CONFIDENTIAL TREATMENT REQUESTED. CERTAIN PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND, WHERE APPLICABLE, HAVE BEEN MARKED WITH AN ASTERISK TO DENOTE WHERE OMISSIONS HAVE BEEN MADE. THE CONFIDENTIAL MATERIAL HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. INVESTMENTAGREEMENT BY RED MOUNTAIN JET LLC, AMYRIS BIOTECHNOLOGIES, INC., AND AMYRIS BRASIL S.A. MAY 26, 2010 INVESTMENT AGREEMENT
Exhibit 4.05
CONFIDENTIAL TREATMENT REQUESTED. CERTAIN PORTIONS OF THIS
DOCUMENT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT AND, WHERE APPLICABLE, HAVE BEEN MARKED
WITH AN ASTERISK TO DENOTE WHERE OMISSIONS HAVE BEEN MADE. THE
CONFIDENTIAL MATERIAL HAS BEEN FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION.
INVESTMENT AGREEMENT
BY
RED MOUNTAIN JET LLC,
AMYRIS BIOTECHNOLOGIES, INC.,
AND
AMYRIS BRASIL S.A.
MAY 26, 2010
INVESTMENT AGREEMENT
This Investment Agreement (this “Agreement”) is executed on May 26, 2010 (the “Effective Date”), by the following parties (all of them, collectively, the “Parties” and individually, a “Party”):
(1) RED MOUNTAIN JET LLC company incorporated and existing under the laws of State of Delaware, with head offices at 16192 Coastal Highway, Lewes, Delaware 19958, United States of America, herein represented by its undersigned representatives (“Red Mountain”)
(2) AMYRIS BIOTECHNOLOGIES, INC., a company incorporated and existing under the laws of the State of California, United States of America, with head offices at 5980 Hollis Street, Suite 100, Emeryville, California 94608, Estados Unidos da America herein represented by its undersigned representatives (“ABI”); and
(3) AMYRIS BRASIL S.A., a company incorporated and existing under the laws of Brazil, with head offices in the city of Campinas, State of Sao Paulo, at Rua James Clerk Maxwell, n° 315, Techno Park, CEP 13069-380, registered with the CNPJ/MF under n° 09.379.224/0001-20, herein represented by its undersigned representatives (“AB” or the “Company”).
WHEREAS:
(A) ABI is a technology company focused on the research, development and commercialization of renewable fuel and renewable chemical products (the “Amyris Renewable Products”) through the use of a proprietary microbial production technology which converts simple sugars derived from various plant sources, including sugarcane, into specific compounds of interest (the “Amyris Technology”);
(B) ABI established operations in Brazil by forming AB in March of 2008 for the purpose of (i) acquiring an ownership interest in or by any other means partnering with certain sugar and ethanol producers in Brazil and converting a portion of the production capacity of their assets to the production of Amyris Renewable Products, and (ii) providing other Brazilian sugar and ethanol mills with access to the Amyris Technology for the production of Amyris Renewable Products;
(C) To enable AB to carry out these activities, effective as of March 27, 2008, ABI entered into an intellectual property license with AB (the “Technology License”), the terms of which are attached hereto as Exhibit 1, which provides AB with (i) the exclusive right to use the Amyris Technology to manufacture Amyris Renewable Products in Brazil and the exclusive right to grant manufacturing sublicenses to mills located in Brazil, (ii) the exclusive right to market and distribute Amyris Renewable Products in Brazil, and (iii) the non-exclusive right to market and distribute Amyris Renewable Products outside Brazil;
(D) On December 22, 2009, Fundo Mútuo de Investimento em Empresas Emergentes Inovadoras Stratus GC III and Stratus Investimentos Ltda. (both referred to, individually or collectively, as “Stratus”), ABI and AB entered into an Investment Agreement and a Shareholders’ Agreement under which Stratus has made, to date, an equity investment in AB equal to R$ 10,000,000 (ten million Brazilian Reais) (the “Stratus Cash Contribution”);
(E) To date, ABI has made cash contributions to AB in the amount of US$ 10,000,000.00 (ten million United States dollars) (the “ABI Cash Contributions”);
(F) Red Mountain intends to make a capital contribution of R$ 10,000,000.00 (ten million Reais) into the Company (“Red Mountain Cash Contribution” and, together with the Stratus Cash Contribution, the “Investors Cash Contribution”);
Now, therefore, the Parties hereby decide to enter into this Agreement, which shall be governed by the following terms and conditions:
SECTION ONE
DEFINITIONS AND INTERPRETATION
1.1 Definitions.
“AB” has the meaning set forth in the Preamble.
“AB Share Price” equals R$ 9.00 (nine Brazilian Reais).
“ABI” has the meaning set forth in the Preamble.
“ABI Cash Contributions” has the meaning set forth in item “E” of the preamble hereto.
“Affiliate” means, with respect to any Person, any other Person that directly, or indirectly through one or more intermediaries, Controls, or is Controlled by, or is under common Control with, such first Person.
“Agreement” has the meaning set forth in the Preamble and includes all exhibits and schedules hereto.
“Amyris Renewable Products” has the meaning set forth in item “A” of the preamble hereto.
“Amyris Technology” has the meaning set forth in item “A” of the preamble hereto.
“Closing” has the meaning set forth in section 3.2.1 hereto.
“Company” has the meaning set forth in the Preamble.
“Control” of a company means the power to direct the management and policies of such company and shall be presumed to exist upon ownership of securities entitling the holder thereof to exercise more than 50% (fifty percent) of the voting power in the election of directors and in the decision of any strategic matter of such company.
“Definitive Documents” means the Agreement, the Shareholders Agreement and the Minutes of Board of Directors Meeting mentioned in section 3.1 hereof.
“Effective Date” has the meaning set forth in the preamble hereto.
“Intellectual Property” means all (i) trademarks, service marks, trade names, trade dress, domain names, copyrights and similar rights, including registrations and applications to register or renew the registration of any of the foregoing, (ii) letters patent, patent applications, inventions, processes, designs, formulae, trade secrets, know-how, confidential information, computer software, data and documentation, website content, and all similar intellectual property rights, (iii) tangible embodiments of any of the foregoing in any medium, (iv) Information Technology, and (v) licenses of any of the foregoing.
“Investors” shall mean, on the date hereof, Stratus and Red Mountain.
“Investors Cash Contribution” has the meaning set forth in item “F” of the preamble hereto.
“Losses” has the meaning set forth in section 7.2 hereto.
“Party” or “Parties” has the meaning set forth in the Preamble.
“Person” means any individual, corporation, partnership, limited liability company, firm, joint venture, association, joint stock company, trust, unincorporated organization, governmental or regulatory body or subdivision thereof, or any other entity.
“Rules of Arbitration” has the meaning set forth in section 10.2 hereto.
“Shareholders” means the shareholders of AB, which shall correspond to ABI and the Investors.
“Shareholders’ Agreement” means the shareholders’ agreement of AB dated December 22, 2009, which shall be amended on the date hereof as to include Red Mountain.
“Shares” shall mean the shares of capital stock of AB.
“Red Mountain” has the meaning set forth in the Preamble.
“Red Mountain Cash Contribution” has the meaning set forth in item “F” of the preamble hereto.
“Stratus” has the meaning set forth in item “D” of the preamble hereto.
“Stratus Cash Contribution” has the meaning set forth in item “D” of the preamble hereto.
“Technology License” has the meaning set forth in item “C” of the Preamble hereto.
“Total Contribution Amount” means that amount equal to (i) the ABI Cash Contribution, plus (ii) the Investors Cash Contribution.
1.2 Interpretation.
A reference in this Agreement to the singular includes a reference to the plural and vice versa. The term “including” shall be deemed to be followed by the phrase “but not limited to”. The words “hereof’, “herein”, “hereto”, “hereunder” and similar words refer to this Agreement as a whole. The headings of this Agreement are included for convenience purposes only and are to be ignored in the interpretation of this Agreement.
SECTION TWO
PURPOSE OF THE COMPANY AND SCOPE OF THIS AGREEMENT
2.1 Purpose of the Company.
The Company’s purpose is to (i) acquire an ownership interest in certain or by any other means partnering with certain sugar and ethanol producers in Brazil and converting a portion of the production capacity of their assets to the production of Amyris Renewable Products, and (ii) provide other Brazilian sugar and ethanol mills with access to the Amyris Technology for the production of Amyris Renewable Products.
2.2 Scope.
The scope of this Agreement is to establish the terms and conditions of the investments to be made in the Company by Red Mountain.
2.3 Shareholders’ Agreement.
Conditions relating to the transfer of the Company’s shares, voting rights, management and public offerings are set forth in the Shareholders’ Agreement.
