BOX TECHNOLOGY LICENSE AGREEMENT
BOX TECHNOLOGY LICENSE AGREEMENT (the "Agreement") dated as of February,
1998, by and between FRESH AIR SOLUTIONS, L.P., a limited partnership duly
organized and existing under the laws of the Commonwealth of Pennsylvania
("Box"), and Engelhard Hexcore, L.P., a limited partnership duly organized and
existing under the laws of the State of Delaware ("Wheel"). Capitalized terms
used herein and not otherwise defined shall have the meanings given to such
terms in the Master Agreement among ICC Technologies, Inc., ICC Desiccant
Technologies, Inc., Engelhard Corporation, Engelhard DT, Inc. and Engelhard/ICC.
W I T N E S S E T H :
WHEREAS, Box is the owner of certain Technology (as hereinafter defined)
and has the right to grant licenses for the use of such Technology; and
WHEREAS, Wheel desires to acquire from Box, and Box is willing to grant
to Wheel, a fully paid, worldwide, nonexclusive, royalty free, perpetual license
under the Box Technology (as hereinafter defined) on the terms and conditions
herein set forth;
NOW, THEREFORE, in consideration of the mutual promises and covenants
hereinafter set forth, and intending to be legally bound hereby, the parties
hereto agree as follows:
1. Definitions.
1.1. "Box Business" shall mean the design, manufacture, assembly,
marketing and sale of Climate Control Systems for the cooling, dehumidification,
drying, heating, ventilation, and microbe reduction markets.
1.2. "Box Technology" shall mean (a) all Technology owned as of the date
hereof by Box and (b) improvements to the Technology owned by Box conceived by
employees or representatives of Box or any Box Affiliate subject to patents and
patent applications filed during the twelve-month period after the date hereof
other than improvements in such twelve-month period related solely to the Gas
Platform (as hereinafter defined) which cannot be used on other (non-gas)
platforms.
1.3. "Climate Control Systems" means all air conditioning or air
treatment systems (whether preassembled units or kits that are to be assembled
by distributors, licensees, customers or affiliates of Box) that cool,
dehumidify, dry, heat and/or filter air; provided, however, that any such system
shall only be a "Climate Control System" if it operates, in
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part, by passing air through one or more wheel-shaped rotors, which rotors may
or may not be treated with a desiccant material.
1.4. "Gas Platform" shall mean any Climate Control System that utilizes
gas to regenerate the desiccant material that is used to treat a wheel-shaped
rotor in a Climate Control System.
1.5. "Maintenance Costs" shall mean all fees associated with the filing,
prosecution and maintenance of the Box patents licensed to Wheel pursuant to
this Agreement.
1.6. "Technology" shall mean all inventions, patents, patent
applications, improvements, technical information, trade secrets, prototypes,
models, experience, ideas, reports, data, software, engineering drawings,
operating manuals, all results from experiments, testing and demonstrations and
any other information (whether or not patentable) related thereto.
2. License.
2.1. Box hereby grants to Wheel (subject to Section 3.4) a fully paid,
worldwide, nonexclusive, royalty free, perpetual license (including the right to
sublicense others) to make, have made, use and sell all aspects of the Box
Technology; provided, however, that Wheel may only use the Box Technology
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in the Box Business, and businesses ancillary or reasonably related thereto.
2.2. Wheel specifically recognizes the sole right, title and interest of
Box in the Box Technology and the right of Box to control all patent
applications, including modifications, involving Box Technology. Wheel
specifically disclaims any right, title or interest (except as licensed
hereunder) in the Box Technology, and Wheel shall not at any time claim that its
use thereof pursuant to this Agreement has created in Wheel any right, title or
interest (except as licensed hereunder) therein. Wheel waives and disclaims any
title, right or interest (except as contemplated hereby) in the Box Technology
which may arise under the law of any country from the permitted use of the Box
Technology by Wheel hereunder.
2.3. Box agrees that at any time on or prior to the Closing (as defined
in the Master Agreement) and, unless otherwise agreed, for a period not to
exceed 45 days after the Closing, Wheel shall have access to, and shall have the
right to make and retain complete copies of all operating manuals, patents,
patent applications, reports, software and all other written materials
(including without limitation drawings and specifications) relating to all Box
Technology (it being understood and agreed that Wheel shall not have any rights
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under this Agreement to the know-how and experience of the employees of Box, for
so long as such employees are employees of Box, unless and only to the extent
such information is included in a patent, patent application, report, operating
manual or similar instrument). It is understood and agreed that persons who are
no longer employees of Box shall not in any way be prohibited or restricted from
discussing or revealing any know-how, experience or other information to Wheel
with respect to Box Technology, and Box hereby releases such persons from any
confidentiality or similar agreement that would be inconsistent therewith.
2.4. Wheel agrees that in using the Box Technology, Wheel shall not
represent that it has any title, right or interest (except as licensed
hereunder) in the ownership of the Box Technology and the registration thereof.
2.5. Wheel shall have the right to assign, sublicense, transfer or
otherwise encumber the license and rights granted to Wheel hereunder without the
prior written consent of Box; provided, however, that all assignments,
sublicenses and transfers must be made in connection with or contemplation of
sales or potential sales of rotors by Wheel. Wheel shall notify Box in writing
upon any assignment, sublicense or transfer
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of the Box Technology and shall provide Box with copies of any third party
agreements relating thereto.
2.6. Wheel acknowledges that, subject to this Agreement, Box may license
or grant rights in the Box Technology to any other person or entity.
2.7. The parties hereto agree that in the event that Wheel files any
patent applications involving Technology relating to the Box Business (which is
not used or useful in the Wheel Business) within the twelve-month period after
the date hereof, they shall enter into a technology license agreement
substantially similar to this agreement and pursuant to which Wheel shall grant
to Box a fully paid, worldwide, nonexclusive, royalty free, perpetual license
(including the right to sublicense) to any such Technology.
