<PAGE>
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UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
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FORM 10-Q
/X/ QUARTERLY REPORT PURSUANT TO SECTION 13 OR 15 (d)
OF THE SECURITIES EXCHANGE ACT OF 1934
For the Quarterly Period Ended March 31, 1998
/ / TRANSITION REPORT PURSUANT SECTION 13 OR 15 (d)
OF SECURITIES EXCHANGE ACT OF 1934
For the Transition Period From ______to_________
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Commission File Number 333-13287
EARTHSHELL CORPORATION
(Exact name of registrant as specified in its charter)
DELAWARE 77-0322379
(State or other jurisdiction of (I.R.S. Employer
incorporation or organization) Identification No.)
800 MIRAMONTE DRIVE, SANTA BARBARA, CALIFORNIA 93109
(Address of principal executive office) (Zip Code)
Registrant's telephone number, including area code: (805) 897-2294
Indicate by check mark whether the registrant (1) has filed all reports required
to be filed by Section 13 or 15 (d) of the Securities Exchange Act of 1934
during the preceding 12 months (or for such shorter period that the registrant
was required to file such reports), and (2) has been subject to such filing
requirements for the past 90 days.
Yes /X/ No / /
The number of shares outstanding of the registrant's common stock as of May 15,
1998 was 97,049,720.
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<PAGE>
EARTHSHELL CORPORATION
FORM 10-Q
FOR THE QUARTER ENDED MARCH 31, 1998
INDEX
PART I. FINANCIAL INFORMATION
Item 1. Financial Statements Page
----
a) Balance Sheets
as of March 31, 1998 (unaudited) and December 31,
1997. . . . . . . . . . . . . . . . . . . . . . . 1
b) Statements of Operations
for the Three Months Ended March 31, 1998 and 1997
(unaudited) and for the period from November 1,
1992 (inception) through March 31, 1998
(unaudited) . . . . . . . . . . . . . . . . . . . 2
c) Statements of Stockholders' Equity (Deficit)
for the Three Months Ended March 31, 1998
(unaudited) . . . . . . . . . . . . . . . . . . . 3
d) Statements of Cash Flows
for the Three Months Ended March 31, 1998 and 1997
(unaudited) and for the period from November 1, 1992
(inception) through March 31, 1998 (unaudited). . 4
e) Notes to Financial Statements
(unaudited) . . . . . . . . . . . . . . . . . . . 6
Item 2. Management's Discussion and Analysis of Financial
Condition and Results of Operations. . . . . . . . . . 9
PART II. OTHER INFORMATION
Item 2. Changes in Securities and Use of Proceeds. . . . . . . 11
Item 6. Exhibits and Reports on Form 8-K . . . . . . . . . . . 12
SIGNATURE. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
<PAGE>
PART I. FINANCIAL INFORMATION
ITEM 1. FINANCIAL STATEMENTS
EARTHSHELL CORPORATION
(A Development Stage Enterprise)
BALANCE SHEETS
March 31, 1998 (Unaudited) and December 31, 1997
- -------------------------------------------------------------------------------
<TABLE>
<CAPTION>
March 31, December 31,
1998 1997
---- ----
(Unaudited)
ASSETS
<S> <C> <C>
CURRENT ASSETS:
Cash and cash equivalents $ 151,902,271 $ 8,437
Prepaid insurance 360,265 9,248
Other assets 43,111 19,288
-------------- ------------
Total current assets 152,305,647 36,973
PROPERTY AND EQUIPMENT, Net 8,083,910 3,741,129
-------------- ------------
TOTAL $ 160,389,557 $ 3,778,102
-------------- ------------
-------------- ------------
LIABILITIES AND STOCKHOLDERS' EQUITY (DEFICIT)
CURRENT LIABILITIES:
Note payable to majority stockholder $ 32,060,887
Notes payable to banks $ 27,339 11,843,855
Accrued interest to majority stockholder 636,068
Payable to majority stockholder 622,090
Accounts payable and accrued expenses 3,151,538 3,182,534
-------------- ------------
Total current liabilities 3,178,877 48,345,434
-------------- ------------
STOCKHOLDERS' EQUITY (DEFICIT):
Preferred stock, $.01 par value, 10,000,000 shares
authorized; 9,170,000 Series A shares designated;
6,988,850 and 2,995,446 Series A shares issued and
outstanding as of December 31, 1997 and March 31, 1998 29,954 69,888
Additional paid-in preferred capital 24,403,113 24,403,113
Common stock, $.01 par value, 200,000,000 shares
authorized, 82,530,000 and 97,049,720 issued and
outstanding as of December 31, 1997 and March 31, 1998 970,497 825,300
Additional paid-in common capital 210,196,583 4,355,352
Deficit accumulated during the development stage (78,389,467) (74,220,985)
-------------- ------------
Total stockholders' equity (deficit) 157,210,680 (44,567,332)
-------------- ------------
TOTAL $ 160,389,557 $ 3,778,102
-------------- ------------
-------------- ------------
</TABLE>
SEE NOTES TO FINANCIAL STATEMENTS.