SECTION THREE
INVESTMENTS IN THE COMPANY BY RED MOUNTAIN
3.1 Subscription. Upon the terms and subject to the conditions of this Agreement: (a) on May 25th, 2010, AB’s board members shall hold a Board of Directors Meeting of AB and shall resolve on a capital increase in the total amount of R$ 10,000,000.00 (ten million Brazilian Reais), with the issuance of 1,111,111 (one million, one hundred and eleven thousand, one hundred and eleven) new Shares; (b) on the date hereof, Red Mountain shall subscribe for all of those newly issued Shares, for the total subscription price of R$ 10,000,000.00 (ten million Brazilian Reais) to be paid within 5 (five) days as from the date hereof; and (c) on the date hereof, AB’s current Shareholders shall waive its preemptive rights for the subscription of the newly issued Shares to be subscribed by Red Mountain. Each Share shall be worth the AB Share Price.
3.2 Closing.
3.2.1 Timing.
The closing of issuance and subscription of the Shares as mentioned in Section 3.1 above takes place on the date hereof, at the offices of Machado, Meyer, Sendacz e Opice Advogados, in the City of São Paulo, State of São Paulo, Brazil (the “Closing”).
3.2.2 Closing.
At the Closing:
| (a) | AB shall hold a Board of Directors Meeting and take all of the actions mentioned in section 3.1 above, being the relevant minutes executed by all of the members of the Board of Directors; |
| (b) | AB shall cause 1,111,111 Shares to be issued to Red Mountain, have a subscription bulletin of the newly-issued shares duly prepared and executed by Red Mountain, and have those shares registered in the name of Red Mountain in the AB’s Share Register Book (Livro de Registro de Ações Nominativas); and |
| (c) | The Shareholders’ Agreement shall be amended as to include Red Mountain. |
3.2.3 Deliveries by Red Mountain.
Subject to the terms and conditions set forth in this Agreement, on the date hereof, Red Mountain shall deliver the following to AB (the delivery of which may be waived, in writing, by AB):
| (a) | all the Definitive Documents to which Red Mountain is a party and a subscription bulletin duly executed by it; |
| (b) | evidence that Red Mountain has been authorized to execute each of the Definitive Document to which it is a party; and |
| (c) | all other documents, instruments, certificates and writings required to be delivered by Red Mountain pursuant to the Definitive Documents. |
3.2.4 Deliveries by AB.
Subject to the terms and conditions hereof, on the date hereof, AB shall deliver the following to Red Mountain (the delivery of which may be waived, in writing, by Red Mountain):
| (a) | all the Definitive Documents to which AB is a party duly executed by AB and by the members of its Board of Directors, as the case may be; |
| (b) | evidence that AB has been authorized to execute each of the Definitive Documents to which they are parties; |
| (c) | all other documents, instruments, certificates and writings required to be delivered by AB pursuant to the Definitive Documents. |
3.2.5 Closing Events.
All of the transactions to occur at the Closing shall be deemed to have occurred simultaneously and neither Party shall have the obligation to consummate any of the transactions referred to in section 3.1 unless all of such actions shall have been consummated simultaneously. All of the transactions and actions listed in sections 3.2.2, 3.2.3 and 3.2.4 above shall be deemed to have taken place simultaneously and no action shall be deemed to have been made until all steps taken at the Closing have been completed in form and substance reasonably satisfactory to Red Mountain and AB, and their respective counsels.
3.2.6 Payment by Red Mountain.
Red Mountain shall deliver to AB the price of the Shares subscribed by Red Mountain by wire transfers of immediately available funds, within 5 (five) days as from the date hereof, to the bank account No. [*], held by AB at agency no. [*] of Banco Itaú BBA S.A. Within said period, Red Mountain shall deliver to all other Parties evidence of the wire transfer of the price of the Shares subscribed by Red Mountain to the referred AB account.
SECTION FOUR
USE OF PROCEEDS
4.1 Use of Proceeds.
The Parties agree that the proceeds raised through the ABI Cash Contribution and the Investors Cash Contribution shall be put towards the funding of projects for production of Amyris Renewable Products in Brazil.
| * | Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. |
SECTION FIVE
REPRESENTATIONS AND WARRANTIES
5.1 General Representations and Warranties.
Each of the Parties represents and warrants that:
| (i) | it has been duly incorporated, is validly existing and in good standing under the laws of its place of incorporation; |
| (ii) | it has full power and authority, and has taken all required corporate and other action necessary to execute and deliver this Agreement and to fulfill its obligations hereunder; the execution, delivery and performance of this Agreement shall not violate any applicable law of its places of incorporation; |
| (iii) | this Agreement constitutes a legal, valid and binding obligation, enforceable against it in accordance with its terms, except (A) as limited by applicable bankruptcy, insolvency, reorganization, moratorium, fraudulent conveyance, or other laws of general application relating to or affecting the enforcement of creditors’ rights generally or (B) as limited by laws relating to the availability of specific performance, injunctive relief, or other equitable remedies; |
| (iv) | the execution, delivery and performance of this Agreement do not, and the consummation of the transactions contemplated hereby and compliance with the terms hereof will not conflict with, or result in any violation of or default under, or give rise to a right of termination, cancellation or acceleration of any obligation, of any contract, corporate or other documents executed by it; and |
| (v) | no order, consent, approval or authorization of, or registration, declaration or filing with any governmental authority is required to be obtained in connection with the execution, delivery and performance of this Agreement or the consummation of the transactions contemplated hereby. |
5.2 Specific Representations and Warranties of AB.
In addition to the representations and warranties set forth in section 5.1 above, the Company hereby represents and warrants that:
| (i) | AB has all requisite corporate power and authority to own and operate its properties and assets and carry out its business as now conducted; |
| (ii) | AB is not a party to any litigation, suit, action, investigation, proceeding, controversy or claim before any governmental authority that could materially and adversely affect the business; |
| (iii) | AB is not insolvent or unable to pay its debts and has not been held in default by lenders under any debt financing; |
| (iv) | AB has complied with all applicable laws and has not received any written notice nor has any claim alleging failure to comply with any applicable law and no expenditures are or will be required to comply with any law, except, in any case, in a manner that would not be materially adverse to its business and ability to perform under this Agreement; and |
| (v) | as of the date hereof, the Technology License is in full force and effect and AB is not in violation or default of any term or provision set forth therein. AB has neither performed any act, the occurrence of which would result in AB’s loss of any right granted under the Technology License, nor failed to perform any act, the failure of which would result in AB’s loss of any right granted under the Technology License. To the best of AB’s knowledge and belief, after having |
| carried out any investigation required by law, (A) AB owns or has been granted all necessary Intellectual Property rights to conduct it business as currently conducted, and (B) use of the Amyris Technology by AB will not infringe the intellectual property rights of any third party. AB has not received any written communications alleging that AB has violated or, by conducting its business as proposed, would violate, infringe or misappropriate any of the Intellectual Property of any other person or entity. |
SECTION SIX
CONFIDENTIALITY.
6.1 Confidentiality.
Each of the Parties hereby undertakes to maintain and to procure that its directors, officers, employees, advisers and contractors maintain in absolute confidentiality, any document or information deemed as confidential by the Parties, including documents, information related to this Agreement and its negotiation process. The provisions of this section shall not apply to any information:
| (i) | generally available to the public other than through any disclosure by a Party to the other; |
| (ii) | independently received from a third party who is free from any obligations not to disclose it; |
| (iii) | in the possession of the recipient, on a non-confidential basis, prior to its receipt from the other Party (as demonstrated by contemporaneous records); |
| (iv) | regarding which the recipient is bound by applicable laws or regulations to disclose, provided that such Party notify the other Party of such disclosure with a 24 (twenty-four) hour written notice after the requirement by the relevant authority; and |
| (v) | in the case of ABI or AB, information which is provided to actual or prospective investors, underwriters, or acquirers of ABI or AB and/or their affiliates. |
SECTION SEVEN
VALIDITY AND INDEMNITY
7.1 Validity.
All representations, warranties and obligations of the Parties set forth in this Agreement shall be valid as from the date hereof and will remain in full force and effect for the respective statute of limitation.
7.2 Indemnity.
Each Party shall indemnify and hold harmless the other Parties and their respective directors, officers, employees, Affiliates, controlling Persons, agents and representatives and their successors and assigns from and against any liability, demand, claim, action, assessment, expense, damage or loss (“Losses”) arising from (i) the breach of any of its obligations hereunder and (ii) from the non-compliance with any representation or warranty set forth herein. In addition to the foregoing, AB shall indemnify and hold harmless the other Parties and their respective directors, officers, employees, Affiliates, controlling Persons, agents and representatives and their successors and assigns from and against any Losses arising
from any illegal act, fact or omission of AB and of any Person who may have served as manager of AB, acting in such capacity within the applicable corporate powers, occurred prior to the Closing.
The right to indemnification arising from the breach of either Party’s obligation hereunder or from the non-compliance with any representation and warranty set forth herein will not be affected by any investigation conducted or knowledge acquired at any time, whether before or after the Closing, with respect to the accuracy or inaccuracy of or compliance with, any such representation, warranty, covenant or obligation.
