Exhibit 10.67.2
AMENDED AND RESTATED
PROPRIETARY REAGENT SUPPLY AND LICENSE AGREEMENT
THIS AMENDED AND RESTATED PROPRIETARY REAGENT SUPPLY AND LICENSE
AGREEMENT (the "Agreement"), is made and entered into as of June 6, 2002 by and
between DTE Smith Branch, LLC, a Delaware limited liability company (the
"Vendee"), and Headwaters Incorporated, a Delaware corporation (the "Vendor").
WHEREAS Vendor has developed a proprietary reagent to produce synthetic
fuel from waste coal dust, coal, coal fines, and other coal derivatives, and
Vendor is entitled to supply and license the use of the Proprietary Reagent
Material (as defined below) to Vendee.
WHEREAS Vendee wishes to obtain and Vendor wishes to grant to Vendee a
license for the use of Proprietary Reagent Material to produce synthetic fuel at
Vendee's synthetic fuel manufacturing facilities under the terms and conditions
set forth in this Agreement, and Vendee wishes to obtain and Vendor wishes to
sell the Vendee the Proprietary Reagent Material (as defined below) for use in
the operation of the Vendee's synthetic fuel manufacturing facilities as
identified on the attached Exhibit A.
WHEREAS Vendor and Vendee entered into a Proprietary Reagent Supply and
License Agreement dated as of March 28, 2002 and the parties wish to amend and
restate their agreement on the terms set forth herein.
NOW, THEREFORE, in consideration of the foregoing premises, the mutual
covenants and agreements hereinafter set forth, and other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged,
Vendor and Vendee each agree as follows:
Section 1: Definitions
"Developed Technology" means any inventions, "Improvement," or
technology that Vendor may conceive, make, invent, or suggest in connection with
Vendor's disclosure to Vendee regarding the use of Proprietary Reagent Material
for production of synthetic fuel, all of which the parties hereto acknowledge
and agree constitutes the sole and exclusive property of Vendor.
"Effective Date" means the date of this Agreement set forth above.
"Facility" or "Facilities" refers to those synthetic fuel manufacturing
facilities currently located or with plans to relocate to the sites described in
Exhibit A.
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"Improvement" means an alternation or addition to an invention or
discovery which enhances, to some extent, performance or economics without
changing or destroying a product's, device's or method's basic identity and
essential character. An Improvement may compromise alterations or additions to
either patented or unpatented inventions, discoveries, technology, or devices,
and may or may not be patentable.
"Vendee" has the meaning set forth in the preamble.
"Vendor" has the meaning set forth in the preamble.
"Proprietary Reagent Material" means and refers to the reagent compound
provided by the Vendor for the production, by Vendee, of synthetic fuel, and
which fuel is reasonably expected to constitute "qualified fuels" pursuant to
the terms of Section 29 (c) (i) (C) of the Internal Revenue Code of 1986, as
amended.
Section 2. License Grant
2.1 General. Subject to the terms and conditions of this Agreement,
Vendor hereby grants to Vendee, for the full term hereof, a non-exclusive
license to use the Proprietary Reagent Material for manufacture of synthetic
fuel at the facilities. Vendee shall not have the right to sublicense. All
Developed Technology and/or Improvements relating directly to the Proprietary
Reagent Material shall become Vendor's absolute property.
2.2 Confidentiality. Each of the parties hereby agree to maintain the
Proprietary Reagent Material confidential and not to disclose the Proprietary
Reagent Material, or any aspect thereof, or the developed Technology or
Improvements, or any aspect thereof (collectively, the "Confidential
Information"). Notwithstanding the foregoing, information which (i) is or
becomes generally available to the public other than as a result of an
unauthorized disclosure by the parties or their respective agents, employees,
directors or representatives, (ii) was available to the party receiving
disclosure on a non-receiving disclosure hereunder, (iii) lawfully becomes
available to the party receiving disclosure on a non-confidential basis from a
third party source (provided that such source is not known by the party
receiving disclosure on a non-disclosure or its agents, employees, directors or
representatives to be prohibited from transmitting the information), or (iv) a
party is compelled by legal process by any court or other authority to disclose
shall not be subject to the terms of this Section 1.5. In the case of (iv)
above, the compelled party shall give the other party prompt written notice of
such legal process in order that an appropriate protective order can be sought
and each party agrees not to oppose the other party's efforts to prevent the
disclosure of confidential Information. At the termination of this Agreement,
all copies of any Confidential Information (including without limitation any
reports or memoranda) shall be returned by the party receiving disclosure.