1
<PAGE>
EARTHSHELL CORPORATION
(A Development Stage Enterprise)
STATEMENTS OF OPERATIONS
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<TABLE>
<CAPTION>
Three Months Ended Inception
March 31, through
-------------------- - March 31,
1998 1997 1998
---- ---- ----
(Unaudited) (Unaudited) (Unaudited)
<S> <C> <C> <C>
EXPENSES:
Related party research and development $ 1,759,666 $ 1,920,220 $ 39,483,778
Other research and development 650,415 114,376 5,326,411
Related party general and adminstrative expenses 16,800 16,800 1,818,400
Other general and administrative expenses 403,427 386,649 15,981,020
Depreciation and amortization 194,125 112,589 2,453,502
Related party patent expenses 58,389 380,266 7,258,996
------------ ------------ -------------
Total expenses 3,082,822 2,930,900 72,322,107
Related party interest expense 651,586 443,154 4,800,655
Other interest expense, net 433,274 315,460 1,261,905
------------ ------------ -------------
LOSS BEFORE INCOME TAXES 4,167,682 3,689,514 78,384,667
INCOME TAXES 800 800 4,800
------------ ------------ -------------
NET LOSS $ 4,168,482 $ 3,690,314 $ 78,389,467
------------ ------------ -------------
------------ ------------ -------------
BASIC AND DILUTED LOSS PER COMMON SHARE $0.05 $0.04
WEIGHTED AVERAGE NUMBER OF SHARES USED IN
COMPUTING LOSS PER COMMON SHARE 83,820,642 82,530,000
</TABLE>
SEE NOTES TO FINANCIAL STATEMENTS.
2
<PAGE>
EARTHSHELL CORPORATION
(A Development Stage Enterprise)
STATEMENTS OF STOCKHOLDERS' EQUITY (DEFICIT)
- -------------------------------------------------------------------------------
<TABLE>
<CAPTION>
CUMULATIVE
CONVERTIBLE DEFICIT
PREFERRED STOCK ADDITIONAL ADDITIONAL ACCUMULATED
SERIES A PAID-IN COMMON STOCK PAID-IN DURING
-------------------- PREFERRED -------------------- COMMON DEVELOPMENT
SHARES AMOUNT CAPITAL SHARES AMOUNT CAPITAL STAGE TOTAL
------ ------ --------- ------ ------ ---------- ------------ -----
<S> <C> <C> <C> <C> <C> <C> <C> <C>
BALANCE, DECEMBER 31, 1997 6,988,850 $69,888 $24,403,113 82,530,000 $825,300 $4,355,352 ($74,220,985) ($44,567,332)
Conversion of preferred stock
to common stock (3,993,404) (39,934) 3,993,404 39,934
Issuance of common stock 10,526,316 105,263 205,841,231 205,946,494
Net loss - - - - - - (4,168,482) (4,168,482)
---------- ------- ----------- ---------- ------- ----------- ------------ ------------
BALANCE, MARCH 31, 1998 2,995,446 $29,954 $24,403,113 97,049,720 $970,497 $210,196,583 ($78,389,467) $157,210,680
---------- ------- ----------- ---------- ------- ----------- ------------ ------------
---------- ------- ----------- ---------- ------- ----------- ------------ ------------
</TABLE>
SEE NOTES TO FINANCIAL STATEMENTS.
