Exhibit 10c
ASSIGNMENT AGREEMENT, effective as of November 5, 1997, among PLATINUM
PLUS, INC., a Delaware corporation ("PPI"), with a place of business at 300
Atlantic Street, Stamford CT 06901, Fuel-Tech N.V., a Netherlands Antilles
limited liability company ("Fuel Tech") with a place of business at Castorweg
22-24, Curacao, Netherlands Antilles, and CLEAN DIESEL TECHNOLOGIES, INC., a
Delaware corporation ("Assignee"), with a place of business at 300 Atlantic
Street, Stamford CT 06901 U.S.A.,
WHEREAS, PPI is a wholly-owned subsidiary of Fuel Tech and Fuel Tech owns
approximately 28% of the common stock of the Assignee,
WHEREAS, by Agreements effective as of October 28, 1994 between the
Assignee and Fuel-Tech N.V. (the "NV License") and between the Assignee and PPI
(the "PPI License"), the Assignee became the licensee of certain Technology,
WHEREAS, subsequent to the effective date of grant of the PPI and NV
licenses, the Assignee reimbursed Fuel Tech, of Fuel-Tech, or its affiliates,
the amount of approximately $600,000 on account of development expenses incurred
by Fuel Tech, Inc. with respect to the Technology licensed under the NV and PPI
Licenses,
WHEREAS, this Agreement is in consideration of the reimbursed development
expenses,
WHEREAS, by an Assignment effective as of November 5, 1997 the Fuel-Tech
License and the Technology licensed thereunder were assigned by Fuel-Tech N.V.
to PPI,
WHEREAS, the Technology licensed under the NV and PPI Licenses is now
owned by PPI and the Assignee is desirous of taking an assignment of such
Technology and PPI is agreeable to granting such assignment while reserving a
royalty as provided in the NV and PPI Licenses,
WHEREAS, in order to enhance the value of Fuel Techs investment in the
Assignee Fuel Tech is agreeable to this assignment and to guaranteeing the
performance of the obligations of PPI hereunder,
NOW THEREFORE, it is agreed that:
1. Definitions
"Affiliate, shall be a company or a business entity which controls, is
controlled by, or is under common control with a party to this
agreement. "Control" shall mean sufficient voting power to elect the
Board of Directors. For purposes of this agreement neither party hereto
shall be an Affiliate of the other.
1
"Technology" shall mean PPI's Patents, Marks and Patent Applications
set out on Schedule A attached hereto and all associated data, and
know-how related thereto owned by PPI for the addition of noble metals
to fuels, for emulsions and for Nox control, all as related to internal
combustion engines and control of emissions therefrom.
"Termination" shall mean December 31, 2008.
2. Assignment
2.1 PPI hereby assigns, transfers and sets over to Assignee and
Assignee hereby accepts from PPI, on the terms and conditions
herein and subject to the payment to PPI of the royalties described
herein when due, all of PPIs right, title and interest whatsoever
in the United States of America and any other jurisdiction to the
Technology.
3. Revocation of Licenses
3.1 PPI and the Assignee agree that the NV License and the PPI License
are hereby revoked and of no further force and affect.
4. Disclaimers and Limited Warranty
4.1 PPI makes no warranty, express or implied, to Assignee concerning
the validity or the utility of the Technology or with respect to
any other matter, except that PPI represents and warrants that the
Patents and Marks assigned hereunder are in full force and effect
and that it has full right and power to assign the rights granted
hereunder.
4.2 PPI shall have no responsibility whatsoever to Assignee at any time
for any liability which Licensee may incur to any third party with
respect to the Technology.
5. Royalties: Right to Terminate
5.1 Assignee shall, within 45 days of the end of each calendar year
commencing with the year 1998 and thereafter until Termination, pay
PPI as a running royalty an amount equal to two and one half
percent (2.5%) of annual gross revenues of whatsoever nature,
including license fees and royalties, derived from that portion
only of the Technology relating to the addition of noble metals to
fuels.
5.2 Assignee shall have the right at any time until Termination on
thirty days notice to terminate and extinguish its obligation to
pay royalties hereunder and
2
to receive a release of such obligation, by the payment to PPI in
any calendar year set out below of the amount set out below
opposite such year:
1998 $12,000,000.00
1999 $10,909,091.00
2000 $ 9,818,182.00
2001 $ 8,727,273.00
2002 $ 7,636,364.00
2003 $ 6,545,455.00
2004 $ 5,454,546.00
2005 $ 4,363,637.00
2006 $ 3,272,728.00
2007 $ 2,181,819.00
2008 $ 1,090,910.00
6. Obligations of PPI and Fuel Tech
6.1 PPI shall to the extent practicable cooperate with Assignee, at
the expense of the Assignee, in perfecting the assignment of the
Technology made herein under local law and in preserving and
maintaining the Technology by Licensee and shall execute and
deliver to the Assignee any further agreements, assignments,
instruments, certificates and other documents deemed necessary or
appropriate for that purpose by the Assignee.
