exv10w42






Exhibit 10.42



CONFIDENTIAL TREATMENT REQUESTED: Certain portions of this document have been omitted pursuant to a
request for confidential treatment and, where applicable, have been marked with an asterisk
(“[****]”) to denote where omissions have been made. The confidential material has been filed
separately with the Securities and Exchange Commission.




PV LICENSE AGREEMENT




     This PV LICENSE AGREEMENT (this “Agreement”) is made as of this 5th day of September, 2007
(the “Effective Date”) by and between ESLR1, LLC, a Delaware limited liability company with a
principal place of business at 138 Bartlett Street, Marlborough, MA 01752 (“ESLR1”), and TISICS
Ltd., a corporation incorporated under the laws of England and Wales with a principal place of
business at 22 Invincible Road, Farnborough, Hampshire, UK GU14 7QU (“TISICS’). Each of ESLR1 and
TISICS shall sometimes be individually referred to herein as a “Party” and collectively referred to
herein as the “Parties”.



     WHEREAS, Evergreen Solar Inc. (“Evergreen”), the sole initial member of ESLR1, formed ESLR1 on
August 27, 2007 for the purpose of, among other things, (a) manufacturing SiC Fiber (as defined
below) for Evergreen’s String Ribbon operations based on TISICS’ technology, (b) manufacturing SiC
Fiber for TISICS’ composite technologies based on TISICS’ technology, (c) conducting
manufacturing- and product technology-oriented development work required to optimize its activities
in the PV Field only and (d) conducting other activities necessary for the manufacture, testing and
shipment (including to Third Parties (as defined below)) of SiC Fiber in the PV Field (as defined
below); at the same time as entering into this Agreement, the Parties will enter into that certain
Other Fields License Agreement (the “Other Fields License Agreement”);



     WHEREAS, the Parties will negotiate in good faith the terms and conditions of an agreement
under which TISICS will grant ESLR1 a non-exclusive license to the TISICS IP for use in the
Composite Field (the “Composite Field License Agreement”);



     WHEREAS, Evergreen, ESLR1 and TISICS entered into that certain Securities Purchase and
Contribution Agreement dated as of September 5, 2007 (the “Contribution Agreement”) pursuant to
which, among other things, (a) Evergreen agreed to contribute assets in consideration for
membership units in ESLR1, and (b) TISICS agreed to contribute its agreements and covenants set
forth in that certain Facilities and Start Up Agreement dated as of September 5, 2007 between
TISICS and ESLR1 (the “Facilities and Start Up Agreement”), and that certain Supply Agreement dated
as of September 5, 2007 between TISICS and ESLR1 (the “Supply Agreement”), in each case, (among
other things) in consideration for an option to purchase membership units in ESLR1, all on the
terms and conditions set forth in the Contribution Agreement;



     WHEREAS, TISICS desires to grant ESLR1 a license to certain TISICS technology, know-how, plans
and designs related to (1) the manufacture of SiC Fiber for use
in the PV Field, which license shall be exclusive inside the PV Field (with licenses in other fields to form
the subject of the Other Fields License Agreement and Composite Field License Agreement), and (2)




 









 





the construction and operation of a SiC Fiber factory and perform related knowledge transfer and
other services on behalf of ESLR1 all on the terms and conditions set forth herein; and




     NOW THEREFORE, in consideration of the mutual covenants and agreements set forth herein, ESLR1
and TISICS hereby agree as follows:



1. Definitions




     1.1 “Affiliate” means, with respect to an entity, any entity that directly, or through one or
more intermediaries, controls, is controlled by, or is under common control with such entity, as
applicable, where “control” for purposes of this definition means the ownership of at least fifty
percent (50%) of such company’s or entity’s capital stock or the power to direct or cause the
direction of such company’s or entity’s management, whether by ownership of securities, by contract
or otherwise.



     1.2 “Composite Field” means [****]


     1.3 “Controlled” or “Controls”, when used in reference to the rights of a Party or a Party’s
Affiliate(s) in and to Technology or Intellectual Property Rights, means that such entity owns or
purports to own or has the right or purports to have the right to grant a license or sublicense
with respect to such Technology or Intellectual Property Rights to the other Party as provided for
herein without breaching the terms of any agreement such entity has with a Third Party.



     1.4 “Encumbrances” means any Liens, agreements, voting trusts, proxies and other arrangements
or restrictions of any kind whatsoever.



     1.5 “ESLR1 Competitor” means any Third Party that manufactures, sells or provides products or
services in the PV Field, plus any other Third Party that manufactures, sells or provides products
or services relating to strings of material. For the avoidance of doubt and without limitation,
the following entities are ESLR1 Competitors as of the Effective Date: Sharp, Q-Cells, Kyocera,
REC, Sanyo, BP Solar, Mitsubishi Electric, Schott, Shell, Isophoton, SolarWorld, Photowatt, GE,
Suntech, Motech, Kaneka, ErSol, ECD, Sunways, First Solar, Solarfun, SunPower, MEMC, Crystalox,
Solarforce, Solon and Conergy.



     1.6 “ESLR1 IP” means all Intellectual Property Rights Controlled by ESLR1 as of or during the
Grantback License Term that is embodied in Technology (including Improvements) related to the use
of SiC Fiber-related Technology, excluding the TISICS IP.



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     1.7 “ESLR1 Facilities” means, collectively, (i) manufacturing facilities for the Exploitation
of SiC Fiber and (ii) any equipment installed or used in such facilities, in each case that are
owned or controlled primarily by or on behalf of ESLR1 or a ESLR1 Sublicensee.



     1.8 “Exploit” means to make, have made, import, sell, have sold, offer for sale and otherwise
use, including, but not limited to, to research, design, develop, register, modify, enhance,
improve, manufacture, export, transport, distribute, promote, market or otherwise commercialize.



     1.9 “Governmental Entity” means (i) any federal, state, local, municipal, foreign or other
government; (ii) any governmental or quasi-governmental authority of any nature (including any
governmental agency, branch, department, official, entity or self-regulatory organization and any
court or other tribunal); or (iii) any body exercising, or entitled to exercise, any
administrative, executive, judicial, legislative, police, regulatory, or taxing authority or power
of any nature, including any arbitral tribunal



     1.10
“Grantback License Term” means [****] commencing on the Effective Date, plus, if
on the [****] anniversary of the Effective Date TISICS owns at least [****] of ESLR1’s
outstanding LLC Units (as defined in the Contribution Agreement), for so long after such [****]
anniversary that TISICS owns at least [****] of ESLR1’s outstanding LLC Units, in each
case, unless this Agreement is earlier terminated.



     1.11 “Improvements” means all Technology that constitutes an improvement, enhancement,
alteration or modification to or of any Technology.



     1.12 “Intellectual Property Rights” means, collectively, all rights in, to and under (i)
Patents, (ii) registered and unregistered copyrights and (iii) all other intellectual property
rights (including trade secret rights, trademarks, service marks, trade dress and similar rights of
any type under the laws of any governmental authority), including all applications and
registrations relating to the foregoing.



     1.13 “Joint IP” means all Intellectual Property Rights embodied in Technology that is jointly
invented, created or developed by one or more employees, consultants or contractors of each Party.



     1.14 “Key Customer” means, [****]



     1.15 “Laws” means any federal, state, local, municipal or foreign statute, law, ordinance,
regulation, rule, code, order, principle of common law or judgment enacted, promulgated, issued,
enforced or entered by any Governmental Entity, or other requirement or rule of law.



     1.16 “Lien” or “Liens” means any mortgage, pledge, security interest, encumbrance, lien or
charge of any kind or any subordination arrangement in favor of another Person.



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     1.17 “Other Fields” means fields not included within the PV Field or Composite Field.



     1.18 “Patents” means patents and patent applications (which for the purposes of this Agreement
shall be deemed to include certificates of invention and applications for certificates of
invention), including provisionals, divisionals, continuations, continuations-in-part, reissues,
reexaminations, renewals, extensions, supplementary protection certificates, and the like of any
such patents and patent applications, and any foreign equivalents thereof, and shall include
patents whose term has been extended by statutory patent term adjustments in any jurisdiction in
the world, including those patent term adjustments granted under 35 U.S.C. § 154(b).



     1.19 “Person” means an individual, a partnership, a corporation, a limited liability company,
an association, a joint stock company, a trust, a joint venture, an unincorporated organization and
a governmental entity or any department, agency or political subdivision thereof.



     1.20 “PV Field” means (i) [****], and (ii) [****].



     1.21 “Sold” shall mean having closed a transaction under which ESLR1 or any ESLR1 Sublicensee
actually derives revenues from any sale, conveyance or other transfer of SiC Fiber (for clarity,
excluding bad debt transactions which do not involve Evergreen and returns of SiC Fiber). Any such
transaction shall be referred to as a “Sale”. Further, any inventory of SiC Fiber that is
purchased by Evergreen or any of Evergreen’s Affiliates and that is held in ESLR1’s or a ESLR1
Sublicensee’s inventory for more than a period of [****] days after such purchase shall be deemed
to have been Sold upon the expiration of such period.



