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Exhibit 10.5
INTELLECTUAL PROPERTY TRANSFER AGREEMENT
AGREEMENT, made as of the 27th day of December 1999, by and between UCAR
Carbon Technology Corporation, a Delaware corporation having offices at 0000
Xxxx Xxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxx, 00000 ("Transferor"), and UCAR
Graph-Tech Inc., a Delaware corporation having offices at 00000 Xxxxxxx Xxxxxx,
Xxxxxxxx, Xxxx, 00000 ("Transferee").
WHEREAS, Transferee is a wholly owned subsidiary of Transferor; and
WHEREAS, Transferee wishes to acquire, and Transferor is willing to
transfer, assign and convey, or cause to be transferred, assigned and conveyed,
all of its right, title, and interest in the Assets (as defined herein); and
WHEREAS, Transferor intends to transfer the Assets to Transferee as a
contribution to capital and Transferee intends to assume the liabilities
associated with the Assets in accord with Sections 351(a) and 357(a) of the
Internal Revenue Code of 1986;
NOW, THEREFORE, INTENDING TO BE LEGALLY BOUND, and for and in
consideration of the premises and the mutual covenants and agreements
hereinafter set forth, the parties agree as follows:
ARTICLE I DEFINITIONS
1.01 Assets. "Assets" shall mean the following:
(i) All United States and foreign patents and patent applications
listed in Schedule B attached hereto, and all continuations,
continuations-in-part, divisions, reissues and other patents
which may be issued by any country based in whole or in part on
the patents or applications listed in Schedule B attached hereto
(the "Patents");
(ii) All technology contracts (including patent licenses) listed in
Schedule C attached hereto (the "Technology Contracts");
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(iii) All technical information, know-how and trade secrets, including
but not limited to all notebooks, records, reports, data,
documents, drawings, specifications, manuals, memoranda and
computer programs, used primarily in the Business (the
"Technology");
(iv) All trademarks, trade names and service marks, registrations and
applications therefor, and trademark license agreements listed on
Schedule D attached hereto (the "Trademarks");
(v) All copyrights, registrations and applications therefor, and
copyright licenses used exclusively in Business (the
"Copyrights");
(vi) All improvements made on any invention covered by the Patents or
made on the Technology and all other technological inventions and
developments (whether or not patented) used or useful primarily
in the Business (the "Improvements"); and
(vii) All claims, suits and proceedings (including those related to
infringement of property rights) in favor of Transferor to the
extent, but only to the extent, that they relate primarily to
the other Assets, if any (the "Claims").
1.02 Business. "Business" shall mean the natural, acid-treated or
flexible graphite business currently conducted by UCAR International Inc.
("UCAR") and its subsidiaries.
1.03 Transfer Date. "Transfer Date" shall mean December 28, 1999.
1.04 Third Party. "Third Party" shall mean any and all parties other
than Transferor or Transferee and their respective subsidiaries.
ARTICLE II TRANSFER OF ASSETS
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2.01 Transfer of Assets. Effective as of the Transfer Date, Transferor
hereby conveys, transfers, assigns and delivers to Transferee, and Transferee
hereby acquires and accepts from Transferor, all of Transferor's right, title
and interest in and to the Assets.
2.02 Capitalization. Transferor holds One Hundred (100) shares of
Transferee's voting common stock, $0.01 par value (the "Stock"), which shares
are fully paid and non-assessable and which constitute all the issued and
outstanding shares of Transferee's capital stock. Transferor's transfer of the
Assets shall be an additional contribution to capital of Transferee.
2.03 Valuation. The parties agree that, for book and financial
reporting purposes, the value of the Assets transferred to Transferee hereunder
shall be deemed to be the sum, as of the date of the Transfer Date, of the
aggregate net book value of the Assets.