3
<PAGE>
EARTHSHELL CORPORATION
(A Development Stage Enterprise)
STATEMENTS OF CASH FLOWS
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<TABLE>
<CAPTION>
THREE MONTHS ENDED
MARCH 31, INCEPTION THROUGH
------------------------- MARCH 31,
1998 1997 1998
---- ---- ----
(UNAUDITED) (UNAUDITED) (UNAUDITED)
<S> <C> <C> <C>
CASH FLOWS FROM OPERATING ACTIVITIES:
Net loss $ (4,168,482) $ (3,690,314) $ (78,389,467)
Adjustments to reconcile net loss to net cash
used in operating activities:
Depreciation and amortization 194,125 112,589 2,453,502
Issuance of stock options to director and consultant 3,096,761
Issuance of stock options to officer 650,000
Amortization of debt issue costs 123,135 271,277
Loss on sale or disposal of property and equipment 65,639
Net loss on sale of investments 32,496
Accretion of discounts on investments (410,084)
Changes in operating assets and liabilities:
Prepaid expenses and other assets (374,840) 1,629 (403,376)
Accounts payable and accrued expenses (30,996) (333,291) 3,151,537
Payable to majority stockholder (622,090) 1,889,198 24,854,092
Accrued interest to majority stockholder (636,068) 12,013
------------- ------------- -------------
Net cash used in operating activities (5,638,351) (1,885,041) (44,627,623)
------------- ------------- -------------
CASH FLOWS FROM INVESTING ACTIVITIES:
Purchase of investments - U.S. government securities (36,918,254)
Proceeds from sales and redemptions of investments 37,295,842
Proceeds from sale of property and equipment 297,670
Purchase of property and equipment (4,536,906) (21,511) (11,772,456)
------------- ------------- -------------
Net cash used in investing activities (4,536,906) (21,511) (11,097,198)
------------- ------------- -------------
CASH FLOWS FROM FINANCING ACTIVITIES:
Proceeds from issuance of notes payable to stockholders 1,450,000 14,270,000
Proceeds from drawings on line of credit with bank 2,150,000 1,890,000 14,000,000
Proceeds from issuance of common stock 221,052,636 221,062,636
Common stock issuance costs (15,106,142) (15,106,142)
Proceeds from issuance of preferred stock 25,675,000
Preferred stock issuance costs (1,201,999)
Repayment of notes payable (47,477,403) (51,072,403)
------------- ------------- -------------
Net cash provided by financing activities 162,069,091 1,890,000 207,627,092
------------- ------------- -------------
INCREASE (DECREASE) IN CASH AND CASH EQUIVALENTS 151,893,834 (16,552) 151,902,271
CASH AND CASH EQUIVALENTS, BEGINNING OF PERIOD 8,437 21,178
------------- ------------- -------------
CASH AND CASH EQUIVALENTS, END OF PERIOD $ 151,902,271 $ 4,626 $ 151,902,271
------------- ------------- -------------
------------- ------------- -------------
SEE NOTES TO FINANCIAL STATEMENTS.
4
<PAGE>
EARTHSHELL CORPORATION
(A Development Stage Enterprise)
STATEMENTS OF CASH FLOWS - continued
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<CAPTION>
THREE MONTHS ENDED
MARCH 31, INCEPTION THROUGH
-------------------- MARCH 31,
1998 1997 1998
---- ---- ----
(Unaudited) (Unaudited) (Unaudited)
<S> <C> <C> <C>
SUPPLEMENTAL DISCLOSURE OF CASH FLOW INFORMATION:
Cash paid for:
Income taxes $ 800 $ 800 $ 4,800
Interest $ 1,720,944 $ 192,344 $ 3,026,633
Non-cash transactions:
Warrants issued with debt $ 123,135 $ 306,168
Transfer of property from EKI $ 28,745
Conversion of preferred stock to common stock $ 39,934 $ 39,934
</TABLE>
SEE NOTES TO FINANCIAL STATEMENTS.
5
<PAGE>
EARTHSHELL CORPORATION
NOTES TO FINANCIAL STATEMENTS (UNAUDITED)
MARCH 31, 1998
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1. PRESENTATION OF FINANCIAL INFORMATION
The foregoing financial information is unaudited and has been prepared from
the books and records of EarthShell Corporation (the "Company"). In the
opinion of management, the financial information reflects all adjustments
necessary for a fair presentation of the financial condition, results of
operations and its cash flows in conformity with generally accepted
accounting principles. All such adjustments were of a normal recurring
nature for interim financial reporting.
Certain information and footnote disclosures which were included in the
Company's financial statements for the year ended December 31, 1997 have
been condensed or omitted from this report. The information included in
this Form 10-Q should be read in conjunction with Management's Discussion
and Analysis and financial statements and notes thereto for the year ended
December 31, 1997 included in the Company's Prospectus dated March 23,
1998.
In addition, all references in the financial statements to number of shares
outstanding and per share amounts of the Company's common and preferred
stock have been restated to reflect a 262-for-one stock split (see Note 7).
Certain reclassifications have been made to the 1997 financial statements
to conform to 1998 classifications.
Basic and diluted loss per common share is calculated based on weighted
average shares outstanding of 83,820,642 and 82,530,000 for March 31,
1998 and 1997, respectively. Basic and diluted are the same because
common stock equivalents are considered anti-dilutive.
2. RELATED PARTY TRANSACTIONS
For the three months ended March 31, 1998 and 1997, the Company paid or
accrued $1,759,666 and $1,920,220, respectively, for services performed
under the Amended and Restated Technical Services and Sublease Agreement
effective October 1, 1997, and $16,800 in sublease payments for each of the
respective periods to, the Company's majority stockholder, E. Khashoggi
Industries, LLC ("EKI").