     1.22 “SiC Fiber” means [****]


     1.23 “Technology” means, collectively, (i) know-how, show-how, trade secrets, inventions,
discoveries, developments, methods, modifications, designs, chemical and biological materials,
formulae, processes, information, documents, studies, techniques, algorithms, results, data, data
structures, databases, data collections, mask works, manufacturing processes and data,
specifications, sourcing information, supplier and customer lists, and quality control and testing
procedures, and (ii) original published and unpublished works of authorship fixed in a tangible
medium of expression, including software and code (including software and firmware listings,
assemblers, applets, compilers, source code, object code, net lists, design tools, user interfaces,
application programming interfaces, protocols, formats, documentation, annotations, comments,
system build software and instructions), graphics or images, text, audio or visual works, materials
that document design or design processes, or that document research or testing, schematics,
diagrams, product specifications and other works of authorship, in each case of clauses (i) and
(ii), whether or not patented or patentable and whether or not in written form.



     1.24 “Third Party” shall mean any Person, other than ESLR1, TISICS and their respective
Affiliates.



     1.25 “TISICS Competitor” means any Third Party that (i) develops, manufactures, distributes or
sells composite materials or components utilizing silicon carbide monofilaments in



4









 







the Composite
Field and/or (ii) develops, manufactures, distributes or sells silicon carbide fiber or similar
filamentary reinforcements in the Composite Field.



     1.26 “TISICS IP” means all Intellectual Property Rights Controlled by TISICS or any of its
Affiliates as of the Effective Date or during the Term that is embodied in Technology (including
Improvements) related to (a) the research, design, development, manufacture or testing of SiC Fiber
or (b) the planning, design, construction, commissioning, operation, maintenance, support or other
use (collectively, “Construction and/or Operation”) of the ESLR1 Facilities. A description of
TISICS IP existing as of the Effective Date is set forth in Exhibit B. For the avoidance
of doubt, TISICS IP shall not include any Intellectual Property Rights embodied in Technology or
Improvements created after the Effective Date that are identified pursuant to a written notice
delivered in good faith by TISICS to ESLR1 as not Controlled by TISICS, which notice (i) is
delivered on or prior to TISICS’ first delivery or making available of any such Technology or
Improvements to ESLR1 and (ii) describes the substance of such Technology or Improvements and
identifies the applicable Third Party that owns or controls such Technology or Improvements.



2. License.




     2.1 TISICS IP License.



          (a) License. TISICS, for itself and on behalf of its Affiliates, hereby grants ESLR1 an
irrevocable, perpetual, worldwide, royalty-bearing (in accordance with Section 4 and subject to
Section 4.4), transferable (in accordance with Section 11.7), sublicensable (in accordance with
Section 2.1(b)) right and license under the TISICS IP within the PV Field only to (i) Exploit SiC
Fiber, (ii) Construct and/or Operate the ESLR1 Facilities and (iii) copy, distribute, display,
perform and modify (including the right to create derivative works (for use in the PV Field only)
of) the TISICS IP for the purpose of engaging in the activities described in the foregoing clauses
(i) and (ii). The license granted pursuant to the preceding sentence shall be exclusive (even as
to TISICS and its Affiliates) in the PV Field.




          (b) Sublicensing. The license contained in Section 2.1(a) includes the right to grant
sublicenses in the PV Field only to Third Parties other than TISICS Competitors (each Third Party
sublicensee, a “ESLR1 Sublicensee”), provided that ESLR1 shall remain responsible for the
performance of the ESLR1 Sublicensees hereunder and any such sublicense granted by ESLR1 shall be
pursuant to a written agreement that is at least as protective of TISICS, with respect to the
license contained in Section 2.1(a), as this Agreement and provided that TISICS has consented to
the granting of such sublicense, such consent not to be unreasonably withheld or delayed, provided
further that ESLR1 may grant Evergreen and Evergreen’s Affiliates a sublicense without TISICS’
consent or any requirement of a written agreement (but subject to prior written notice of such
sub-license being given to TISICS). ESLR1 Sublicensees shall not have the right to grant any
further sublicenses under any such sublicense granted by ESLR1. The terms of the agreement with
ESLR1 Sublicensees will expressly prohibit in writing all of its ESLR1 Sublicensees from exercising
the license grant contained in Section 2.1(a) (but not any other sublicenses such ESLR1 Sublicensee
may be granted, for example, under the Composite
Field License Agreement or Other Fields License Agreement) outside the PV Field. Subject to
Section 2.5, any purchaser of SiC Fiber in the PV Field shall, by operation of this Agreement,



5









 






receive the right to sell, offer for sale, resell, offer for resale, import and otherwise use such
SiC Fiber in the PV Field by operation of the patent exhaustion/first sale doctrine, but otherwise
shall receive no licenses, sublicenses or other rights under the TISICS IP by virtue of its
purchase of SiC Fiber in the PV Field from ESLR1 or a ESLR1 Sublicensee.




     2.2 Reservation of Rights. Subject to Section 2.3(d), ESLR1 shall acquire no right,
title or interest in, to or under, and TISICS and its Affiliates hereby reserve all right, title
and interest in, to and under, the TISICS IP, by implication, estoppel or otherwise, other than the
express license grant to ESLR1 set forth in Section 2.1(a) or as otherwise expressly provided
herein.



     2.3 Ownership of Intellectual Property Rights. The following shall apply to all
Technology (and all Intellectual Property Rights embodied therein) invented, created or developed
under this Agreement, the Other Fields License Agreement, the Composite Field License Agreement,
the Supply Agreement, the Facilities and Start Up Agreement and any other written agreement between
the Parties during the respective terms of such agreements:



          (a) TISICS IP. As between the Parties, TISICS and/or its Affiliate(s) shall have exclusive
ownership of the TISICS IP.




          (b) ESLR1 IP. As between the Parties, ESLR1 shall have exclusive ownership of the ESLR1 IP.




          (c) Newly Developed Intellectual Property. As between the Parties, subject to Section 2.3(d),
(i) TISICS and/or its Affiliate(s) shall have exclusive ownership of (A) all Technology (and all
Intellectual Property Rights embodied therein) invented, created or developed by one or more
employees, consultants or contractors of TISICS and/or its Affiliate(s), as applicable, during the
Term without any employees, consultants or contractors of ESLR1, except to the extent that any such
Technology constitutes an Improvement solely to the ESLR1 IP or any other Intellectual Property
Rights then-Controlled by ESLR1 (i.e., such Technology does not constitute an Improvement to any of
the TISICS IP or Joint IP) (such Improvement, a “ESLR1 IP Improvement”), and (B) TISICS IP
Improvements (as defined below) and (ii) ESLR1 shall exclusively own (A) all Technology (and all
Intellectual Property Rights embodied therein) invented, created or developed by one or more
employees, consultants or contractors of ESLR1 and/or its Affiliate(s), as applicable, during the
Term without any employees, consultants or contractors of TISICS or Affiliates of TISICS, except to
the extent that any such Technology constitutes an Improvement solely to the TISICS IP or any other
Intellectual Property Rights then-Controlled by TISICS and/or its Affiliate(s) (i.e., such
Technology does not constitute an Improvement to any of the ESLR1 IP or Joint IP) (such
Improvement, a “TISICS IP Improvement”) and (B) ESLR1 IP Improvements.




          (d) Joint IP. If Technology is jointly invented, created or developed by one or more
employees, consultants or contractors of each of ESLR1 and/or its Affiliate(s), on the one hand,
and TISICS and/or its Affiliate(s), on the other hand, then such Technology, and all Joint
IP therein, shall be jointly owned by ESLR1, on the one hand, and TISICS and/or its
Affiliate(s), on the other hand, as applicable, without any duty to account.




6









 








          (e) Assignment. To the extent any Party or its Affiliates retains any ownership interest in,
to or under any Technology or Intellectual Property Rights that are properly owned (in accordance
with this Section 2.3) by the other Party or such other Party’s Affiliates, such Party hereby
assigns, and will assign, on behalf of itself and its Affiliates, to such other Party or such other
Party’s Affiliates, as applicable, all of its ownership interest in, to and under such Technology
and Intellectual Property Rights in all countries and territories worldwide and under any
international conventions, free and clear of any and all Encumbrances. Each Party shall provide to
the other Party all assistance (including the execution of any applicable documents of assignment
or registration) reasonably requested by such other Party to perfect the rights described in this
Section 2.3.




          (f) Licenses. For the avoidance of doubt and without limitation, the Intellectual Property
Rights embodied in the Technology covered by this Section 2.3 shall be deemed TISICS IP or ESLR1
IP, as applicable, and thus subject to the licenses granted in the applicable agreement between the
Parties, to the extent the scope of the definitions of “TISICS IP” or “ESLR1 IP”, respectively,
cover such Technology.