7.2.1 Payments.
| (a) | Immediately after having knowledge of any act or fact giving rise to an indemnification under this section 7.2, the applicable Party shall send to the other Parties hereto a notice to that effect with a description of such act or fact and a copy of any relevant document. |
| (b) | If, despite their best efforts, the Parties are not able to reach a mutually acceptable settlement deemed reasonable by all Parties within fifteen (15) days from the receipt of such notice, the applicable indemnified party shall then have forty-eight (48) hours, counted from the end of the negotiations mentioned herein, to send a notice to the indemnifying party, in which such indemnified party shall state whether it wishes to start an indemnification claim and, if so, it shall include reasonable details of the nature and basis for such indemnification claim and the total amount related thereto. Upon receipt of such response notice, the indemnifying party shall have seventy-two hours to either pay or contest the payment of the indemnification claimed by the applicable indemnified party. |
| (c) | If (A) the indemnifying party contests and does not make the claimed payment, or (B) the indemnified party contests the payment made by the indemnifying party of the indemnification claimed, then the indemnified party may start an arbitration procedure against the indemnifying party, in accordance with section 10.2 of this Agreement. The indemnifying party shall be required to pay any such indemnification within 48 (forty-eight) hours counted as of the date on which a final and non-appealable decision or arbitral award is rendered in favor of the indemnified party with respect to the claim started by the indemnified party against the indemnifying party or as of the date on which a settlement, agreement or compromise is made with respect thereto. |
| (d) | All payments to the applicable indemnified party shall be in immediately available funds and any indemnification payment must be grossed up to cover any and all taxes payable by the applicable indemnified party on account of such payment. |
| (e) | In the event the indemnifying party has knowledge of any act or fact giving rise to an indemnification under this section 7.2 and fails to deliver a notice in terms set forth herein to the applicable indemnified party, it shall further indemnify the applicable indemnified party for any additional Losses that such a delay may have caused. |
7.2.2 Legal Action or Administrative Proceeding
| (a) | In the event that any legal action or administrative proceeding that could give rise to an indemnification under this section 7.2 is filed against or made upon any indemnified party, such indemnified party shall notify the indemnifying party, in writing, as soon as reasonably practical, but in no event later than one third (1/3) of the legal term to present |
| a defense for the respective legal action or administrative proceeding. Such notice shall contain, in reasonable detail, a description of the amounts being claimed and the basis thereto. |
| (b) | The indemnifying party may either decide to present a defense, counterclaim or pay the amount sought under the legal action or administrative proceeding (including to post a bond for such a defense, if so required), without prejudice to item “f’ below. |
| (c) | The indemnifying party shall bear any and all costs incurred, including reasonable attorney’s fees and court fees, guarantees, as well as expenses incurred in relation to the defense of the legal action or administrative proceeding. In the event the indemnified party receives an order issued by any governmental authority requesting it to make a judicial deposit (or any similar payment) in connection with such legal or administrative proceeding, then such deposit amount shall be reimbursed by the indemnifying party within 48 (forty-eight) hours as of such payment by the indemnified party. |
| (d) | If the indemnifying party assumes the defense of any legal action or administrative proceeding in accordance with the terms of the preceding sentence, the indemnifying party shall not be entitled to agree to any settlement, agreement or compromise with respect thereto without the prior written consent of the applicable indemnified party, which consent shall not be unreasonably withheld. The applicable indemnified party shall not be required to agree to any settlement, agreement or compromise that (i) does not contain a full release with respect to the respective legal action or administrative proceeding, or (ii) provides for any injunctive or other non-monetary relief. |
| (e) | In the event that the indemnifying party does not present a defense, counterclaim or pay the amount sought under the legal action or administrative proceeding and notifies the applicable indemnified party within two thirds (2/3) of the period available for the presentation of the relevant defense, the applicable indemnified party shall have the right to assume the defense of the legal action or administrative proceeding. The indemnifying party shall promptly and immediately reimburse the applicable indemnified party for any and all expenses incurred in relation to said Legal Action, whether during an administrative or judicial proceeding, including, but not limited to attorneys’ expenses, court fees, administrative fees and penalties. If the applicable indemnified party assumes the defense of any legal action or administrative proceeding in accordance with the terms of the preceding sentence, such indemnified party shall be entitled to agree to any settlement, agreement or compromise with respect thereto without the prior written consent of the indemnifying party. |
| (f) | Notwithstanding the above, if the indemnifying party believes the legal action or administrative proceeding filed against or made upon any indemnified party should not give rise to an indemnification under this section 7.2, then the indemnified party may start an arbitration procedure against the indemnifying party, as set forth in section 7.2.1., item “c”, above. In that case, all costs and expenses incurred by the indemnified party in connection with such legal action or administrative proceeding shall be reimbursed by the indemnifying party after the date on which a final and non-appealable decision or arbitral award is rendered in favor of the indemnified party, also as set forth in section 7.2.1., item “c”, above. |
SECTION EIGHT
TERMINATION
This Agreement may not be terminated except by the written consent of all the Parties.
SECTION NINE
GENERAL PROVISIONS
9.1 Entire Agreement.
This Agreement shall constitute the entire agreement between the Parties hereto and supersede and replace all other agreements and understandings, verbal or written, among the Parties with respect to the subject matter of this Agreement. No amendment or modification of any provision of this Agreement shall be effective unless it is done in writing and signed by each of the Parties.
9.2 Severability.
The invalidity of one or more provisions of this Agreement shall not affect the validity of this Agreement as a whole unless the invalid provision was of such essential importance to this Agreement that it is to be reasonably assumed that the Parties would not have entered into this Agreement without such invalid provision. The Parties shall negotiate in good faith to substitute any invalid provisions with other provisions that may substantially achieve their original intentions.
9.3 Waiver.
Any term or condition of this Agreement may be waived at any time by the Party that is entitled to the benefit thereof, but no such waiver shall be effective unless set forth in a written instrument duly executed by or on behalf of the Party waiving such term or condition. The failure of any Party at any time to enforce any provision of this Agreement shall not in any way affect its rights to require performance thereof, nor shall the waiver of any breach of any provision hereof be taken or held to be a waiver of any succeeding breach of any such provision or as a waiver or a novation (novação) of the provision itself.
9.4 Assignment.
No Party may directly or indirectly transfer any of its rights and obligations under this Agreement to any third party, without the prior written consent of the other Parties.
9.5 Costs and Expenses.
Each Party shall bear all costs and expenses incurred by it in connection with the preparation, negotiation and delivery of this Agreement.
9.6 Notices.
All notices, requests, claims and other communications hereunder shall be in writing and communicated to the receiving party either by hand, or sent by registered mail, electronic mail or facsimile and addressed as follows or to such other addresses as may from time to time be notified by any Party to the other Party:
If to ABI:
AMYRIS BIOTECHNOLOGIES, INC.
Address: 5885 Hollis Street, Suite 100, Emeryville, California 94608, USA
Telephone: +1 ###-###-####
Fax: +1 ###-###-####
E-mail: ***@***
Attn: Tamara Tompkins - General Counsel
If to Red Mountain:
PEDRO PAULO FALLEIROS DOS SANTOS DINIZ
Address: Rua Jerônimo da Veiga, 384, 3rd floor
Telephone: +55 11 3705-5161
Fax: + 55 11 3702-5112
E-mail: ***@***
If to AB:
AMYRIS BRASIL S.A.
Address: Rua James Clerk Maxwell, 315, Campinas, SP, Brazil
Telephone: +55 19 3783-9450
Fax: +55 19 3283-0005
E-mail: ***@***
Attn: Roel Collier
9.6.1 Delivery of Notice.
Any notice served by hand shall be deemed to have been served upon delivery. Any notice served by prepaid registered mail shall be deemed to have been served upon evidenced receipt. Any notice served by e-mail or facsimile shall be deemed to have been served when sent, provided that evidence has been produced showing that the notice has been sent to the facsimile number/e-mail address, as indicated in this Agreement.
9.6.2 Change of Data.
In case of any change of data, if the new information is not notified by the relevant Party to the other Party, all notices sent to the previous addresses shall be deemed to have been duly served.
9.7 Language.
This Agreement shall be executed in the English and Portuguese languages, provided that the English version shall prevail, including in arbitration, and excluding when in proceedings before Brazilian courts, in which the Portuguese version shall prevail.
SECTION TEN
GOVERNING LAW AND DISPUTE RESOLUTION
10.1 Governing Law.
This Agreement shall be governed by and construed in accordance with the laws of Brazil.
10.2 Dispute Resolution.
Any dispute, controversy or claim by and among the Parties to this Agreement, arising out of or relating to this Agreement, or the breach, termination or validity hereof, shall be settled by arbitration in accordance with the Rules of Arbitration of the Câmara de Comércio Brasil-Canadá (the “Rules of Arbitration”). The decision of the arbitrators shall be final and binding upon the Parties with no further appeal, recourse or review. Until such decision, the Parties agree to keep the arbitration procedure on a confidential basis, except to the extent necessary for any interim or conservatory measures permitted under the Rules of Arbitration.
10.2.1 Arbitration Place.
The place of arbitration shall be in the City of São Paulo, State of São Paulo, Brazil, where the arbitration award shall be rendered.
