EX-10.44 5 w56716ex10-44.txt LICENSE AGREEMENT,DATED DEC.31,2001 Exhibit 10.44 LICENSE AGREEMENT-LTC TO ILION This License Agreement ("Agreement") is made and entered into as of December 31, 2001 between Lithium Technology Corporation, a Delaware corporation ("LTC"), and Ilion Technology Corporation, a Delaware corporation ("Ilion"). RECITALS WHEREAS, LTC and Ilion have entered into an Agreement to terminate the LTC-Ilion Merger Agreement (the "Merger Agreement"), and all related agreements (the "LTC-Ilion Termination Agreement"). WHEREAS, the execution and delivery of this Agreement is a condition to the LTC-Ilion Termination Agreement. NOW, THEREFORE, in consideration of these premises and the mutual agreements contained in this Agreement, Ilion and LTC agree as follows: 1. DEFINITIONS Unless the context clearly indicates otherwise, the following terms, when used in this Agreement, shall have the meanings set forth in this Section. 1.1. "Affiliate" means (a) any company or other entity of which either party to this Agreement now or hereafter owns fifty percent (50%) or more of the stock entitled to vote for the election of directors of such company or otherwise has voting control over such entity; (b) any company or other entity of which either party to this Agreement now or hereafter directly or indirectly owns fifty percent (50%) or more of the ownership interest (a "majority economic interest") in such company; or (c) any company or other entity in which voting control or a majority economic interest is directly or indirectly held by a parent company or other entity which also holds voting control of, or a majority economic interest in either party to this Agreement. 1.2. "Licensed Products" means lithium-ion/lithium-ion polymer battery products, the manufacture, use, sale or other disposition of which would, but for the License granted hereunder, employ Technology licensed hereunder. Licensed Products does not include lithium metal polymer battery products. 1.3. "Technology" means all product designs, processing techniques and knowledge known to "those skilled in the art" whether or not patented (including those patents set forth on Schedule 1.3(A)) or patentable which LTC owns or possesses on the date hereof and (1) has communicated to Ilion or (2) was developed by LTC pursuant to the Merger Agreement between LTC and Ilion, solely as the foregoing relates to the materials, design and architecture of lithium- ion/lithium-ion polymer batteries and excluding any of the foregoing as it relates to lithium metal polymer batteries and excluding any improvements to the Technology after the date of this Agreement. Schedule 1.3 hereto sets forth a list of certain, but not all, of the items included within the definition of Technology. 2. LICENSE AND AGREEMENTS 2.1 Non-Exclusive License. Subject to the terms and conditions stated herein, LTC hereby grants, and Ilion hereby accepts, a worldwide, non-exclusive, royalty-free, perpetual license under the Technology to make, have made for Ilion, use, sell or otherwise dispose of the Licensed Products and to use the Technology solely in connection with the license granted herein (the "License"), provided that no license is granted for the use of the Technology for the manufacture of lithium metal polymer battery products. The License shall continue until the termination of this Agreement in accordance with Section 4 hereof. 2.2 Sublicense. Ilion shall not have the right to sublicense the Technology except as may be necessary to have a third party manufacture, maintain or develop a Licensed Product for Ilion. In addition, Ilion may sublicense, assign or otherwise transfer the License to any entity that is directly or indirectly controlled by, controlling, or under common control with Ilion. For the purposes of this clause, Proteus Power and Pacific Lithium New Zealand Limited are entities controlled by Ilion. 3. TECHNOLOGY PROTECTION 3.1. Inspection/Manufacture. If LTC has reasonable grounds to believe that Ilion is infringing on LTC's intellectual property rights, then LTC shall provide notice of such to Ilion. The notice shall set forth in reasonable detail the nature of the alleged infringement and the evidence supporting such. In such event, Ilion shall permit a third party, to be mutually agreed upon by LTC and Ilion, to enter upon Ilion's premises during normal business hours and upon reasonable advanced notice for the limited purpose of inspecting the alleged infringing manufacturing process and/or component as set forth in the aforesaid notice. 3.2. Compliance with Laws. Ilion shall comply with all applicable laws of the United Sates and all other appropriate jurisdiction and the regulations promulgated thereunder, in the manufacture, sales, use, disposition and installation of Licensed Products. 