     2.4 Assignment of Inventions by Personnel. Each Party shall enter into binding
agreements obligating all employees, consultants and contractors performing activities related to,
under or as contemplated by this Agreement, the Other Fields License Agreement, the Composite Field
License Agreement, the Supply Agreement, the Facilities and Start Up Agreement or any other written
agreement between the Parties (i) to assign his/her interest in any Technology conceived or reduced
to practice in the course of such activities (and all Intellectual Property Rights therein) to the
Party for which such employee, consultant or contractor is providing its services and (ii) to
maintain the confidentiality of the same in accordance with reasonable confidentiality provisions
at least as protective of the Technology and Intellectual Property Rights owned by the other Party
or such other Party’s Affiliates as those provisions set forth in Section 6.



     2.5 Third Party Sales. All sales of SiC Fiber to Third Parties by ESLR1 and ESLR1
Sublicensees must contain appropriate restrictions preventing the use by Third Parties of SiC Fiber
in the Composite Field, whether directly or as a recycled material. If ESLR1 becomes aware of any
use by a Third Party of such SiC Fiber in the Composite Field, ESLR1 shall reasonably cooperate
with TISICS, at TISICS’ cost, in enforcing such restrictions.



     2.6 Field Limitation. For the avoidance of doubt, without limiting and subject to the
rights granted pursuant to the Composite Field License Agreement, ESLR1 shall not intentionally
develop Technology under the license granted in Section 2.1(a) that is specifically and exclusively
targeted for the production and use of SiC Fiber in the Composite Field.



3. Delivery of TISICS IP; Other Obligations.




     3.1 Delivery of TISICS IP.



          (a) As soon as practicable after the Effective Date, TISICS shall make available for
inspection by ESLR1, in hardcopy or electronic format, a copy of documents relevant to the
Construction and/or Operation of the ESLR1 Facilities and to the manufacture of




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SiC Fiber
(excluding, for clarity, any documents that are irrelevant to the performance of such activities in
the PV Field), including documents, drawings and specifications (“TISICS Materials”), in each case,
existing as of the Effective Date and for use in the PV Field. TISICS shall provide ESLR1 with
copies of such TISICS Materials that are material to the performance of such activities in the PV
Field as soon as commercially possible but in any event within the earlier of (i) [****] calendar
days following the Effective Date or (ii) [****] calendar days after the receipt of written notice
from ESLR1 if ESLR1 determines in good faith that TISICS is not cooperating with ESLR1 or otherwise
not complying with its obligations in this Section 3.1(a), in each case, which TISICS Materials
shall include the documents, drawings and specifications set forth in Exhibit C.




          (b) Thereafter, TISICS shall continue to give ESLR1 access to TISICS Materials as ESLR1 may
reasonably request for the purposes of ESLR1’s Construction and/or Operation of the ESLR1
Facilities and manufacturing of SiC Fiber in the PV Field. Further, TISICS shall [****] develop a
process for manufacturing SiC Fiber for use in the PV Field that is reasonably acceptable to ESLR1.
Without limiting any of ESLR1’s remedies, TISICS shall deliver to ESLR1 copies of all TISICS
Materials (for any field) not already delivered to ESLR1 within one (1) month of the occurrence of
any of the following: (A) TISICS having not developed such a process within [****] after
the Effective Date or (B) ESLR1 delivering written notice to TISICS at any time that TISICS is not
using its best efforts to develop such a process, provided that TISICS shall have [****] after
receiving such notice to cure such failure to [****]. For the purposes of assessing [****] of
TISICS, TISICS shall provide monthly plans indicating milestone targets for the development of such
process in accordance with such [****] timetable, which plans shall be subject to the written
approval of ESLR1. The Parties acknowledge that the direction and timescales of such plans will
evolve as work progresses and TISICS and ESLR1 will work in good faith to keep the milestone plans
current to the progress achieved.




          (c) The Parties acknowledge that the initial specifications for SiC Fiber for use with
Evergreen’s String Ribbon process are set forth in Exhibit A, and that such specifications
represent a starting point for the development of SiC Fiber by the Parties for use in the PV Field.
The Parties shall work together in good faith to improve and modify such specifications, in
conjunction with the development of a process for manufacturing SiC Fiber for use in the PV Field,
to achieve the SiC Fiber performance and quality characteristics reasonably required by ESLR1.




          (d) Where TISICS requires String Ribbon process trials in order to assess the performance of
the SiC Fiber during development, these trials will be conducted in a timely manner and any delay
that may be required by Evergreen and/or ESLR1 for operational reasons will be added to the
delivery time frame referred to in 3.1(b)(A) above. Evergreen and/or ESLR1 will provide TISICS
with timely feedback with respect to such trials and will specify to TISICS which aspects of the
tested SiC Fiber does not provide the performance and functionality required by Evergreen and/or
ESLR1.




          (e) TISICS’ obligations to make and deliver copies of TISICS Materials shall be subject to any
applicable Third Party copyright and confidentiality agreements. TISICS shall deliver to ESLR1
updates (if any) to such TISICS Materials on no less than a calendar quarterly




8









 




basis to reflect
changes in or additions to (if any) the TISICS Materials. Further, TISICS shall update Exhibit
B upon ESLR1’s reasonable request in order to maintain an up-to-date inventory of TISICS IP
within the PV Field. and at a minimum to maintain a complete and accurate list of all Patents
contained within the TISICS IP (the “TISICS Patents”).




     3.2 Fiber Development Documentation. At the Effective Date TISICS will not be able to
determine which TISICS IP is essential to the development, manufacture and maintenance of SiC Fiber
for the PV Field. Without limiting the generality of Section 3.1, upon completion of the
development of Technology for manufacturing SiC Fiber in the PV Field, TISICS will provide all
TISICS Materials generated for such Technology and any background TISICS Materials deemed to be
essential for the future maintenance and control of such Technology.



     3.3 Outsourced Services. Notwithstanding the foregoing, the Parties acknowledge and
agree that ESLR1 may request that Evergreen (or any of ESLR1’s other Affiliates), TISICS (or any of
TISICS’ Affiliates) or Third Parties perform, whether on a permanent or temporary basis, certain
services (such as services relating to infrastructure, management, operations, technology support
and development) to the extent that ESLR1 determines, after consultation with the relevant entity,
that such entity can perform such services on a more cost-effective basis than if ESLR1 were to
perform such services itself. To the extent that Evergreen (or any of ESLR1’s other Affiliates) or
TISICS (or any of TISICS’ Affiliates) agrees to perform such services, ESLR1 shall pay for such
services on a cost-plus basis to be reasonably determined by the applicable parties. Outsourcing to
a TISICS Competitor for performance of the services described in this section will be subject to
the consent of TISICS, such consent to be withheld by TISICS in its sole discretion.



     3.4 Compliance with Laws. The Parties shall comply with all applicable Laws
(including any intellectual property marking Laws) in the exercise of their rights or performance
of their obligations hereunder.



4. Payments.




     4.1 Payments. Subject to the terms and conditions hereof (including Section 4.4),
ESLR1 shall pay TISICS the Conditional Fees and PV Royalties (each as defined in Exhibit D)
as set forth in Exhibit D.



          (a) Further, subject to Section 4.4, in the event (i) ESLR1 grants a sublicense to a Third
Party (other than a Key Customer of ESLR1) pursuant to Section 2.1(b) and (ii) in consideration for
the grant of such sublicense, such ESLR1 Sublicensee pays ESLR1 amounts in the form of a royalty or
sublicense fee based on the Sale of SiC Fiber by such ESLR Sublicensee in the PV Field, which
amounts are in excess of the PV Royalties payable to TISICS hereunder based on such Sale or, if
applicable, the underlying sale which triggered ESLR1’s obligation to pay PV Royalties (such
excess, the “Excess Fees”), then during the Term ESLR1 shall pay TISICS an amount (the “PV Shared
Excess Fees”) equal to the Excess Percentage (as defined
below) of the Excess Fees received by ESLR1. The “Excess Percentage” shall equal (i) [****]
percent ([****]%) if TISICS has not exercised Tranche One (as defined in that certain LLC
Membership Interest Purchase Option granted to TISICS dated as of September 5, 2007 (the




9









 




“Option”)), (ii) [****] percent ([****] %) if TISICS exercises Tranche One or (iii) [****] percent
([****] %) if TISICS exercises Tranche Two (as defined in the Option).




          (b) ESLR1 shall not have any obligation to pay any PV Shared Excess Fees based on the
following: (i) any sales by Evergreen, ESLR1’s other Affiliates or ESLR1’s Key Customers as ELSR1
Sublicensees hereunder, (ii) any sales by ESLR1 Sublicensees of SiC Fiber to Evergreen, ESLR1’s
other Affiliates or ESLR1’s Key Customers in or after Period 7 or to Third Parties (other than
ESLR1’s Key Customers) in or after Year 11; and (iii) any sales by ESLR1 Sublicensees of SiC Fiber
to the extent that the the manufacture or sale of such SiC Fiber does not infringe or
misappropriate or otherwise involve the use of any of the the TISICS IP (other than any Joint IP).




     4.2 Payment Terms; Reports; Records; Taxes; Audits.



          (a) Payment. All payments to be made by ESLR1 hereunder shall be made in U.S. dollars by wire
transfer to such bank account as TISICS may designate.