2.04 Liabilities and Indemnification.
(a) Upon, from and after the Transfer Date, Transferee shall,
without any further responsibility or liability of, or recourse to, UCAR or any
direct or indirect subsidiary of UCAR (other than Transferee and its
subsidiaries) or any of their directors, shareholders, officers, employees,
agents, consultants, representatives, successors, transferees or assignees,
absolutely and irrevocably assume and be solely liable and responsible for any
and all claims, liabilities, obligations, losses, costs, expenses, litigation,
proceedings, fines, taxes, levies, imposts, duties, deficiencies, assessments,
charges, penalties, allegations, demands, damages (including but not limited to
actual, punitive or consequential, foreseen or unforeseen, known or unknown),
settlements or judgements of any kind or nature whatsoever that are or are
alleged to be related to, arising from or associated with the ownership, use or
possession of the Assets before or after the Transfer Date, regardless of when
they arose or arise, or whether the facts on which they are based occurred
prior to or subsequent to the Transfer Date, and regardless of
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where or against whom asserted or determined or whether asserted or determined
prior or subsequent to the Transfer Date and regardless of whether or not known
or unknown, fixed or contingent, asserted or unasserted, or whether arising
from or alleged to arise from negligence, recklessness, violation of law,
representation or misrepresentation by UCAR or its subsidiaries or their
respective directors, officers, employees or agents, including without
limitation any and all those with respect to infringement of the intellectual
property rights of others, claims arising out of contracts, or any other
alleged or actual breach or violation of any obligation or other requirement
(collectively, the "Business Liabilities"). Transferee shall irrevocably
indemnify and hold harmless UCAR, the direct or indirect subsidiaries of UCAR
(other than Transferee and its subsidiaries) and their respective directors,
shareholders, officers, employees, agents, consultants, representatives,
successors, transferees and assigns from and against any and all Business
Liabilities (including without limitation reasonable fees and expenses of
counsel) of whatever kind and nature.
(b) Each party shall indemnify and hold harmless the other
party and its successors and assigns from and against any and all damages,
claims, losses, liabilities and expenses (excluding legal, accounting and
similar expenses), which arise out of any violation of this Agreement by such
party.
(c) The party entitled to indemnification hereunder (the
"Indemnitee") shall promptly notify the party liable for such indemnification
(the "Indemnitor") in writing upon obtaining knowledge of any damage, claim,
loss, liability or expense (a "Claim") which the Indemnitee has determined has
given or could give rise to a claim under Sections 2.04(a) or 2.04(b) (such
written notice being hereinafter referred to as a "Notice of Claim"). A Notice
of Claim shall specify in reasonable detail the nature and any particulars of
any such Claim. The
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Indemnitor shall satisfy its obligations under Sections 2.04(a) or 2.04(b), as
the case may be, within thirty (30) days of its receipt of a Notice of Claim;
provided, however, that so long as the Indemnitor is in good faith defending a
Claim pursuant to paragraph (d) below, its obligation to indemnify the
Indemnitee with respect thereto shall be suspended.
(d) With respect to any third party claim, demand, suit or
action which is the subject of a Notice of Claim, the Indemnitor shall, in good
faith and at its own expense, defend, contest, or otherwise protect against any
such claim, demand, suit or action with legal counsel of its own selection. The
Indemnitee shall have the right, but not the obligation, to participate, at its
own expense, in the defense thereof through counsel of its own choice and shall
have the right, but not the obligation, to assert any and all crossclaims or
counterclaims it may have. So long as the Indemnitor is defending in good
faith any such third party claim, demand, suit or action, the Indemnitee shall
at all times cooperate in all reasonable ways with, make its relevant files and
records available for inspection and copying by, and make its employees
available or otherwise render reasonable assistance to, the Indemnitor. In the
event that the Indemnitor fails to timely defend, contest or otherwise protect
against any such third party claim, demand, suit or action, the Indemnitee
shall have the right, but not the obligation, to defend, contest, assert
crossclaims or counterclaims, or otherwise protect against, the same and may
make any compromise or settlement thereof and recover and be indemnified for
the entire cost thereof from the Indemnitor, including, without limitation,
legal expenses, disbursements, and all amounts paid as a result of such third
party claim, demand, suit or action or any compromise or settlement thereof.
(e) The Indemnitor shall not settle any such action, claim,
suit or demand without the written consent of the Indemnitee. Consent shall not
be unreasonably withheld or
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delayed, except that a party may withhold or delay consent if the settlement
does not provide for a complete release of the Indemnitee without any
requirement for it to make payments or incur additional liabilities,
obligations or burdens. In the event the Indemnitee unreasonably withholds or
delays consent to a settlement, the Indemnitee will thereupon assume the
defense of such action, claim, suit or demand for its own account and the
Indemnitor shall be released from all liability with respect to such action,
claim, suit or demand except that the Indemnitor shall remain liable with
respect thereto to the extent (but only to the extent) of the obligations,
liabilities or burdens it would have had under the settlement as to which the
Indemnitee unreasonably withheld or delayed consent.
