exhibit101eri-slbtermina






DocuSign Envelope ID: A9F6E60A-8D85-4B48-A0FC-584EEF4833C1DD048246-0EAB-4A31-8939-4A6C52072F3E                                                                                Exhibit 10.1                                                                                                                   TERMINATION AGREEMENT AND RELEASE                                                                                               Between                                                                               ERI ENERGY RECOVERY IRELAND LTD.                                                And                          SCHLUMBERGER TECHNOLOGY CORPORATION                                     This Termination Agreement and Release (“Agreement”) is made and entered into as of 01            June 2020 by and between:                        (1) ERI Energy Recovery Ireland Ltd., a Republic of Ireland Company with its registered office            at  Block  B,  The  Crescent  Building,  Northwood,  Santry,  Dublin  9, Ireland,  and  having  its            principal place of business at Suite 8, 230 Second Floor, Eucharistic Congress Road, Mosta            MST903, Malta and registered as an Oversea Company in Malta with registration Number            OC1241 (“Energy Recovery”).                                 (2) Schlumberger Technology Corporation, a corporation organised under the laws of the State            of Texas located at 300 Schlumberger Drive, Sugar Land, Texas 77478 (“SLB”).                                         WHEREAS:            (A) On 14 October 2015, the Parties entered into the License Agreement By And Between ERI               Energy  Recovery  Ireland  Ltd.  And  Schlumberger  Technology  Corporation (“License               Agreement”) under which Energy Recovery granted SLB two licenses to use the VorTeq               Licensed Technology and to manufacture, or have manufactured, the Missile during the               License Term;                               (B) The Parties now wish to terminate the License Agreement; and                              (C) The Parties are entering into this Agreement to record the terms and conditions on which               the Parties have agreed to record such termination, on a binding basis, in this Agreement.                                    IT IS AGREED:                            1. DEFINITIONS AND INTERPRETATION                        In this Agreement, the following words and expressions have the following meanings:                         Effective Date means 01 June 2020.                        Execution Date means the last date on which both Parties execute this Agreement.                        Parties means Energy Recovery and SLB collectively.                        Party means Energy Recovery and SLB individually.                                                               1 





 






DocuSign Envelope ID: A9F6E60A-8D85-4B48-A0FC-584EEF4833C1DD048246-0EAB-4A31-8939-4A6C52072F3E                                                                                                    Related Parties means a Party's parent, subsidiaries, affiliates, successors (including any            successor by reason of amalgamation of any Party), assigns, transferees, representatives,            principals, agents, officers or directors.                         Released Claims refers to all claims listed in Section 5 below.                        Any capitalized term not defined in this Agreement shall have the meaning set forth in the            License Agreement.                           2. EFFECT OF THIS AGREEMENT                        The Parties hereby agree that this Agreement shall immediately be fully and effectively binding            on them and their Related Parties on the Effective Date.                             3. TERMINATION OF THE LICENSE AGREEMENT             3.1  Notwithstanding anything to the contrary in the License Agreement, the Parties agree            that the License Agreement shall automatically terminate on the Execution Date.                        3.2  From the Effective Date of this Agreement through and including the Execution Date,            the Parties shall continue to perform their respective obligations under the License Agreement            provided, however, that SLB shall not be required to make any further payments to Energy            Recovery under the License Agreement including, but not limited to, the payment of the Fees            and/or Royalties provided for under Section 5 and Schedule 6 of the License Agreement.                        3.3  Subsequent to the Execution Date, all of the Parties’ duties and obligations under the            License Agreement shall terminate and the Parties shall have no further rights or obligations            under the License Agreement other than to enforce the terms and conditions of this Agreement.                                  4. PAYMENTS                        The Parties agree to terminate the License Agreement with no further payments to be made one            to the other as all such obligations are agreed as discharged.                            5.  RELEASE                        This Agreement is in full and final settlement of, and each Party, on behalf of itself and on            behalf of its Related Parties, hereby unconditionally releases and forever discharges, all and/or            any actions, claims, rights, demands and set-offs, whether in this jurisdiction or any other,            whether or not presently known to the Parties or to the law, and whether in law or equity, that            it, its Related Parties or any of them ever had, may have or hereafter can, shall or may have            against the other Party or any of its Related Parties, arising out of or connected with the License            Agreement or the  underlying  facts  of  the License Agreement (collectively, the “Released            Claims”).                                                                                                                            2 





 