4. TERM AND TERMINATION 4.1 Term and Termination Dates. (a) This Agreement shall commence on December 31, 2001 and shall terminate simultaneously with and upon the earliest to occur of (i) any breach by Ilion of any material provision of this Agreement and the failure by Ilion to cure such breach within ten (10) days of notice of such breach or (ii) December 31, 2021. (b) In addition to the provisions of Section 4.1(a) , LTC may terminate this Agreement immediately by notice to Ilion, if voluntary or involuntary proceedings are instituted against Ilion under any bankruptcy or insolvency laws by a party other than LTC, a LTC Affiliate or a party acting in conjunction with LTC which proceedings are not dismissed or withdrawn within 60 days, or Ilion makes an assignment for the benefit of its creditors or receiver or custodian is appointed for Ilion or Ilion's business is placed under attachment, garnishment or other process involving a significant portion of the business of Ilion. 4.2. Confidentiality. The termination of this Agreement shall not relieve Ilion of its obligations of confidentiality pursuant to Section 5.1 of this Agreement. 5. CONFIDENTIALITY 5.1 Confidentiality. (a) Ilion hereby acknowledges that the Technology is a valuable trade secret of LTC. Ilion shall maintain the Technology in confidence and shall cause its employees and agents to maintain the Technology in confidence during the term of this Agreement and thereafter following termination of this Agreement for a period of two (2) years. The foregoing confidentiality obligation shall not apply to Technology which: (i) is or becomes public knowledge (through no failure of Ilion to perform its obligations hereunder); (ii) is in the future rightfully received from third parties by Ilion free of any obligation to keep it confidential; (iii) is now or in the future approved in writing by LTC for release, publication, dissemination or use; (iv) was rightfully known to Ilion prior to its receipt from LTC; or (v) is required by applicable law to be disclosed to a governmental authority; provided, that to the extent permitted by applicable law, Ilion shall use its reasonable efforts to obtain the agreement of such governmental authority to maintain the confidentiality of any such proprietary information. The parties hereto acknowledge that the Licensed Products contain a high degree of proprietary Technology, and Ilion shall treat and handle all technical information, design data, specifications and like material pertaining to the Licensed Products or any Improvement in confidence and will use such material only to make, have made, use, sell or otherwise dispose of the Licensed Products. Ilion shall return all Technology which is embodied in physical form to LTC promptly upon the termination of this Agreement. The parties shall take all reasonable steps to eliminate the risk of disclosure of the Technology, including, without limitation, ensuring that only employees with a need to know the Technology have access to the Technology and that such employees shall sign confidentiality agreements to treat the Technology as confidential information. Ilion shall provide proper and secure storage for papers, drawings and other confidential matters. Ilion shall require any sublicensee to sign an Agreement containing the same confidential provisions as are contained herein. (b) Ilion shall maintain any technology of LTC in confidence and shall cause its employees and agents to maintain the LTC technology in confidence during the term of this Agreement and thereafter following termination of this Agreement for a period of two (2) years on the terms set forth in Section 5.1(a). 5.2 Injunctive Relief. LTC and Ilion hereby acknowledge that damages at law may be an inadequate remedy for the breach of any of the covenants, promises and agreements contained in Sections 3 and 5.1 and, accordingly, LTC or Ilion shall be entitled to injunctive relief with respect to any such breach, including specific performance of such covenants, promises or agreements or an order enjoining LTC or Ilion from any threatened, or from the continuation of any actual, breach of covenants, promises or agreements. The rights set forth in this Section shall be in addition to any other rights which the parties may have at law or in equity. 6. MISCELLANEOUS 6.1 Notices. Except as otherwise provided herein, all notices, requests, demands, consents, instructions or other communications to or upon the LTC or Ilion under this Agreement shall be by telecopy or in writing and telecopied, mailed or delivered to each party at the telecopier number or its address as provided below (or to such other telecopy number or address as the recipient of any notice shall have notified the other in writing). All such notices and communications shall be effective (a) when sent by Federal Express or other overnight service of recognized standing, on the Business Day following the deposit with such service; (b) when mailed, by registered or certified mail, first class postage prepaid and