Patent License Agreement

LICENSOR is a wholly owned AFFILIATE, as defined below, of the General Electric Company (GE), and GE has transferred to LICENSOR the responsibility to safeguard intellectual property relating to wind turbines manufactured and sold by the GE Wind Energy GmbH and GE Wind Energy LLC AFFILIATES of its GE Energy business including the rights to license such intellectual property to third parties.

LICENSOR is the sole and exclusive owner of, or has the right to license, the LICENSOR PATENTS (defined below) and the counterparts thereof in other countries.

LICENSEE has advised LICENSOR that it desires to obtain certain licenses under LICENSOR PATENTS, for the consideration as provided below.

LICENSOR desires to grant such license all on the terms and subject to the conditions contained herein.

1.1

“LICENSOR PATENTS” means the patents and applications listed in Attachment 1. 

1.2

“LICENSED TERRITORY” means the countries where LICENSOR PATENTS listed in Attachment 1 have issued.

1.3

“AFFILIATE” means any corporation, partnership, joint venture, limited liability company, or other entity or person which directly or indirectly controls, is controlled by, or is under common control with LICENSOR or LICENSEE, respectively, or any of their respective Affiliates on the date of this Agreement or at any time during the term of this Agreement, but only for so long as such relationship exists, but excluding any such entity acquired by LICENSEE after the effective date of this Agreement that is a direct competitor of LICENSOR’s GE Wind Energy business in the manufacture and sale of wind turbines, including the entities in Attachment 3. As used herein, the term “control” shall mean the ability to direct the business of a company and shall be presumed in the case of ownership, directly or indirectly, of shares of stock having more than fifty percent (50%) of the voting power entitled to vote for the election of directors in the case of a corporation, and more than fifty percent (50%) of the voting power and interest in profits in the case of a business entity other than a corporation.

1.4

“LICENSED PRODUCTS” means the D6 and D8 wind turbines and components and systems thereof and hardware and software used therein described in Attachments 4 and 5 respectively, and reasonable improvements and variations thereof, subject to LICENSOR’s approval, which approval shall not be unreasonably withheld, where the sale or manufacture thereof in the LICENSED TERRITORY would infringe at least one issued and valid claim of LICENSOR PATENTS.

“MW” means megawatts rated power.

2.1

LICENSOR hereby grants and agrees to grant to LICENSEE and LICENSEE’s AFFILIATES, a nonexclusive license, right and privilege under LICENSOR PATENTS, to make, have made, use, sell, service or otherwise dispose of LICENSED PRODUCTS, and to have made components for use in LICENSEE’s LICENSED PRODUCTS, in the LICENSED TERRITORY, including units of LICENSED PRODUCTS which are in the process of manufacture on the date of termination or expiration of this Agreement. [**]

2.2

LICENSOR makes no representation to the LICENSEE that exercise of the licenses granted herein will not infringe patents of third parties, and LICENSOR, shall not be liable, either directly or as an indemnitor or otherwise, to the other or any third party as a consequence of any infringement of third party patents.

2.3

LICENSOR shall not be held responsible by LICENSEE for the validity of LICENSOR PATENTS should such validity be contested by third parties or should any LICENSOR PATENTS not be issued or be prematurely terminated for any cause whatsoever.

2.4

Both Parties shall hold the conditions of this Agreement in confidence, and shall not disclose the conditions of this Agreement except to its financial and legal representatives, without the other Party’s prior written consent.

2.5

LICENSOR and LICENSEE each represent and warrant that they are duly authorized to execute, deliver and perform this Agreement.

3.1

LICENSEE shall pay to LICENSOR as royalties the fees provided in Attachment 2.