DocuSign Envelope ID: A9F6E60A-8D85-4B48-A0FC-584EEF4833C1DD048246-0EAB-4A31-8939-4A6C52072F3E                                                                                                                  6. AGREEMENT NOT TO SUE; INTELLECTUAL PROPERTY OWNERSHIP                        6.1  Each Party agrees, on behalf of itself and on behalf of its Related Parties not to sue,            commence, voluntarily aid in any way, prosecute or cause to be commenced or prosecuted            against the other Party or its Related Parties any action, suit or other proceeding concerning the            Released Claims, in this jurisdiction or any other.                        6.2  Clause 6.1 shall not apply to, and the Released Claims shall not include, any claims in            respect of any breach of this Agreement.                        6.3  SLB acknowledges and agrees that Energy Recovery exclusively owns all right, title and            interest in and to all VorTeq Licensed Technology, and SLB, on behalf of itself and its Related            Entities, claim  no  right, and  shall  not  assert  or  claim  any  right,  of license, ownership or            otherwise in or to any of same and shall not challenge Energy Recovery’s exclusive ownership,            or the validity or enforceability of same unless Energy Recovery asserts an intellectual property            infringement claim under VorTeq Licensed Technology against SLB. SLB agrees, on behalf            of itself and on behalf of its Related Parties, successors and assigns not to assert any SLB patent            families or  rights developed  under  Article  9.2  of  the  License  Agreement against  Energy            Recovery and its  Related Parties, only to the extent such rights  are necessary for the sale,            manufacturing or use of the VorTeq Licensed Technology. A list of such SLB patent families            is provided in Exhibit A of this Agreement, and SLB, based on its current knowledge and belief            after conducting a reasonable review, represents and warrants that such list is complete and            accurate, and that neither SLB nor any of its Related Parties developed, owns or controls, and            covenants that none of such persons or entities will develop, own or control for a period of            nineteen (19) months from the Effective Date, any other patent rights relating to, claiming or            disclosing VorTeq Licensed Technology. For the avoidance of doubt, SLB has full discretion            as to the prosecution, maintenance, and abandonment of these patent families, and is under no            obligation whatsoever to keep any of the patent families in force.                7. COSTS                        Each Party shall bear its own legal costs in relation to this Agreement.                           8. WARRANTIES AND AUTHORITY                        8.1  Each Party warrants  and  represents  that,  as  of  the  Effective  Date, it  has  not  sold,            transferred, assigned or otherwise disposed of its interest in the Released Claims.                        8.2  Each Party warrants and represents to the other with respect to itself that it has the full            right, power and authority to execute, deliver and perform this Agreement.                           9. INDEMNITIES                        Each Party (the “indemnifying Party”) shall, at its own cost and expense, defend, indemnify,            and hold harmless the other Party (the “indemnified Party”), including paying all liabilities,            losses, damages costs and damages (including reasonable attorneys’ fees), from any claim, suit,            action, demand or proceeding brought against the indemnified Party by any of the indemnifying            Party's Related Entities in respect of any of the Released Claims.                                                                 3 





 






DocuSign Envelope ID: A9F6E60A-8D85-4B48-A0FC-584EEF4833C1DD048246-0EAB-4A31-8939-4A6C52072F3E                                                                                                       10. NO ADMISSION                        This Agreement is entered into in connection with the compromise of disputed matters and in            the light of other considerations. It is not, and shall not be represented or construed by the            Parties as, an admission of liability or wrongdoing on the part of either Party to this Agreement            or any other person or entity.                           11. SEVERABILITY                             If  any  provision  or  part-provision  of  this Agreement is  or  becomes  invalid,  illegal  or            unenforceable, it shall be deemed modified to the minimum extent necessary to make it valid,            legal  and  enforceable.  If  such  modification  is  not  possible,  the  relevant  provision  or  part-           provision  shall be deemed deleted. Any modification to  or deletion  of a provision  or part-           provision under this clause shall not affect the validity and enforceability of the rest of this            Agreement.                           12. ENTIRE AGREEMENT & NON-DISPARAGEMENT                        12.1 This Agreement constitutes the entire agreement between the Parties and supersedes and            extinguishes all previous agreements,  promises,  assurances,  warranties,  representations  and            understandings between them, whether written or oral, relating to its subject matter.                        12.2 Each Party agrees  that  it  shall  have  no  remedies  in  respect  of  any  statement,            representation, assurance or warranty (whether made innocently or negligently) that is not set            out in this Agreement.                         12.3 This Agreement shall inure to the benefit of and be binding upon the Parties and their            respective successors (including any successor by reason of amalgamation of any Party) and            assigns.              12.4 For the  avoidance of doubt,  that certain  Non-Disclosure Agreement  executed by the            Parties on January 13, 2015 is unaffected by this Agreement.                        12.5 In order to protect the legitimate business interests of the Parties, the Parties agree that            they shall not, at any time after termination of the License Agreement, disparage one another            or make adverse comments to any third party which may be harmful to the reputation of the            other.                           13. GOVERNING LAW                        This Agreement and any dispute or claim (including non-contractual disputes or claims) arising            out of or in connection with it or its subject matter or formation shall be governed by and            construed  in  accordance  with  the  laws of  England  and  Wales without  giving  effect  to  the            principles of conflicts of laws thereof.                           14. DISPUTE RESOLUTION                        If the Parties fail to resolve any dispute relating to this Agreement by the mutual agreement of            the Parties within ninety (90) days of notice of the dispute, then either Party may initiate final            and binding arbitration that shall be held in English language in  London unless the Parties                                                   4 





