldwide in the Business Patents and
Business Know How, regardless of the media in which such Business Patents and
Business Know How is embodied, now or in the future. Seller agrees not to
dispute any of Company's ownership rights in the Business Patents and Business
Know How. Seller agrees that it does not have any ownership or proprietary
rights of any kind, express or implied, in the Business Patents and Business
Know How, other than the licenses granted herein.
6. CONFIDENTIALITY
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6.1 Company to Maintain Seller Licensed Know How Confidential
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Company agrees to maintain the Seller Licensed Know How in confidence using
the same degree of care as Company takes to safeguard its own proprietary
information of the same general nature, but in no event shall Company use less
than a reasonable degree of care, and to refrain from disclosing Seller Licensed
Know How to others. Company agrees that it will not use, except for purposes
expressly licensed under this License Agreement, any Seller Licensed Know How
obtained directly or indirectly from Seller.
6.2 Seller to Maintain Business Know How Confidential
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Seller agrees to maintain the Business Know How in confidence using the
same degree of care as Seller takes to safeguard its own proprietary information
of the same general nature, but in no event shall Seller use less than a
reasonable degree of care, and to refrain from disclosing
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Business Know How to others. Seller agrees that it will not use, except for
purposes expressly licensed under this License Agreement, any Business Know How
obtained directly or indirectly from Company.
6.3 Exclusions
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(a) The obligations of confidentiality in Section 6.1 shall not apply to
any information which:
(i) was known to Company before the receipt of such information from
Seller, as evidenced by written records or other reliable evidence, and such
information was not directly derived from Seller or Seller Affiliates;
(ii) is or becomes known to the general public through no fault of
Company;
(iii) is received by Company without restriction on its disclosure or
in good faith from a third party purporting to have the right to transmit the
same;
(iv) is independently developed by employees of Company who have had
no access to Seller Licensed Know How; and/or
(v) is required to be disclosed to governmental authorities or
courts as a result of operation of law, regulation, or court order, provided
however, immediate written notice of such request by governmental authorities or
courts must be provided to Seller, all reasonable steps must be taken by Company
to restrict further disclosure of the affected information by such authorities
or court, and information so disclosed shall not be otherwise removed from these
secrecy obligations.
(b) The obligations of confidentiality in Section 6.2 shall not apply to
any information which:
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(i) is or becomes known to the general public through no fault of
Seller;
(ii) is received by Seller without restriction on its disclosure or
in good faith from a third party purporting to have the right to transmit the
same;
(iii) is independently developed by employees of Seller who have had
no access to Business Know How and/or
(iv) is required to be disclosed to governmental authorities or
courts as a result of operation of law, regulation, or court order, provided
however, immediate written notice of such request by governmental authorities or
courts must be provided to Seller, all reasonable steps must be taken by Seller
to restrict further disclosure of the affected information by such authorities
or court, and information so disclosed shall not be otherwise removed from these
secrecy obligations.
6.4 Engineering Services
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Company acknowledges that Seller has ongoing relationships with several
engineering service providers, and that the providers have had access to
proprietary information of Seller other than the Business Know How and the
Seller Licensed Know How. Except for providers currently providing services
relating to the Business Products under contracts which will be assigned to
Company, Company shall not engage the services of any of the providers
identified on Schedule B to this Patent and Know How License Agreement until,
for each such service provider (a) Company gives notice to Seller of Company's
intention to engage the services of the service provider; and (b) Seller enters
into a confidentiality agreement with the designated service provider having
terms and conditions reasonably acceptable to Seller for the protection of
Seller's proprietary information within thirty (30) days of such notice. If
Seller does not respond to such
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notice from Company within thirty (30) days, Seller shall be deemed to have
waived the requirements of this Section 6.4.
6.5 Alloy Fabrication Services
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Pursuant to the Alloy Services Agreement between Company and Owens Corning
executed on even date herewith, Owens Corning will provide to Company
fabrication services for bushings that incorporate Seller Licensed Know How.
If, as, and when permitted under the Alloy Services Agreement, Company may have
such bushings fabricated by a third party and Company desires to do so, Company
shall give Owens Corning notice of its desire to engage the services of a third
party fabricator, and shall identify the bushing to be fabricated and the
proposed fabricator. Upon execution of a confidentiality agreement between
Seller and the designated fabricator having terms and conditions reasonably
acceptable to Seller for the protection of Owens Corning's proprietary
information embodied in the bushing (substantially in the form of the
Confidentiality Agreement included as Exhibit A to this Patent and Know How
License Agreement) and which shall not be unreasonably delayed, Owens Corning
shall supply to the fabricator manufacturing drawings for the designated
bushing.