10.2.2 Arbitration Language.
The language of the arbitration shall be English.
10.2.3 Judicial Measures.
Without prejudice to this section 10.2 and without limiting any other powers the arbitrators may have, the Parties remain fully entitled to request judicial measures: (a) in order to obtain preliminary and urgent measures (medidas cautelares) prior to the formation of the arbitral tribunal, and such judicial recourse shall not be interpreted as a waiver of the arbitration as set forth in this section; and (b) to enforce any arbitral decision, including the final award. For that purpose, the Parties elect the courts of the city of São Paulo, State of São Paulo, Brazil, being waived any other no matter how privileged it may be. The Parties recognize that any provisional or urgent matter granted by judicial courts shall be, necessarily, reviewed by the arbitral tribunal, which shall decide on its ratification, revision or cancellation.
IN WITNESS hereof, this Agreement is executed in 3 (three) counterparts of the same form and content, in the City of São Paulo, State of São Paulo, Brazil, on May 26, 2010.
PARTIES:
| /s/ [illegible] |
| RED MOUNTAIN JET LLC |
| /s/ [illegible] |
| AMYRIS BIOTECHNOLGOIES, INC. |
| /s/ [illegible] |
| AMYRIS BRASIL S.A. |
WITNESSES:
| 1. /s/ Luana Komatsu | 2. /s/ Gabriel Aldallah Mundinn | |||
| Name: /s/ Luana Yo Ko Vieira Komatsu | Name: /s/ Gabriel Aldallah Mundinn | |||
LIST OF EXHIBITS
| 1. | Technology License |
| 2. | Shareholders Agreement |
EXHIBIT 1
LICENSE AGREEMENT BETWEEN ABI AND AB
LICENSE AGREEMENT
This LICENSE AGREEMENT (the “Agreement”), effective as of March 27, 2008 (the “Effective Date”), is made by and between AMYRIS BIOTECHNOLOGIES, INC., a California corporation with a principal place of business at 5885 Hollis St., Ste. 100, Emeryville, CA 94608 (“ABI”), and AMYRIS PESQUISA E DESENVOLVIMENTO DE BIOCOMBUSTIVEIS LTDA., a company organized and existing as a “sociedade limitada” under the laws of Brazil with headquarters in the city of Campinas, state of São Paulo, at Rua James Clerk Maxwell, n° 315, Techno Park, CEP 13069-380, registered with the CNPJ/MF under n° 09.379.224/0001-20 (“AB”). ABI and AB are each a “Party” hereto, and collectively are the “Parties.”
BACKGROUND
WHEREAS, ABI is a technology company which is focused on the research, development and commercialization of a variety of renewable fuel and chemical products;
WHEREAS, ABI has developed a proprietary microbial production technology which converts sugars derived from various plant sources, including sugar cane, into renewable fuel and chemical products;
WHEREAS, ABI formed AB as a wholly owned subsidiary with the intent of having AB hold certain rights to such technology in Brazil;
WHEREAS, AB intends to (a) acquire, own and manage sugar cane and ethanol mills in Brazil, and to convert such mills to the production of renewable fuel and chemical products using such technology; and (b) enter into commercial arrangements with other mills hi Brazil pursuant to which such mills would convert a portion of their assets to the production of renewable fuel and chemical products using such technology;
WHEREAS, ABI desires to license to AB, the right to use certain ABI technology and the right to use certain ABI trade names and ABI trademarks (a) on an exclusive basis, to develop, make, have made, use, sell, distribute and market certain renewable fuel and chemical products in Brazil, with the right to grant limited sublicenses to such technology, trade names and trademarks to mills located in Brazil, and (b) on a nonexclusive basis, to sell, distribute and market certain renewable fuel and chemical products outside of Brazil, in each case under the terms and conditions set forth herein, and AB desires to obtain such licenses; and
WHEREAS, in consideration of the licenses granted herein, AB desires to (a) license back to ABI the right to use any developments and improvements derived from or related to the ABI technology that. are or become owned or controlled in whole or in part by AB outside of Brazil for any purpose on the terms and conditions set forth herein (subject only to AB’s nonexclusive license rights), and (b) permit ABI to assist patent prosecution and enforcement matters relating to such developments and improvements, under the terms and conditions set forth herein, and ABI desires to obtain such a license and such rights:
NOW, THEREFORE, on the terms and subject to the conditions set forth herein, the Parties hereby agree to enter into this Agreement upon the following terms and subject to the following conditions:
ARTICLE 1
DEFINITIONS
For purposes of this Agreement, the following definitions will apply:
1.1 “ABI Base Technology” means Patents, Production Strains and Know-How associated with such Patents and Production Strains, in each case that are (a) necessary for the development, manufacture, rise, sale and distribution of Renewable Fuel Products and Renewable Chemical Products Brazil and (b) Controlled by ABI as of the Effective Date of this Agreement. Patents and Production Strains within the ABI Base Technology are listed on Schedule 1 attached hereto and incorporated herein by reference.
1.2 “ABI Improvements” means any Patents, Production Strains and Know-How associated with such Patents and Production Strains comprising Improvements that (a) are necessary for the development, manufacture, use, sale and distribution of Renewable Fuel Products and Renewable Chemical Products in Brazil and (b) become Controlled by ABI during the Term of this Agreement. Schedule I will be amended by the Parties from rime to time to reflect the inclusion of Patents and Production Strains included within ABI Improvements.
1.3 “ABI Technology” means the ABI Base Technology and the ABI Improvements.
1.4 “AR Improvements” means any Improvements and any other Patents, Production Strains or Know-How that are (a) Controlled by any AR Party as of the Effective Date or become Controlled at any time during the Term of this Agreement and for a period of five years after expiration of the Term of this Agreement, or (b) made, developed or created by or on behalf of any AB Party, or their employees or agents, solely or jointly with any Third Party, during the Term of this Agreement and for a period of five years after expiration of the Term of this Agreement in each case in connection with the exercise of its rights hereunder or otherwise through use of based upon, derived from or incorporating any ABI Technology. AB Improvements shall include, without limitation: (i) Improvements to the ABI Technology, (ii) Improvements to Joint Improvements, and (iii) Improvements to other AB Improvements,
1.5 “AB Parties” means AB, its successors and permitted assigns and its or their permitted sublicensees.
1.6 “Confidential Information” has the meaning set forth in Section 5.1.
1.7 “Control” (including any variations such as “Controlled” or “Controlling”) means, in the context of Patents, Production Strains, Know-How, Improvements and Licensed Marks, rights to such Patents, Production Strains, Know-How, improvements and Licensed Marks sufficient to grant the applicable license or assignment under this Agreement without violating the terms of any arrangement with any Third Party.
1.8 “Improvements” means all enhancements, modifications and revisions, whether or not protectable under intellectual property laws, based upon, derived from or incorporating any ABI Technology or other applicable technology in which ABI holds any right, title or interest.
1.9 “Joint Improvements” means any Patents, Production Strains or Know-How that are made, developed or created-jointly by or out behalf of ABI and by or on behalf or any AB Party, or their employees or agents, during the Term of this Agreement and for a period of five years after expiration of the Term of this Agreement.
1.10 “Know-How” means non patented information and tangible materials, including: (a) technical and non-technical data, specifications, formulae, compounds, formulations, assays, designs, results, information, conclusions, interpretations, inventions, developments, discoveries, ideas, improvements, and trade secrets; (b) methods, databases, tests, procedures, processes and techniques; (c) biological material, including strains, progeny, clones, vectors, recombinant DNA and samples; and (d) other know-how and technology.
1.11 “Licenses” has the meaning set forth in Section 2,1.
1.12 “Licensed Marks” means, collectively, (a) the trade name “Amyris”; (b) the logo set forth on Schedule 2, attached hereto and incorporated herein by reference; (c) the additional trademarks listed on Schedule 3, attached hereto and incorporated herein by reference; and (d) such future marks as determined by ABI in its sole discretion from time to time ns appropriate for the development, manufacture, use, sale or distribution of Renewable Fuel Products and Renewable Chemical Products in Brazil. Schedule 3 and Schedule 4 (Requirements of Licensed Marks Use), attached hereto and incorporated herein by reference will be amended by the Parties from time to time to reflect the inclusion of such future marks and appropriate requirements for lie use of such marks.
1.13 “Patents” means any patents and patent applications, together with all additions, divisions, continuations, continuations-in-part, substitutions, reissues, re-examinations, extensions, registrations, patent term extensions, supplemental protection certificates, renewals, and the like with respect to any of the foregoing.
1.14 “Production Strain” means recombinant yeast that has been genetically engineered by or on behalf of ABI (which shall be deemed to include any Production Strains made by AB on behalf of ABI1) to make a five carbon (CS), ten carbon (C10), or a fifteen carbon (C15) isoprenoid product during fermentation.
1.15 “Term” has the meaning set forth in Section 9.1.
1.16 “Third Party” means any person, corporation, joint venture or other entity, other than ABI or AB or their respective permitted successors and assigns.