          (b) Reports. For as long as PV Royalties or PV Shared Excess Fees are due hereunder, ESLR1
shall furnish to TISICS a written report, within [****] days after the end of each calendar
quarter, showing the amount of (i) SiC Fiber Sold for which PV Royalties and/or PV Shared Excess
Fees are due hereunder and (ii) the PV Royalties and/or PV Shared Excess Fees due for such calendar
quarter. PV Royalty and PV Shared Excess Fee payments for each calendar quarter shall be due at
the same time as such written report for such calendar quarter. All such reports shall be treated
as Confidential Information of ESLR1.




          (c) Records. ESLR1 and ESLR1 Sublicensees shall keep adequate books and records of accounting
for the purpose of calculating all PV Royalties and PV Shared Excess Fees payable to TISICS
hereunder. For the [****] years following the end of the calendar year to which each shall
pertain, such books and records of accounting shall be kept at each of their principal place of
business and shall be open for inspection at reasonable times and upon reasonable notice by an
independent certified accountant selected by TISICS, and which is reasonably acceptable to ESLR1,
for the sole purpose of inspecting the PV Royalties and PV Shared Excess Fees due to TISICS under
this Agreement. In no event shall such inspections be conducted hereunder more frequently than
once every [****]. Such accountant must have executed and delivered to ESLR1 and ESLR1
Sublicensees, as applicable, a confidentiality agreement as reasonably requested by ESLR1, which
shall include provisions limiting such accountant’s disclosure to TISICS to only the results and
basis for such results of such inspection. The results of such inspection, if any, shall be
binding on both Parties. Any underpayments shall be paid by ESLR1 within [****] days of
notification of the results of such inspection. Any overpayments shall be fully creditable against
amounts payable in subsequent payment periods. TISICS shall pay for such inspections, except that
in the event there is any upward adjustment in aggregate PV Royalties and PV Shared Excess Fees
payable for any calendar year shown by such inspection of more than [****] percent ([****] %) of
the amount paid, ESLR1 shall reimburse TISICS for any reasonable out-of-pocket costs of such
accountant.




     4.3 Taxes and Interest; Setoff.



10









 





          (a) Taxes. Any applicable withholding tax shall be deducted by ESLR1 from any payments due
under this Agreement and borne by TISICS. ESLR1 shall cooperate with TISICS to enable TISICS to
claim exemption therefrom under any double taxation or similar agreement in force and shall use
commercially reasonable efforts to provide to TISICS proper evidence of payments of withholding tax
and assist TISICS by obtaining or providing in as far as possible the required documentation for
the purpose of TISICS’ tax returns.




          (b) Interest. ESLR1 shall pay TISICS interest on any payments that are not paid on or before
the date such payments are due under this Agreement at a rate of one and one-half percent (1.5%)
per month or the maximum applicable legal rate, if less, calculated on the total number of days
payment is delinquent.




          (c) Setoff. ESLR1 shall have the right to setoff any PV Royalties and PV Shared Excess Fees
due TISICS hereunder against amounts owed by TISICS to ESLR1 under the Supply Agreement, provided
that PV Royalties and PV Shared Excess Fees will first be set-off against payments due under that
certain Promissory Note, dated as of September 5, 2007 (“Loan Agreement”), and only to the extent
that there are any remaining PV Royalties and PV Shared Excess Fees available for set-off after
such payments have been made, will these be applied against amounts due by TISICS to ESLR1 under
the Supply Agreement.




          (d) Credits Against Overhead Payments. Further, ESLR1 shall have the right to credit any PV
Royalties, PV Shared Excess Fees, Conditional Fees or other amounts due to TISICS hereunder against
any Overhead Overage Payments (as defined in the Facilities and Start Up Agreement) made to TISICS
under the Facilities and Start Up Agreement. For the avoidance of doubt, even if ESLR1 does not
credit such PV Royalties, PV Shared Excess Fees, Conditional Fees or other amounts due to TISICS
hereunder against such Overhead Overage Payments, the amount of Overhead Overage Payments against
which such royalties, fees or amounts are creditable under this Section 4.3(d) shall not bear
interest or be refundable (without limiting the refundability of Overhead Overage Payments for
other reasons).




          (e) Priority. After the Maturity Date (as defined in the Loan Agreement), any PV Royalties
and PV Shared Excess Fees that may be set-off or credited in accordance with Section 4.3(c) or
4.3(d) shall first be set-off against amounts owed by TISICS to ESLR1 under the Supply Agreement or
Loan Agreement pursuant to Section 4.3(c) before such PV Royalties and PV Shared Excess Fees may be
credited against Overhead Overage Payments pursuant to Section 4.3(d).




     4.4 Default of Note. If Evergreen elects to exercise its Note Default Option (as
defined in the Loan Agreement), then automatically, without any further action of the Parties, (i)
the license set forth in Section 2.1(a) shall become royalty-free and fully paid-up, (ii) ESLR1
shall not owe any future Conditional Fees, PV Royalties and/or PV Shared Excess Fees or other
future fees or payments hereunder, and (iii) Sections 4.1, 4.2, 4.3(b) and Exhibit D shall
terminate and have no further force or effect.



5. Prosecution; Infringement.




11









 





     5.1 Appointment and Cooperation. With respect to the rights and activities of ESLR1
set forth in this Section 5, TISICS hereby appoints ESLR1 as its agent for such purposes with the
authority to act on TISICS’ behalf with respect to the TISICS IP relating to the PV Field. TISICS
shall cooperate with ESLR1 in the exercise of ESLR1’s authority granted herein, and shall execute
such documents and take such additional action as ESLR1 may reasonably request in connection
therewith.



     5.2 Patent Prosecution and Maintenance.



          (a) By TISICS. TISICS shall, at its sole cost, be solely responsible for and make all
decisions with respect to the preparation, prosecution (including any interferences, oppositions,
reissue proceedings and reexaminations) and maintenance of the TISICS Patents. TISICS shall
provide to ESLR1 copies of any papers relating to the filing, prosecution or maintenance of TISICS
Patents within the PV Field promptly upon receipt and shall provide ESLR1 with a reasonable
opportunity to review and comment on such papers with respect to applications within the PV Field.




          (b) By ESLR1. TISICS shall not knowingly permit any of the TISICS Patents within the PV Field
to be abandoned in any country without ESLR1 first being given an opportunity to assume full
responsibility for the continued prosecution and maintenance of same. In the event that TISICS
decides not to continue the prosecution or maintenance of any TISICS Patent within the PV Field in
any country, TISICS shall provide ESLR1 with notice of this decision at least [****] days prior to
any pending lapse or abandonment thereof. In the event that ESLR1 elects to assume responsibility
for such prosecution and maintenance within [****] days of TISICS’ notice, Section 5.2(a) shall
thereafter apply to such TISICS Patent(s) except that the role of TISICS and ESLR1 shall be
reversed thereunder (including that ESLR1 shall be solely responsible for all costs arising from
those activities). Such TISICS Patent(s) shall otherwise continue to be subject to all of the
terms and conditions of the Agreement in the same way as the other TISICS Patents within the PV
Field.




     5.3 Enforcement of TISICS IP.



          (a) Notice of Infringement. In the event that either Party becomes aware of a suspected
infringement or misappropriation of the subject matter of any TISICS IP in the PV Field, or any
such TISICS IP is challenged in any action or proceeding (other than any patent interferences,
oppositions, reissue proceedings or reexaminations, which are addressed in Section 5.2), such Party
shall notify the other Party promptly, and following such notification, the Parties shall confer.




          (b) Enforcement. In the case of infringement or misappropriation of the TISICS IP in the PV
Field, ESLR1 shall have the right, but not the obligation, to initiate and prosecute such legal
action or proceeding or to control the defense of any action or proceeding relating to the ESLR1 IP
(other than any patent interferences, oppositions, reissue proceedings or reexaminations, which are
addressed in Section 5.2), in its own discretion and at its own expense. If ESLR1 fails to take
steps reasonable under the circumstances to resolve such actual or suspected infringement or
misappropriation or initiate a lawsuit within [****] days of receiving written notice of such
actual or suspected infringement or misappropriation from TISICS or delivering written notice of
such actual or suspected infringement to TISICS, as applicable, TISICS shall have the right, but
not the obligation, to initiate an action or proceeding, in its own discretion and at its own
expense.




12









 





          (c) Withdrawal. If either Party brings an action or proceeding under this Section 5.3 and
subsequently ceases to pursue or withdraws from such action or proceeding, it shall promptly notify
the other Party and the other Party may substitute itself for the withdrawing Party under the terms
of this Section 5.3.




          (d) Recovery Allocation. In the event that either Party exercises the rights conferred in
this Section 5.3 and recovers any damages or other sums in such action or proceeding or in
settlement thereof, such damages or other sums recovered shall first be applied to all
out-of-pocket costs and expenses incurred by the Parties in connection therewith (including
attorneys’ fees), unless not reimbursable hereunder. If such recovery is insufficient to cover all
such costs and expenses of both Parties, the controlling Party’s costs shall be paid in full first
before any of the other Party’s costs. If after such reimbursement any funds shall remain from
such damages or other sums recovered, such funds shall be retained by the Party that controlled the
action or proceeding under this Section 5.3.