6.6 Other Third Party Services
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If and when Company wishes to use the services of a third party to design
or fabricate consolidation equipment (such as winders and choppers), furnaces or
melters, in connection with which the third party requires access to Seller
Licensed Know how to perform the services, Company shall give Seller notice of
its desire to engage the services of such third party. Upon execution of a
confidentiality agreement between Seller and the third party having terms and
conditions reasonably acceptable to Seller for the protection of the Seller
Licensed Know how
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(substantially in the form of the Confidentiality Agreement included as Exhibit
A to this Patent and Know How License Agreement), and which shall not be
unreasonably delayed, Company may disclose such required Seller Licensed Know
how to such third party. This Section 6.6 is a limited exception to Company's
confidentiality obligation set forth in Section 6.1 hereof.
6.7 Seller Design Services
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(a) Upon written request, Seller shall provide to the Company engineering,
design and technical services relating to the manufacture of Business Products
upon terms and conditions mutually acceptable to the parties. For as long as
Company is an Affiliate of Seller, Seller shall accord to such requests the same
priority as it accords to such requests by its other Affiliates. Company agrees
to pay Seller at Seller's standard rates then in effect which Seller charges its
licensees for such services, as well as the actual traveling and living expenses
incurred by Seller personnel hereunder.
(b) In the event that Company desires Seller to prepare any specific
designs, drawings, flow sheets, reports, manuals, equipment specifications,
process descriptions, operating procedures, equipment and process control
descriptions, method engineering studies, purchasing studies, engineering
reports or any similar document or report relating to the Seller services, such
document or report shall be furnished within such reasonable time as
circumstances permit, taking into consideration the availability of Seller
personnel and the requirements of Seller with respect to the services of such
personnel, provided that Seller shall not be required to supply any such
materials hereunder that Seller determines in its reasonable judgment to have
been unreasonably requested in light of the intent and purposes of this
Agreement. Company agrees to pay Seller at Seller's standard rates then in
effect which Seller charges its licensees for such services.
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(c) Seller shall not be obligated to prepare or furnish any document or
report which would disclose any information which Seller is at the time
prevented from disclosing to Company by reason of government regulations,
contractual obligations or other restrictions of any kind. Furthermore, nothing
in this Agreement shall authorize the disclosure of, or access to, or obligate
Seller to provide or make available, classified or restricted information,
material or know-how of the government of the United States of America.
6.8 Third Party Infringement
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(a) The parties recognize a common interest in protecting the Business
Patents, the Business Know How, the Seller Licensed Patents and the Seller
Licensed Know How (the "Technology") and the parties' rights under this
Agreement against third parties who may infringe the respective rights of the
parties in the Technology. Accordingly, the parties agree that each of them
will notify the other promptly after learning of facts which the party
reasonably believes may constitute a third party infringement of the rights of
either party in the Technology or the rights of the other party under this
Agreement. Within 30 days after the receipt of each such notice, the parties
and their counsel shall meet and confer with respect to such coordination of
their enforcement efforts with respect to the possible infringement as they may
mutually agree. The parties will make commercially reasonable efforts to
cooperate with each other and to coordinate their respective enforcement
activities, provided that no party will have any right to require the other to
take or refrain from taking any specific action with respect to enforcement.
(b) The parties contemplate that with respect to possible infringement of
the Technology in connection with the production of Business Products or
possible infringement of the Business Patents or Business Know How in connection
with the production of products other than
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Business Products and Seller Products ("Company Infringements"), Company will
take the primary role in pursuing these infringement claims. In the event that
Company elects not to proceed with the prosecution of any action with respect to
a possible Company Infringement that can reasonably be expected to have a
material adverse effect on Seller or its interest in the Technology if Company
does not act with respect to the possible Company Infringement, Company will
permit Seller, upon request and at its sole expense, to proceed in Company's
name with the prosecution of any action with respect to stopping the possible
Company infringement; provided that Company will have the right to approve of
any settlement of any such action (which approval will not be unreasonably
withheld or delayed). In the event that Company elects to proceed with the
prosecution of any action with respect to a possible Company Infringement, upon
request by Seller, Company will provide access to Seller to all pleadings and
materials provided in the action to the extent allowed by law and will cooperate
to permit Seller and its representatives, at Seller's expense, to monitor these
proceedings and to make comments to Company with respect to them; provided that
Company will not be obligated to take any specific action in response to these
comments and further provided that Company will not be required to take any
action that would impair its attorney client or attorney work product privileges
or any applicable confidentiality agreement or order of court.