1.17 “Renewable Chemical Products” means a compound made directly by a Production Strain for use in industrial operations or in the commodity chemicals industry as a raw material which is then converted to a product of interest by formulation or by a chemical change in the compound. The term excludes use of a compound made directly by a Production Strain, including derivatives thereof, for use in pharmaceutical formulations, drugs and as ingredients in food.
1.18 “Renewable Fuel Products” means a combustible material that (a) is used to generate energy (heat or power), and (b) is derived from a product made by a Production Strain,
ARTICLE 2
TECHNOLOGY LICENSES
2.1 ABI Technology License Grant.
| (a) | Grant. Subject to the terms and conditions of this Agreement, ABI hereby grants to AB (i) an exclusive royalty-free right to the ABI Technology to develop, make, have made, use, sell, distribute and market Renewable Fuel Products and Renewable Chemical Products in Brazil; and (ii) a non-exclusive royalty-free right to the ABI Technology to sell, distribute and market Renewable Fuel Products and Renewable Chemical Products outside of Brazil. The foregoing grant is achieved by a grant of multiple licenses on a Patent-by-Patent and a Production Strain-by-Production Strain basis (collectively, the “Licenses”), whereas each such License includes the Know-How associated with the Patent or Production Strain covered by such License. The foregoing Licenses include the right to grant limited sublicenses accordance with Section 2.2. |
| (b) | Term. The term of each License will be determined un a License-by-License basis as follows: (i) each License to a Patent will expire upon the expiration of the term of the applicable Patent, unless earlier terminated as permitted herein; and (ii) each License to a Production Strain will expire upon the expiration of the applicable Patent, if any, covering such Production Strain or, if there is no Patent covering such Production Strain, then upon expiration of the last License to a Patent hereunder. |
2.2 Sublicense Rights to ABI Technology. AB may grant limited sublicenses under the Licenses granted under Section 2.1 to sugar cane and ethanol mills in Brazil that are being Converted either by AB in its capacity as a shareholder in such mills, or by the mill itself pursuant to a commercial agreement with AB, to the production of Renewable Fuel Products and Renewable Chemical Products in Brazil. Each sublicense will be in a form approved in advance by ABI, as determined by ABI in its sole discretion and may be granted only under the following terms and conditions unless otherwise agreed to by ABI in writing in its sole and absolute discretion:
| (a) | Each such sublicense will only permit the sublicensee to develop, make and have made Renewable Fuel Products and Renewable Chemical Products in Brazil (or for that subset of uses and for such subset of Renewable Fuel Products and Renewable Chemical Products that ore determined by AB in such sublicense.) |
| (b) | Each such sublicense will not conflict with, and will be expressly subordinate to, the terms and conditions of this Agreement. In the event of a conflict, the terms of this Agreement shall prevail. |
| (c) | Each such sublicense will prohibit the sublicensee from further sublicensing. |
| (d) | AB will remain responsible to ABI under each sublicense for all the obligations of AB under this Agreement. |
| (e) | Upon the expiration or earlier termination of this Agreement, at the option of ABI, all sublicenses granted hereunder will either continue with ABI succeeding AB as licensor, or automatically terminate, as determined by ABI in its sole discretion. |
| (f) | Promptly following the execution of each sublicense, AB will provide ABI with an executed copy of such sublicense agreement. |
For the avoidance of doubt, if AB desires to transfer any ABI Technology, including without limitation any Production Strain or any other tangible biological material received from ABI or derived from any materials received front ABI, to any Third Party to pursue development or scale-up work consistent with the license rights granted hereunder, such transfer must also be documented on the terms required for sublicenses set forth above.
2.3 AB License Grant Back to AB Improvements. AB hereby grants to ABI an exclusive fully paid-up, perpetual, irrevocable, royalty-free right and license, including the right to grant sublicenses in ABI’s sole and absolute discretion, to use the AB Improvements on an exclusive basis (subject only to AB’s nonexclusive license rights granted by ABI hereunder) to develop, make, have made, use, sell, have sold, distribute, have distributed and market Renewable Fuel Products and Renewable Chemical Products and any other purpose whatsoever worldwide, excluding Brazil. AB will not grant rights to any Third Party to AB Improvements inconsistent with this Agreement.
2.4 AB License Grant Back to AB Interest in Joint Improvements. AB hereby grants to ABI an exclusive (even as to AB) fully paid-up, perpetual, irrevocable, royalty-free right and license, including the right to grant sublicenses in ABI’s sole and absolute discretion, to use AB’s interest in the Joint Improvements (subject only to AB’s nonexclusive license rights granted by ABI hereunder) (a) worldwide, excluding Brazil, to develop, make, have made, use, sell, have sold, distribute, have distributed and market Renewable Fuel Products and Renewable Chemical Products and for any other purpose, whatsoever and (b) in Brazil, for any purpose other than developing, making, having made, using, selling, having sold, distributing, having distributed and marketing Renewable Fuel Products and Renewable Chemical Products. AB will not grant rights to any Third Party to AB’s interest in the Joint Improvements inconsistent with this Agreement. For the avoidance of doubt, the Parties hereby affirm that they (i) intend for the foregoing provisions to mean that AB shall grant back to ABI the rights AB otherwise have to use AB’s interest in the Joint Improvements for the purposes described in clauses (a) and (b; (ii) agreed to such rights after due diligence, careful deliberation and consultation with counsel; and (iii) agree that neither Party shall require the permission of the other Party to use the rights granted to such other Party in this Section 2.4 notwithstanding that the law of jurisdictions other than the State of California, United States of America might otherwise grant such other Party pre-approval, prior consent or other similar blocking or permission rights.
2.5 No Other Rights. Except as expressly granted herein, no right, title or interest is granted by ABI to AB. In addition, any license granted by ABI under this Agreement is subject to applicable laws and regulations, including United States laws and regulations as shall front time to time govern the license and delivery of technology and products between the United States and other countries, including the United States Foreign Assets Control Regulations, Transaction Control Regulations and Export Control Regulations, as amended, and any successor legislation issued by the Department of Commerce, International Trade Administration, Office of Export Licensing, which laws and regulations may restrict ABI’s ability to grant the lice-use or deliver the ABI Technology. In the event any such restrictions are found to apply, the Parties will work together in good faith to comply with requirements to lift or otherwise satisfy such restrictions. The costs of any activities in connection therewith will be borne by AB.
ARTICLE 3
TRADEMARK LICENSE GRANTS
3.1 Grant of Trademark License. Subject to the terms and conditions of this Agreement, ABI hereby grants to AB an exclusive license, without the right to sublicense, to use the Licensed Marks in Brazil to practice the ABI Technology to develop, make, have made, use, sell, distribute and market Renewable Fuel Products and Renewable Chemical Products in Brazil. The term of such license will expire, unless earlier terminated as permitted herein, upon the earlier of (a) fifteen (15) years from the Effective Date, and (b) the expiration of all of the Licenses granted in Section 2.1,
3.2 Acknowledgment of Rights. ABI acknowledges that ABI is the owner of the Licensed Marks, and that all use of the Licensed Marks by AB inures to the benefit of ABI. AB further acknowledges that the Licensed Marks embody substantial goodwill and enjoy favorable public recognition, and that ABI’s rights therein constitute valuable assets of ABI.
3.3 Quality Control. In order to protect the goodwill and reputation associated with the Licensed Marks, AB agrees that AB will provide ABI with representative specimens of advertising and promotional materials showing AB’s use of the Licensed Marks and will use the Licensed Marks in publicly disseminated materials in the manner set forth in the requirements of Requirements of Licensed Marks Use set forth on Schedule 4 attached hereto. Any deviation from the Requirements of Licensed Marks Use must be approved by ABI in writing.
3.4 Trademark Maintenance. During the Term of this Agreement, ABI, at its own cost, will be responsible for maintaining and renewing registrations for the Licensed Marks. AB will cooperate with ABI in its efforts to protect the Licensed Marks in Brazil, including exerting its best efforts to exploit the Licensed Marks so as to maintain their validity in the territory of Brazil. ABI will timely notify AB of its decision not to maintain registration for any of the Licensed Marks in Brazil. If registration of AB as a registered user of the Licensed Marks is required, AB will bear all expenses, including government fees and attorney and trademark agent lees, relating to such registration.