Under the Amended and Restated Agreement for Allocation of Patent
Costs ("Patent Cost Allocation Agreement") effective October 1, 1997,
legal fees related to patents of $58,389 and $380,266 were paid to
or on behalf of EKI for the three months ended March 31, 1998 and 1997,
respectively.
The Company repaid the total indebtedness to its majority stockholder
through March 27, 1998 totaling $36,630,548, which includes $32,875,887 in
promissory notes, $1,287,654 in accrued interest, and $2,467,007 in
accounts payable.
3. PROPERTY AND EQUIPMENT
At March 31, 1998, property and equipment consist of the following:
<TABLE>
<S> <C>
Furniture and lab equipment $ 2,380,732
Deposits on equipment 6,762,779
Less: accumulated depreciation (1,059,601)
-------------
Property and equipment - net $ 8,083,910
-------------
</TABLE>
6
<PAGE>
EARTHSHELL CORPORATION
NOTES TO FINANCIAL STATEMENTS (UNAUDITED) - continued
MARCH 31, 1998
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4. NOTES PAYABLE TO BANKS
On March 27, 1998, the Company repaid the $14,000,000 Imperial Bank line of
credit.
As of March 31, 1998, the Company is obligated for a property loan of
$27,339.
5. COMMITMENTS
At March 31, 1998, the unpaid balances due to vendors for equipment
purchases totaled $9,153,919.
On February 16, 1998, EKI entered into a patent purchase agreement with a
third party for the purchase of certain technology applicable to
starch-based disposable packaging. EKI will license such technology to
the Company. In connection with the purchase and pursuant to the terms of
the Patent Cost Allocation Agreement, the Company agreed to pay the
seller of the technology $3.5 million on or about December 31, 2003,
which obligation is secured by a letter of credit. The Company's
obligation will be reduced by 5% of the purchase price of any equipment
purchased by EKI, the Company or its licensees or joint venture
partners from the seller of the technology. In addition the Company is
required to pay $3 million over the five year period commencing January
1, 2004 if EKI, the Company or the Company's licensees or joint venture
partners have not purchased, by December 31, 2003, at least $35 million
of equipment from the seller of the technology and EKI, the Company or
the Company's licensees or joint venture partners make active use of the
purchased technology.
6. COMMON STOCK OFFERING
On March 23, 1998, the Company issued an additional 10,526,316 shares of
its common stock in a public offering for $205,946,494 after deducting
underwriting discounts and commissions and offering expenses. A portion of
these proceeds was used to repay indebtedness to the majority stockholder
(see Note 2), repay the note payable to bank (see Note 4), and pay the
preferred dividends (see Note 9). The balance of the proceeds which is
reflected in cash and cash equivalents as of March 31, 1998 will be used
to: (i) facilitate the development of manufacturing capacity for the
Company's products by engineering, developing and constructing turnkey
manufacturing lines for lease to licensees or contribution to joint
ventures; (ii) expand the EarthShell product development center; (iii)
launch an initial public relations and advertising campaign; (iv)
secure additional patent protection for the Company's licensed technology;
(v) establish a fund for the enforcement and protection of patents and
(vi) for general corporate purposes, including the employment of additional
personnel, the continued design and development of EarthShell products
and anticipated operating losses.
7
<PAGE>
EARTHSHELL CORPORATION
NOTES TO FINANCIAL STATEMENTS (UNAUDITED) - continued
MARCH 31, 1998
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7. STOCK SPLIT
On March 23, 1998, the Company declared a 262-for-one stock split of its
common stock. Common stock and additional paid-in capital have been
restated to reflect this split. The par value of the common stock will
remain unchanged at $.01 per share. In accounting for the stock split,
the Company recorded an increase in common stock of $822,150, with a
corresponding reduction in capital in excess of par value. The number of
shares issued at December 31, 1997, after giving effect to the split, was
82,530,000 (315,000 shares were issued and outstanding before the stock
split and common stock offering).
8. CUMULATIVE CONVERTIBLE PREFERRED STOCK
In connection with the Company's 262-for-one stock split and the public
offering of common stock, 3,993,404 shares of Series A preferred stock
were converted to 3,993,404 shares of common stock, of which 2,673,684
shares were sold in the initial public offering. The remaining 2,995,446
shares of preferred stock are convertible to common stock. The Company has
the right to redeem this preferred stock at a total cost of $11,604,495
prior to September 30, 1998 and at a total cost of $11,433,000 after
September 30, 1998. The Company intends to call remaining shares of
preferred stock for redemption during the second quarter of 1998 and
expects 2,995,446 shares to convert rather than be redeemed.
