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HomeMy WebLinkAbout2013-177 77 LICENSE AGREEMENT THIS LICENSE AGREEMENT is made as of the 10th day of Septe*eg013 , ("Effective Date"), by and between HYDROMENTIA, INC ., a Florida corporation ("Licensor"), whose mailing address is 3233 SW 33 `a Road, Suite 201 , Ocala, Florida 34474, and INDIAN RIVER COUNTY, FLORIDA, a political subdivision of the State of Florida ("Licensee"), whose mailing address is 1801 27t` Street, Vero Beach, Florida 32960 (License Agreement'. Background. Licensor owns certain patented technology described on the accompanying Exhibit A which is known as the Algal Turf Scrubber® and is the owner of certain technology relating to the Algal Turf Scrubber® (collectively the "Technology") . Licensee is the owner and operator of the proposed PC -South Algal Turf Scrubber® (the "Facility") and desires to license the right to use the Technology in the Facility on the terms and conditions set forth in this License Agreement. NOW, THEREFORE, in consideration of the foregoing and for other good and valuable consideration, the receipt of which is hereby acknowledged, the parties agree as follows : 1 . GRANT OF LICENSE . Licensor grants to Licensee a nonexclusive license to use the Technology in the operation of its Facility for the life of the Facility. Licensee agrees that its use of the Technology in its Facility will be in accordance with the terms and conditions of this License Agreement. Licensee shall not have the right to sublicense others to use the Technology. Licensee may not use the Technology in any other facility without first entering into a separate License Agreement for that facility or modifying this License Agreement to include such additional facility on terms and conditions mutually acceptable to the parties. 2 . IMPROVEMENTS TO TECHNOLOGY . In the event that Licensor shall develop and patent any improvement to the Technology, Licensor shall notify Licensee of any such improvement. Should Licensee decide to incorporate such improvement into the Facility, there shall be an Optional Continuing Patented Technology Fee due to Licensor as agreed between parties. However, Licensee shall not be required to pay or be subject to the Optional Continuing Patented Technology Fee if Licensee has contributed substantial improvements, time and materials to the development of the improvement to the Technology . 3 . IMPLEMENTATION OF TECHNOLOGY . Licensee shall be solely responsible for the implementation of the Technology in its Facility. 4 . CUSTOMER SUPPORT. Licensor agrees to provide Licensee with the customer support and assistance on terms set forth on the accompanying Exhibit B during the Term of this License Agreement and to provide technical staff for additional assistance to Licensee on the terms described on Exhibit B . 5 . RESTRICTIONS ON USE . Licensee shall not use the Technology for any purpose other than as set forth in this License Agreement and shall not make the Technology available to anyone else, regardless of whether or not Licensor receives compensation for such use or availability. The Technology may be used by Licensee solely for the treatment of stormwater, canal water and reject water from the County ' s reverse osmosis drinking water plant in Licensee ' s Facility. 6 . REPRESENTATIONS AND WARRANTIES . (a) Licensor represents and warrants that it has the full power and right to use and license others to use the Technology and that it has full right and power to grant the license granted herein. (b) Neither party shall be liable for any special, incidental or consequential damages, including, but not limited to, personal injury, property damage or shutdown or non- operation of Facility, however caused or under any theory of liability (unless caused in bad faith), whether based in contract, tort (including negligence), strict liability or other cause and regardless of whether either party has been advised of the possibility of such damage . Each party shall be liable for direct damages. Nothing herein shall be construed as a waiver of Licensee ' s sovereign immunity pursuant to section 768 .28, Florida Statutes . (c) Licensor represents and warrants that, as of Effective Date, the Licensor is not aware that Technology infringes any patent of a third party. Further, Licensor represents and warrants that as of Effective Date that Licensor has not been made aware of any claim by any third party of an allegation of infringement of a third party patent. (d) Other than set forth in paragraph 6(c) above, Licensor makes no other warranties with respect to freedom from alleged infringement of third party patents or freedom from third party infringers, and Licensor is not under any obligation to hold Licensee harmless against any claim of an alleged infringement of a third party patent. . (e) Licensee represents and warrants that, as of Effective Date, Licensee is not aware of any reason why any of the patents set forth in Exhibit A would not be held to be valid and enforceable by a U . S . court and that, as of Effective Date, Licensee concludes that each of the patents set forth in Exhibit A is valid and enforceable . (f) Licensee warrants to Licensor that Licensee has the authority to enter into this License Agreement. Licensee represents and warrants that it has obtained any and all governmental approvals required for the obligations under this License Agreement. Licensor agrees to use its best efforts to enable Licensee to comply with any funding grant conditions regarding use of Technology, imposed by any federal and state agency or the regional water management districts at no cost to Licensee . 7. TERM. The license granted pursuant to this License Agreement shall be effective as of the date of execution by both parties and shall remain effective for the life of the Facility . 2 8 . COMPENSATION . For the right to use the Technology in its Facility, Licensee will pay Licensor a Fee of $ 190,000 . All payments due to Licensor shall be made in United States currency by check drawn on a Florida bank unless otherwise specified by Licensor The Fee is non-refundable and shall be paid in two installments as follows: A . Ninety-Five Thousand Dollars ($95 ,000) within forty-five (45 ) days of the Notice to Proceed to the Contractor awarded the construction contract for the Facility. Be Ninety-Five Thousand Dollars ($95 ,000) six months after the Notice to Proceed to the Contractor. 9 . TERMINATION . Should Licensee breach this Agreement by failing to pay the fees in accordance with paragraph 8 , Licensor shall provide notification of breach to Licensee and demand payment from Licensee . Licensee shall have thirty (30) days or the period set forth by the Local Government Prompt Payment Act (whichever is longer) to cure the breach of non-paytnent. Failure to do so will result in termination of this License Agreement. 