Exhibit 10c
ASSIGNMENT AGREEMENT, effective as of November 5, 1997, among PLATINUM
PLUS, INC., a Delaware corporation ("PPI"), with a place of business at 000
Xxxxxxxx Xxxxxx, Xxxxxxxx XX 00000, Fuel-Tech N.V., a Netherlands Antilles
limited liability company ("Fuel Tech") with a place of business at Xxxxxxxxx
00-00, Xxxxxxx, Xxxxxxxxxxx Antilles, and CLEAN DIESEL TECHNOLOGIES, INC., a
Delaware corporation ("Assignee"), with a place of business at 000 Xxxxxxxx
Xxxxxx, Xxxxxxxx XX 00000 U.S.A.,
WHEREAS, PPI is a wholly-owned subsidiary of Fuel Tech and Fuel Tech owns
approximately 28% of the common stock of the Assignee,
WHEREAS, by Agreements effective as of October 28, 1994 between the
Assignee and Fuel-Tech N.V. (the "NV License") and between the Assignee and PPI
(the "PPI License"), the Assignee became the licensee of certain Technology,
WHEREAS, subsequent to the effective date of grant of the PPI and NV
licenses, the Assignee reimbursed Fuel Tech, of Fuel-Tech, or its affiliates,
the amount of approximately $600,000 on account of development expenses incurred
by Fuel Tech, Inc. with respect to the Technology licensed under the NV and PPI
Licenses,
WHEREAS, this Agreement is in consideration of the reimbursed development
expenses,
WHEREAS, by an Assignment effective as of November 5, 1997 the Fuel-Tech
License and the Technology licensed thereunder were assigned by Fuel-Tech N.V.
to PPI,
WHEREAS, the Technology licensed under the NV and PPI Licenses is now
owned by PPI and the Assignee is desirous of taking an assignment of such
Technology and PPI is agreeable to granting such assignment while reserving a
royalty as provided in the NV and PPI Licenses,
WHEREAS, in order to enhance the value of Fuel Techs investment in the
Assignee Fuel Tech is agreeable to this assignment and to guaranteeing the
performance of the obligations of PPI hereunder,
NOW THEREFORE, it is agreed that:
1. Definitions
"Affiliate, shall be a company or a business entity which controls, is
controlled by, or is under common control with a party to this
agreement. "Control" shall mean sufficient voting power to elect the
Board of Directors. For purposes of this agreement neither party hereto
shall be an Affiliate of the other.
1
"Technology" shall mean PPI's Patents, Marks and Patent Applications
set out on Schedule A attached hereto and all associated data, and
know-how related thereto owned by PPI for the addition of noble metals
to fuels, for emulsions and for Nox control, all as related to internal
combustion engines and control of emissions therefrom.
"Termination" shall mean December 31, 2008.
2. Assignment
2.1 PPI hereby assigns, transfers and sets over to Assignee and
Assignee hereby accepts from PPI, on the terms and conditions
herein and subject to the payment to PPI of the royalties described
herein when due, all of PPIs right, title and interest whatsoever
in the United States of America and any other jurisdiction to the
Technology.
3. Revocation of Licenses
3.1 PPI and the Assignee agree that the NV License and the PPI License
are hereby revoked and of no further force and affect.
4. Disclaimers and Limited Warranty
4.1 PPI makes no warranty, express or implied, to Assignee concerning
the validity or the utility of the Technology or with respect to
any other matter, except that PPI represents and warrants that the
Patents and Marks assigned hereunder are in full force and effect
and that it has full right and power to assign the rights granted
hereunder.
4.2 PPI shall have no responsibility whatsoever to Assignee at any time
for any liability which Licensee may incur to any third party with
respect to the Technology.
5. Royalties: Right to Terminate
5.1 Assignee shall, within 45 days of the end of each calendar year
commencing with the year 1998 and thereafter until Termination, pay
PPI as a running royalty an amount equal to two and one half
percent (2.5%) of annual gross revenues of whatsoever nature,
including license fees and royalties, derived from that portion
only of the Technology relating to the addition of noble metals to
fuels.
5.2 Assignee shall have the right at any time until Termination on
thirty days notice to terminate and extinguish its obligation to
pay royalties hereunder and
2
to receive a release of such obligation, by the payment to PPI in
any calendar year set out below of the amount set out below
opposite such year:
1998 $12,000,000.00
1999 $10,909,091.00
2000 $ 9,818,182.00
2001 $ 8,727,273.00
2002 $ 7,636,364.00
2003 $ 6,545,455.00
2004 $ 5,454,546.00
2005 $ 4,363,637.00
2006 $ 3,272,728.00
2007 $ 2,181,819.00
2008 $ 1,090,910.00
6. Obligations of PPI and Fuel Tech
6.1 PPI shall to the extent practicable cooperate with Assignee, at
the expense of the Assignee, in perfecting the assignment of the
Technology made herein under local law and in preserving and
maintaining the Technology by Licensee and shall execute and
deliver to the Assignee any further agreements, assignments,
instruments, certificates and other documents deemed necessary or
appropriate for that purpose by the Assignee.