9. SUBSEQUENT EVENT
In anticipation of the preferred stock redemption, on April 15, 1998, the
Board of Directors declared a cash dividend to preferred stockholders of
$1.40 per share accrued at 8% per annum. The total dividends paid were
$9,725,201.
8
<PAGE>
ITEM 2. MANAGEMENT'S DISCUSSION AND ANALYSIS OF FINANCIAL CONDITION AND
RESULTS OF OPERATIONS
RESULTS OF OPERATIONS
RESEARCH AND DEVELOPMENT EXPENSES. Total research and development
expenditures for the development of EarthShell products increased $375,000
from $2.0 million for the three months ended March 31, 1997 to $2.4 million
for the three months ended March 31, 1998. The Company was billed by EKI for
research and development services totaling $1.9 million and $1.8 million for
the three months ended March 31, 1997 and 1998, respectively.
GENERAL AND ADMINISTRATIVE EXPENSES. Total general and
administrative expenses increased $21,000 from $403,000 for the three months
ended March 31, 1997 to $424,000 for the three months ended March 31, 1998.
DEPRECIATION AND AMORTIZATION EXPENSE. Depreciation and
amortization expense increased $81,000 from $113,000 for the three months
ended March 31, 1997 to $194,000 for the three months ended March 31, 1998.
The increase in depreciation expense was mainly a result of the purchase of
pilot manufacturing equipment for the Company's Santa Barbara product
development center and the commercial manufacturing equipment to be installed
at Sweetheart Cup Company in Baltimore, Maryland.
PATENT EXPENSES. Legal fees reimbursed to EKI under the Amended
and Restated Agreement for Allocation of Patent Costs with EKI decreased
$322,000 from $380,000 for the three months ended March 31, 1997 to $58,000
for the three months ended March 31, 1998. The decrease was primarily a
result of filing fewer new patent applications.
INTEREST EXPENSE. Net interest expense increased $341,000 from
$759,000 for the three months ended March 31, 1997 to $1.1 million for the
three months ended March 31, 1998. The increase in interest expense was due
to additional borrowings from EKI and against the Company's line of credit.
The Company's financial condition and the results of its operations are
subject to a number of factors that are set forth in the prospectus filed
with the Company's Registration Statement on Form S-1 (Commission No. 333-13287;
effective March 23, 1998).
LIQUIDITY AND CAPITAL RESOURCES AT MARCH 31, 1998
On March 23, 1998, the Company issued 10.5 million shares of its common stock
in a public offering for $205.9 million net of issuance costs. A portion of
the proceeds was used to repay indebtedness to the majority stockholder of
$36.6 million and bank debt of $14.0 million. The remaining proceeds are
reflected in cash and cash equivalents of $151.9 million as of March 31,
1998. During the remainder of 1998, the Company expects to incur operating
expenses significantly in excess of amounts incurred in prior periods.
Net cash used in operations was $5.6 million and $1.9 million for the three
months ended March 31, 1998 and 1997, respectively. Net cash used in
investing activities was $4.5 million and $21,500, for the three months ended
March 31, 1998 and 1997, respectively. In addition to the repayment of
indebtedness, the Company used the public offering proceeds to repay
outstanding payables and purchase equipment to facilitate the development of
manufacturing capacity for EarthShell products.
Subsequent to December 31, 1997 and prior to the public offering, the Company
borrowed an additional $1.5 million and $2.2 million from a majority
stockholder and the bank, respectively. These additional borrowings were
repaid on March 27, 1998.
9
<PAGE>
The Company anticipates that it will borrow from third-party lenders a
portion of the funds required to purchase manufacturing equipment and
construct turnkey manufacturing lines for its licensee and joint venture
partners. The Company believes that the remaining proceeds from the public
offering together with such third-party financing will be sufficient to meet
its foreseeable working capital requirements through at least the next two
years.
The Company has no commitments for any additional financing, and there can be
no assurance that any such commitments can be obtained on favorable terms, if
at all. If the Company is unable to obtain additional financing as needed,
the Company may be required to reduce the scope of its anticipated
manufacturing ramp-up and products introduction, which could have an adverse
effect on the Company's business, financial condition and results of
operations.
10
<PAGE>
PART II. OTHER INFORMATION
ITEM 2. CHANGES IN SECURITIES AND USE OF PROCEEDS
CHANGES IN SECURITIES -
On March 23, 1998, the stockholders approved an increase in the number of
authorized common shares from 1,000,000 to 200,000,000 and an increase in
the number of authorized preferred shares from 100,000 to 10,000,000. On
that day, the Company issued an additional 10,526,316 shares of its common
stock in a public offering for $205,946,494 net of issuance costs. In
addition, the Company declared a 262-for-one stock split of its common
stock. Furthermore, in connection with the Company's public offering of
common stock, 3,993,404 shares of preferred stock, after giving effect to
the split, were converted to common stock to allow for the sale of
2,673,684 shares. The remaining 2,995,446 shares of preferred stock are
convertible to common stock or the Company has the right to redeem the
preferred stock at a price of $3.87 per share prior to September 30, 1998
and at a price of $3.82 per share after September 30, 1998. The Company
intends to call all outstanding preferred shares for redemption in the
second quarter of 1998 and expects all preferred shares to convert to
common shares rather than be redeemed.
