HomeMy WebLinkAbout2008-382LICENSE AGREEMENT
THIS LICENSE AGREEMENT is made as of the day of 2008
("Effective Date"), by and between HYDROMENTIA, INC., a Florida corporation
("Licensor"), whose mailing address is 3233 SW 33rd 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 27`x' Street, Vero Beach, Florida 32960.
Background. Licensor is the exclusive licensee of 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 Egret Marsh Stormwater
Treatment Park (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 patents constituting the
Technology subject to the terms and conditions of this License Agreement. 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 the parties. Any improvement made by Licensee to the Technology shall be
disclosed promptly to Licensor and shall hereinafter become the property of Licensor.
Licensee hereby agrees to execute any and all documents necessary to perfect Licensor's
rights in such improvements.
3. IMPLEMENTATION OF TECHNOLOGY. Beginning on the date of substantial
completion of Facility, and under a separate contract related to the construction of the Facility
for services not included in this License Agreement, Licensor shall provide startup,
supervisory, operational and training services for a period of ninety (90) calendar days.
These services shall be of sufficient depth, detail and clarity such that upon completion of the
said ninety day period, Licensee will be capable of operating the system without further
assistance from Licensor. After said ninety day period, Licensee shall be solely responsible
for the implementation of the Technology in its Facility in accordance with the instructions
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and guidance provided by Licensor.
4. CUSTOMER SUPPORT. In addition to its obligations under paragraph 3,
Licensor further 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 and canal water in Licensee's Facility. The Facility shall only be operated by
Licensee or by Licensor under separate contract. Licensee shall have the right to transfer the
operation rights granted herein to Indian River Farms Water Control District,
6, REPRESENTATIONS AND WARRANTIES.
(a) Licensor represents and warrants that it has the full power and right to use and
to license others to use the Technology and that it has the full right and power to grant the
license granted herein.
(b) Licensor shall not 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 of Licensor), 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.
(c) Licensor represents and warrants that, as of Effective Date, 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 as 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 warrants to Licensor that Licensee has the authority to enter into this
Agreement. Licensee represents and warrants that it has obtained any and all governmental
approvals required for the obligations under this Agreement. Licensor agrees to use its best
efforts to enable Licensee to comply and to comply with any funding grant conditions
regarding use of Technology, imposed by federal, state and regional water management
districts at no cost to Licensee.
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7. TERM. The license granted pursuant to this Agreement shall be effective as of
the date of execution by both parties and shall expire on the date which the last patent set
forth on Schedule A expires.
8. COMPENSATION. For the right to use the Technology in its Facility, Licensee
will pay Licensor a Fee of $380,000.
a) The Fee is non-refundable and shall be payable as follows:
(1) Ninety -Five Thousand Dollars ($95,000) shall be due within ten (10)
days of Notice to Proceed to the Contractor awarded the construction
contract for the Facility; and
(2) Ninety -Five Thousand Dollars ($95,000) upon 50% Completion of
the Facility by Contractor; and
(3) Ninety -Five Thousand Dollars ($95,000) upon start-up of the
Project; and
(4) Ninety -Five Thousand ($95,000) upon completion of the 90 day
start up of the Facility.
b) All payments due to Licensor shall be made in United States currency by
check drawn on a Florida bank unless otherwise specified by Licensor.
9. TERMINATION. Should Licensor 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-payment. 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 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. The parties' respective
addresses are set forth in the first paragraph of this License Agreement and 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
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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
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 this 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.
15. GENERAL. This Agreement will be governed by and construed and enforced in
accordance with the laws of the State of 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.
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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.
By
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INDIAN RIVER COUNTY.�FLOAIDA,,.
B
Attest: J. K. Barton,
M
Approved
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Clerk'
Administrator
Approved as to form and legal
sufficiency:
Marian E. Fell
Senior Assistant County Attorney
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EXHIBIT A
PATENTS COMPRISING THE TECHNOLOGY
Patent # 5,851,398
Patent # 6,572,770
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EXHIBIT B
LICENSE FEE SERVICES AND CUSTOMER SUPPORT
Under a separate contract related to the construction of the Facility for services not included
in this License Agreement, Licensor. shall provide startup, supervisory, operational, and
training services for a period of ninety calendar days, beginning on the day of substantial
completion. These services shall be of sufficient depth, detail, and clarity such that upon
completion of the said ninety day period, the Licensee will be capable of operating the system
without further assistance from Licensor.
Startup, supervisory, operational, and training oversight services shall include, but not be
limited to:
Oversight of satisfactory hydraulic operation and algal turf development; complete at least
one harvesting event involving satisfactory use of the Harvest Screen and Bar Screen
Assembly (also called Flex -Rake) at the ATSTM Site (however, services shall also include any
additional or necessary harvesting events during said ninety day period), diversion of harvest
water and operation of harvesting equipment, which shall be supplied by Licensee. Any
further supervisory, training, or operational services beyond this ninety day period shall be by
separate contract between the Licensee and Licensor. All labor (other than Licensor
supervisory personnel), maintenance, repairs, monitoring, electric and fuel, and any other
operational costs shall be paid by Licensee.
Provide no less than five training sessions for Licensee personnel, to include theory of
process control; process monitoring and documentation; hydraulic control; crop status
assessments; harvesting and harvest process protocols; composting and composting process
protocols; associated equipment operations and maintenance; safety and health requirements;
and monitoring and documentation.
To the extent that Licensee requires support services from Licensor beyond those set forth
above, such assistance shall be rendered according to the following Fee Schedule, which shall
be effective through December 31, 2010.
Personnel Hourly Billing Rates:
Client Service Manager..................................................................... 155.00
Principal Engineer,".,,,",.
$200.00
Project Engineer.............................................................................
$140 00
Cad Technician",,,, $75.00
Operations Manager,
$85,00
Biologist'. , I I I I I 1 0 1 1 1 1 go. 90 0 0 0 0. 0 6 0 a a 6 1 0 1 1 1 1 10 1 1 1 1 1 1 1 0 0 0 4 0 a V 9 0 a 0 a 0 0 0 1 1 1 1 1 1 1 1
$90,00
Data Analyst,,,,",,,,,, "logo #*'0*6011111111101 "I'd, .00,00
$80,00
Field Technician.............................................................................
$55,00
Administrative Support,,",,,,,,,,, 1 09404*000, ago *&.a 06 11 ",**a *& 0 0 $45.00
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A. Outside contractual services secured by Consultant on CLIENTS'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 the limitations of Florida Statutes section
112.061, as may be amended from time to time.
B. Ttelephone charges, fax, local travel, and regular postage will be billed at
Consultant's actual cost.
co Contract printing and blueprinting shall be charged at Consultant's actual cost.
Photocopies shall be charged at $0.15 per page.
D. Sub contracted professional services shall be reimbursed at Consultant's actual
cost.
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