Exhibit 10.7
LICENSE AGREEMENT
THIS LICENSE AGREEMENT made as of this 29th day of October, 2004 ("Effective
Date") by and between Dresser-Rand Company, with its principal place of business
at Paul Clark Drive, Olean, NY 14760 ("Dresser-Rand"), Dresser-Rand A.S., with
its principal place of business at Kirkegardsveien 45 NO-3601 Kongsberg, Norway
("DR Norway"), Ingersoll-Rand Energy Systems Corporation, having a business
address at 30 New Hampshire Avenue, Portsmouth, NH 03801 ("ESC") and the Energy
Systems Division of Ingersoll-Rand Company having a business address at 800-A
Beaty Street, Davidson, North Carolina 28036 ("ESD"), (with ESC and ESD
sometimes being collectively referred to as "Energy Systems").
W I T N E S S E T H:
WHEREAS, Dresser-Rand and DR Norway were engaged by Energy Systems to
perform certain services related to the development of Energy Systems' 250
kilowatt microturbine and based such development on DR Norway's KG2 Gas Turbine
("KG2");
WHEREAS, Ingersoll-Rand Company Limited ("Seller"), and Dresser-Rand
Holdings, LLC (f/k/a FRC Acquisitions LLC) ("Buyer") are parties to an Equity
Purchase Agreement, dated as of August 24, 2004 (as amended, supplemented or
otherwise modified from time to time, the "Purchase Agreement"), relating to the
sale by Seller and certain of its Affiliates, and the purchase and assumption by
Buyer and certain of its Affiliates, of certain equity interests and shares of
stock relating to Dresser-Rand and its Subsidiaries' Business (as defined in the
Purchase Agreement);
WHEREAS, the Purchase Agreement provides that, in connection with the
consummation of the transactions contemplated thereby, the parties will enter
into this Agreement pursuant to which Dresser-Rand and DR Norway will grant to
Energy Systems certain intellectual property use rights and agree to certain
covenants related thereto;
WHEREAS, this is the License Agreement referred to in the Purchase
Agreement and referred to therein as Exhibit D;
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants
and agreements hereinafter set forth, the parties hereto, intending to be
legally bound, do hereby agree as follows:
1. Dresser-Rand and DR Norway hereby unconditionally and irrevocably grant to
Energy Systems, and Energy Systems hereby accepts, a perpetual fully paid up,
non-exclusive, worldwide right and license (without the right to sublicense) to
practice and use any and all patents, patent applications, trade secrets and
know how owned by
Dresser-Rand or DR Norway used in the production of, or incorporated into the
250 kilowatt microturbines manufactured and sold by Energy Systems as of the
Effective Date, to manufacture, have manufactured, use, market and sell
microturbines with a generating capacity of 1000 kilowatts or less.
2. Dresser-Rand and DR Norway agree that they will not bring or cause to be
brought any action relating to the infringement of any intellectual property
right licensed pursuant to Paragraph 1, in any court or with any government
agency, anywhere in the world, against Energy Systems or its distributors,
agents, resellers, employees, principals, customers based on their manufacture,
use, sales or offer for sale of any microturbine made or sold by Energy Systems.
Energy Systems and IR will hold D-R and D-R Norway harmless from any claim
arising on or relating to their microturbines.
3. This Agreement may be executed in one or more counterparts, all of which
shall be considered one and the same agreement and each of which shall be deemed
an original.
4. This Agreement contains the entire understanding of the parties with respect
to the subject matter hereof and supersedes all prior agreements and
understandings, both written and oral, between the parties with respect to the
subject matter hereof.
5. Any provision of this Agreement which is invalid, illegal or unenforceable in
any jurisdiction shall, as to that jurisdiction, be ineffective to the extent of
such invalidity, illegality or unenforceability, without affecting in any way
the remaining provisions hereof in such jurisdiction or rendering that or any
other provision of this Agreement invalid, illegal or unenforceable in any other
jurisdiction.
6. Each of the parties irrevocably submits to the exclusive jurisdiction of the
United States District Court for the Southern District of New York located in
the borough of Manhattan in the City of New York, or if such court does not have
jurisdiction, the Supreme Court of the State of New York, New York County, for
the purposes of any proceeding arising out of this Agreement or any transaction
contemplated hereby. Each of the parties irrevocably and fully waives the
defense of an inconvenient forum to the maintenance of such proceeding, and
waives any objection it might otherwise have to service of process under law.
Nothing herein shall affect the right of any Person to serve process in any
other manner permitted by law. Each of the parties irrevocably and
unconditionally waives any objection to the laying of venue of any proceeding
arising out of this Agreement or the transactions contemplated hereby in (a) the
United States District Court for the Southern District of New York or (b) the
Supreme Court of the State of New York, New York County, and hereby further
irrevocably and unconditionally waives and agrees not to plead or claim in any
such court that any such proceeding brought in any such court has been brought
in an inconvenient forum. The parties hereby irrevocably and unconditionally
waive trial by jury in any proceeding relating to this Agreement or any other
agreement entered into in connection therewith and for any counterclaim with
respect thereto.
7. This Agreement shall be construed under and governed by the laws of the State
of New York without regard to the principles of conflicts of law thereof.
8. This Agreement may not be amended, modified or supplemented except upon the
execution and delivery of a written agreement executed by the parties and
specifically referencing this Agreement.
9. Any of the terms or conditions of this Agreement that may be lawfully waived
may be waived in writing at any time by the Party which is entitled to the
benefits thereof. Any waiver of any of the provisions of this Agreement by any
Party shall be binding only if set forth in an instrument in writing signed on
behalf of such Party. No failure to enforce any provision of this Agreement
shall be deemed to or shall constitute a waiver of such provision and no waiver
of any of the provisions of this Agreement shall be deemed to or shall
constitute a waiver of any other provision hereof (whether or not similar) nor
shall such waiver constitute a continuing waiver.
10. Energy Systems acknowledges that the licenses granted to it hereunder are
personal in nature. Except with the express prior written consent of each of
Dresser-Rand and DR Norway, which consent may be withheld by either Dresser-Rand
or DR Norway in their sole discretion, Energy Systems may not assign or transfer
this Agreement or its rights or obligations hereunder; provided, that the
foregoing restriction shall not apply to any sale, merger, consolidation or
other business combination of Energy Systems to or with any person.
[SIGNATURE PAGE FOLLOWS]
IN WITNESS WHEREOF, the parties hereto have executed this agreement as of the
day and year first above written.
DRESSER-RAND COMPANY
By: /s/ Vincent R. Volpe Jr.
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Name: Vincent R. Volpe Jr.
Title: President & CEO
DRESSER-RAND A.S.
By: /s/ Barbara A. Santoro
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Name: Barbara A. Santoro
Title: Attorney-in-fact
INGERSOLL-RAND ENERGY SYSTEMS
CORPORATION
By: /s/ Barbara A. Santoro
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Name: Barbara A. Santoro
Title: Attorney-in-fact
ENERGY SYSTEMS DIVISION
OF INGERSOLL-RAND COMPANY
By: /s/ Barbara A. Santoro
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Name: Barbara A. Santoro
Title: Secretary