(c) The parties contemplate that with respect to possible infringement of
the Technology in connection with the production of Seller Products or possible
infringement of the Seller Licensed Patents or Seller Licensed Know How in
connection with the production of products other than Business Products and
Seller Products ("Seller Infringements"), Seller will take the primary role in
pursuing these infringement claims. In the event that seller elects not to
proceed
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with the prosecution of any action with respect to a possible Seller
Infringement that can reasonably be expected to have a material adverse effect
of Company or its interest in the Technology if Seller does not act with respect
to the possible Seller Infringement, Seller will permit Company, upon request
and at its sole expense, to proceed in Seller's name with the prosecution of any
action with respect to stopping the possible Seller Infringement; provided that
Seller will have the right to approve of any settlement of any such action
(which approval will not be unreasonably withheld or delayed). In the event that
Seller elects to proceed with the prosecution of any action with respect to a
possible Seller Infringement, upon request by Company, Seller will provide
access to Company to all pleadings and material provided in the action to the
extent allowed by law and will cooperate to permit Company and its
representatives, at Company's expense, to monitor these proceedings and to make
comments to Seller with respect to them; provided that Seller will not be
obligated to take any specific action in response to these comments and further
provided that Seller will not be required to take any action that would impair
its attorney client or attorney work product privileges or any applicable
confidentiality agreement or order of court.
(d) No party may settle any infringement prosecution without the consent
of the other party if the interest of the non-prosecuting party in the
Technology or rights of such party under this Agreement would be materially
adversely affected by the proposed settlement.
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7. SELLER REPRESENTATIONS, WARRANTIES AND COVENANTS
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7.1 Necessary Authority
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Seller represents and warrants that it owns the Seller Licensed Patents and
Seller Licensed Know How, and has the necessary authority and title to grant the
licenses in Article 3 and to enter into and perform its obligations under this
License Agreement and it has not acted in any way that would interfere with
Company's rights as granted herein except as otherwise disclosed herein or in
the SPA.
7.2 Negation of Implications
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(a) Disclaimer of Liability
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Seller shall not, as a result of the agreements set forth herein, be liable
for any special, incidental, or consequential damages, including, but not
limited to, personal injury, property damage, or shutdown or non-operation of
any facility, however caused or under any theory of liability, whether based in
contract, tort (including negligence), strict liability, patent infringement or
otherwise and regardless of whether either party has been advised of the
possibility of such damage, except to the extent of Seller's gross negligence or
wilful misconduct or as permitted under the SPA.
(b) Third Party Rights, Infringement
--------------------------------
Seller makes no warranties with respect to freedom from alleged
infringement of third party patents or freedom from third party infringers, and
Seller is not under any obligation to hold Company harmless against such alleged
infringement or third party rights nor to enforce its patent rights against
alleged infringers; provided, however, that nothing in the foregoing shall limit
Company's rights under the SPA.
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(c) No Warranty of Validity or Patentability
----------------------------------------
Seller does not warrant the validity of the patents or the patentability of
the patent applications included in the Seller Licensed Patents; provided,
however, that nothing in the foregoing shall limit Company's rights under the
SPA.
(d) No Obligation to Maintain Seller Licensed Patents
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Company understands and agrees that Seller has no obligation to maintain in
force any of the Seller Licensed Patents; provided, that prior to permitting any
Seller Licensed Patent to lapse or otherwise terminate, Seller will offer to
Company the right to acquire such Seller Licensed Patent by means of an
assignment of such Seller Licensed Patent to Company. Such patents assigned to
Company shall thereafter be considered to be Business Patents.
(e) No Warranty of Commercial Utility
---------------------------------
Seller makes no representation or warranty as to the commercial utility of
the technology covered by the Seller Licensed Know How or the Seller Licensed
Patents; provided, however, that nothing in the foregoing shall limit Company's
rights under the SPA.
(f) No Other Licenses
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There is no implied license to Company under any patent or application for
patent not specified herein and there are no understandings, written or oral, of
any nature concerning this License Agreement or the licenses granted herein not
covered by this written License Agreement. No license under any copyright or
trademark of Seller is granted under this License Agreement. No obligation
shall be implied for Seller to deliver any know how to Company other than the
Business Know How. However, nothing in the foregoing shall limit Company's
rights under the SPA.