In anticipation of the preferred stock redemption, on April 15, 1998, the
Board of Directors declared a cash dividend to preferred stockholders of
$1.40 per share accrued at 8% per annum. The total dividends paid were
$9,725,201.
USE OF PROCEEDS -
As part of the Company's initial public offering, the Company issued
10,526,316 shares of its common stock, $.01 par value (the "IPO Shares"),
on March 23, 1998. The offering terminated on April 23, 1998 upon the
underwriters' election not to exercise their overallotment option. The IPO
Shares were issued in a registered offering pursuant to a Registration
Statement on Form S-1 (Commission File No. 333-13287; effective
March 23, 1998) through a syndicate of underwriters, the representatives
of which were Salomon Smith Barney Inc. and Credit Suisse First Boston
Corporation. The IPO Shares were offered and sold by the underwriters at
an initial public offering price of $21.00 per share, resulting in
aggregate offering proceeds of $221,052,636.
The Company incurred expenses in connection with this offering as follows:
<TABLE>
<S> <C>
Underwriting discounts and commissions $13,815,790
Other expenses 1,290,352
-----------
Total expenses $15,106,142
-----------
-----------
</TABLE>
None of the above expenses was paid either directly or indirectly to
directors, officers, general partners of the Company or its associates, or
to persons owning more than 10% of any class of equity security of the
Company or to affiliates of the Company.
11
<PAGE>
Through March 31, 1998, the Company has applied approximately
$67,891,000 of the $205,946,494 in net offering proceeds as follows:
<TABLE>
<S> <C>
Repayment of indebtedness owed to principal stockholder $36,630,548
Repayment of indebtedness owed to bank 14,000,000
Payment of cash dividend to preferred stockholders 9,725,201
Deposits on manufacturing equipment 5,607,107
Working capital and general corporate purposes 1,928,492
-----------
Total proceeds applied $67,891,348
-----------
-----------
</TABLE>
ITEM 6. EXHIBITS AND REPORTS ON FORM 8-K
(A) Exhibits
10. Master License Agreement
27. Financial Data Schedule (filed only electronically with the SEC)
99. Press Release issued May 15, 1998
(B) Reports on Form 8-K
No reports on Form 8-K were filed by EarthShell during the quarter ended
March 31, 1998
Items 1, 3, 4 and 5 are not applicable and have been omitted.
12
<PAGE>
SIGNATURE
Pursuant to the requirements of the Securities Exchange Act of 1934, the
registrant has duly caused this report to be signed on its behalf by the
undersigned thereunto duly authorized.
EarthShell Corporation
Date: May 15, 1998 By: /s/ Scott Houston
------------------------------
Scott Houston
CHIEF FINANCIAL OFFICER
(PRINCIPAL FINANCIAL AND ACCOUNTING OFFICER
AND DULY AUTHORIZED OFFICER)
13
<PAGE>
AMENDED AND RESTATED
LICENSE AGREEMENT
THIS AMENDED AND RESTATED LICENSE AGREEMENT (the "Agreement") is made
upon and shall be effective as of this 28th day of February, 1995, by and
between E. KHASHOGGI INDUSTRIES, a California general partnership ("EKI"),
and EARTHSHELL CONTAINER CORPORATION, a Delaware corporation ("ECC").
RECITALS:
A. EKI is the owner of certain technology related to cementitious and
inorganically filled containers for the packaging, storing, portioning and
dispensing of food or beverages and cementitious and inorganically filled
compositions formed in sheets or rolls and which can be converted into food or
beverage containers.
B. EKI is the owner of additional technology which deals with
hydraulically settable or inorganically filled compositions and the methods of
using and manufacturing such compositions.
C. EKI is the owner of certain know-how, trade secrets and other
proprietary information and data which are related or complementary to such
technologies.
D. Pursuant to the terms of that certain License Agreement, dated
February 24, 1993 (the "License Agreement"), EKI has granted ECC an exclusive,
worldwide, royalty-bearing license to manufacture, use, sell, sublicense and
otherwise commercialize the cementitious and inorganically filled compositions,
as well as certain food service disposables which employ or utilize such
aforesaid technologies or proprietary information.