3.2

LICENSEE agrees to make a written report to LICENSOR semi-annually during the term of this Agreement by May 15th and November 15^th by email or fascimile to the addresses provided in Article 6 Notices. Each report shall state the quantity of LICENSED PRODUCTS in the respective LICENSED TERRITORY sold or otherwise disposed of by LICENSEE for the prior six (6) months. LICENSEE further agrees to make a written report to LICENSOR within thirty (30) days after the date of expiration or any termination of this Agreement stating the quantity of LICENSED PRODUCTS in the respective LICENSED TERRITORY sold or otherwise disposed of by LICENSEE prior to the date of expiration or termination and not previously reported to LICENSOR. LICENSED PRODUCTS sold or otherwise disposed of prior to the expiration or termination of this Agreement shall include units of LICENSED PRODUCTS which are in the process of manufacture or for which the components have been ordered. Each report shall include a computation of the royalty due to LICENSOR under Paragraph 3.1. Each report shall be made whether or not sales or other dispositions have been made during such period. LICENSOR shall invoice LICENSEE for royalties due, and LICENSEE shall pay to LICENSOR the royalty then accrued under said Paragraph 3.1 within 30 days after receipt of such invoice. It is also provided that, upon expiration or termination of this Agreement, all LICENSED PRODUCTS which LICENSEE has manufactured prior to the date of any such termination or expiration, and which LICENSEE has not previously sold or otherwise disposed of prior thereto, shall be considered as having been otherwise disposed of during the term of this Agreement, and accordingly shall be subject to the payment of the royalty provided for in Paragraph 3.1.

3.3

LICENSEE agrees to keep records showing the quantity of LICENSED PRODUCTS sold or otherwise disposed of during the term of this Agreement and other related records in sufficient detail to enable the royalty payable hereunder by LICENSEE to be determined. LICENSEE further agrees to permit its applicable records to be examined from time to time upon reasonable prior notice, but not more often than once a year, to the extent necessary to verify the accuracy and completeness of the reports provided for in Paragraph 3.2 and the royalty due and payable hereunder. Such examination shall be made at the expense of LICENSOR by an auditor appointed by LICENSOR.

3.4

Payments

3.4.1

All payments to be made to LICENSOR by LICENSEE under this Agreement shall be made in United States Dollars by telegraphic transfer to LICENSOR to

3.4.2

In the event, however, that any government (other than United States federal, state and local governments) imposes any income tax on payments by LICENSEE to LICENSOR and requests LICENSEE to withhold such tax from such payments, LICENSEE may deduct such tax from such payments up to the rate of the United States corporation income tax then payable by LICENSOR on such payments. LICENSEE agrees to furnish LICENSOR with certified statements, receipts and other supporting data as may be required by United States Tax Authorities to establish that such tax has been deducted.

3.5

In the event that any royalty payable under this Agreement is not paid by the date payment is due, LICENSEE shall also pay interest on such royalty for the period from the due date to the date payment is actually made at a per annum rate equal to two percent plus the prime rate quoted by the Chase Manhattan Bank of New York, N.Y. on the date payment was due.

3.6

For the purposes of this Agreement, LICENSED PRODUCTS shall be considered “sold” when shipped by LICENSEE to customer or customers designated site, and LICENSED PRODUCTS shall be considered “otherwise disposed of” when LICENSED PRODUCT is transferred for value to a party other than LICENSEE, or put into commercial use by LICENSEE.

4.1

This Agreement shall become effective upon its execution by both parties.

4.2

Unless it is terminated earlier in accordance with Paragraph 4.3 or 4.4, this Agreement and the licenses granted hereunder shall continue in full force and effect until the date of expiration or final determination of invalidity by a court of competent jurisdiction of the last-to-expire of LICENSOR PATENTS, and shall thereupon expire.

4.3

In the event LICENSEE fails or becomes unable to substantially perform the obligations or undertakings to be performed by it under this Agreement and such default or inability is not cured within thirty (30) days after notice from LICENSOR specifying the nature of the default, then LICENSOR shall have the right to terminate this Agreement and the license granted hereunder by giving ten (10) days written notice. Notwithstanding the terms of this paragraph 4.3, under any and all circumstances, LICENSOR shall give to LICENSEE the full benefit of any payments made by LICENSEE in accordance with Table 1 of Attachment 2 herein. For example, for each Installment payment made for the Initial Fee in Table 1 of Attachment 2, the license and rights granted herein shall apply to a respective one third of the Initial MW and Installed MW’s in Attachment 2.

4.4

In the event there is a substantial direct or indirect change in ownership or operation of LICENSEE, as a result of merger, acquisition, consolidation or otherwise, LICENSEE shall notify LICENSOR.