2.05 Transfer Deliveries. On the Transfer Date or promptly
thereafter, Transferor and Transferee shall deliver or cause to be delivered to
one another:
(a) Executed and acknowledged Assignments of the Patents.
(b) An executed and acknowledged Assignment and Assumption of
the Technology Contracts.
(c) An executed and acknowledged Assignment of the Technology.
(d) Executed and acknowledged Assignments or Assignment and
Assumptions, as appropriate, of the Trademarks.
(e) Executed and acknowledged Assignments or Assignment and
Assumptions, as appropriate, of the Copyrights.
(f) Executed and acknowledged Assignments of the Improvements
and the Claims.
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In addition, on the Transfer Date, each party shall deliver, or cause to be
delivered, to the other party one certified copy of the resolutions of such
party's Board of Directors evidencing the authorizations for this transaction.
2.06 Taxes and Other Expenses.
(a) Transferee is responsible for any taxes (including,
without limitation, income, payroll, real and personal property, gross
receipts, sales, use, franchise, and stamp taxes) imposed by any Federal, state
or local government or other tax authority in the U.S., or by any foreign
government or any subdivision or taxing authority thereof, and other fees or
charges (including, without limitation, documentation, licenses and
registration fees), together with any interest or penalties thereon ("Taxes and
Other Charges"), which are attributable to use, possession or ownership of the
Assets. If Transferor shall have paid any Taxes or Other Charges for which
Transferee is responsible as aforesaid, appropriate adjustment will be made as
promptly as practicable after the Transfer Date.
(b) Transferee shall be liable for all sales, use, transfer,
conveyance, bulk transfer, business and occupation, value added or gross income
taxes, or other taxes, duties, excises or governmental charges (the foregoing
are hereinafter referred to as "Transactional Taxes") imposed by any taxing
jurisdiction with respect to the transfer or assignment of the Assets or
otherwise on account of this Agreement or the transactions contemplated herein,
except as otherwise provided in any tax allocation or sharing agreement between
UCAR and Transferee or in Section 2.04 and except that, notwithstanding
anything contained in such tax allocation or sharing agreement or in Section
2.04 to the contrary, Transferee shall not be responsible for any tax on or
measured by net income of UCAR or its subsidiaries (other than Transferee and
its subsidiaries) attributable solely to (i) the contribution of assets to, or
the assumption of liabilities
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by, Transferee by or from Transferor, (ii) the transfer of capital stock of
Transferee by UCAR or its subsidiaries (other than Transferee and its
subsidiaries) or (iii) the restructuring of or other transactions involving
UCAR or its subsidiaries (other than Transferee and its subsidiaries).
Transferee shall provide Transferor with appropriate exemption certificates or
direct pay certificates where possible, or shall promptly pay and discharge any
such Transactional Taxes for which Transferee is responsible. The foregoing
notwithstanding, in the event UCAR or its subsidiaries (other than Transferee
and its subsidiaries) shall be required to pay any Transactional Taxes for
which Transferee is responsible, Transferee shall promptly reimburse Transferor
therefor. In the event any taxing jurisdiction subsequently determines that
any additional Transactional Taxes for which Transferee is responsible
(including interest or penalties thereon) shall be due, Transferee shall
indemnify and hold UCAR or its subsidiaries (other than Transferee and its
subsidiaries) harmless therefrom pursuant to Section 2.04.
(c) In addition to any obligations of the parties under such
tax allocation or sharing agreement, Transferor and Transferee shall cooperate
regarding the filing of any tax returns (including Federal, state, local and
foreign income and other tax returns) that cover a period which includes the
Transfer Date.
(d) Transferee shall be liable for all recording fees,
notarial fees, and other fees and costs arising out of the transfer or
assignment of the Assets, or otherwise on account of this Agreement or the
transactions contemplated herein. Transferee shall promptly pay and discharge
the costs of such items and shall promptly reimburse Transferor for any amounts
Transferor may have expended on such items.