- 1 -
<PAGE>
E. Pursuant to the terms of the License Agreement, EKI also has granted
ECC a non-exclusive, worldwide license to use certain trademarks owned by EKI in
connection with cementitious and inorganically filled sheet products and the
food service disposables covered by the license granted hereunder.
F. EKI and ECC desire further to amend, restate and supersede the License
Agreement as set forth herein.
AGREEMENT:
NOW, THEREFORE, in consideration of the foregoing Recitals, and the mutual
promises and covenants set forth herein, together with other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties hereto hereby amend, restate and supersede the License Agreement in its
entirety as amended to the date hereof so as to provide as follows:
1. DEFINITIONS. The capitalized terms used herein shall have the
meanings set forth below:
(a) The term "Affiliate" shall mean, with respect to any given entity
(which includes without limitation any company, organization, or person), any
other entity directly or indirectly controlling, controlled by, or under direct
or indirect common control with such given entity. For purposes of this
definition, the ownership of a twenty-five percent (25%) or greater equity
interest in an entity shall be deemed control of such entity, and the ownership
of less than a twenty-five percent (25%) equity interest in an entity (absent
any other exercise of control) shall
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be deemed not to be control of such entity. Unless indicated to the contrary,
the terms "EKI" and "ECC" shall also include their respective Affiliates.
(b) The term "Moldable Compound Technology" shall mean all of the
confidential, secret, or proprietary technology involving inorganically
filled composites, including moldable compounds (both foam and non-foam
applications), articles manufactured from inorganically filled composites,
the compositions and uses of such inorganically filled composites or articles
made therefrom, and apparatus and methods for manufacturing same, which are
described or claimed in (i) any of the patents or patent applications listed
in Exhibit "B" hereto, including without limitation, any continuations,
divisionals or continuations-in-part, reissues and extensions thereto, any
patents issued therefrom, and (ii) any future patent applications under the
Patent Cooperation Treaty, any future European Patent applications, and/or
any future national patent applications in or for any country that are based
on any of the applications listed in Section B or D of Exhibit "B" hereto,
and any patents issued therefrom.
(c) The term "ALI-ITE-TM- Paper" shall mean any sheet, roll or raw
stock product that is capable of being substituted for paper or paper board and
other applications, which is manufactured by ECC or a sublicensee pursuant to
this Agreement and which utilizes or incorporates, in whole or in part, any
portion of the Technology.
(d) The term "ALI-ITE-TM- Paper Technology" shall mean all of the
proprietary technology involving hydraulically settable or inorganically
filled sheets, articles made from hydraulically settable or inorganically
filled sheets, and apparatus and methods for manufacturing same, which are
described or claimed in (i) any of the patents or patent applications listed
in Exhibit "C", including without limitation, any continuations, divisionals
or continuations-in-part, reissues
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and extensions thereto, and any patents issued therefrom, and (ii) any future
patent applications under the Patent Cooperation Treaty, any future European
Patent applications, and/or any future national patent applications in or for
any country that are based on any of the applications listed in Sections B or
D of Exhibit "C" hereto, and any patents issued therefrom.
(e) The term "Core Technology" shall mean all of the proprietary
technology involving hydraulically settable or inorganically filled compositions
which are described or claimed in (i) any of the patents or patent applications
listed in Exhibit "A" hereto, including without limitation, any continuations,
divisionals or continuations-in-part, reissues and extensions thereto, and any
patents issued therefrom, and (ii) any future patent applications under the
Patent Cooperation Treaty, any future European Patent applications, and/or any
future national patent applications in or for any country that are based on any
of the applications listed in Section B or D of Exhibit "A" hereto, and any
patents issued therefrom.
(f) The term "Design Improvement" shall mean any improvement to the
physical shape, ornamental design or configuration of Food Service Disposables.
(g) The term "Food Service Disposables" shall mean any disposable,
single use product, container, apparatus, device or equipment for packaging,
storing, portioning, serving or dispensing food or beverages intended for
consumption within a short period of time (less than twenty four hours), which
incorporate in whole or in part any portion of the Technology and, to the extent
not otherwise excepted or excluded, are encompassed in those items included
within the scope of the Disposal Product Categories set forth in the Clinton
Associates 1994 DISTRAK Five study of Disposables Utilization in Food Services
Segments (hereinafter referred to as the "DISTRAK V Study"), including all
products specifically set forth therein. Any product that has
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substantially the same shape, composition, mixture and functional properties
as a product within the scope of the definition of Food Service Disposables
shall be considered within the scope of such definition no matter the manner
in which that product is used, unless expressly excepted below.