6.2 Fuel Tech guarantees the performance by PPI of its obligations
under Section 6.1 above.
7. Obligations of Assignee
7.1 Assignee shall within 45 days of the end of each calendar year set
out in Section 5.2 above furnish PPI with a written report signed
by an authorized official setting forth annual gross revenues
derived by Assignee from the Technology subject to royalties and,
for each such year, shall thereupon make payment of such royalties,
if any, as became due to PPI during such year.
7.2 Assignee shall indemnity and defend PPI against any liability or
expense arising out of any claim, proceeding or suit by any third
party against PPI to the extent that it is based on an allegation
that the Technology licensed hereunder is invalid, owned by another
party or infringes a patent in force.
7.3 In the event of Assignees failure to pay when due any royalty
hereunder, Assignee shall pay to PPI interest on such unpaid
royalties at the rate of ten percent (10%) per annum calculated on
the basis of days actually elapsed over a year of 360 days.
3
9. General
9.1 This Agreement and its effects are subject to and shall be
construed and enforced in accordance with the internal laws of the
State of Delaware and any and all claims, controversies or disputes
hereunder shall be resolved by negotiations between the parties
and, failing such negotiations, shall, on sixty days written notice
from one party to the other, be finally settled by arbitration
before a single arbitrator in accordance with the rules then in
effect of the American Arbitration Association in Stamford
Connecticut and any resulting award may be entered in and enforced
by any court having jurisdiction.
9.2 This Agreement is the entire agreement between the Parties and may
only be amended by an instrument in writing referring to this
agreement and signed by each of the parties.
9.3 Notices hereunder shall be effective in five days, if given by
pre-paid, registered or certified airmail; and upon delivery, if
acknowledged and given by telex, facsimile or personally; in either
case to the addresses set forth above for the parties or to such
other address as one party may by such notice inform the other.
9.4 Failure to enforce a right or remedy under this Agreement shall not
be deemed to constitute a waiver of such right or remedy.
9.5 The obligations hereunder of a party may, from time to time, be
performed by an Affiliate of such party.
9.6 All payments hereunder by Assignee to PPI shall be in cash or by
wire transfer.
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IN WITNESS WHEREOF the parties have signed this Agreement as of the date
first set out above,
PLATINUM PLUS, INC. CLEAN DIESEL TECHNOLOGIES, INC.
By: /s/ Jeremy D. Peter-Hoblyn By: /s/ James M. Valentine
---------------------------- -------------------------------
Jeremy D. Peter-Hoblyn James M. Valentine
Title: President Title: Executive Vice President
Date: December 19, 1997 Date: December 19, 1997
--------------------- ---------------------------
FUEL-TECH N.V.
By: /s/ Jeremy D. Peter-Hoblyn
-----------------------------
Jeremy D. Peter-Hoblyn
Title: Managing Director
Date: December 19, 1997
-------------------------
State of Connecticut :
) ss Stamford
County of Fairfield :
The foregoing instrument was acknowledged before me this 19th day of December
1997 by Jeremy D. Peter-Hoblyn, Managing Director of Fuel-Tech N.V., a
Netherlands Antilles corporation, Jeremy D. Peter-Hoblyn President of Platinum
Plus, Inc., a Delaware corporation, and James M. Valentine, Executive Vice
President of Clean Diesel Technologies, Inc., a Delaware corporation, on behalf
of their respective corporations.
/s/ Charles W. Grinnell
----------------------------------
Charles W. Grinnell
Commissioner of the Superior Court
Schedule A to Assignment Agreement as of November 5, 1997
among Platinum Plus, Inc., Fuel-Tech N.V. and Clean Diesel Technologies, Inc.
CLEAN DIESEL TECHNOLOGIES
PATENT ASSETS
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
U.S. 4,629,472 Haney Combustion of emulsified fuels is PPI
(P0003C) Sullivan improved by the presence of water-
soluble precious metal catalysts.
U.S. 4,892,562 Bowers Diesel additives comprising fuel-soluble PPI
(P0043A) Sprague compounds of platinum group metals.
U.S. 4,891,050 Bowers Gasoline additives comprising fuel- PPI
(P0043B) Sprague soluble compounds of platinum group
metals.