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Section 3. Sale of Reagent
3.1 Sale and Purchase. Vendor shall sell to Vendee, and Vendee shall
purchase from Vendor Proprietary Reagent Material in an amount equal to Vendee's
requirements of chemical reagent required to operate the facilities to produce
synthetic fuel regardless of the ownership or location of the Facilities. These
requirements may be (i) determined periodically by Vendee based upon chemical
operating conditions, Proprietary Reagent Material performance in producing a
"qualified fuel", effect of the Proprietary Reagent Material on material
handling, and by customer/agency requirements or (ii) reduced or eliminated if
Vendee's annual cost of Proprietary Reagent Material escalates more than 4% per
year. Vendor shall deliver the Proprietary Reagent Material to Vendee on the
terms specified herein. Vendor shall invoice Vendee for Proprietary Reagent
Material monthly. Payments for the Proprietary Reagent Material delivered by
Vendor during any calendar month shall be due and payable to Vendor in 30 days.
Payments after the application due dates shall accrue interest at the rate of
one and one-quarter percent per month.
3.2 Price. The price which Vendee shall pay for the Covol 298
Proprietary Reagent Material delivered (F.O.B. facility location) by Vendor (the
"Reagent Base Price") shall be $**** per lb. of dry Covol 298 Reagent delivered;
provided, however, that the price which Vendee shall pay for Covol 298-1
Proprietary Reagent Material shall be the Reagent Base Price plus $**** per dry
lb. The Reagent Base Price shall be subject to adjustment to reflect any actual
increase or decrease in Vendor's cost.
3.3 Representative and Warranties. Vendor represents, warrants and
covenants as follows:
(a) Vendor shall convey to Vendee good title to all
Proprietary Reagent Material purchased by Vendee from Vendor hereunder,
free and clear of any and all liens, claims, and encumbrances of any
type whatsoever.
(b) All Proprietary Reagent Material shall be delivered in
compliance with applicable environmental laws and governmental
regulations.
(c) Specifications and Quality Standards attached as Exhibit
B.
3.4 Order Procedure. Vendee shall deliver all purchase orders for
Proprietary Reagent Materials at least ten (10) days in advance of the day for
which delivery of the Proprietary Reagent Material is required under such
purchase orders, and all such purchase orders received by Vendor during the term
of this Agreement shall be deemed to have been accepted by Vendor. Each such
purchase order shall be delivered either (i) in writing (including by fax), or
(ii) orally by telephone by an authorized agent of Vendee (subject to the
condition that it is followed by a written purchase order within 24 hours). Such
purchase orders shall be sent to Vendor at such address as Vendor shall direct.
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3.5 Delivery and Acceptance. All Proprietary Reagent Material purchased
hereunder shall be delivered F.O.B. the Facility. Vendor shall arrange for any
necessary transportation of the Proprietary Reagent Material to the Facility.
Vendee shall bear the expense of unloading of Proprietary Reagent Material from
the trucks. Vendor will ensure that a certificate of analysis will accompany
each delivered load of Proprietary Reagent Material. Vendee shall have a
reasonable opportunity to sample Proprietary Reagent Material delivered to it
hereunder to confirm that such Proprietary Reagent Material conforms to the
terms and requirements hereof in Exhibit B, and Vendee shall not be deemed or
required to accept any such Proprietary Reagent Material thereafter until such
time that Vendor warrants that quality problems associated with the load are
resolved.
3.6 Conditional License to Manufacture. If Vendee's ability to deliver
the Proprietary Reagent Material to Vendee will be interrupted or terminated for
any reason, Vendor shall give not less than ninety (90) days notice to Vendee.