6. Confidentiality.




     6.1 Definition of Confidential Information. “Confidential Information” means, subject
to the exceptions set forth below in Section 6.2, any information or data, regardless of whether it
is in tangible form, of a Party (the “Disclosing Party”) that the Disclosing Party has either
marked as confidential or proprietary, or has identified in writing as confidential or proprietary
within thirty (30) days of disclosure to the other Party (the “Receiving Party”), and has provided
to the Receiving Party under this Agreement; provided that any Disclosing Party’s business plans,
strategies, Technology, customers, customer lists, billing records and products shall be deemed
Confidential Information of the Disclosing Party even if not so marked or identified and the terms
of this Agreement will be deemed Confidential Information. For the avoidance of doubt, any trade
secrets contained within the TISICS IP with application in the PV Field shall be deemed the
Confidential Information of both Parties, subject to the provisions of this Section 6.



     6.2 Exceptions. The obligations in Section 6.1 shall not apply with respect to any
portion of the Confidential Information that the Receiving Party can show by competent proof: (i)
is publicly disclosed by the Disclosing Party, either before or after it is disclosed to the
Receiving Party hereunder; (ii) was known to the Receiving Party or any of its Affiliates, without
any obligation to keep it confidential or any restriction on its use, prior to disclosure by the
Disclosing Party; (iii) is subsequently disclosed to the Receiving Party or any of its Affiliates
by a Third Party lawfully in possession thereof and without any obligation to keep it confidential
or any restriction on its use; (iv) is published by a Third Party or otherwise becomes publicly
available or enters the public domain, either before or after it is disclosed to the Receiving
Party; or (v) has been independently developed by employees or contractors of the Receiving Party
or any of its Affiliates without the aid, application or use of Confidential Information of the
Disclosing Party.



     6.3 Confidentiality Obligations. Except as expressly provided herein, each of the
Parties agrees that, for itself and its Affiliates, and for as long as this Agreement is in effect
and thereafter, a Party and its Affiliates (the “Receiving Party”) receiving Confidential
Information of the other Party or its Affiliates (the “Disclosing Party”) shall not (i) use any
such Confidential Information in any way, for its own account or the account of any Third Party,
except for the



13









 







exercise of its rights and performance of its obligations under this Agreement, or (ii)
disclose any such Confidential Information to any party, other than furnishing such Confidential
Information to (a) its employees and consultants who are required to have access to the
Confidential Information in connection with the exercise of its rights and performance of its
obligations under this Agreement, (b) investors, prospective acquirers and professional advisers
and (c) ESLR1 Sublicensees and TISICS Sublicensees; provided that such employees and consultants,
investors, prospective acquirers and professional advisers and ESLR1 Sublicensees and TISICS
Sublicensees are bound by written agreements or, in the case of professional advisers, ethical
duties respecting such Confidential Information in accordance with the terms of this Section 6.
The Receiving Party agrees that it will not allow any unauthorized Person access to such
Confidential Information, and that the Receiving Party will use reasonable measures to protect the
confidentiality of such Confidential Information, including implementing and enforcing procedures
to minimize the possibility of unauthorized use or copying of such Confidential Information. In
the event that the Receiving Party is required by law to make any disclosure of any of such
Confidential Information, by subpoena, judicial or administrative order or otherwise, the Receiving
Party shall first give written notice of such requirement to the Disclosing Party, and shall permit
the Disclosing Party to intervene in any relevant proceedings to protect its interests in such
Confidential Information, and provide reasonable cooperation and assistance to the Disclosing Party
in seeking to obtain such protection. Notwithstanding the foregoing, ESLR1 and ESLR1 Sublicensees
may make such disclosures of Technology covered by the TISICS IP specifically concerning SiC Fiber
and relating to the PV Field as any of them may deem reasonably necessary for the purpose of
Exploiting the SiC Fiber in the PV Field.



     6.4 Terms of this Agreement; Publicity. The Parties agree that the terms of this
Agreement shall be treated as Confidential Information of both Parties, and thus may be disclosed
only as permitted by Section 6.3. Notwithstanding the foregoing, TISICS agrees that Evergreen may
file a copy of this Agreement with the United States Securities and Exchange Commission and other
similar or comparable governmental bodies, authorities or agencies, if necessary. Subject to the
foregoing, neither Party shall make any public announcements relating to the terms, conditions or
existence of this Agreement without the prior written consent of the other Party.



     6.5 Return of Confidential Information. The Receiving Party agrees that, upon the
termination of this Agreement, the Receiving Party will immediately return all Confidential
Information of the Disclosing Party and any tangible expression thereof (including all copies,
summaries and notes of the contents or parts thereof) to the Disclosing Party and no part thereof
shall be retained by the Receiving Party in any form and/or for any reason; provided that the
Receiving Party may retain one copy of such Confidential Information for archival purposes to
satisfy the Receiving Party’s obligations under any applicable laws. Notwithstanding the
foregoing, ESLR1 shall not be obligated to return any Confidential Information of TISICS that is in
whole or in part the subject of the license grant set forth in Section 2.1(a), the license granted
to ESLR1 in the Composite Field License Agreement or the license granted to ESLR1 in the Other
Fields License Agreement, in each case, only for so long as such license is effective.



7. Representations and Warranties; Disclaimer of Implied Warranties.




     7.1 Representations and Warranties.



14









 





          (a) Mutual. Each Party hereby represents and warrants to the other Party as of the Effective
Date that:





          (i) such Party is a corporation duly organized, validly existing and in good standing
under the laws of the state or jurisdiction in which such Party is incorporated, and such
Party has full right and authority to enter into this Agreement and to grant the licenses
and other rights, without payment to a Third Party, granted by such Party as herein
described;




          (ii) this Agreement has been duly authorized by all requisite corporate action, and
when executed and delivered will become a valid and binding contract of such Party
enforceable against such Party in accordance with its terms, subject to applicable
bankruptcy, insolvency, reorganization, moratorium and other law affecting creditors’ rights
generally from time to time if effect, and to general principles of equity;




          (iii) the execution, delivery and performance of this Agreement does not conflict with
any other agreement, contract, instrument or understanding, oral or written, to which such
Party is a party, or by which it is bound, nor will it violate any Law applicable to such
Party; and




          (iv) all necessary consents, approvals and authorizations of all regulatory and
governmental authorities and other Persons required to be obtained by such Party in
connection with the execution and delivery of this Agreement and the performance of such
Party’s obligations hereunder have been obtained.



          (b) TISICS. In addition, TISICS hereby represents and warrants to ESLR1 as of the Effective
Date that:





          (i) Exhibit B-1 contains an accurate list of all TISICS IP relevant to SiC
Fiber manufacturing in the PV Field. Exhibit B-2 contains an accurate list of
TISICS IP relating to SiC Fiber manufacturing for all fields as of the Effective Date
(except to the extent already listed on Exhibit B-1). Exhibit B-3 contains
a complete and accurate list of (A) all licenses, sublicenses or other agreements under
which TISICS or its Affiliates has granted rights to others in TISICS IP (“Licenses Out”),
(B) all licenses, sublicenses or other agreements under which TISICS or its Affiliates are
granted rights by others in the TISICS IP (“Licenses In”) and (C) any obligations of
exclusivity, covenants not to sue, noncompetition, nonsolicitation, right of first refusal,
parity of treatment and/or most favored nation status, or right of first negotiation to
which TISICS or its Affiliates is subject in favor of a Third Party that relate to and/or
restrict any of the TISICS IP.




          (ii) Except as set forth in Exhibit E:




               (A) with respect to the TISICS IP (1) owned or purported to be owned by TISICS
or an Affiliate of TISICS, TISICS or an Affiliate of TISICS exclusively owns such
TISICS IP and, without payment to a Third Party, possesses adequate and enforceable
rights in and to such TISICS IP as necessary to Exploit SiC Fiber in the PV Field
and the Construction and/or Operation of the ESLR1 Facilities, and (2) otherwise
Controlled by TISICS or an Affiliate of



15









 







TISICS, TISICS or an Affiliate of TISICS possesses adequate and enforceable
rights in and to all such TISICS IP as necessary to Exploit SiC Fiber in the PV
Field and the Construction and/or Operation of the ESLR1 Facilities; in the case of
the foregoing clauses (1) and (2) above, free and clear of all Encumbrances;




               (B) the TISICS IP constitutes all of the Intellectual Property Rights (1) used
in the designing, manufacturing, selling, distributing and commercializing the SiC
Fiber in the PV Field and (2) necessary for the Construction and/or Operation of the
ESLR1 Facilities to manufacture SiC Fiber in the PV Field;




               (C) all TISICS IP that has been issued by, or registered, or is the subject of
an application filed with, as applicable, the U.S. Patent and Trademark Office, the
U.S. Copyright Office or any similar office or agency anywhere in the world is
currently in compliance with formal legal requirements (including, as applicable,
payment of filing, examination and maintenance fees, inventor declarations, proofs
of working or use, timely post-registration filing of affidavits of use and
incontestability, and renewal applications), and, to the knowledge of TISICS, all
TISICS IP is valid and enforceable;