3.5 Licensed Mark Infringement.
| (a) | Enforcement of Licensed Marks. If either Party becomes aware of any use by any Third Party of any name, mark or designation that infringes or is likely to infringe any of the Licensed Marks in Brazil, that Party will notify the other Party promptly in writing of the actual or threatened infringement. Whether to take action will be in ABI’s sole discretion. If requested by ABI, AB will join with ABI at ABE’s expense in such action as ABI in its reasonable discretion nay deem advisable for the protection of its rights. In connection therewith, AB will cooperate to the extent reasonably required by ABI to stop such infringement or act, and, if so requested by ABI, will join with AB as a party to any action brought by ABI for such purpose. ABI will have full control over any action taken, including, without limitation, the right to select counsel, to settle on any terms it deems advisable in its discretion, to appeal any adverse decision rendered in any court, to discontinue any action taken by it, and otherwise to make any decision in respect thereto as it in its discretion deems advisable. Any recovery as a result of such action shall belong solely to ABI. |
| (b) | Infringement of Third Party Marks. If AB receives any written notice or claim that the use by AB of the Licensed Marks infringes the intellectual property rights of a Third Party, then AB will promptly so notify ABI in writing. ABI shall have the right, but not |
| the obligation, to defend against any such claim. If requested by ABI, AB will join with ABE at ABI’s expense in such action as ABI in its reasonable discretion may deem advisable for the protection of its rights. In connection therewith, AB will cooperate to the extent reasonably required by ABI, and, if so requested by ABI, will join with ABI as a party to any action brought by ABI for such purpose. ABI will have full control over any action taken, including; without limitation, the right to select counsel, to settle on any terms it deems advisable in its discretion, to appeal any adverse decision rendered in any court, to discontinue any action taken by it, and otherwise to make any decision in respect thereto as it in its discretion deems advisable, |
ARTICLE 4
DILIGENCE; REPORTING
4.1 Diligence. AB will use commercially reasonable efforts, consistent with prudent and reasonable business practices and judgment, to develop, make, and have made, directly or through its permitted sublicensees, and to use, sell, distribute and market Renewable Fuel Products and Renewable Chemical Products in Brazil. AB shall permit auditors or inspectors appointed by ABI to have access during ordinary business hours and as may be necessary, to monitor compliance of AB with this Agreement.
4.2 AB Reporting. During the Term of this Agreement, AB will keep ABI informed as to the activities of AB and its sublicensees with respect to the development, manufacture, use, sale or distribution of Renewable Fuel Products and Renewable Chemical Products or otherwise involving the ABI Technology. In connection therewith, AB will deliver to ABI, and will cause its sublicensees to deliver to ABI, no less frequently than quarterly, a written report summarizing in reasonable detail progress with respect to such activities since the last such report, including without limitation any AB Improvements and Joint Improvements which have arisen during such time period.
4.3 ABI Reporting. During the Term of this Agreement, ABI will keep AB informed annually as to any ABI Technology or marks, trade names or trademarks that have become subject to any license under this Agreement.
ARTICLE 5
CONFIDENTIALITY
5.1 Confidential Information. The Parties understand and agree that in the performance of this Agreement each party may have access to proprietary or confidential data or information of the other Party, including, but not limited to, trade secrets, intellectual property, services and/or the business, finances, or affairs of either Party (“Confidential Information”). Confidential Information may be communicated orally, visually, in writing or in ally other recorded or tangible form. All data and information shall be considered to be Confidential Information hereunder (i) if either Party has marked them as such, (ii) if either Party, orally (to be reduced to writing) or in writing, has advised the other Party of their confidential nature, or (iii) if, due to their-character or nature, a reasonable person in a like position and under like circumstances would treat them as confidential.
5.2 Disclosure of Confidential Information. Each Party will maintain in confidence and not disclose to any third party any Confidential Information of the other Party. Each Party will use the Confidential Information of the other Party only for the purposes of this Agreement. Each Party will ensure that access to Confidential Information will be provided to its employees and officers only on a need to know basis if such employees and/or officers must be familiar with the same in connection with the performance of
their duties. Such employees and officers must be informed that the Confidential Information may be used only as permitted under this Agreement and must be obligated in writing to abide by such Party’s obligations under this Agreement. The receiving party shall immediately notify the disclosing party of any unauthorized disclosure or use of any Confidential Information by the disclosing party that comes to receiving party’s attention and shall take all action that the disclosing party reasonably requests to prevent any timber unauthorized use or disclosure thereof. AB will cause each and every officer and employee and worker of AB who is likely to acquire knowledge of any Confidential Information of ABI to keep the confidentiality of such Confidential Information and agrees to prepare a written statement of undertaking agreeing that it will comply with the provisions of this Article 5.
5.3 Exceptions. The provisions of this Article 5 will not apply, or will cease to apply, to Confidential Information supplied by the disclosing party if disclosing party demonstrates by written evidence that (i) was in the receiving party’s possession without restriction on use or disclosure prior to receipt from the disclosing Party as shown by files existing at the time of disclosure, (ii) has come into the public domain other than through a breach of confidentiality by the receiving party, (iii) was developed independently by employees of the receiving party or by persons who have not had access to the disclosing party’s Confidential Information; (iv) was or is lawfully obtained, directly or indirectly, by the receiving party from a third party under no obligation of confidentiality, or (v) is required to be disclosed pursuant to any statutory or regulatory provision or court order; provided, however, that the receiving party provides notice thereof to the disclosing party, together with the statutory or regulatory provision, or court order, on which such disclosure is based, as soon as practicable prior to such disclosure so that the disclosing party has the opportunity to obtain a protective order or take other protective measures as it may deem necessary with respect to such information.
5.4 Survival. The obligations of the Parties under this Article 5 shall remain in effect for five (5) years from the dale of termination or expiration of this Agreement.
ARTICLE 6
INTELLECTUAL PROPERTY; PATENT PROSECUTION AND MAINTENANCE
6.1 Ownership of Patents and Know-How.
| (a) | ABI Technology. As between the Parties, ABI will own all right, title and interest in and to the ABI Base Technology and the ABI Improvements, subject only to the licenses set forth herein. |
| (b) | AB Improvements. As between the Parties, AB will own all right, title and interest in and to the AB Improvements, subject only to the licenses set forth herein and the rights conferred in Section 6.2. |
| (c) | Joint Improvements. The Parties will jointly own own all right, title and interest in and to the Joint Improvements, subject only to the licenses set forth herein and the rights conferred in Section 6.2. |
6.2 Patent Strategy and Prosecution. ABI shall have the sole right to (i) determine the process for protecting The ABI Technology, the Joint Improvements and the AB Improvements worldwide, including whether or not to obtain patent protection and in what countries, and (ii) at its own expense, but without obligation, to prepare, file, prosecute and maintain throughout the world any and all Patents claiming or relating to the ABI Technology, the Joint Improvements and the AB Improvements. For the avoidance of doubt, the Parties hereby affirm that they intend for the foregoing provisions to apply and be upheld as an
agreement reached between the Parties after due diligence, careful deliberation and consultation with counsel, notwithstanding that the law of jurisdictions other than the State of California, United States of America might otherwise not permit, uphold or otherwise enforce the granting of such rights.
6.3 Cooperation and Assistance. AB will provide to ABI and/or its designee. and AB will cause any and all relevant AB Parties to provide to ABI, as reasonably requested by ABI and at ABI’s expense (including reasonable attorney’s fees and other reasonable legal expenses), full cooperation and assistance (including the execution and delivery of any and all affidavits, declarations, oaths, exhibits, assignments, powers of attorney, or other documentation as may be reasonably required): (i) in order to allow ABI to apply for, register, obtain, maintain, defend, and enforce the Patents for which ABI has control under Section 6.2 and/or its rights therein: (ii) in connection with the prosecution or defense of any interference, opposition, re-examination. reissue, infringement, declaratory judgment, or other judicial or legal administrative proceedings that may arise in connection with such Patents (including the validity and/or enforceability thereof) and/or any Production Strains, Know-How or other intellectual property owned by ABI (including testifying as to any facts, production of any documents, responses to any requests or demands relating to such Patents, Production Strains and/or Know-How); and/or (iii) in order to perfect the delivery, assignment, and conveyance to ABI, its successors, assigns, and nominees, of the entire right, title, and interest in and to all ABE Technology.
6.4 Enforcement of Patents. In the event either Party becomes aware of any activity that infringes or is likely to infringe the ABI Technology, the AB Improvements or the Joint Improvements, that Party will notify the other Party promptly in writing of the actual or threatened infringement. Whether to take action will be in ABI’s sole discretion whenever the infringement involves ABI’s rights. If requested by ABI, AB will join with ABI at ABI’s expense in such action as ABI in its reasonable discretion may deem advisable for the protection of its rights. In connection therewith, AB will cooperate to the extent reasonably required by ABI to stop such infringement or act, and, if so requested by ABI, will join with ABI as a party to any action brought by ABI for such purpose. ABI will have full control over any action taken, including, without limitation, the right to select counsel, to settle on any terms it deems advisable in its discretion, to appeal any adverse decision rendered in any court, to discontinue any action taken by it, and otherwise to make any decision in respect thereto as it in its discretion deems advisable. Any recovery as a result of such action shall belong solely to ABI.