Subject to giving notice of its inability to deliver the Proprietary Reagent
material to Vendee (or, m the absence of such notice, the actual failure to
deliver the Proprietary Reagent Material for at least twenty (20) days after
Vendee gives written notice of non-delivery to Vendor), Vendor hereby grants to
Vendee a nonexclusive license for the term of this Agreement (or such shorter
period as provided in the proviso hereto) to use the technology used to
manufacture the Proprietary Reagent Material, and the copy of the Formula
delivered in escrow pursuant to Section 3.7, to manufacture the Proprietary
Reagent Material in sufficient quantities to operate the Facility to full
capacity; provided however, that the license granted to Vendee under this
Section 3.6 shall cease (subject to reinstatement upon reoccurrence of the
events contemplated above) and sales of Proprietary Reagent Material under the
terms of this Agreement shall be reinstated, in each case, on a date not less
than ninety (90) days after Vendor gives notice to Vendee, together with
evidence reasonably satisfactory to Vendee that Vendor is able to deliver the
Proprietary Reagent Material in accordance with this Agreement. Vendee shall pay
Vendor a fee of $1.00 per ton of synthetic fuel produced and sold in connection
with the License granted pursuant to this Section 3.6 and Vendee shall be
responsible for any costs incurred by Vendee in connection with the production
of Proprietary Reagent Material pursuant to this Section 3.6.
3.7 Escrow of Reagent Material Formula. Vendor agrees to place in
escrow with Vendee the formula and technology used to manufacture the
Proprietary Reagent Material (the "Formula") as provided herein. In connection
therewith, Vendor agrees to deposit with Vendee, within ten (10) days of the
date of this Agreement, a copy of the Formula. During the term of this
Agreement, Licensor shall keep the Formula in escrow fully current by depositing
all updates and revision thereto and related materials, as the Formula may be
updated or revised from time to time. Such supplemental deposit will be
completed no later than ten (10) days after the date of us of such revised
Formula by Vendor. Title to the Formula shall remain in Vendor, but title to the
copy thereof to be deposited in escrow hereunder shall, in the event the Formula
shall be released for use to Vendee as provided in Section 3.6, pass to and vest
in Licensee. Vendee shall hold such copy of the Formula and any supplements in a
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safe-deposit box at a financial institution located in the Detroit/Ann Arbor,
Michigan region designated by Vendee and reasonably approved by Vendor.
Notwithstanding its ownership of a copy of the Formula in such event, Vendee's
use of the Formula shall remain subject to the terms of this Agreement.
Section 4. General Representations and Warranties.
4.1 Authority. Each of Vendee and Vendor represents and warrants that
(i) the execution, delivery and performance of this Agreement and the
consummation of the transactions contemplated hereby have been duly authorized
in its behalf by all requisite action, corporate or otherwise, (ii) it has the
full right, power and authority to enter into this Agreement and to carry out
the terms of this Agreement, (iii) it has duly executed and delivered this
Agreement, and (iv) this Agreement is a valid and binding obligation of it
enforceable in accordance with its terms.
4.2 Intellectual Property Matters. Vendor represents and warrants to
its best knowledge and good faith belief that it (i) owns, free and clear of all
liens and encumbrances, intellectual property, patents (including but not
limited to United States Patent Numbers 5,599,361, 5,487,764, and 5,453,103) and
applications therefor, printed and not printed technical data, know-how, trade
secrets, copyrights and other intellectual property rights and all other
scientific or technical information in whatever form relating to, embodied in or
used in the proprietary process to produce synthetic coal fuel briquettes from
waste coal dust, coal fines and other similar coal derivatives, (ii) has the
right and power to grant to Vendee the licenses granted herein, (iii) has not
made and will not make any agreement with another in conflict with the rights
granted herein, and (iv) has no knowledge that the sale or use of the rights,
Proprietary Reagent Material and/or licenses granted herein as contemplated by
this Agreement would infringe any third-party's intellectual property rights.
4.3 Hazardous Material. Vendor represents and warrants that the
Proprietary Reagent Material delivered to Vendee shall not be a hazardous
material under applicable environmental laws.
4.4 Indemnification. Each party agrees to indemnify, defend and hold
harmless the other party and its partners, directors, officers, members, agents,
representatives, subsidiaries and affiliates from and against any and all
claims, demands or suits (by any party, including any governmental entity),
losses, liabilities, damages, obligations, payments, costs and expenses
(including the costs and expenses of defending any and all actions, suits,
proceedings, demands and assessments which shall include reasonable attorneys'
fees and court costs) resulting from such party's breach of any representations,
warranties and/or covenants contained in this Agreement.
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Section 5 Term. The Term of this Agreement is for the period commencing
on the effective date of this Agreement and ending on 31 December 2007.
Section 6 Termination. This Agreement shall terminate upon the
termination date set forth in Section 5, unless the Agreement is terminated
sooner pursuant to this Section 6.