               (D) there are no pending or, to the knowledge of TISICS, threatened claims
against TISICS or any of its employees alleging that any practice of the TISICS IP
infringes or violates (or in the past infringed or violated) the rights of others
in, to or under any Intellectual Property Rights (“Third Party IP”) or constitutes a
misappropriation of (or in the past constituted a misappropriation of) any subject
matter of any Intellectual Property Rights of any Person or that any of the TISICS
IP is invalid or unenforceable;




               (E) to the knowledge of TISICS, the practice of the TISICS IP does not infringe
on or violate (and has not in the past infringed on or violated) any Third Party IP
or constitute a misappropriation of (and has not in the past constituted a
misappropriation of) any subject matter of any Third Party IP;




               (F) all former and current employees, consultants and contractors of TISICS and
its Affiliates have executed written instruments with TISICS or its Affiliates, as
applicable, that assign to TISICS or its Affiliates all right, title and interest in
and to any and all TISICS IP and all Technology embodying the TISICS IP;




               (G) to the knowledge of TISICS, there is no, nor has there been any,
infringement or violation by any Person of any TISICS IP or the TISICS’ or its
Affiliates rights therein or thereto, and there is no, nor has there been any,
misappropriation by any Person of any of the TISICS IP or the subject matter
thereof; and



16









 







               (H) TISICS and its Affiliates has taken reasonable security measures to protect
the secrecy, confidentiality and value of all trade secrets contained in the TISICS
IP.



     7.2 Disclaimer of Implied Warranties. EXCEPT AS EXPRESSLY SET FORTH HEREIN, NEITHER
TISICS NOR ESLR1 MAKES ANY REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY
OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE OR NON-INFRINGEMENT.



     7.3 Without limiting Section 9, for the avoidance of doubt, any warranty given in Section 7.1
in relation to TISICS IP excludes any TISICS IP that is not Controlled by TISICS or any of its
Affiliates as of the Effective Date.



8. LIMITATION OF LIABILITY.




     8.1 EXCEPT FOR ANY LIABILITY ARISING FROM (A) A BREACH BY TISICS OR ITS AFFILIATES OF THE
EXCLUSIVE NATURE OF THE LICENSE GRANTED TO ESLR1 IN SECTION 2.1(a) OR ANY OTHER EXCLUSIVITY
PROVISIONS SET FORTH HEREIN, (B) A BREACH BY A PARTY OF ITS CONFIDENTIALITY OBLIGATIONS UNDER
SECTION 6 (C) TISICS’ INDEMNIFICATION OBLIGATIONS SET FORTH IN SECTION 9, AND/OR (D) A BREACH BY
ESLR1 OR ITS AFFILIATES OF SECTION 2.1 IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY
FOR ANY SPECIAL, INCIDENTAL, INDIRECT, PUNITIVE, EXEMPLARY OR CONSEQUENTIAL DAMAGES (INCLUDING ANY
DAMAGES RESULTING FROM LOSS OF USE, LOSS OF DATA, LOSS OF PROFITS OR LOSS OF BUSINESS) ARISING IN
ANY WAY UNDER THIS AGREEMENT AND UNDER ANY THEORY OF LIABILITY (INCLUDING BREACH OF CONTRACT,
STRICT LIABILITY, NEGLIGENCE, OR OTHER TORT), EVEN IF SUCH PARTY IS INFORMED IN ADVANCE OF THE
POSSIBILITY OF SUCH DAMAGES.



     8.2 EXCEPT FOR ANY LIABILITY ARISING FROM (A) A BREACH BY TISICS OR ITS AFFILIATES OF THE
EXCLUSIVE NATURE OF THE LICENSE GRANTED TO ESLR1 IN SECTION 2.1(a) OR ANY OTHER EXCLUSIVITY
PROVISIONS SET FORTH HEREIN, (B) A BREACH BY A PARTY OF ITS CONFIDENTIALITY OBLIGATIONS UNDER
SECTION 6 (C) TISICS’ INDEMNIFICATION OBLIGATIONS SET FORTH IN SECTION 9 AND/OR (D) A BREACH BY
ESLR1 OR ITS AFFILIATES OF SECTION 2.1, EACH PARTY’S CUMULATIVE LIABILITY TO THE OTHER PARTY OR ANY
THIRD PARTY IN CONTRACT, TORT (INCLUDING NEGLIGENCE) OR BREACH OF STATUTORY DUTY, OR OTHERWISE, FOR
ANY LOSS OR DAMAGES RESULTING FROM ANY CLAIMS, DEMANDS, OR ACTIONS ARISING OUT OF OR RELATING TO
THIS AGREEMENT, SHALL NOT EXCEED IN THE AGGREGATE THE GREATER OF (I) [****] OR (II) THE AGGREGATE AMOUNT OF PV ROYALTIES, CONDITIONAL FEES, PV SHARED EXCESS
FEES AND OTHER AMOUNTS PAID OR PAYABLE BY ESLR1 TO TISICS HEREUNDER.



9. Indemnification.




17








 





     9.1 TISICS Indemnity. TISICS on its own behalf and on behalf of its successors,
executors, administrators, estate, heirs and assigns, hereby agrees to indemnify, defend and hold
ESLR1 and ESLR1 Sublicensees, and each of their Affiliates and direct and indirect partners and
members, stockholders, directors, officers, employees and agents and each person who controls any
of them within the meaning of Section 15 of the Securities Act or 1933, as amended, or Section 20
of the Exchange Act of 1934, as amended, (each a “ESLR1 Indemnitee,” and collectively, the “ESLR1
Indemnitees”) harmless from and against all claims, liabilities, threatened claims, damages,
expenses (including reasonable attorneys’ fees), suits, proceedings, losses or judgments, whether
for money or equitable relief, of any kind (collectively, “Losses,” and, each a “Loss”), arising
from (i) any claim that the exercise by any of the ESLR1 Indemnitees of any rights under the TISICS
IP (excluding Joint IP) granted herein infringes on, constitutes a misappropriation of the subject
matter of, or otherwise violates any Third Party IP, (ii) any breach or alleged breach of any of
the representations or warranties of TISICS set forth in Section 7 or (iii) the gross negligence,
recklessness or willful misconduct of TISICS or any of its Affiliates or TISICS Sublicensees.



     9.2 ESLR1 Indemnity. ESLR1 on its own behalf and on behalf of its successors,
executors, administrators, estate, heirs and assigns, hereby agrees to indemnify, defend and hold
TISICS, and each of its Affiliates and direct and indirect partners and members, stockholders,
directors, officers, employees and agents and each person who controls any of them within the
meaning of Section 15 of the Securities Act or 1933, as amended, or Section 20 of the Exchange Act
of 1934, as amended, (each a “TISICS Indemnitee,” and collectively, the “TISICS Indemnitees”)
harmless from and against all Losses, arising from (i) any Third Party claim that any use of any
Technology embodying the TISICS IP (excluding Joint IP) not in accordance with this Agreement or
alteration of any such Technology, in each case, by any of ESLR1 or ESLR1 Sublicensees infringes
on, constitutes a misappropriation of the subject matter of, or otherwise violates any Third Party
IP, solely to the extent that such Loss would not have arisen but for such alteration or improper
or unauthorized use, (ii) any breach or alleged breach of any of the representations or warranties
of ESLR1 set forth in Section 7 or (iii) the gross negligence, recklessness or willful misconduct
of ESLR1 or ESLR1 Sublicensees.



     9.3 The ESLR1 Indemnitees and the TISICS Indemnitees are together referred to in the remainder
of this section 9 as “the Indemnitees” and ESLR1 and TISICS each as an “Indemnifying Party” as the
context requires.



     9.4 Notice of Loss. An Indemnitee shall give the Indemnifying Party notice of any
matter which an Indemnitee has determined has given or could give rise to a right of
indemnification under this Agreement, within 60 days of such determination, stating the amount of
the Loss, if known, and method of computation thereof, and containing a reference to the provisions
of this Agreement in respect of which such right of indemnification is claimed or arises.