6.5 Infringement of Third Party Rights. In the event either Party receives any written notice or claim that the use of the ABI Technology, the AB Improvements or the Joint Improvements infringes or is likely to infringe the intellectual property rights of a Third Party, then that Party will notify the other Party promptly in writing. Whether to take action to defend against any such claim will be in ABI’s sole discretion. If requested by ABI, AB will join with ABI at ABI’s expense in such action as ABI in its reasonable discretion may deem advisable for the protection of its rights. In connection therewith, AB will cooperate to the extent reasonably required by ABI. and, if so requested by ABI, will join with ABI as a party to any action brought by ABI for such purpose. ABI will have full control over any action taken, including, without limitation, the right to select counsel, to settle on any terms it deems advisable in its discretion, to appeal any adverse decision rendered in any court, no discontinue any action taken by it, and otherwise to make any decision in respect thereto as it in its discretion deems advisable. For the avoidance of doubt, the Parties hereby affirm that they intend for the foregoing provisions to apply and be upheld as an agreement reached between the Parties after due diligence, careful deliberation and consultation with counsel, notwithstanding that the law of jurisdictions other than the State of California, United States of America might otherwise not permit, uphold or otherwise enforce the granting of such rights.
ARTICLE 7
REPRESENTATIONS AND WARRANTIES
ABI hereby represents and warrants to AB and AB hereby represents and warrants to ABI that as of the Effective Date:
| (a) | They have the full right, power and authority to enter into this Agreement, this Agreement has been duly executed by such Party and constitutes a legal, valid and binding obligation of such Party, enforceable in accordance with its terms; |
| (b) | The execution, delivery and performance of this Agreement does not conflict with, or constitute a breach or default under any of its charter or organizational documents, any law, order or judgment or governmental rule or regulation applicable to it, or any material agreement, contract commitment or instrument to which it is a party; and |
| (c) | They shall comply in all material respects with all applicable laws, rules, regulations and other governmental requirements relating to or affecting its performance under this Agreement, and shall obtain and maintain all governmental permits, licenses and consents required in connection therewith. |
ARTICLE 8
INDEMNIFICATION; INSURANCE
8.1 Indemnification. AB agrees to defend, indemnify and hold harmless ABI and its directors, officers, shareholders, employees, and agents (collectively, the “ABI Indemnitees”) from and against any and all suits, claims, actions, or demands (“Claims”), and any liabilities, damages, costs, expenses and/or losses incurred, including reasonable legal expenses and attorneys’ lees (collectively, “Losses”), suffered or sustained by any ABI Indemnitee, or to which an ABI Indemnitee becomes subject, arising out of or attributable to any of the following: (a) a breach by AB or a AB Party or its or their respective directors, officers, employees, agents, successors, assigns or sublicensees of a representation, warranty, covenant or agreement made or undertaken by AB under this Agreement; (b) the practice of any license granted by ABI to AB pursuant to this Agreement or any other use of the ABI Technology, the Joint Improvements, the Licensed Marks or ABI’s Confidential Information by AB or a AB Party or its or their respective director’s, officers, employees, agents, successors, assigns or sublicensees; or (c) the negligence, recklessness or willful misconduct of AB or a AB Party or its or their respective directors, officers, employees, agents, successors, assigns or sublicensees. ABI and any ABI indemnitee may, at its option and expense, be represented by counsel of its choice in any action or proceeding with respect to any such Claim or Loss. ABI will not settle any Claim or Loss if such settlement: (i) does not fully and unconditionally release the ABI Indemnitees from all liability relating thereto; or (ii) adversely impacts the rights granted to any ABI Indemnitee under this Agreement, unless each affected ABI Indemnitee otherwise agrees in writing.
8.2 Insurance. At any time, promptly upon ABI’s request, AB will obtain and maintain, at its sole cost and expense, comprehensive general liability insurance providing reasonable coverage in respect of AB’s activities under this Agreement and in its practice of the licenses granted hereunder. AB will provide ABI with written evidence of such insurance upon ABI’s request.
ARTICLE 9
TERM AND TERMINATION
9.1 Term. This Agreement will commence on the Effective Date and, unless earlier terminated as permitted herein, will continue until the expiration of all of the Licenses granted in Section 2.1 (the “Term”).
9.2 Termination by AB. AB may terminate this Agreement at any time upon sixty (60) days written notice to ABI.
9.3 Termination by ABI. The failure by AB comply with any of the material obligations contained in this Agreement shall entitle ABI to give notice to have the default cured. If such default is not cured within sixty (60) days, or diligent steps are not taken to cure if by its nature such default could not be cured within sixty (60) days, ABI shall be entitled, without prejudice to any of its other rights conferred on it by this Agreement, and in addition to any other remedies that may be available to it, to terminate this Agreement. In addition, ABI may terminate this Agreement upon ABI’s written notice to AB in the event that (a) such termination is necessary to comply with any order, decree or request of the government of either Party hereto or of any court department or agency thereof; (b) normal conduct of the business of AB as a private enterprise ceases or is substantially altered as a consequence of any action taken by governmental, judicial, or any other authority: or (c) AB makes a general assignment for the benefit of creditors, is the subject of proceedings in voluntary or involuntary bankruptcy instituted on behalf of or against AB, or has a receiver or trustee appointed for all or substantially all of its property.
9.4 Effect of Expiration and Termination. Upon the expiration or termination of this Agreement for any reason: (a) all licenses under this Agreement immediately terminate, except that, at the option of ABI, all sublicenses granted hereunder may continue as determined by ABI in its sole discretion; (b) AB and its sublicensees will cease using the ABI Technology for any and all purposes (except for uses under sublicenses continued as determined by ABI in its sole discretion); (c) within thirty (30) days of termination, AB will return or destroy, at its own expense, all tangible Know-How provided by, or owned by, ABI to ABI in accordance with written instructions from ABI; and (d) each Party will return, at its own expense, to the other Party all Confidential information of the other Party within thirty (30) days of termination.
9.5 Survival of Obligations. The termination or expiration of this Agreement shall not relieve the Parties of any obligations accruing prior to such termination, and any such termination shall be without prejudice to the rights of either Party against the other. The provisions of Sections 2.2, 2.3, 2.4, 2.5, 3.5, 8.1, 9.4 and 9.5 and Articles 5, 6, 7 and 10 shall survive any termination of this Agreement.
ARTICLE 10
MISCELLANEOUS
10.1 Governing Law; Venue. This Agreement shall be governed by, and construed in accordance with the laws of the State of California, United States of America, as if entered into by California residents and executed and wholly performed within the State of California. Any dispute as to the performance, enforcement, validity, or interpretation of this Agreement shall be brought only in a federal court of competent jurisdiction (or a state court if no federal court has jurisdiction) located in the Northern District of California, and the Parties hereby submit to the exclusive jurisdiction and venue of such courts. For the avoidance of doubt, the Parties hereby affirm that they intend for the laws of the Slate of California to apply to the interpretation and enforcement of this Agreement as a whole as well as each provision set
forth herein, including, without limitation; all matters set forth in the Recitals, Article 2 and Article 6. The Parties’ decision to designate the laws of the State of California as the governing law of this Agreement was reached after due diligence, careful deliberation and consultation with counsel and the Parties intend for this to be upheld and enforced notwithstanding that certain activities and obligations under this Agreement shall be performed outside the State of California and/or outside the United Stales of America.
10.2 Entire Agreement. This Agreement (including all Schedules attached hereto) contains the entire agreement between the Parties with respect to the subject matter hereof and supersedes any and all prior and contemporaneous, express and implied, agreements, understandings, and representations, either written or oral, which may have related to the subject matter hereof in any way.
10.3 Assignment. This Agreement may not be assigned or otherwise transferred, nor, except as otherwise expressly provided in this Agreement, may any right or obligation tinder’ this Agreement be assigned or otherwise transferred, by AB, including without limitation any assignment or transfer in connection with a change of control or otherwise by operation of law, without the consent of ABI. Any permitted assignee shall assume all obligations of AB under this Agreement. Any purported assignment by AB in violation of this Agreement shall be void. This Agreement shall he binding upon, and inure to the benefit of, each Party, its successors and permitted assigns.
10.4 Waiver; Amendment. Except as otherwise expressly provided in this Agreement, any term of this Agreement may be waived only by a written instrument executed by a duly authorized representative of the Party waiving compliance. The delay or failure of any Party at any time to require performance of any provision of this Agreement shall in no manner affect such Party’s rights at a later time to enforce the same. No alteration, amendment, change, or addition to this Agreement will be binding upon the Patties unless reduced to writing and signed by an authorized officer of each Party.
10.5 Notices. Any notice or other communication required or permitted to be given under this Agreement must be in writing, in the English language, must specifically refer to this Agreement, and will be deemed given on the date delivered to the receiving Party if and when (a) delivered personally with a signed receipt of personal delivery; (b) sent by facsimile (receipt electronically verified and a copy promptly sent by personal delivery, registered or certified mail or courier as provided herein); (c) sent by internationally recognized courier providing evidence of receipt; or (d) sent by registered or certified mail, postage prepaid, return receipt requested. All such notices will be addressed to the Parties as follows (or such other address or facsimile number for a Party as may be specified by like notice):
| For ABI: | Amyris Biotechnologies, Inc. |
| 5885 Hollis St,, Ste, 100 |
| Emeryville, CA 94608 |
| Fax: (510) ###-###-#### |
| Attn: General Counsel |
| For AB: | Amyris do Brasil Pesquisa e Desenvolvimento de |
| Biocombustiveis Ltda. |
| Rua James Clerk Maxwell, no 315 |
| Techno Park, Campinas |
| Sâo Paulo, Brazil |
| Fax: 55 19 3283 0005 |
| Attn: Roel Collier |
10.6 No Strict Construction. This Agreement has been prepared jointly and will not be strictly construed against either Party.