4.4

Upon termination of this Agreement under Paragraph 4.3 or 4.4, or expiration thereof as provided herein, all rights granted and obligations undertaken hereunder shall terminate forthwith except: 

9.1

This Agreement shall be construed, and the legal relations between the parties hereto determined, in accordance with the law of the State of New York, U.S.A.

9.2

Anything contained in this Agreement to the contrary notwithstanding, the obligations of the parties under this Agreement shall be subject to compliance with all laws, both present and future, of any government having jurisdiction over either party or this Agreement, and to orders, regulations, directions or requests of any such government or any department, agency, corporation or court thereof.

10.1

Before any Party to this Agreement commences any legal action or proceeding anywhere in the world against the other Party to this Agreement with respect to any dispute whatsoever pertaining to this Agreement, the LICENSOR PATENTS or the LICENSEE PATENTS (a ‘Dispute’), the Parties agree to follow the procedures set forth in this Article 10. 

PROCEEDINGS

If a party believes there is a Dispute, such Party will give the other Party notice in writing of such alleged Dispute.

The attorneys and technical and business persons of the Party claiming the Dispute will review the claim and will present their position to the other Party’s attorneys in writing within 60 Days of receipt of such notice.

The other Party’s attorneys will respond in writing within 30 Days of receipt of such position.

If the issue has not been resolved, the other Party may provide to the party claiming the Dispute, a notice to meet, and the attorneys and technical and business persons of both sides will meet and try to work out a resolution. Such resolution may include, but not be limited to, a royalty-free license, a cross-license or a license with a royalty rate specific to a particular patent or product involved, provided, however, that this provision shall not impose an obligation on any Party to settle a Dispute by means of licensing.

If the attorneys and technical and business persons are unable to reach a solution within 60 Days of such meeting notice, the parties will schedule a meeting or other communication of their top executives. In such a meeting or other communication, the attorneys and technical and business persons will explain their respective positions to the top executives in the presence of each other. The top executives of GE Wind Energy LLC and Composite Technology Corporation, respectively, will then meet or otherwise communicate, either privately or with the assistance of their attorneys and/or technical and business persons, and attempt to devise a solution.

If the top executives are unable to agree on a solution within 30 Days of their meeting, the parties agree to submit the matter to settlement proceedings under the International Chamber of Commerce (“ICC”) ADR Rules in force as of the Effective Date or as thereafter amended. If the Dispute has not been settled pursuant to the said ICC ADR Rules within six months following the filing of a Request for ADR, or within such other period as the Parties may agree in writing, such Dispute shall be finally settled under the ICC Rules of Arbitration as provided in Paragraph 10.4 of this Agreement. All negotiations pursuant to this Article 10 shall be confidential and treated as compromise and settlement negotiations for purposes of the Federal Rules of Evidence and state rules of evidence.

Arbitration

In the event the parties have failed to resolve their Dispute in an amicable way according to the requirements and time limits set out in this Article 10, such unresolved Dispute shall be finally settled, without any recourse to appeal, under the Rules of Arbitration of the ICC by 3 arbitrators appointed in accordance with such Rules.

The Chairman of the Arbitral Tribunal shall be nominated by the Party-appointed arbitrators, in consultation with the parties. If the Party-appointed arbitrators fail to agree on the nomination of the Chairman of the Arbitral Tribunal within 30 Days after the appointment of the second arbitrator, the Chairman of the Arbitral Tribunal shall be appointed by the ICC International court of Arbitration in accordance with the Rules of Arbitration of the ICC.

The seat of arbitration shall be in New York, New York, USA.

The arbitration shall be in the English language.

The arbitrators shall render their award no later than 6 months following the commencement of the arbitration and such award shall be final and binding on the Parties. The Parties hereby waive any right of review or appeal on questions of law and on any other questions or matters. Judgment upon any award rendered by the arbitrators may be entered into by any court of competent jurisdiction. If any such enforcement action is brought, neither party shall seek to invalidate or modify the decisions of the arbitrators or otherwise to invalidate or circumvent the procedures set forth in this Article 10 as the sole and exclusive means of setting or resolving such Dispute.

The fees of the arbitrators shall be borne by the non-prevailing Party.