 






DocuSign Envelope ID: A9F6E60A-8D85-4B48-A0FC-584EEF4833C1DD048246-0EAB-4A31-8939-4A6C52072F3E                                                                                                    mutually agree to another location. Such arbitration shall be in accordance with the rules of            conciliation  and  arbitration  of  the  International  Chamber  of  Commerce  (“ICC”).  Nothing            herein shall, however, prohibit a Party from seeking temporary or preliminary injunctive relief            in a court of competent jurisdiction. The Parties expressly consent to arbitration and waive any            right of appeal to any court from any arbitral award (which shall be final and binding upon the            Parties).  In  the  event  of  arbitration,  or other  legal  action  relating  to  this Agreement,  the            substantially prevailing Party in such arbitration or action shall be entitled to recover from the            other Party its reasonable outside attorneys’ fees and costs, including, without limitation, all            fees and costs incurred at the trial and appellate levels and in any bankruptcy, reorganization,            insolvency or similar proceeding.                           15. CO-OPERATION                        The Parties shall deliver or cause to be delivered such instruments and other documents at such            times  and  places  as  are reasonably  necessary  or  desirable,  and  shall  take  any  other  action            reasonably requested by the other Party for the purpose of putting this Agreement into effect.                           16. COUNTERPARTS                              16.1 This Agreement may be executed in any number of counterparts, each of which when            executed and  delivered shall  constitute  a  duplicate  original,  but  all  the  counterparts  shall            together  constitute  the  one Agreement.  For  the  purposes  of  completion,  signatures  by  the            Parties' legal advisers shall be binding.                        16.2 Transmission of an executed counterpart of this Agreement (but for the avoidance of            doubt not just a signature page) by (a) fax or (b) email (in PDF, JPEG or other agreed format)            shall take effect as delivery of an executed counterpart of this Agreement. If either method of            delivery is adopted, without prejudice to the validity of this Agreement thus made, each Party            shall provide the others with the original of such counterpart within one week of completion.                         16.3 No counterpart shall be effective until each Party has executed and delivered at least            one counterpart.                           17. LIMITATION OF LIABILITY                             Except for damages caused by a Party’s breach of Clause 12.5 or SLB’s breach of Clause 6.3,            neither  Party  shall  be  liable  to  the  other Party  for  any  indirect,  incidental, special  or            consequential  damages  on any basis, in  contract, tort  or otherwise, of  any kind  and nature            whatsoever, arising out of or in connection with this Agreement, howsoever caused.                                   18. VARIATION                              No variation of or amendment to this Agreement shall be effective unless it is in writing and            signed by the Parties (or their authorised representatives).                                                                                                                                                    [Signatures on Next Page.]                                                                                                                            5 





 






DocuSign Envelope ID: A9F6E60A-8D85-4B48-A0FC-584EEF4833C1DD048246-0EAB-4A31-8939-4A6C52072F3E                                                                                                    This Agreement has been entered into, effective as of the Effective Date.                                                Signed by ____________forDanny Rosso              ....................            and on behalf of ERI Energy                       Director             Recovery Ireland Ltd.                             6/23/2020                                                              ....................                                                              Date                                                                                   Donald Ross           Signed by ____________ for                        ....................            and on behalf of                                  Director            Schlumberger Technology                            24-Jun-20           Corporation                                       ....................                                                              Date                                                                                                                                                                                                                     6 





 






DocuSign Envelope ID: A9F6E60A-8D85-4B48-A0FC-584EEF4833C1DD048246-0EAB-4A31-8939-4A6C52072F3E                                                                                                                                    EXHIBIT A                                        SLB Patent Families                                                               SLB Docket    Publication No.                    Title                  No.            IS16.0686      US20190257323    Pressure exchanger with pressure ratio            IS16.0688      US20200072025    Pressure exchanger pressure oscillation source            IS16.1054      US20190271331    Split stream operations with pressure exchangers            IS16.1055      US20190278306    Pressure exchanger manifold resonance reduction            IS16.1056      US20190277110    Pressure exchanger wear prevention            IS16.1057      US20200063545    Pressure exchanger low pressure flow control            IS16.0610      US20190145237    Pressure exchanger manifolding                                                               7