ARTICLE III OBLIGATION AFTER TRANSFER
3.01 Further Transfers and Assurances. From time to time after the
Transfer Date, each party shall execute, acknowledge and deliver any further
assignments, conveyances and
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other assurances, documents and instruments of transfer, and take any other
action consistent with this Agreement, as may be reasonably required to assign,
transfer, convey, record and confirm the transfer of assets, the assumption of
liabilities and the consummation of the other transactions contemplated hereby.
3.02 Non-assignability. To the extent that any Asset or any claim,
right or benefit arising thereunder or resulting therefrom (collectively the
"Interests") is not capable of being assigned, transferred or conveyed without
the approval, consent or waiver of the issuer thereof or the other party
thereto or any third person (including a government or governmental unit), or
if such assignment, transfer or conveyance or attempted assignment, transfer or
conveyance would constitute a breach thereof or a violation of any law, decree,
order, regulation or other governmental edict or is not practicable because it
relates to matters involving the Assets together with other assets of
Transferor not being transferred to Transferee, this Agreement shall not
constitute an assignment, transfer or conveyance thereof, or an attempted
assignment, transfer or conveyance thereof, until such obstacles have been
removed. Anything in this Agreement to the contrary notwithstanding, Transferor
is not obligated to assign, transfer or convey to Transferee any of its rights
in and to any of the Interests without first obtaining all necessary approvals,
consents or waivers. Transferor shall use all reasonable efforts, and
Transferee shall cooperate with Transferor, to obtain all necessary approvals,
consents or waivers, or to resolve any impracticabilities of transfer necessary
to convey to Transferee each such Interest as soon as practicable; provided,
however, that neither Transferor, nor Transferee, shall be obligated to pay any
consideration therefor (except for filing fees and other ordinary
administrative charges which shall be paid by Transferee) to the third person
from whom such approval, consent or waiver is requested. To the extent any of
the approvals, consents or waivers
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have not been obtained, or until the impracticabilities of transfer are
resolved, Transferor shall, during the remaining term of such Interest, use all
reasonable efforts, with reasonable costs of Transferor related thereto to be
promptly reimbursed by Transferee, to: (i) obtain the consent of any such third
person; (ii) cooperate with Transferee in any reasonable and lawful arrangement
designed to provide the benefits of such Interest to Transferee so long as
Transferee fully cooperates with Transferor in such arrangements; and (iii)
enforce, at the request of Transferee and at the expense and for the account of
Transferee, any rights of Transferor arising from such Interest against the
issuer thereof or the other party or parties thereto (including the right to
elect to terminate any such Interest in accordance with the terms thereof upon
the advice of Transferee).
3.03 Records Retained by Transferor. The parties agree that,
except as may otherwise be provided in this Agreement, Transferor shall
transfer and deliver to Transferee after the Transfer Date all data, records
and other information which pertain exclusively to the Assets (with the
exception of (i) those created for this transaction and (ii) those required to
enable UCAR and its subsidiaries (other than Transferee and its subsidiaries)
to perform their obligations under other agreements with Transferee and its
subsidiaries, which shall be so transferred and delivered after such
obligations terminated), including, without limitation, tax records and
personnel records (all of the foregoing being hereinafter called "Business
Records"). To the extent that the original copies of any such Business Records
also contain information relating to UCAR or any of its subsidiaries (other
than Transferee and its subsidiaries), Transferor may transfer and deliver to
Transferee copies deleting such information but shall not destroy the original
Business Records (except in accordance with normal records retention policies)
or otherwise take action to make such original Business Records unavailable to
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Transferee. Any Business Records which Transferor requires in connection with
pending or threatened litigation or tax examination or audit, or which are
otherwise subject to Hold Orders as provided in Transferor's records retention
policy manual, may be retained by Transferor and copies thereof delivered to
Transferee.
3.04 Access to Records by Transferor. In addition to any obligations
of the parties under any such other agreements, following the Transfer Date,
Transferee shall give to Transferor and its authorized representatives full
access, during regular business hours, to the records described in Section 3.05
and to any and all of its premises, properties, contracts, books, records and
data related to the Assets and will cause its officers, directors and employees
to furnish to Transferor, without compensation therefor, any and all data and
information pertaining thereto or to the Assets or the use, ownership or
disposition thereof that Transferor shall from time to time request, including
requests for information, to enable UCAR and its subsidiaries (other than
Transferee and its subsidiaries) to file Federal, state, local or foreign
income or other tax returns, comply with orders or agreements, complete
financial statement and internal control reviews and audits, or pursue or
defend any pending or threatened litigation or tax examination or audit.