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8. COMPANY REPRESENTATIONS, WARRANTIES, AND COVENANTS
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8.1 Necessary Authority
-------------------
Company represents and warrants that it has authority to enter into this
License Agreement.
8.2 Negation of Implications
------------------------
(a) Disclaimer of Liability
-----------------------
Company shall not, as a results of the agreements set forth herein, be
liable for any special, incidental, or consequential damages, including, but not
limited to, personal injury, property damage, or shutdown or non-operation of
any facility, however caused or under any theory of liability, whether based in
contract, tort (including negligence), strict liability, patent infringement or
otherwise and regardless of whether either party has been advised of the
possibility of such damage, except to the extent of Company's gross negligence
or wilful misconduct or as permitted under the SPA.
(b) Third Party Rights, Infringement
--------------------------------
Company makes no warranties with respect to freedom from alleged
infringement of third party patents or freedom from third party infringers, and
Company is not under any obligation to hold Seller harmless against such alleged
infringement or third party rights nor to enforce its patent rights against
alleged infringers; provided, however, that as of the Effective Date Company
knows of no such infringement and provided further, that nothing in the
foregoing shall limit Seller's rights under the SPA.
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(c) No Warranty of Validity or Patentability
----------------------------------------
Company does not warrant the validity of the patents or the patentability
of the patent applications included in the Business Patents; provided, however,
that nothing in the foregoing shall limit Seller's rights under the SPA.
(d) No Obligation to Maintain Business Patents
------------------------------------------
Seller understands and agrees that Company has no obligation to maintain in
force any of the Business Patents; provided, that prior to permitting any
Business Patent to lapse or otherwise terminate, Company will offer to Seller
the right to acquire such Business Patent by means of an assignment of such
Business Patent to Seller. Such patents assigned to Seller shall thereafter be
considered to be Seller Licensed Patents.
(e) No Warranty of Commercial Utility
---------------------------------
Company makes no representation or warranty as to the commercial utility of
the technology covered by the Business Know How or the Business Patents;
provided, however, that nothing in the foregoing shall limit Seller's rights
under the SPA.
(f) No Other Licenses
-----------------
There is no implied license to Seller under any patent or application for
patent not specified herein and there are no understandings, written or oral, of
any nature concerning this License Agreement or the licenses granted herein not
covered by this written License Agreement. No license under any copyright or
trademark of Seller is granted under this License Agreement.
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9. MISCELLANEOUS AGREEMENTS OF THE PARTIES
---------------------------------------
9.1 Notices
-------
All communications provided for hereunder shall be in writing and
shall be deemed to be given when delivered in person or by private courier with
receipt, when telefaxed and received, or three (3) days after being deposited in
the United States mail, first-class, registered or certified, return receipt
requested, with postage paid and,
If to Company: Advanced Glassfiber Yarns LLC
2556 Wagener Road
Aiken, South Carolina 29801
Fax: 803-643-1526
Attention: General Manager
With a copy to: AGY Holdings, Inc.
3802 Robert Porcher Way
Greensboro, North Carolina 27410
Fax: 336-845-7718
Attention: President
And to: Jefferson Holdings, Inc.
One Owens Corning Parkway
Toledo, Ohio 43659
Fax: 419-248-8445
Attention: Corporate Secretary
If to Owens Corning: Owens Corning World Headquarters
One Owens Corning Parkway
Toledo, Ohio 43659
Fax: 419-325-1180
Attention: Secretary
With a copy to: Owens Corning World Headquarters
One Owens Corning Parkway
Toledo, Ohio 43659
Fax: 419-248-1723
Attention: Law Department
23
If to OC Tech: Owens-Corning Fiberglas Technology, Inc.
7734 West 59th Street
Summit, IL 60501-0907
Fax: 708-563-9096
Attention: Secretary
With a copy to: Owens Corning World Headquarters
One Owens Corning Parkway
Toledo, Ohio 43659
Fax: 419-248-1723
Attention: Law Department
or to such other address as any such party shall designate by written notice to
the other parties hereto.
9.2 Assignability
-------------
This Agreement shall be binding upon and shall inure to the benefit of both
parties and their respective successors and assigns. Except as otherwise
expressly provided herein, this Agreement shall not be assigned by either party
hereto without the express prior written consent of the other party, and any
attempted assignment, without such consents, shall be null and void.