     9.5 Third Party Claims. If an Indemnitee shall receive notice of any action, audit,
demand or assessment (each, a “Third Party Claim”) against it or which may give rise to a claim for
Loss under this Section 9, within [****] days of the receipt of such notice, the Indemnitee shall
give the Indemnifying Party notice of such Third Party Claim; provided, however, that the failure
to provide such notice shall not release the Indemnifying Party from any of its obligations



18









 







under this Section 9 except to the extent that the Indemnifying Party is materially prejudiced
by such failure. Subject to the following sentence, the Indemnifying Party may assume control of
the defense of any Third Party Claim provided that (i) the Indemnifying Party shall (within [****]
business days of notice from Indemnitee) deliver to the Indemnitee an unconditional written
agreement to defend, and satisfy if the defense is unsuccessful, such Third Party Claim at the
Indemnifying Party’s sole cost and expense and (ii) the Indemnifying Party provides adequate
assurances that it is financially capable for providing indemnification for such Third Party Claim;
provided, however, in any defense assumed by it, the Indemnifying Party will promptly engage
qualified reputable attorneys, who shall be subject to the reasonable approval of the Indemnitee;
and provided, further, if at any time the Indemnitee determines that it is in its best interests to
assume and control the defense of such Third Party Claim, the Indemnitee shall be entitled to
assume and control such defense (without limiting the Indemnifying Party’s other indemnification
obligations hereunder). Notwithstanding the foregoing, if there exists a conflict of interest that
would make it inappropriate for the same counsel to represent both the Indemnitee and the
Indemnifying Party as determined in the reasonable judgment of the Indemnitee, then the Indemnitee
shall be entitled to retain its own counsel in each jurisdiction for which the Indemnitee
determines counsel is required, at the expense of the Indemnifying Party. In the event that the
Indemnifying Party exercises the right to undertake any such defense against any such Third Party
Claim as provided above, the Indemnitee shall cooperate with the Indemnifying Party in such defense
and make available to the Indemnifying Party, at the Indemnifying Party’s expense, all witnesses,
pertinent records, materials and information in the Indemnitee’s possession or under the
Indemnitee’s control relating thereto as is reasonably required by the Indemnifying Party.
Similarly, in the event the Indemnitee is, directly or indirectly, conducting the defense against
any such Third Party Claim, the Indemnifying Party shall cooperate with the Indemnitee in such
defense and make available to the Indemnitee, at the Indemnifying Party’s expense, all such
witnesses, records, materials and information in its possession or under its control relating
thereto as is reasonably required by the Indemnitee. No such Third Party Claim may be settled by
the Indemnifying Party without the prior written consent of the Indemnitee unless the settlement
contains a full and complete release of the Indemnitee and does not impose any equitable relief or
any other restriction or condition on any of them.



     9.6 Indemnification Procedure. If (and to the extent) an Indemnifying Party is
responsible pursuant hereto to indemnify an Indemnitee in respect to Third Party Claims, then
within ten days after the occurrence of a final determination, finding, order, and/or judgment (a
“Final Determination”) (or sooner if required by such determination), the Indemnifying Party shall
pay the Indemnitee , in immediately available funds denominated in US Dollars, the amount of any
Losses (or such portion thereof as the Indemnifying Party shall be responsible for pursuant to the
provisions hereof). In the event that any Losses incurred by the Indemnitee do not involve payment
by the Indemnitee of a Third Party claim, then, if (and to the extent) the Indemnifying Party is
responsible pursuant hereto to indemnify the Indemnitee against such Losses, the Indemnifying Party
shall within ten days after agreement on the amount of the Losses, or the occurrence of a Final
Determination of such amount, pay to the Indemnitee, in immediately available funds the amount of
such Losses (or such portion thereof as the Indemnifying Party shall be responsible for pursuant to
the provisions hereof).



19









 





     9.7 Cost Offsets. Each of ESLR1 or TISICS as an Indemnitee shall have the right to
reduce any payments owed by it to the other under any written agreement between ESLR1 and TISICS by
the amount of any indemnifiable Losses suffered by any such Indemnitee (including investigation,
defense, settlement or judgment satisfaction and all professional fees).



10. Term; Termination.




     10.1 Term. This Agreement shall commence as of the Effective Date and, unless sooner
terminated in accordance with the terms hereof or by mutual written consent, shall continue until
the later of the end of Period 6 or [****] (as defined in Exhibit D) (the “Term”).



     10.2 Termination.



          (a) Termination. In addition to any other termination rights provided for in this Agreement,
either Party may terminate this Agreement immediately upon written notice to the other Party in the
event of a material breach of this Agreement by the other Party if such breach is incapable of cure
or the breaching Party otherwise fails to cure such breach within [****] days following notice of
such breach from the non-breaching Party.




          (b) Abandonment. In the event an Abandonment of Construction of ESLR1 Facilities (as defined
below) occurs prior to the completion of the initial construction of manufacturing facilities for
the Exploitation of SiC Fiber owned or controlled by ESLR1, TISICS may terminate this Agreement
immediately upon written notice to ESLR1. “Abandonment of Construction of ESLR1 Facilities” means
ESLR1’s failure, manifested over a period of [****] or more consecutive days during the Term, to
use reasonable efforts to perform activities relating to the design, construction and/or
development of manufacturing facilities for the Exploitation of SiC Fiber, excluding any failure
due to (i) a breach by TISICS of its obligations under this Agreement or the Facilities and Start
Up Agreement or (ii) causes beyond ESLR1’s reasonable control, such as any of the following events
(each, a “Force Majeure Event”): (A) any fire, explosion, unusually severe weather, natural
disaster or Act of God; (B) epidemic; any nuclear, biological, chemical, or similar attack; any
other public health or safety emergency; any act of terrorism; and any action reasonably taken in
response to any of the foregoing; (C) any act of declared or undeclared war or of a public enemy,
or any riot or insurrection; (D) damage to machinery or equipment; any disruption in
transportation, communications, electric power or other utilities, or other vital infrastructure;
or any means of disrupting or damaging internet or other computer networks or facilities; (E) any
strike, lockout or other labor dispute or action; or (F) any action taken in response to any of the
foregoing events by any civil or military authority. In the event that ESLR1 ceases to manufacture
SiC Fiber for use within the PV Field for more than a period of [****] consecutive months following
completion of the initial construction of the SiC Facilities, TISICS may terminate this Agreement
immediately upon written notice to ESLR1, except if such cessation is due to (1) a breach by TISICS
of its obligations under this Agreement or the Facilities and Start Up Agreement or (2) causes
beyond ESLR1’s reasonable control, such as a Force Majeure Event.




     10.3 Termination Damages. Without prejudice to any other remedies either Party may
expressly have hereunder in respect of any breach of this Agreement, neither Party shall be liable



20









 







to the other for damages by solely reason of the termination or cancellation of this Agreement
in accordance with the provisions set forth above.



     10.4 Continuing Obligations. The following shall survive the expiration or
termination hereof: (i) the obligation of ESLR1 to pay any accrued, but unpaid, payments due to
TISICS hereunder (subject to Section 4.4), (ii) the obligation of TISICS to pay any accrued, but
unpaid, taxes, duties, and other levies (if any) applied by any government authority on payments
made by ESLR1 to TISICS hereunder (in accordance with Section 4.3(a)), and (iii) the provisions of
this Section 10.4, Sections 1 (and any other definitions contained herein), 2.1, 2.2, 2.3, 2.4,
2.5, 2.6, 3.1(b), 3.1(e), 3.3, 3.4, 4.2(c), 4.3, 4.4, 5, 6, 7, 8, 9, 10.3, 10.5 and 11 and the last
sentence of Section 3.1, provided that, subject to Section 4.4, if TISICS terminates this Agreement
for Abandonment of Construction of ESLR1 Facilities, the provisions of Section 2.1 shall not
survive such termination except as otherwise set forth in Section 10.5.



     10.5 Inventory Sell-Down Period. Without limiting Section 4.4, upon any termination
of this Agreement pursuant to Section 10.2(b), ESLR1 may continue to distribute its then-current
inventory of SiC Fiber and manufacture and distribute any inventory of SiC Fiber for orders
then-confirmed by ESLR1. During this period, the provisions of this Agreement shall continue in
force to the extent required for the limited purpose of permitting ESLR1 to distribute its
inventory of SiC Fiber in accordance with the foregoing.



11. Miscellaneous.




     11.1 Fees and Expenses. The Parties shall pay all of their own costs, fees and
expenses incurred in connection with this Agreement and the consummation (or the preparation for
the consummation) of the transactions contemplated hereby (including fees and expenses of legal
counsel, accountants and other representatives and consultants and advisors and due diligence
(including travel-related) costs, fees and expenses).



     11.2 Remedies. Each Party acknowledges and agrees that the other Party would be
damaged irreparably in the event any of the provisions of this Agreement are not performed in
accordance with their specific terms or otherwise are breached. Accordingly, each Party agrees
that the other Party shall be entitled to an injunction or injunctions to prevent breaches of the
provisions of this Agreement and to enforce specifically this Agreement and the terms and
provisions hereof in any action instituted in any court of the United States or any state thereof
having jurisdiction over the Parties and the matter.



     11.3 Consent to Amendments. This Agreement may be amended, or any provision of this
Agreement may be waived; provided that any such amendment or waiver shall be
binding upon each Party only if agreed by each party and with the terms of such agreement set forth
in writing executed by each Party and referring specifically to the provision alleged to have been
amended or waived. No course of dealing between or among the Parties shall be deemed effective to
modify, amend or discharge any part of this Agreement or any rights or obligations of any Party
under or by reason of this Agreement.



     11.4 Relationship of Parties. The relationship of ESLR1 and TISICS created under this
Agreement shall be that of independent contractors. Nothing in this Agreement shall be



21









 







construed to place the Parties hereto in an agency, employment, franchise, joint venture, or
partnership relationship. Neither Party shall have the authority to obligate or bind the other in
any manner with respect to the transaction contemplated by this Agreement, and nothing herein
contained shall give rise or is intended to give rise to any rights of any kind to any Third
Parties. Neither Party will represent to the contrary, either expressly, implicitly or otherwise.