addressed as aforesaid through the United States Postal Service, upon receipt; (c) when delivered by hand, upon delivery; and (d) when telecopied, upon confirmation of receipt to the following: Lithium Technology Corporation 5115 Campus Drive Plymouth Meeting, PA 19462-1129 Attention David J. Cade Fax: 610-940-6091 with a copy to: Gallagher, Briody & Bulter 155 Village Blvd. 2nd Floor Princeton, NJ 08540 Fax: 609-452-6000 Attention: Thomas P. Gallagher Ilion Technology Corporation Royal & SunAlliance Centre Level 23 48 Shortland Street Auckland, New Zealand Attention: Robin Johannink Fax: 011-64-9-306-1371 with a copy to: Jones Young ASB Bank Centre Level 14 135 Albert Street Auckland, New Zealand Fax: 011-64-9-367-8799 6.2 Nonwaiver. No failure or delay on either LTC or Ilion's part in exercising any right hereunder shall operate as a waiver thereof or of any other right nor shall any single or partial exercise of any such right preclude any other further excise thereof or of any other right. 6.3 Amendments and Waivers. This Agreement may not be amended or modified, nor may any of its terms be waived, except by written instruments signed by LTC and Ilion. Such waiver or consent under any provision hereof shall be effective only in the specific instances for the purpose for which given. 6.4 Assignments. No rights hereunder may be assigned and no duties hereunder may be delegated by Ilion except with the express prior written consent of LTC; provided, however, that a successor in interest by merger, by operation of law, assignment, purchase or otherwise of the entire business of Ilion, shall acquire all interest of Ilion hereunder, without the necessity of obtaining prior written consent. 6.5 Partial Invalidity. If at any time any provision of this Agreement is or becomes illegal, invalid or unenforceable in any respect under the law of any jurisdiction, neither the legality, validity or enforceability of the remaining provisions of this Agreement nor the legality, validity or enforceability of such provision under the law of any other jurisdiction shall in any way be affected or impaired thereby. 6.6 Headings. Headings in this Agreement are for convenience of reference only and are not part of the substance hereof or thereof. 6.7 Entire Agreement. This Agreement constitutes and contains the entire agreement of the LTC and Ilion and supersedes any and all prior agreements, negotiations, correspondence, understandings and communications among the parties, whether written or oral, respecting this License Agreement. 6.8 Governing Law. This Agreement shall be governed by and construed in accordance with the laws of the State of New York without reference to conflicts of law rules. 6.9 Jurisdiction. Any suit, action or proceeding seeking to enforce any provision of, or based on any matter arising out of or in connection with, this Agreement or the transactions contemplated hereby may be brought in the courts of the State of New York located in the County of New York and the federal courts of the United States of America located in such State and County. Each of the parties (i) consents to the exclusive jurisdiction of such courts (and of the appropriate appellate courts therefrom) in any such suit, action or proceeding, (ii) irrevocably waives, to the fullest extent permitted by Law, any objection which it may now or hereafter have to the laying of the venue of any such suit, action or proceeding in any such court or that any such suit, action or proceeding which is brought in any such court has been brought in an inconvenient forum, (iii) will not attempt to deny or defeat such personal jurisdiction by motion or other request for leave from any such court, and (iv) will not bring any action relating to this Agreement or any of the transactions contemplated by this Agreement in any other court. Process in any such suit, action or proceeding may be served on any party anywhere in the world, whether within or without the jurisdiction of any such court. Without limiting the foregoing, each party agrees that service of process on such party as provided in Section 6.1 will be deemed effective service of process on such party. 6.10 JURY TRIAL. EACH OF LTC AND ILION, TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW, HEREBY IRREVOCABLY WAIVES ALL RIGHT TO TRIAL BY JURY AS TO ANY ISSUE. 6.11 Counterparts. This Agreement may be executed in several counterparts, each of which shall be deemed an original, but such counterparts shall together constitutes but one and the same agreement. IN WITNESS WHEREOF, the parties have executed and delivered this Agreement as of the date first above written. LITHIUM TECHNOLOGY CORPORATION By: /s/ David J. Cade --------------------------------------- David J. Cade Chairman and Chief Executive Officer ILION TECHNOLOGY CORPORATION By: /s/ Robin T. Johannink --------------------------------------- Robin Johannink Chairman and Chief Executive Officer