10 . POST-TERMINATION RIGHTS . Upon termination of this License Agreement, as set forth in paragraph 9 above, Licensee shall thereafter immediately cease all further use of the Technology at the Facility and all rights granted to Licensee under this License Agreement shall forthwith terminate and immediately revert to Licensor. 11 , NOTICE . All notices and communications sent by either party shall be via certified mail, return receipt requested or by nationally-recognized overnight courier service and shall be effective upon receipt or refusal to accept delivery . Licensor' s address is set forth in the first paragraph of this License Agreement. Licensee ' s address shall be Public Works Stormwater Division, Indian River County, 1801 27th Street, Vero Beach, Florida 32960 . Such addresses may be changed by notifying the other party in the manner set forth in this paragraph. 12 . SEVERABILITY . If any provision hereof is held invalid or unenforceable by a court of competent jurisdiction, such invalidity shall not affect the validity or operation of any other provision and such invalid provision shall be deemed to be severed from this License Agreement and the remainder of this License Agreement shall continue to exist and be enforceable as though the unenforceable term or provision did not exist, unless to do so would materially prevent the accomplishment of the intent of the parties in entering into this License Agreement, in which event this License Agreement shall terminate . 13 . HEADINGS . The headings and captions used herein are for convenience only and are not to be used in interpreting the obligations of the parties under this License Agreement. 14 . ASSIGNMENT . Except as set forth in paragraph 5 , herein, this License Agreement is personal to Licensee and may not be assigned by any act of Licensee or by 3 operation of law without the consent of Licensor, which consent shall not be unreasonably withheld. Licensor may assign any or all of its rights under the License Agreement, including but not limited to the right to receive payment, without the consent of Licensee . Any such assignment by Licensor shall take effect upon Licensee ' s notification by Licensor of such assignment. If Licensor assigns the License Agreement, Licensor shall make its best effort to insure that the assignor shall continue to provide the customer support and technical staff set forth in paragraph 4, herein . 15 . GENERAL . This License Agreement will be governed by and construed and enforced in accordance with the laws of the State of Florida. Venue for resolution of any dispute arising hereunder shall be in Indian River County, Florida. 16 . FORCE MAJEURE . Anything contained in this License Agreement to the contrary notwithstanding, the performance of the obligations of the parties hereto shall be subject to all laws, both present and future, of any government having jurisdiction over the parties hereto, and to orders, regulations, directions, or requests of any such government, or any department, agency, or corporation thereof, and to any contingencies resulting from war, acts of public enemies, strikes, or other labor disturbances, fires, floods, acts of God, or any causes of like or different kind beyond the control of the parties, and the parties hereto shall be excused from any failure to perform or any delay in the performance of any obligation hereunder to the extent such failure or delay is caused by any such law, order, regulation, direction, request, or contingency . 17 . ENTIRE AGREEMENT. This License Agreement embodies the entire understanding of the parties with respect to the subject matter contained herein and shall supersede all previous communications, representations or understandings, either oral or written, between the parties relating to the subject matter hereof. There are no terms, obligations, covenants, express or implied warranties, representations, statements or conditions other than those set forth in this Agreement. No amendment or modification of this Agreement shall be valid or binding upon the parties unless signed by a respective, duly authorized, representative. [remainder of page intentionally left blank] 4 EXHIBIT A PATENTS COMPRISING THE TECHNOLOGY Patent # 59851 ,398 Patent # 6, 5729770 5 EXHIBIT B CUSTOMER SUPPORT To the extent that Licensee requires support services from Licensor, such assistance shall be rendered according to the following Fee Schedule, which shall be effective through December 31 , 2013 . Personnel Hourly Billing Rates : ClientService Manager. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $ 155.00 PrincipalEngineer. . . . . . . . . . . . . . . 000000 * 00 00 0 00000 * $200.00 ProjectEngineer I. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $ 150.00 CADTechnician . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $75.00 OperationsManager. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $85.00 Sr. Biologist . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $ 110.00 Biologist. . . . . . $90.00 DataAnalyst. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. $80.00 FieldTechnician I. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $55.00 Administrative Support . . . . . . . . . . . . 000 * 00000 000000 $45.00 A. Outside contractual services secured by Consultant on Client' s behalf, travel costs by commercial carrier, direct non-salary expenses including, but not limited to, meals, lodging, special mailing or delivery services, legal advertisements and notices, title search service and special survey materials shall be reimbursed at Consultant' s actual cost, subject to limitations of Florida Statutes section 112 . 061 , as may be amended from time to time. Be Telephone charges, fax, local travel, and regular postage will be billed at Consultant' s actual cost. Co Contract printing and blueprinting will be charged at Consultant ' s actual cost. Photocopies shall be charges at $0 . 15 per page . D. Sub contracted professional services shall be reimbursed at Consultant' s actual cost. 6 IN WITNESS WHEREOF, the Licensor and Licensee have caused this License Agreement to be executed by their duly authorized representatives in manner and form sufficient to bind the parties hereto on the date indicated after their respective execution. HYDROMENTIA, INC. B Y • William G . S r Title : President & CEO ggqx ■.a . ngyi OM.l C M/SS 0* i o • .�O,y��gq INDIAN RIVER COUNTY, FLORIDA .. * � By: oseph E . Fie er, Chairman C Approved : September 10 , 2013 ' Jeffery R. Smith, Clerk of Court and Comptroller By Depu Clerk A proved seph B r ounty Administrator Approved as to form and legal sufficiency: 60 ylan Reingold County Attorney 7