6.2 Fuel Tech guarantees the performance by PPI of its obligations
under Section 6.1 above.
7. Obligations of Assignee
7.1 Assignee shall within 45 days of the end of each calendar year set
out in Section 5.2 above furnish PPI with a written report signed
by an authorized official setting forth annual gross revenues
derived by Assignee from the Technology subject to royalties and,
for each such year, shall thereupon make payment of such royalties,
if any, as became due to PPI during such year.
7.2 Assignee shall indemnity and defend PPI against any liability or
expense arising out of any claim, proceeding or suit by any third
party against PPI to the extent that it is based on an allegation
that the Technology licensed hereunder is invalid, owned by another
party or infringes a patent in force.
7.3 In the event of Assignees failure to pay when due any royalty
hereunder, Assignee shall pay to PPI interest on such unpaid
royalties at the rate of ten percent (10%) per annum calculated on
the basis of days actually elapsed over a year of 360 days.
3
9. General
9.1 This Agreement and its effects are subject to and shall be
construed and enforced in accordance with the internal laws of the
State of Delaware and any and all claims, controversies or disputes
hereunder shall be resolved by negotiations between the parties
and, failing such negotiations, shall, on sixty days written notice
from one party to the other, be finally settled by arbitration
before a single arbitrator in accordance with the rules then in
effect of the American Arbitration Association in Stamford
Connecticut and any resulting award may be entered in and enforced
by any court having jurisdiction.
9.2 This Agreement is the entire agreement between the Parties and may
only be amended by an instrument in writing referring to this
agreement and signed by each of the parties.
9.3 Notices hereunder shall be effective in five days, if given by
pre-paid, registered or certified airmail; and upon delivery, if
acknowledged and given by telex, facsimile or personally; in either
case to the addresses set forth above for the parties or to such
other address as one party may by such notice inform the other.
9.4 Failure to enforce a right or remedy under this Agreement shall not
be deemed to constitute a waiver of such right or remedy.
9.5 The obligations hereunder of a party may, from time to time, be
performed by an Affiliate of such party.
9.6 All payments hereunder by Assignee to PPI shall be in cash or by
wire transfer.
4
IN WITNESS WHEREOF the parties have signed this Agreement as of the date
first set out above,
PLATINUM PLUS, INC. CLEAN DIESEL TECHNOLOGIES, INC.
By: /s/ Xxxxxx X. Xxxxx-Xxxxxx By: /s/ Xxxxx X. Xxxxxxxxx
---------------------------- -------------------------------
Xxxxxx X. Xxxxx-Xxxxxx Xxxxx X. Xxxxxxxxx
Title: President Title: Executive Vice President
Date: December 19, 1997 Date: December 19, 1997
--------------------- ---------------------------
FUEL-TECH N.V.
By: /s/ Xxxxxx X. Xxxxx-Xxxxxx
-----------------------------
Xxxxxx X. Xxxxx-Xxxxxx
Title: Managing Director
Date: December 19, 1997
-------------------------
State of Connecticut :
) ss Stamford
County of Fairfield :
The foregoing instrument was acknowledged before me this 19th day of December
1997 by Xxxxxx X. Xxxxx-Xxxxxx, Managing Director of Fuel-Tech N.V., a
Netherlands Antilles corporation, Xxxxxx X. Xxxxx-Xxxxxx President of Platinum
Plus, Inc., a Delaware corporation, and Xxxxx X. Xxxxxxxxx, Executive Vice
President of Clean Diesel Technologies, Inc., a Delaware corporation, on behalf
of their respective corporations.
/s/ Xxxxxxx X. Xxxxxxxx
----------------------------------
Xxxxxxx X. Xxxxxxxx
Commissioner of the Superior Court
Schedule A to Assignment Agreement as of November 5, 1997
among Platinum Plus, Inc., Fuel-Tech N.V. and Clean Diesel Technologies, Inc.
CLEAN DIESEL TECHNOLOGIES
PATENT ASSETS
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
U.S. 4,629,472 Xxxxx Combustion of emulsified fuels is PPI
(P0003C) Xxxxxxxx improved by the presence of water-
soluble precious metal catalysts.
U.S. 4,892,562 Xxxxxx Diesel additives comprising fuel-soluble PPI
(P0043A) Xxxxxxx compounds of platinum group metals.
U.S. 4,891,050 Xxxxxx Gasoline additives comprising fuel- PPI
(P0043B) Xxxxxxx soluble compounds of platinum group
metals.