10.7 Severability. If one or more provisions of this Agreement is held to be invalid, illegal or unenforceable, the Parties shall substitute, by mutual consent, valid provisions for such invalid, illegal or unenforceable provisions which valid provisions are, in their economic effect, sufficiently similar to the invalid provisions that it can be reasonably assumed that the Parties would have entered into this Agreement with such provisions. In the event that such provisions cannot be agreed upon, the invalidity, illegality or unenforceability of one or more provisions of this Agreement shall not affect the validity of this Agreement as a whole, unless the invalid provisions are of such essential importance to this Agreement that it is to be reasonably assumed that the Parties would not have entered into this Agreement without such invalid provisions.
10.8 Interpretation. The headings for each article and section in this Agreement have been inserted for convenience of reference only and are not intended to affect its meaning or interpretation. In this Agreement: (a) the word “including” (including any variations such as “includes”) shall be deemed to be followed by the phrase “without limitation” or like expression; (b) the singular shall include the plural and vice versa; and (c) masculine, feminine, and neuter pronouns and expressions shall be interchangeable.
10.9 Further Actions. Each Party agrees to execute, acknowledge, and deliver any further instruments, and to do all other acts, as may be necessary or appropriate to carry out the purposes and intent of this Agreement.
10.10 Independent Contractors. The relationship between the Parties created by this Agreement is one of independent contractors and shall not constitute or be deemed to constitute a partnership, joint venture, agency, or other fiduciary relationship. Neither Party shall have the authority to make any statements, representations, or commitments of any kind, or to take any action, that shall be binding on the other Party in whole or in part as a result of this Agreement, without the prior written consent of the other Party to do so.
10.11 No Warranty. BY GRANTING THE LICENSES SET FORTH HEREIN, ABI IS NOT MAKING ANY WARRANTY OF ANY KIND, AND EXPRESSLY DISCLAIMS ALL WARRANTIES, EXPRESS AND IMPLIED, WITH RESPECT TO ABI TECHNOLOGY OR THE LICENSED MARKS, INCLUDING, BUT NOT LIMITED TO, IMPLIED WARRANTIES AND/OR CONDITIONS OF MERCHANTABILITY, NONINFRINGEMENT OR FITNESS FOR A PARTICULAR PURPOSE.
10.12 Limitation of Liability. IN NO EVENT SHALL ABI BE LIABLE To AB HEREUNDER FOR INDIRECT, CONSEQUENTIAL, INCIDENTAL, PUNITIVE OR SPECIAL DAMAGES OR LOSSES, INCLUDING BUT NOT LIMITED TO LOST PROFITS, ARISING FROM OR RELATING TO ANY BREACH OF THIS AGREEMENT, REGARDLESS OF ANY NOTICE OF THE: POSSIBILITY OF SUCH DAMAGES, WHETHER SUCH DAMAGES ARE BASED UPON A BREACH OF EXPRESS OR IMPLIED WARRANTIES, BREACH OF CONTRACT, NEGLIGENCE, STRICT TORT, OR ANY OTHER LEGAL THEORY.
10.13 Non-Use of Names. Except as expressly permitted under this Agreement, AB may not use the name, trade name, trademark or other designation of ABI (including any contraction, abbreviation or simulation of any of the foregoing) or any of its directors, officers, employees and agents in any advertising, publicity, promotional activities, publication, press release, or other public announcement without the prior written consent of such person or entity in each case.
10.14 Language. This Agreement shall be executed in the English Language.
[Remainder of this page intentionally left blank; signature page follows]
IN WITNESS WHEREOF, the Parties have duly executed this Agreement effective as of the day and year first above written.
Schedule 1
Patents and Production Strains
A. Amyris owned Patents and Patent Applications
| Amyris Ref. No.
| Serial No.
| Title
| Status
| |||
| AM-400 BR
| P10712160-1
| Fuel Components, Fuel Compositions and Methods of Making and Using the Same
| Based on PCT Application No. PCT/US2007/012468; Published as WO 2007/139925
| |||
| AM-500 BR | P10713105-4 | Production of Isoprenoids | Based on PCT Application No. PCT/US2007/069807; Published as WO 2007/140339
| |||
| AM-700 BR | P10712508-9 | Apparatus for Making a Bio-Organic Compound | Based on PCT Application No. PCT/US2007/012467; Published as WO 2007/139924
| |||
| AM-800 BR | P10719659-8 | Fuel Compositions Comprising Farnesane and Farnesane Derivatives and Method of Making and Using the Same
| Based on PCT Application No. PCT/US2007/021890; Published as WO 2008/045555 | |||
| AM-900 BR | P10718978-8 | Jet Fuel Compositions and Methods of Making and Using the Same | Based on PCT Application No. PCT/US2007/024266; Published as WO 2008/140492
| |||
| AM-1000 PCT | PCT/US2008/008747 Filed 07/17/2008 | Fuel Compositions Comprising Tetramethylcyclohexane
| ||||
| AM-1200 PCT | PCT/US2007/024270 Filed 11/20/2007 | Jet Fuel Compositions and Methods of Making and Using the Same
| Published as WO 2008/133658 on 11/06/2008 | |||
| AM-1400 PCT | PCT/US2008/010886 Filed 09/19/2008
| Production of Isoprenoids | ||||
| AM-1800 PCT | PCT/US2009/039769 Filed 04/08/2009
| Expression of Heterologous Sequences | ||||
| AM-1900 PCT | PCT/US2009/042183 Filed 04/29/2009
| Jet Fuel Compositions and Methods of Making and Using the Same
| ||||
| AM-2100 PCT | PCT/US2009/004959 Filed 09/01/2009
| Farnesene Interpolymers | ||||
| AM-2200 PCT | PCT/US2009/005158 Filed 09/16/2009
| Jet Fuel Compositions | ||||
| AM-2310 PCT | PCT/US2009/005543 Filed 10/09/2009 | Lubricant Compositions and Methods of Making and Using the Same
| ||||
| AM-2400 PCT | PCT/US2009/065048 | Compositions and Methods for the Rapid Assembly of Polynucleotides
| ||||
| AM-3300 PCT | PCT/US2009/004958 Filed 09/03/2009 | Adhesive Compositions Comprising Polyfarnesene
|
B. Patents and Patent Applications Licensed from University of California
| Amyris Ref. No.
| Serial No.
| Title
| Status
| |||
| UC-400 BR | P10510115-8 Filed 05/20/05 | Method for Enhancing Production of Isoprenoid Compounds | Based on PCT Application No. PCT/US05/17874; Published as WO 2006/085899
| |||
| UC-500 BR | P10513837-0 Filed: 07/21/05 | Genetically Modified Host Cells and Use of Same for Producing Isoprenoid Compounds | Based on PCT Application No. PCT/US05/026190; Published as WO 2006/014837
| |||
| UC-700 BR | P10614990-1 Filed: 08/17/06 | Genetically Modified Host Cells and Use of Same for Producing Isoprenoid Compounds | Based on PCT Application No. PCT/US/2006/32406; Published as WO 2007/024718
| |||
| UC-1100 BR | P10716954-0 Filed 09/25/07 | Production of Isoprenoids and Precursors Thereof | Based on PCT Application No. PCT/US/2007/020790; Published as WO 2008/039499
|
C. Production Strains
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| * | Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. |
Schedule 2
Logo
Schedule 3
Additional Trademarks
| Mark | Country | Application
| Filing Date | Status | ||||
| AMYRIS (Class 4)
| BR | 900766638 | 02/28/2008 | Extension based on Registration No. 1R948423 on 12/20/2007 | ||||
| AMYRIS (Class 42)
| BR | 900766654 | 02/28/2008 | Extension based on Registration No. 1R 948424 on 12/20/2007 | ||||
| DIAL-A-BLEND (Class 4)
| BR | 900766719 | 02/28/2008 | |||||
| DIAL-A-BLEND (Class 9)
| BR | 900766735 | 02/28/2008 | |||||
| NO COMPROMISE (class 4)
| BR | 901470945 | 02/20/2009 |
Schedule 4
Requirements for Use of Licensed Marks
| 1. | The Licensed Marks shall be used in all upper ease letters, so as to distinguish them from the surrounding text. |
| 2. | The first or most prominent reference to the Licensed Marks shall be marked with a ® or ™ symbol, as appropriate. |
| 3. | The Licensed Marks shall not be used in possessive form. |
| 4. | The Licensed Marks shall not be used in the plural form. |
| 5. | The Licensed Marks can be used jointly with other marks. |
EXHIBIT 2
SHAREHOLDERS AGREEMENT
[See Exhibit 4.06 to the Registration Statement on Form S-1 filed by Amyris, Inc. with the Securities and
Exchange Commission, File No. 333-166135]