EP 189,642 Bowers Both gasoline and diesel additives FTI
(P0042A) Sprague combined in one case for foreign filing.
AU* 583,580 FTI
CA 1,305,607 FTI
CL 36,883 FTI
ES 548,951 FTI
GB 2,178,757 FTI
GR 85.2745 FTI
IE 58723 FTNV
JP 1,931,532 FTI
MX 169,226 FTI
VE 49.179 FTI
U.S. 5,034,020 Epperly Additional specific fuel-soluble platinum PPI
(P0049A) Sprague group metal additives for diesel and
gasoline engines. Also claims
regenerating catalytic converters and
diesel traps.
AU 635,056 FTNV
CA 612,185 FTNV
JP 02-511018 FTNV
NO 920199 FTNV
- -----------------------
*Country codes in bold italics indicate a patent has been granted in that
country.
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
EP 189,642 Bowers Both gasoline and diesel additives FTI
(P0042A) Sprague combined in one case for foreign filing
AU* 583,580 FTI
CA 1,305,607 FTI
CL 36,883 FTI
ES 548,951 FTI
GB 2,178,757 FTI
GR 85.2745 FTI
CA 612,107 FTNV
DK 1125/91 FTNV
EP 451207 (AT, BE, CH, DE, ES, FTNV
FR, GB, IT, LU, NL, SE)
JP 02-502428 FTNV
NO 912536 FTNV
U.S. 5,404,841 Valentine Emulsified fuel contains water-soluble Not
(P1001B) and fuel-soluble platinum group metals assigned
or cerium alone or with other metals
such as copper, iron or manganese,
and urea to reduce NO(2).
CL 1259/94 PPI
EP 94927236.3 PPI
IN 1097/Del/94 PPI
MX 946596 PPI
TW NI-085549 PPI
U.S. 5,584,894 Valentine Emulsions with up to 70% water and PPI
(P1001C) Peter-Hoblyn with lubricity additive and catalyst are
used for NOx reduction. Urea and
other NOx-reducing agents are optional.
CA 2,191,755 FTNV
EP 95921501.3 FTNV
KR 706920/96 FTNV
U.S. 5,535,708 Valentine Similar to P1001B, but claims urea PPI
(P1001D) equivalents to reduce no(2)
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
U.S. 5,266,083 Peter-Hoblyn PPD permits retarding diesel timing to PPI
(P1002A) Valentine reduce NOx by reducing the expected
Epperly increase in particulates.
AU 674,297 PPI
CA 2,123,805 PPI
EP 93901333.0 (DE, FR, GB, IT, SE) PPI
08/778.860 Peter-Hoblyn Basic application in this series. PPD CDTI
(P1004F) Valentine with an optional second catalytic metal
Spraque such as Mn, Fe, Cu, Ce, Li or Na, reduces
Epperly Co and HC emissions from trap while
moderating oxidation of SO(2) to SO(3).
CA 2,149,035 FTNV
EP 94901430.2 FTNV
JP 512366/1994 FTNV
KR 701938/95 FTNV
MX 937.003 FTNV
08/760,085 Peter-Hoblyn Second application in this series. CDTI
(P1004E) Valentine Copper data is added.
Sprague
Epperly
08/514,978 Peter-Hoblyn Third case in this series. Adds cerium data. PPI
(P1004D) Valentine PCT US96/11908
Sprague
Epperly
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
08/518,251 Peter-Hoblyn PPD is used in combination with a trap PPI
(P1009B) and a nox-reducing catalyst and reagent.
not available Li and/or Na can be added. New claims
(P1009C) specify particulate trap followed by SCR.
CL 1009/94 PPI
EP 94922518.9 PPI
IN 883/Del/94 PPI
JP 504646/1995 PPI
MX 945.282 PPI
TH 023107 PPI
TW NI-079182 PPI
VE 1424/94 PPI
08/319,620 Peter-Hoblyn Emissions are reduced from two-stroke PPI
(P1011A) engines through the use of fuels or motor
oils including platinum group metal
catalyst which catalyzes a flow-through
converter over long periods of operation.
IN 1379/Del/94 PPI
TH 024351 PPI
TW NI-085555 PPI
08/890,145 Peter-Hoblyn Same as P1011A PPI
(P1011B)
U.S. 5,693,106 Peter-Hoblyn Stability of water-dispersible platinum PPI
(P1012B) Valentine compounds and fuel-soluble platinum
Sprague compounds are enhanced by addition of a
water scavenger or emulsifier.