6.1. Termination for Cause. In addition to any other remedies that may
exist, either party may terminate this Agreement for cause (i.e. , in the event
either party commences a material breach of any provision of this Agreement) at
any time by giving the other party at least sixty (60) days prior written notice
of such termination unless such default or breach is cured within said sixty
(60) days. If either party terminates this Agreement pursuant to this Section 6,
Vendee shall promptly return and cause all agents of Vendee to promptly return
to Vendor all Confidential Information then in Vendee's possession, and Vendee
shall not thereafter use for its own commercial benefit or disclose to any third
person any Confidential Information during the period ending five (5) years from
the date of such termination in accordance with Section 2.2.
6.2 Termination or Insolvency or Ceasing Business. This Agreement may
be terminated by Vendor if:
(a) Vendee becomes insolvent or is unable to pay its debts as
they fall due, seeks protection voluntarily or involuntarily under any
law relating to bankruptcy, receivership, insolvency, administration,
liquidation, dissolution or similar law of any jurisdiction (other than
for the purposes of a reorganization with a view to continuing the
business as a going concern under relevant bankruptcy or insolvency
proceedings) or enters into a general assignment or arrangement or a
composition with or for the benefit of its creditors; or
(b) Vendee takes any step (including the filing or
presentation of a petition, the convening of a meeting or the filing of
an application or consent) in any jurisdiction for, or with a view to,
the appointment of an administrator, liquidator, receiver, trustee,
custodian or similar official (other than for the purposes of a
reorganization with a view to continuing the business as a going
concern under relevant bankruptcy or insolvency proceedings) for Vendee
and/or the whole or any part of the business, undertaking, property,
assets, or capital of Vendee or any such person is appointed.
6.3 Effect of Termination. Upon termination of this Agreement, all
rights granted and future obligation to the parties shall immediately cease;
however termination shall not relieve either party of its obligations accrued
during the Term of Agreement (including any pre-termination obligation Vendee
may have to pay Vendor) which has been fulfilled, and all representations,
warranties, obligations and confidentiality agreements made herein shall survive
termination of this Agreement.
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Section 7. Waiver. The failure of any party to enforce at any time any
provision of this Agreement shall not be construed as a waiver of such provision
or the right thereafter to enforce each and every provision. No waiver by any
party, either express or implied, of any breach of any of the provisions of this
Agreement shall be construed as a waiver of any other breach of such term or
condition.
Section 8 Severability. If any provision of this Agreement shall be
held by a court of competent jurisdiction to be invalid or unenforceable in any
respect for any reason, the validity and enforceability of any such provision in
any other respect and of the remaining provisions of this Agreement shall not be
in any way impaired.
Section 9 Notices. All notices required or authorized by this Agreement
shall be effective upon receipt and given to the parties in writing by fax,
mail, or courier as follows:
To Vendor: Brent M. Cook, President
Headwaters Incorporated
3280 N. Frontage Road
Lehi,UT 84043
Fax (801) 768-4483
To Vendee: Kent McCarger
DTE Smith Branch, LLC
414 South Main Street, Suite 600
Ann Arbor, MI 48104
Fax (734) 302-5326
Section 10 Remedies Cumulative. Remedies provided under this Agreement
shall be cumulative and in addition to other remedies provided by law or in
equity.
Section 11 Entire Agreement. This Agreement constitutes the entire
agreement of the parties relating to the subject matter hereof. There are no
promises, terms, conditions, obligations, or warranties other than those
contained herein. This Agreement supersedes any and all prior communications,
representations, or agreements, verbal or written, between the parties relation
to the subject matter hereof. This Agreement may not be amended except in
writing signed by the parties hereto.
Section 12. Governing Law. This Agreement shall be governed in
accordance with the laws of the State of New York, exclusive of its conflict of
law rules.
Section 13. Assignments. This Agreement may not be assigned, in whole
or in part, by any party without the written consent of the other party, which
consent shall not be unreasonably withheld.
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Executed by the duly authorized representatives of the parties on the
date and year first above written.
HEADWATERS INCORPORATED DTE SMITH BRANCH, LLC
By: /s/ Brent M. Cook By: /s/Kent L. McCargar
- ------------------------ -------------------------------
Name: Brent M. Cook Name: Kent L. McCargar
Title: President Title: Vice President
and Chief Executive Officer
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