10.3.7

The Parties acknowledge and instruct the arbitrators to take into account in determining what remedies shall be granted to the party prevailing in the arbitration, that (i) the rights of the Parties described in this Agreement and the license granted herein are unique and money damages alone for breach of this Agreement may not constitute an adequate remedy, (ii) time and strict performance are of the essence in this Agreement, and (iii) any Party aggrieved by the provisions of this Agreement may be entitled to equitable relief, including specific performance, temporary restraining orders and injunctive relief.

10.4

Oppositions, reexamination and similar patent office proceedings and nullity actions against patents of a Party

If either Party intends to file an opposition under the European Patent Convention and/or European Community Patent Regulation or in any other jurisdiction which provides for opposition of patent applications or a reexamination or similar patent office proceeding or a nullity action against a patent of the other Party, such party will give the Patent holder notice in writing.

The patent holder will be given an opportunity to respond and present their position, including any proposed resolution. Such resolution may include, but not be limited to, a royalty-free license, a cross-license or a license with a royalty rate specific to a particular patent or product involved, provided, however, that this provision shall not impose an obligation on any Party to reach a resolution by means of licensing.

In any event, if the Parties are unable to reach a solution within the first to occur of, 45 Days prior to the expiration of any period to file an opposition, or within 90 Days from the initial notice, the Parties shall be free to proceed with the opposition, reexamination or other patent office proceeding, or nullity action. Such proceedings shall not be submitted to ICC, ADR, or ICC arbitration.

 

 

By: /s/ Michael Porter

 

By: /s/ Mary Rankin

Name: Michael Porter

 

Name: Mary Rankin

 

Title: President EU Energy, Inc.

 

Title: President GE Infrastructure Technology

 

Date:

 

Date:

 

5,083,039

1/21/92

2/1/11 (2012)

Variable speed wind turbine (126903)

CA2100672C

EP569556B1 (CH, DE, DK, ES, FR, GB, IT, NL,

DE69233343C0

EP884833B1 (DE, DK, ES, FI, FR, GB, NL, IT, SE)

JP3435474B2

US5225712

5225712

7/6/1993

Variable speed wind turbine with reduced power fluctuation and a static VAR mode of operation

6137187

10/24/2000

8/8/2017 (2018)

Variable speed wind turbine generator

CN1120297C AU0737762B2

AU0767961B2

EP1007844B1 (DE, DE, ES, FR, GB, IE)

DE69824965C0

ES2224426T3

US6847128

US6856039,

US7095131

US6420795

US6600240

AR980103951

AU 81506/01  

AU2004220762

BR9811873A

CA2300201AA

IN2326/Del/98

JP2001512804T2

KR20007001343

MX001375

NO20000626A,

PL0338639A1,

TR0000904T2

6420795

Variable speed wind turbine generator

6600240

Variable speed wind turbine generator

6847128

Variable speed wind turbine generator

6856039

Variable speed wind turbine generator

7095131

Variable speed wind turbine generator

Dennis Murphy

GE Energy

+1 ###-###-####

Ken Darling or Howard Masto

Masto Public Relations

+1 ###-###-####

·

EU Energy Inc., and EU Energy Ltd., produce, sell, and license the DeWind series of wind energy turbines including the 50Hz D6 rated at 1.25 megawatts (MW) and the 50Hz D8 rated at 2MW, both noted for their reliability. In 2007, the new 2MW D8.2 is planned to be delivered to North American customers from assembly operations in Lübeck, Germany. The D8.2 utilizes the advanced WinDrive® hydrodynamic torque converter developed by Voith AG with a synchronous AC generator that is able to connect directly to the grid without the use of power conversion electronics. The DeWind 8.2 will be available in both a 60Hz and 50Hz version.

·

CTC Cable Corporation produces composite rod for use in its proprietary ACCC aluminum conductor composite core. ACCC conductors virtually eliminate the sag in power lines caused by high current and high line temperatures. ACCC conductors also reduce electricity line losses, and have demonstrated significant savings in capital and operating expenses when substituted for other conductors. ACCC conductors enable grid operators to eliminate blackouts and brownouts, providing a ‘reserve electrical capacity’ by operating at higher temperatures. ACCC conductors are an innovative solution for reconductoring power lines, constructing new lines and crossing large spans. ACCC composite rod is delivered to qualified conductor manufacturers worldwide for local ACCC conductor production and resale into local markets.