BR PI9606909-0 PPI
CA 2,210,256 PPI
EP 96902142.7 PPI
ID P960085 PPI
KR 704820/97 PPI
MX 975,258 PPI
TH 029654 PPI
TW 85100769 PPI
ZA 96/0268 PPI
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
U.S. 5,501,714 Valentine Operation of diesel engines with reduced PPI
(P1014A) Peter-Hoblyn platinum particulate emission by utilizing
a platinum group metal fuel additive and a
pass-through catalytic oxidizer.
CA not available PPI
CN 96192513.2 PPI
EP not available PPI
IN 399/Del/96 PPI
JP 527851/1996 PPI
KR 706395/94 PPI
MX 966.977 PPI
TH 030425 PPI
TW 85102341 PPI
ZA 96/1657 PPI
PCT Valentine Catalytic ceramic cylinder parts for PPI
US96/14079 Peter-Hoblyn internal combustion engines.
(P1015A) Sprague
08/597,517 Valentine Method and apparatus for reducing harmful CDTI
(P1017A) Peter-Hoblyn emissions from a diesel engine by post
Spraque combustion catalyst injection. Water-
soluble compounds as well as AcAc and soaps
are covered.
PCT US97/01606
08/626,780 Peter-Hoblyn Urea is catalytically hydrolyzed and/or CDTI
(P1018A) pyrolized by diesel SCR.
PCT US97/05468
08/747,716 Knapper Operation of diesel engines with emulsions CDTI
(P1019A) Tarabulski for reduced NOx emissions by starting
Peter-Hoblyn ignition timing at a set point.
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
08/752,344 Peter-Hoblyn System for fueling and feeding chemicals CDTI
(P1020B) Valentine to internal combustion engines for NOx
Tarabulski reduction emulsifies chemical solution
in the fuel and then separates.
08/772,275 Peter-Hoblyn Method and apparatus for reducing harmful CDTI
(P1021A) Balles emissions from a lean-burn engine by urea
Hofmann injection SCR at elevated temperature
and pressure.
08/321,209 Peter-Hoblyn Reducing NOx emissions from an engine CDTI
(P1021C) Balles by temperature-controlled urea injection
Hofmann for selective catalytic reduction.
Tarabulski
08/792,287 Peter-Hoblyn Bimetallic gasoline additive contains CDTI
(P1022A) Valentine rhodium acetylacetonate and a fuel-
Sprague soluble platinum compound.
08/826,165 Peter-Hoblyn Reducing NOx emissions from an engine CDTI
(P1024A) Balles by on-demand generation of ammonia for
Hofmann selective catalytic reduction.
08/831,210 Peter-Hoblyn Reducing NOx emissions from an engine CDTI
(P1025A) Valentine by selective catalytic reduction
Tarabulski utilizing solid reagents.
08/833,175 Tarabulski Reducing NOx emissions from an engine CDTI
(P1026A) while maximizing fuel economy.
60/043,266 Peter-Hoblyn Method for reducing emissions from a CDTI
(P1027A) Valentine diesel engine
TW 86110574 CDTI
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
08/868,870 Peter-Hoblyn High-temperature injection of urea for CDTI
(P1028A) Tarabulski reducing lean-burn engine no(2)
Hofmann emissions by selective catalytic
Valentine reduction.
08/854,831 Peter-Hoblyn Low pressure, pyrolization chamber. CDTI
(P1029A) Tarabulski
Hofmann
Balles
08/749,359 Peter-Hoblyn Selective catalytic NOx reduction CDTI
(P3034A) utilizing urea with a prechamber to
prevent fouling.
PCT (not available)
08/215,504 Peter-Hoblyn Enhanced lubricity diesel fuel emulsions NFT
(P4006B) Valentine for reduction of nitrogen oxides.
Dubin
DOCUMENT TRADEMARK APPLICANT
73/506,353 Platinum Plus FTI
(T0071A) CN 960088945
CN 960088946
CN 960088947
EP 000195933
FR 95/599379
GB 2,046,018
ID D9616748
ID D9616749
ID J9616750
JP 125415/1995
JP 125416/1995
JP 125417/1995
KR 44777/95
KR 44778/95
KR 11493/95
MX 249,675
MX 249,891
TW 770,817
TW 85034641
T0075A Platinum Plus 2 FTI
CA
74/061,007 Clean Diesel Technologies CDTI
(T2003A) EP 000345801
75/243,063 LOE-NOX
(T2005A) EP 00616532 CDTI
KR1 39214/97
KR2 39215/97
KR3 39216/97
TW1 86042764
TW2 86042763
TW3 86042762