     11.5 Notices. All notices, demands or other communications to be given or delivered
under or by reason of the provisions of this Agreement shall be in writing and shall be deemed to
have been given when delivered personally to the recipient, three (3) days after being sent to the
recipient by reputable overnight courier service (charges prepaid), upon machine-generated
acknowledgment of receipt after transmittal by facsimile or seven (7) days after being mailed to
the recipient by certified or registered mail, return receipt requested and postage prepaid. Such
notices, demands and other communications shall be sent to the Parties at the addresses indicated
below or to such other address or to the attention of such other person as the recipient Party has
specified by prior written notice to the sending Party.


to:




ESLR1:




138 Bartlett Street

Marlborough, MA 01752

Attention: Richard Chleboski

Telephone: (508) 597-2318

Telecopy: (508) 229-0747



with a copy to:

(which shall not constitute notice to ESLR1)




Goodwin Procter LLP

Exchange Place

53 State Street

Boston, MA 02109

Attention: William J. Schnoor, Jr., Esq.

Telephone: 617.570.1020

Telecopy: 617.523.1231



to:




TISICS:




TISICS Ltd

22 Invincible Road

Farnborough

Hampshire

GU14 7QU




22









 







Attention: Stephen Kyle-Henney

Telephone: 44 1252 516678

Telecopy: 44 1252 548211



with a copy to:

(which shall not constitute notice to TISICS)




Hugh Fraser International Legal Consultancy

Al Attar Business Tower (Floor 20)

Sheikh Zayed Road

Dubai

United Arab Emirates

PO Box 118273

Attention: Hugh Fraser

Telephone: +971 4 332 0007

Telecopy: +971 4 332 0008




     11.6 Governing Law; Venue. All issues and questions concerning the construction,
validity, enforcement and interpretation of this Agreement (including the Exhibits and Schedules
hereto) shall be governed by, and construed in accordance with, the laws of the State of Delaware,
without giving effect to any choice of law or conflict of law rules or provisions (whether of the
State of Delaware or any other jurisdiction) that would cause the application of the laws of any
jurisdiction other than the State of Delaware. In furtherance of the foregoing, the internal law
of the State of Delaware shall control the interpretation and construction of this Agreement
(including the Exhibits and Schedules hereto), even though under that jurisdiction’s choice of law
or conflict of law analysis, the substantive law of some other jurisdiction would ordinarily apply.
Any and all disputes between the Parties which may arise pursuant to this Agreement will be heard
and determined before an appropriate federal court located in Boston, Massachusetts. The Parties
hereto acknowledge that such court has the jurisdiction to interpret and enforce the provisions of
this Agreement and the parties waive any and all objections that they may have as to personal
jurisdiction or venue in the above courts.



     11.7 Assignment and Benefit.



          (a) ESLR1 may not assign this Agreement without the prior written consent of TISICS to any
Third Party, which consent will not be unreasonably withheld, except that ESLR1 may assign this
Agreement in whole without the prior written consent of TISICS to any Third Party, including a
TISICS Competitor or any Affiliate of a TISICS Competitor, if such Third Party succeeds to all or
substantially all the assets and business of ESLR1 or Evergreen by merger or purchase.




          (b) TISICS may not assign this Agreement without the prior written consent of ESLR1 to any
Third Party, which consent will not be unreasonably withheld, except that TISICS may assign this
Agreement in whole without the prior written consent of ESLR1 to any Third Party, including a ESLR1
Competitor or any Affiliate of a ESLR1 Competitor, if such Third Party succeeds to all or
substantially all the assets and business of TISICS by merger or purchase.




23









 





          (c) Any attempted assignment, delegation or transfer by an assigning Party in violation hereof
shall be null and void. Subject to the foregoing, this Agreement shall be binding on the Parties
and their successors and assigns.




     11.8 Consequences of Bankruptcy. All licenses and rights of granted under or pursuant
to this Agreement shall be deemed to be, for the purposes of Section 365(n) of the United States
Bankruptcy Code (the “Bankruptcy Code”), licenses to rights in “intellectual property” as defined
under the Bankruptcy Code.



     11.9 Successors and Assigns; Third-Party Beneficiaries. Except as provided herein to
the contrary, this Agreement and all of the covenants and agreements contained herein and rights,
interests or obligations hereunder, by or on behalf of any of the Parties hereto, shall bind and
inure to the benefit of the respective successors and assigns of the Parties hereto whether so
expressed or not. This Agreement is for the sole benefit of the Parties and their permitted
successors and assigns and nothing herein expressed or implied shall give or be construed to give
any non-Party any rights, benefits or claims hereunder; provided, however, that each Indemnitee is
intended to be, and is expressly made, a third party beneficiary of this Agreement, entitled to
enforce its rights under Section 9 in its own name.



     11.10 Severability. Whenever possible, each provision of this Agreement shall be
interpreted in such manner as to be effective and valid under applicable Law, but if any provision
of this Agreement or the application of any such provision to any Person or circumstance shall be
held to be prohibited by, illegal or unenforceable under applicable Law in any respect by a court
of competent jurisdiction, such provision shall be ineffective only to the extent of such
prohibition or illegality or unenforceability, without invalidating the remainder of such provision
or the remaining provisions of this Agreement.



     11.11 Counterparts. This Agreement may be executed simultaneously in counterparts
(including by means of telecopied signature pages), any one of which need not contain the
signatures of more than one Party, but all such counterparts taken together shall constitute one
and the same Agreement.



     11.12 No Waiver. Failure by either Party to enforce any provision of this Agreement
shall not be deemed a waiver of future enforcement of that or any other provision.



     11.13 Descriptive Headings; Interpretation. The headings and captions used in this
Agreement and the table of contents to this Agreement are for reference purposes only and shall not
affect in any way the meaning or interpretation of this Agreement. Any capitalized terms used in
any Schedule or Exhibit attached hereto and not otherwise defined therein shall have the meanings
set forth in this Agreement. The use of the word “including” herein shall mean “including without
limitation.” The Parties intend that each representation, warranty and covenant contained herein
shall have independent significance. If any Party has breached any representation, warranty or
covenant contained herein in any respect, the fact that there exists another representation,
warranty or covenant relating to the same subject matter (regardless of the relative levels of
specificity) which the Party has not breached shall not detract from or mitigate the fact that the
Party is in breach of the first representation, warranty or covenant.



24









 





     11.14 Entire Agreement. This Agreement and the agreements and documents referred to
herein contain the entire agreement and understanding between the Parties with respect to the
subject matter hereof and supersede all prior agreements and understandings, whether written or
oral, relating to such subject matter in any way.



     11.15 Exhibits and Schedules. All Exhibits and Schedules attached hereto or referred
to herein are hereby incorporated in and made a part of this Agreement as if set forth in full
herein.



     11.16 No Strict Construction. The Parties have participated jointly in the
negotiation and drafting of this Agreement. In the event an ambiguity or question of intent or
interpretation arises, this Agreement shall be construed as if drafted jointly by the Parties, and
no presumption or burden of proof shall arise favoring or disfavoring any Party by virtue of the
authorship of any of the provisions of this Agreement.



[Remainder of Page Intentionally Left Blank]




25









 




IN WITNESS WHEREOF, the Parties hereto have executed this Agreement effective as of the date first
above written.




	 	 	 	 	 
	 	ESLR1, LLC

 	 
	 	By:  	
/s/ Richard G. Chleboski
 	 
	 	 	Name:  	Richard G. Chleboski 	 
	 	 	Title:  	President and Secretary 	 
	 



	 	 	 	 	 
	 	TISICS LTD.

 	 
	 	By:  	
/s/ Stephen Kyle-Henney
 	 
	 	 	Name:  	Stephen Kyle-Henney 	 
	 	 	Title:  	Managing Director 	 
	 




 









 





EXHIBIT A




SiC Fiber Specifications



Outlined below are initial specifications (as of the Effective Date) for SiC Fiber necessary for
applications in the PV Field. This is a general specification and may be modified as the SiC Fiber
is developed.




Physical Characteristics: [****]




 









 





EXHIBIT B-1




TISICS IP: PV Field




Patents




[****]




 









 





EXHIBIT B-2




TISICS IP: All Fields




Patents




[****]




2









 





Registered Trade Marks 




[****]




 









 





EXHIBIT B-3




Licenses Out, Licenses In and Other Rights




“‘Grant Back IP Licence’ means the [****].




2









 





EXHIBIT C




TISICS Materials as of the Effective Date




PV = Photo-Voltaic Fibre related materials



Note this is not an exhaustive list and additional documents may be added. In some instances
customer names or other commercial details may need to be removed from the documents listed before
release.




[****]



In addition to the above-listed reports and files, TISICS has the following materials, which
constitute TISICS Materials:




[****]




 









 





EXHIBIT D




Conditional Fees and PV Royalties




[****]




 









 





SCHEDULE 1 TO EXHIBIT D




Full Cost




[****]




 









 





EXHIBIT E




Exceptions to Certain TISICS Representations and Warranties




None.