EP 189,642 Xxxxxx Both gasoline and diesel additives FTI
(P0042A) Xxxxxxx combined in one case for foreign filing.
AU* 583,580 FTI
CA 1,305,607 FTI
CL 36,883 FTI
ES 548,951 FTI
GB 2,178,757 FTI
GR 85.2745 FTI
XX 00000 XXXX
XX 1,931,532 FTI
MX 169,226 FTI
VE 49.179 FTI
U.S. 5,034,020 Xxxxxxx Additional specific fuel-soluble platinum PPI
(P0049A) Xxxxxxx group metal additives for diesel and
gasoline engines. Also claims
regenerating catalytic converters and
diesel traps.
AU 635,056 FTNV
CA 612,185 FTNV
JP 02-511018 XXXX
XX 000000 FTNV
-----------------------
*Country codes in bold italics indicate a patent has been granted in that
country.
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
EP 189,642 Xxxxxx Both gasoline and diesel additives FTI
(P0042A) Xxxxxxx combined in one case for foreign filing
AU* 583,580 FTI
CA 1,305,607 FTI
CL 36,883 FTI
ES 548,951 FTI
GB 2,178,757 FTI
GR 85.2745 FTI
CA 612,107 XXXX
XX 0000/00 XXXX
XX 000000 (AT, BE, CH, DE, ES, FTNV
FR, GB, IT, LU, NL, SE)
JP 02-502428 XXXX
XX 000000 FTNV
U.S. 5,404,841 Valentine Emulsified fuel contains water-soluble Not
(P1001B) and fuel-soluble platinum group metals assigned
or cerium alone or with other metals
such as copper, iron or manganese,
and urea to reduce NO(2).
CL 1259/94 PPI
EP 94927236.3 PPI
IN 1097/Del/94 PPI
MX 946596 PPI
TW NI-085549 PPI
U.S. 5,584,894 Valentine Emulsions with up to 70% water and PPI
(P1001C) Xxxxx-Xxxxxx with lubricity additive and catalyst are
used for NOx reduction. Urea and
other NOx-reducing agents are optional.
CA 2,191,755 FTNV
EP 95921501.3 XXXX
XX 000000/00 FTNV
U.S. 5,535,708 Valentine Similar to P1001B, but claims urea PPI
(P1001D) equivalents to reduce no(2)
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
U.S. 5,266,083 Xxxxx-Xxxxxx PPD permits retarding diesel timing to PPI
(P1002A) Valentine reduce NOx by reducing the expected
Xxxxxxx increase in particulates.
AU 674,297 PPI
CA 2,123,805 PPI
EP 93901333.0 (DE, FR, GB, IT, SE) PPI
08/778.860 Xxxxx-Xxxxxx Basic application in this series. PPD CDTI
(P1004F) Valentine with an optional second catalytic metal
Spraque such as Mn, Fe, Cu, Ce, Li or Na, reduces
Xxxxxxx Co and HC emissions from trap while
moderating oxidation of SO(2) to SO(3).
CA 2,149,035 FTNV
EP 94901430.2 FTNV
JP 512366/1994 XXXX
XX 000000/00 XXXX
XX 937.003 FTNV
08/760,085 Xxxxx-Xxxxxx Second application in this series. CDTI
(P1004E) Valentine Copper data is added.
Xxxxxxx
Xxxxxxx
08/514,978 Xxxxx-Xxxxxx Third case in this series. Adds cerium data. PPI
(P1004D) Valentine PCT US96/11908
Xxxxxxx
Xxxxxxx
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
08/518,251 Xxxxx-Xxxxxx PPD is used in combination with a trap PPI
(P1009B) and a nox-reducing catalyst and reagent.
not available Li and/or Na can be added. New claims
(P1009C) specify particulate trap followed by SCR.
CL 1009/94 PPI
EP 94922518.9 PPI
IN 883/Del/94 PPI
JP 504646/1995 PPI
MX 945.282 PPI
XX 000000 XXX
XX NI-079182 PPI
VE 1424/94 PPI
08/319,620 Xxxxx-Xxxxxx Emissions are reduced from two-stroke PPI
(P1011A) engines through the use of fuels or motor
oils including platinum group metal
catalyst which catalyzes a flow-through
converter over long periods of operation.
IN 0000/Xxx/00 XXX
XX 000000 XXX
XX NI-085555 PPI
08/890,145 Xxxxx-Xxxxxx Same as P1011A PPI
(P1011B)
U.S. 5,693,106 Xxxxx-Xxxxxx Stability of water-dispersible platinum PPI
(P1012B) Valentine compounds and fuel-soluble platinum
Xxxxxxx compounds are enhanced by addition of a
water scavenger or emulsifier.