3. Patent Suits and Actions.
3.1. Each party to this Agreement shall promptly notify the other party
of any material infringement of any Patent licensed hereunder and shall provide
such other party with any available evidence of such infringement. Box at its
cost shall have the right to bring, defend, direct and maintain any suit, action
or proceeding involving infringement (an "Infringement Action") of any such
Patent. Box shall give Wheel written
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notice of its intention to commence any such Infringement Action and Wheel shall
notify Box in writing (the "Participation Option") within ten (10) days of
receiving Box's written notice as to whether Wheel wishes to participate in such
Infringement Action.
Regardless of Wheel's election in the Participation Option, if Box finds
it necessary to be joined by Wheel in an Infringement Action, Wheel shall
execute all papers and perform such other acts as may reasonably be required and
may, at its option and cost, be represented by advisory counsel of its choice.
Should Box lack standing to bring any Infringement Action, Wheel may agree to do
so at the request and cost of Box upon an undertaking by Box to indemnify and
hold Wheel harmless (to the extent permissible by law) from all consequent
liability.
3.2. Wheel shall have the right, but not the obligation, to bring and
maintain any appropriate Infringement Action in the event that Box declines to
do so pursuant to paragraph 3.1 above. If Wheel finds it necessary to be joined
by Box in such Infringement Action, Box shall execute all papers and perform
such other acts as may be reasonably required and may, at its option and cost,
be represented by advisory counsel of its choice. Should Wheel lack standing to
bring any such Infringement
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Action then Box shall do so at the request of Wheel upon an undertaking by Wheel
to indemnify and hold Box harmless (to the extent permissible by law) from all
consequent liability.
3.3. In any Infringement Action, the party bringing and maintaining such
action shall pay all of the expenses (including attorneys' fees) incurred in
connection with such action (other than any fees of advisory counsel as
contemplated by Section 3.2 above). Any amount received in any such Infringement
Action, whether by judgment or settlement, shall, after payment of all
reasonable expenses incurred by the party bringing and maintaining such action,
in connection with such Infringement Action, be paid to or retained by the party
who brought and maintained such action.
3.4. It is expressly agreed that Box and Wheel shall each pay one-half
of all Maintenance Costs related to the Box Technology licensed hereunder. The
failure to pay its portion of Maintenance Costs related to any Box Technology
licensed hereunder after 60 days written demand therefor, shall result in the
forfeiture by Wheel of the license granted to it hereunder as to such Box
Technology. Box shall keep Wheel apprised and give Wheel regular periodic
reports with respect to all actions proposed to be taken by Box with respect to
Maintenance Costs and related matters, including reasonable advance notice of
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upcoming requirements for the payment of Maintenance Costs. Notwithstanding the
foregoing, nothing in this Agreement shall prohibit (i) Box from discontinuing
the payment of Maintenance Costs for any patent at any time or (ii) Wheel from
electing to forfeit the right to license any or all Box Technology at any time.
4. General Provisions.
4.1. This Agreement shall be interpreted in accordance with the laws of
the State of Delaware.
4.2. Any notice which either party may be required or desires to give to
the other party hereunder, except when otherwise provided for, shall be deemed
to be duly given: (i) when mailed by registered or certified mail, postage
prepaid to the other party at the following addresses or any other address of
addressee subsequently designated in writing by the duly authorized
representative of the party or (ii) when sent by facsimile to the other party at
the following telephone numbers or to any other telephone number subsequently
designated in writing by the respective duly authorized representative of the
party:
To Box: Fresh Air Solutions, L.P.
330 South Warminster Road
Hatboro, Pennsylvania 19040
Attention: Chairman
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To Wheel: Engelhard Hexcore, L.P.
3550 N.W. 49th Street
Miami, Florida 33142
Attention:
With a copy to: General Counsel at:
101 Wood Avenue
Iselin, New Jersey 08830-0770
All airmail notices shall be effective and be deemed given five (5) days
after posted, and all cable or telex notices when sent and an answerback
received except that a notice that would otherwise be effective on a Saturday, a
Sunday or a holiday shall be effective at 9:00 a.m. on the next regular business
day thereof. The address of any party for any such notice or other communication
may be changed by giving notice in writing at any time to the other party to
this Agreement.
4.3. Article headings used herein are inserted for convenience of
reference only and shall not affect the interpretation of the respective
articles hereof.
4.4. No waiver by either party hereto at any time of any breach of any
of the terms and conditions hereof shall be construed as or constitute a waiver
of any subsequent breach, whether of the same or of any other terms and
conditions hereof.
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4.5. This Agreement, together with the Master Agreement and the
Transaction Documents and Related Agreements (each as defined in the Master
Agreement), contains the entire understanding between the parties with respect
to the within subject matter and shall be controlling to the exclusion of all
terms and conditions on any purchase order, acknowledgment form or any other
documents which may be issued by the parties hereto on or after the date hereof.
This Agreement may not be modified or amended except in a writing signed by the
parties hereto. No waiver or indulgence of any breach or default hereunder shall
be construed as a waiver of any subsequent breach of the same or any other
provision of this Agreement.
4.6. This Agreement may be signed in any number of counterparts, each of
which for all purposes shall be deemed to be an original and all of which
together shall constitute the same Agreement.
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IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement
to be duly executed in its name and on its behalf, all as of the date first
above written.
ENGELHARD HEXCORE, L.P.
By its General Partner
ENGELHARD DT, INC.
By:
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Name:
Title:
FRESH AIR SOLUTIONS, L.P.
By its General Partner
ICC DESICCANT TECHNOLOGIES, INC.
By:
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Name:
Title: (1) (i)
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