Notwithstanding the foregoing, Transferee is not required to give enable UCAR
and its subsidiaries (other than Transferee and its subsidiaries) access to
such records, premises, properties, contracts, books, data or information
listed above, to the extent that it relates to events occurring after UCAR
ceases to directly or indirectly own or hold a majority of the then outstanding
common stock of Transferee or its successors.
3.05 Preservation of Records. Transferee agrees that it shall
preserve and keep the records of Transferor delivered to it hereunder for the
period from and after the Transfer Date prescribed by the Transferor's record
retention policy in effect at the Transfer Date, or by any
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government agency, or for so long as may be requested in connection with any
matter mentioned in Section 3.04, whichever is longer. In the event Transferee
wishes to destroy such records after that time, Transferee shall first give
ninety (90) days prior written notice to Transferor and Transferor shall have
the right at its option and expense, upon prior written notice given to
Transferee within said ninety (90) day period, to take possession of said
records within one hundred and eighty (180) days after the date of Transferor's
notice to Transferee hereunder.
3.06 Confidentiality. Except as otherwise permitted by such other
agreements, each party hereto agrees to (and agrees to cause its subsidiaries
and affiliates to) refrain from using in any manner, and use its best efforts
(consistent with past practices of Transferor) to keep confidential, any and
all information and data concerning the business and affairs of the other party
or its subsidiaries or affiliates which it has received or receives hereunder,
except to the extent that such party or its subsidiaries or affiliates can
demonstrate that the information or data (a) is generally available to the
public as evidenced by prior written publication through no act or failure to
act by it or its subsidiaries or affiliates, (b) is developed independently of
such information by the party or its subsidiaries or affiliates as evidenced by
written documentation, or (c) is subsequently disclosed to it or its
subsidiaries or affiliates on a non-confidential basis by a Third Party not
having a confidential relationship with the other party or its subsidiaries or
affiliates with respect to such information or data. Notwithstanding the
foregoing, each of the parties hereto or its subsidiaries or affiliates shall
be free to disclose any such information or data to the extent, but only to the
extent, (a) required by applicable law, (b) necessary or appropriate in
connection with tax filing and reporting, financial statement and internal
control reviewing, public company reporting and credit facility reporting, (c)
necessary or appropriate in connection with debt or equity financing or
business combination activities or (d) during the
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course of or in connection with any litigation, governmental investigation,
arbitration or other proceeding based upon or in connection with (x) the
subject matter of this Agreement or (y) the exercise of rights or enforcement
of obligations involving third parties. Prior to any disclosure of trade
secrets pursuant to the preceding sentence, the disclosing party shall be
required to give reasonable prior notice to the other party to this Agreement
of such intended disclosure and, if requested by such party, to use its best
efforts to obtain a protective order or similar protection for such other
party. For purposes of this Section 3.06 only, references to "party" in the
context of Transferor shall mean UCAR and neither Transferee nor its
subsidiaries shall be deemed to be subsidiaries or affiliates of UCAR.
3.07 Recording of Documents. Transferee shall be responsible, at
Transferee's expense, for the filing or recording of the instruments or
documents delivered by Transferor hereunder, and for the preparation and
recording of such additional instruments or documents as may be necessary or
appropriate to perfect Transferee's title, right or interest in or to the
Assets.
ARTICLE IV MISCELLANEOUS
4.01 Binding Effect; Assignment. This Agreement shall be binding
upon, and inure to the benefit of, the parties hereto and their respective
successors and permitted assigns. Nothing herein shall create or be deemed to
create any third party beneficiary rights in any person or entity not a party
to this Agreement, other than an Indemnitee and UCAR and its subsidiaries as
expressly provided herein. No assignment of this Agreement, or of any rights
or obligations hereunder, may be made by either party hereto without the prior
written consent of the other party hereto; provided, however, that no such
consent shall be required with respect to an assignment in connection with: (i)
an internal restructuring or realignment (including liquidation and
dissolution) of businesses or subsidiaries of UCAR or Transferee; (ii) a pledge
of assets as collateral security for a bona fide debt financing or credit
facility (and foreclosure thereon); or
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(iii) a sale or other transfer of all or a majority of the assets or business
of UCAR or Transferee. Any attempted assignment without the required consent
shall be void.