BR PI9606909-0 PPI
CA 2,210,256 PPI
EP 96902142.7 PPI
ID P960085 PPI
KR 704820/97 PPI
MX 975,258 PPI
XX 000000 XXX
XX 00000000 XXX
XX 96/0268 PPI
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
U.S. 5,501,714 Valentine Operation of diesel engines with reduced PPI
(P1014A) Xxxxx-Xxxxxx platinum particulate emission by utilizing
a platinum group metal fuel additive and a
pass-through catalytic oxidizer.
CA not available PPI
CN 96192513.2 PPI
EP not available PPI
IN 399/Del/96 PPI
JP 527851/1996 PPI
KR 706395/94 PPI
MX 966.977 PPI
XX 000000 XXX
XX 00000000 XXX
XX 96/1657 PPI
PCT Valentine Catalytic ceramic cylinder parts for PPI
US96/14079 Xxxxx-Xxxxxx internal combustion engines.
(P1015A) Xxxxxxx
08/597,517 Valentine Method and apparatus for reducing harmful CDTI
(P1017A) Xxxxx-Xxxxxx emissions from a diesel engine by post
Spraque combustion catalyst injection. Water-
soluble compounds as well as AcAc and soaps
are covered.
PCT US97/01606
08/626,780 Xxxxx-Xxxxxx Urea is catalytically hydrolyzed and/or CDTI
(P1018A) pyrolized by diesel SCR.
PCT US97/05468
08/747,716 Xxxxxxx Operation of diesel engines with emulsions CDTI
(P1019A) Tarabulski for reduced NOx emissions by starting
Xxxxx-Xxxxxx ignition timing at a set point.
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
08/752,344 Xxxxx-Xxxxxx System for fueling and feeding chemicals CDTI
(P1020B) Valentine to internal combustion engines for NOx
Tarabulski reduction emulsifies chemical solution
in the fuel and then separates.
08/772,275 Xxxxx-Xxxxxx Method and apparatus for reducing harmful CDTI
(P1021A) Xxxxxx emissions from a lean-burn engine by urea
Xxxxxxx injection SCR at elevated temperature
and pressure.
08/321,209 Xxxxx-Xxxxxx Reducing NOx emissions from an engine CDTI
(P1021C) Xxxxxx by temperature-controlled urea injection
Xxxxxxx for selective catalytic reduction.
Tarabulski
08/792,287 Xxxxx-Xxxxxx Bimetallic gasoline additive contains CDTI
(P1022A) Valentine rhodium acetylacetonate and a fuel-
Xxxxxxx soluble platinum compound.
08/826,165 Xxxxx-Xxxxxx Reducing NOx emissions from an engine CDTI
(P1024A) Xxxxxx by on-demand generation of ammonia for
Xxxxxxx selective catalytic reduction.
08/831,210 Xxxxx-Xxxxxx Reducing NOx emissions from an engine CDTI
(P1025A) Valentine by selective catalytic reduction
Tarabulski utilizing solid reagents.
08/833,175 Tarabulski Reducing NOx emissions from an engine CDTI
(P1026A) while maximizing fuel economy.
60/043,266 Xxxxx-Xxxxxx Method for reducing emissions from a CDTI
(P1027A) Valentine diesel engine
TW 86110574 CDTI
DOCUMENT INVENTOR(S) ABSTRACT APPLICANT/
ASSIGNEE
08/868,870 Xxxxx-Xxxxxx High-temperature injection of urea for CDTI
(P1028A) Tarabulski reducing lean-burn engine no(2)
Xxxxxxx emissions by selective catalytic
Valentine reduction.
08/854,831 Xxxxx-Xxxxxx Low pressure, pyrolization chamber. CDTI
(P1029A) Tarabulski
Xxxxxxx
Xxxxxx
08/749,359 Xxxxx-Xxxxxx Selective catalytic NOx reduction CDTI
(P3034A) utilizing urea with a prechamber to
prevent fouling.
PCT (not available)
08/215,504 Xxxxx-Xxxxxx Enhanced lubricity diesel fuel emulsions NFT
(P4006B) Valentine for reduction of nitrogen oxides.
Xxxxx
DOCUMENT TRADEMARK APPLICANT
73/506,353 Platinum Plus FTI
(T0071A) CN 960088945
CN 960088946
CN 960088947
EP 000195933
FR 95/599379
GB 2,046,018
ID D9616748
ID D9616749
ID J9616750
XX 000000/0000
XX 125416/1995
JP 125417/1995
XX 00000/00
XX 00000/00
XX 00000/00
XX 249,675
MX 249,891
TW 770,817
TW 85034641
T0075A Platinum Plus 2 FTI
CA
74/061,007 Clean Diesel Technologies CDTI
(T2003A) EP 000345801
75/243,063 XXX-NOX
(T2005A) EP 00616532 CDTI
KR1 39214/97
KR2 39215/97
KR3 39216/97
TW1 86042764
TW2 86042763
TW3 86042762
