LICENSE AND ROYALTY-SHARING AGREEMENT
This License and Royalty-Sharing Agreement (the Agreement), dated as of November 20, 2002, is between Constar International Inc., a Delaware corporation (Constar) and Crown Cork & Seal Technologies Corporation, a Delaware corporation (Crown).
A. Pursuant to a Master Assignment and Assumption Agreement dated as of the date hereof, Crown is assigning to Constar certain patents and patent applications relating to oxygen-scavenging technology. Constar has the right to sublicense other patents and patent applications relating to oxygen-scavenging technology under a license agreement with Rexam AB (Rexam).
B. Subject to the terms of this Agreement, Constar wishes to grant to Crown, and Crown wishes to accept, a license and sublicense under the Oxbar Technology (as defined below) for use in products other than products manufactured with polyethylene terephthalate (PET), and a license to use the Marks (as defined below) on or in connection with such products.
C. Subject to the terms of this Agreement, Constar wishes to pay to Crown, and Crown wishes to accept, a percentage of royalties that Constar or its Affiliates receive from licenses of the Oxbar Technology to other parties.
NOW, THEREFORE, the parties hereto, intending to be legally bound, and for good and valuable consideration, the adequacy of which is hereby acknowledged, agree as follows:
Capitalized terms not defined in this Agreement shall have the meanings ascribed to them in the Corporate Agreement, dated as of the date hereof, between Crown Cork and Seal Company, Inc. and Constar International Inc. As used in this Agreement, the following terms shall have the respective meanings set forth below:
1.1. Affiliate shall mean any entity which controls, is controlled by, or is in common control with, a party to this Agreement. For purposes of this definition, control shall mean ownership, directly or indirectly, of at least fifty percent (50%) of the voting stock or shareholders equity of a corporation or, in the case of a non-corporate entity, a right to receive at least fifty percent (50%) of either the profits or the assets upon dissolution of such entity, or, in either case, the right to elect a majority of the board of directors (or similar governing body) of an entity.
1.2. Constar Oxbar Patents means those Oxbar Patents that are now owned or hereafter acquired by Constar or its successors or assigns.
1.3. Contract Year means (i) the period of time commencing on the Initial Public Offering Date and ending on the last day of the twelfth (12th) calendar month thereafter and (ii) each subsequent period of twelve (12) consecutive calendar months.
1.4. Licensed Field means the manufacture, use, offering for sale, sale, and importation of Licensed Products.
1.5. Licensed Products means products, other than products manufactured with PET, that would infringe one or more valid and enforceable claims of the Oxbar Patents if not for this Agreement. For purposes of this definition, the claims of the Oxbar Patents are deemed to be valid and enforceable unless and until held invalid or unenforceable in a final judgment by any court of competent jurisdiction and from which no appeal either has been or can be taken.
1.6. Marks means the trademark OXBAR and any other marks listed on Exhibit B.
1.7. Oxbar Patents means the patents and patent applications listed on Exhibit A, together with any other patents or patents applications relating to oxygen-scavenging technology that are licensed by Constar or to Constar under the Rexam Agreement, any patents or patent applications on improvements to the inventions described in such patents or patent applications that Constar owns or has the right to sublicense to Crown hereunder, and any reissue, reexamination, extension, division, continuation or continuation-in-part of any of the foregoing.
1.8. Oxbar Technology means (i) the Oxbar Patents, and (ii) all unpatented technology, know-how, trade secrets, processes, formulae, technical information, data, drawings, plans, specifications, formulation and reports, and all other general and specific proprietary knowledge, experience, techniques, and information relating to oxygen-scavenging technology that Constar owns, or has the right to sublicense to Crown hereunder, as of the Initial Public Offering Date or thereafter (the Oxbar Trade Secrets).
1.9. Rexam Agreement means the patent cross-licensing agreement dated May 17, 1988 to which Rexam and Constar are currently parties, as such agreement may be amended or restated, or any subsequent agreement between Rexam or its Affiliates, and Constar or its Affiliates, relating to the Oxbar Patents.
1.10. Rexam Oxbar Patents means those Oxbar Patents now owned or hereafter acquired by Rexam or its successors or assigns.
1.11. Third Party means a party other than Constar, Crown, and their Affiliates.
1.12. Third-Party Royalties means gross proceeds received by Constar or its Affiliates in consideration of licenses and sublicenses of the Oxbar Technology to Third Parties, but shall not include amounts that are (i) charged reasonably and in good faith by Constar or its Affiliates to a Third Party for technical services, (ii) calculated as compensation for employees or contractors time, physical resources, and/or third-party expenses reasonably required to provide such technical services, and (iii) invoiced to Third Parties as charges separate from the