4.02 Schedules. All Schedules attached hereto, and the
instruments and documents to be delivered hereunder ("Items"), are incorporated
herein and expressly made a part of this Agreement as fully as though
completely set forth herein, and all references to this Agreement herein or in
any of such Items shall be deemed to refer to and include all of said Items.
4.03 Counterparts. This Agreement may be executed in counterparts,
each of which shall be deemed an original, but all of which together shall
constitute one and the same instrument. Each counterpart may consist of a
number of copies hereof each signed by less than all, but together signed by
all, of the parties hereto. In pleading or proving any provision of this
Agreement, it shall not be necessary to produce more than one such counterpart.
4.04 Waiver. The failure of any party at any time or times to
enforce or require performance of any provision hereof shall in no way operate
as a waiver or affect the right of such party at a later time to enforce the
same. No waiver by any party of any condition or the breach of any term,
covenant or warranty contained in this Agreement, whether by conduct or
otherwise, in any one or more instance, shall be deemed to be or construed as a
further or continuing waiver of any such condition or breach, or a waiver of
any other condition or of any breach of any other term, covenant or warranty
contained in this Agreement.
4.05 Severability. If any provision of this Agreement shall be held
to be invalid or unenforceable in any jurisdiction for any reason, that
provision shall be reformed to the maximum extent permitted to preserve the
parties' original intent, failing which, it shall be severed from this
Agreement with the balance of the Agreement continuing in full force and
effect; provided, however, that Transferor shall have no obligation to
consummate the
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transactions contemplated hereby if the provision being reformed or severed
affects the consideration for the Assets as provided in Article 2 hereof. Such
occurrence shall not have the effect of rendering the provision in question
invalid or unenforceable in any other jurisdiction or in any other case or
circumstance or of rendering invalid or unenforceable any other provisions
contained herein to the extent that such other provisions are not themselves
actually in conflict with any applicable law.
4.06 Governing Law and Forum. This Agreement shall be governed by
and construed in all respects under the laws of the State of Delaware, without
reference to its conflicts of laws rules or principles. Any action to enforce,
or which arises out of or in any way relates to, any of the provisions of this
Agreement shall be brought and prosecuted in such court or courts located
within the State of Delaware as provided by law; and the parties consent to
the jurisdiction of said court or courts located within the State of Delaware,
and to service of process by registered mail, return receipt requested, or by
any other manner provided by Delaware law.
4.07 Entire Agreement. This Agreement and all the Schedules
attached hereto, and all other instruments and documents to be delivered
hereunder, constitute the entire understanding of the parties hereto concerning
the subject matter hereof, and cancels and supersedes all previous agreements
and understandings, oral or written, between the parties with respect to the
subject matter hereof. Transferee disclaims reliance upon any representations,
warranties or guarantees, either express or implied, by Transferor, its
employees or agents. No modification of this Agreement or waiver of any terms,
conditions or rights hereunder will be binding upon any party unless signed in
writing by an authorized representative of such party.
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4.08 Effect of Headings. The subject headings of the Sections of
this Agreement are included for purposes of convenience only, and shall not
affect the construction or interpretation of any of its provisions.
4.09 Notices. All notices, requests, demands, and other
communications under this Agreement shall be in writing and shall be deemed to
have been duly given on the date of service if served personally on the party
to whom notice is given, or on the fifth day after mailing if mailed to the
party to whom notice is to be given by first class mail, registered or
certified, postage pre-paid, properly addressed as first set forth above. Any
party may change its address for purposes of this paragraph by giving the other
party written notice of the new address in the manner set forth above.
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IN WITNESS WHEREOF, the parties have duly executed this Agreements as of
the date and year first above written.
UCAR CARBON TECHNOLOGY CORPORATION
(Transferor)
By: /s/
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Title:
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UCAR GRAPH-TECH INC.
(Transferee)
By: /s/
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Title:
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