Notwithstanding any nonassignment provisions contained in this Section 9.2,
Company, or any permitted assignee or transferee of Company, may assign or
otherwise transfer all of its rights and/or obligations hereunder (i) to any
entity or entities, or any assignee of such entity or entities, providing
financing for the transactions contemplated by this Agreement or to any entity
or entities providing to Company, Company's Affiliates, or to any such permitted
assignee of Company, financing relating to the Business (collectively, the
"Financing Sources"), (ii) to any entity that is an Affiliate of the Company on
the Effective Date, provided that (x) such Affiliate shall agree with Seller and
its permitted assignees or transferees, if any, in writing to assume the
Company's obligations hereunder and (y) any such assignment to an Affiliate of
the Company
24
shall not relieve the Company from its obligations hereunder or (iii) to any
entity to which Company, or any assignee or transferee of Company, assigns,
sells, transfers or otherwise conveys (A) all or substantially all of the assets
constituting the Business (a "Complete Assignment") or (B) all or substantially
all of the assets constituting either the Aiken Facility, the Huntington
Facility or the South Hill Facility (a "Partial Assignment") provided that such
entity or Affiliate is not CSG or any Affiliate thereof, and further provided
that such acquiring entity agrees with and acknowledges in writing to Seller and
its permitted assignees or transferees, if any, that this Agreement shall be
binding upon and enforceable against such entity as though such acquiring entity
were Company and that such entity shall perform all of Company's obligations
hereunder. Notwithstanding any nonassignment provisions contained in this
Section 9.2, Seller, or any permitted assignee or transferee of Seller, may
assign or otherwise transfer some or all of its rights and/or obligations
hereunder to any Affiliate of Seller, provided that (x) such Affiliate shall
agree with Company and its permitted assignees or transferees, if any, in
writing to assume the Seller's obligations hereunder and (y) any such assignment
to an Affiliate of the Seller shall not relieve the Seller from its obligations
hereunder. To the extent that assignment and/or transfer of any of the rights,
privileges, and/or obligations is permitted, this Agreement shall be binding on,
and except as otherwise expressly provided, shall inure to the benefit of, the
legal successors, assigns, or representatives of the parties.
9.3 Amendment; Waiver
-----------------
This License Agreement may be amended, supplemented or otherwise modified
only by a written instrument executed by the parties hereto. No waiver by
either party of any of the provisions hereof shall be effective unless
explicitly set forth in writing and executed by the party
25
so waiving. Except as provided in the preceding sentence, no action taken
pursuant to this License Agreement, including without limitation, any
investigation by or on behalf of any party, shall be deemed to constitute a
waiver by the party taking such action of compliance with any representations,
warranties, covenants or agreements contained herein, and in any documents
delivered or to be delivered pursuant to this License Agreement and in
connection with the closing hereunder. The waiver by any party hereto of a
breach of any provision of this License Agreement shall not operate or be
construed as a waiver of any subsequent breach.
9.4 Third Parties
-------------
This License Agreement does not create any rights, claims or benefits
inuring to any person that is not a party hereto nor create or establish any
third party beneficiary hereto.
9.5 Governing Law
-------------
This License Agreement shall be governed by, and construed in accordance
with, the laws of the State of New York without giving effect to the conflicts
of law principles thereof.
9.6 Entire Agreement
----------------
This License Agreement and the Schedules and Exhibits hereto supersede any
prior agreement between the parties with respect to the subject hereof, and
constitute the entire agreement between the parties with respect to the subject
hereof.
9.7 Section Headings
----------------
The section headings contained in this License Agreement are for reference
purposes only and shall not affect the meaning or interpretation of this License
Agreement.
9.8 Severability
------------
26
If any provision of this License Agreement shall be declared by any court
of competent jurisdiction to be illegal, void or unenforceable, all other
provisions of this License Agreement shall not be affected and shall remain in
full force and effect.
9.9 Counterparts
------------
This License Agreement may be executed in counterparts, each of which shall
be deemed to be an original and all of which together shall be deemed to be one
and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Patent and Know How
License Agreement to be duly executed as of the Effective Date.
OWENS CORNING
By: /s/ Charles E. Dana
-----------------------
Name: Charles E. Dana
Title: Vice President
OWENS-CORNING FIBERGLAS
TECHNOLOGY, INC.
By: /s/ Charles E. Dana
-----------------------
Name: Charles E. Dana
Title: Representative
ADVANCED GLASSFIBER YARNS LLC
By: /s/ Robert B. Fisher
-----------------------
Name: Robert B. Fisher
Title: General Manager
27