Notwithstanding any other provision of this Agreement, the parties agree that
the following items shall not be within the scope of the definition of "Food
Service Disposables" or otherwise licensed under this Agreement: (i) sealed
containers for the long-term storage of liquids whether for single or
multiple portions (E.G., soft drink cans, milk cartons, sealed juice or drink
containers), except that single service (E.G., 16 ounces or less)
milk-containing cartons shall be within the scope of Food Service
Disposables; (ii) boxes or containers for the long-term storage of single or
multiple servings of foods or which are designed to extend the shelf life of
foods beyond same-day consumption (E.G., dry cereals boxes, egg cartons,
prepackaged frozen food containers and packaging, dairy product containers,
produce containers, condiment packaging, and meat and deli trays); (iii)
aseptic or sealed packaging; (iv) all secondary packaging (e.g., corrugated
containers and paper bags); and (v) wrapping products for consumer use. By
way of illustration, Exhibit "F" hereto provides a noncomprehensive,
noninclusive list of items within the definition of "Food Service
Disposables" hereunder and also a noncomprehensive, noninclusive list of
items that fall outside the definition of "Food Service Disposables"
hereunder. Exhibit "F" hereto shall control in the event of any conflict
between it and the DISTRAK V Study. In the event of any disagreement between
the parties whether a particular item not listed in Exhibit "F" hereto is
within or without the definition of Food Service Disposables, the parties may
submit the matter to arbitration pursuant to the provisions of paragraph 29.
The parties hereby agree that, if available, Clinton Associates
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shall act as arbiter in any arbitration proceeding involving a dispute as to
the definition of Food Service Disposable.
(h) The term "Product Improvement" shall mean any improvement,
refinement or change, whether patentable or unpatentable and irrespective of
whence derived, relating in whole or in part to the composition, formulation or
use of a Food Service Disposable or the Technology, including any improvement,
development or change relating to a Food Service Disposable by process (I.E.,
any change in the processing of a Food Service Disposable which yields a
materially different Food Service Disposable), such as a change in chemical
composition, change in physical characteristics or properties brought about by
substitution or replacement of elements or components, change in method of
formulation, change in rheology, etc. The term "Product Improvement" shall not
include Design Improvements.
(i) The term "Process Improvement" shall mean any improvement,
refinement or change, whether patentable or unpatentable and irrespective of
whence derived, relating in whole or part to the Technology or a Food Service
Disposable which involves an apparatus, machine or process so long as such
improvement, development or change does not materially alter the finished Food
Service Disposable, but rather yields a more efficient production of a Food
Service Disposable. The term "Process Improvement" shall also include any
development, refinement, improvement or change relating in whole or in part to
the application of materials, chemical compositions, coatings or other
substances, including the processes of application, to a Food Service Disposable
after the finish trim and forming or conversion of the Food Service Disposable
is completed.
(j) The term "Technology" shall refer collectively to the Core
Technology, the ALI-ITE-TM- Paper Technology, the Moldable Compound Technology
and the Trade Secrets.
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(k) The term "Trade Secrets" shall mean all proprietary information
and know-how owned by or licensed to EKI now or in the future that is or can be
utilized in the manufacture, use, or sale of ALI-ITE-TM- Paper or Food Service
Disposables, including without limitation the items described in Exhibit "D"
hereto (which is incorporated herein).
2. THE LICENSE.
(a) Subject to the terms and conditions set forth in this Agreement,
EKI hereby grants to ECC an exclusive (even as to EKI), worldwide license (the
"License") to make, use, sell and otherwise commercialize the Food Service
Disposables. The License includes the right to utilize the Technology to make,
use, sale or otherwise commercialize ALI-ITE-TM- Paper for conversion into Food
Service Disposables. The License may not be utilized by ECC for any purpose
other than to implement and carry out the development, manufacture, marketing,
distribution, use and sale of ALI-ITE-TM- Paper and/or Food Service Disposables
in accordance with the terms and conditions set forth in this Agreement. The
License shall be irrevocable except as specifically provided in this Agreement.
(b) Pursuant to the License, ECC shall have the right to grant
sublicenses. No later than five (5) business days prior to entering into a
sublicense agreement, ECC shall notify EKI of the proposed sublicense
arrangement, provide EKI with a copy of the proposed sublicense agreement and
provide EKI with such additional information as EKI may reasonably request.
Each sublicense shall impose upon the sublicensee duties and obligations similar
to the applicable provisions of paragraphs 4, 5, 6, 8, 9(a), 9(c), 9(d), 13(b),
14, 15, 16, 17, 18, and 19 hereof. ECC shall use its reasonable best efforts to
cause the full and complete performance by ECC's sublicensees of all of such
sublicensees' obligations under sublicense agreements granted pursuant
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to this subparagraph. EKI hereby acknowledges that ECC has complied with all
of its obligations under this subparagraph 2(b) and under subparagraph 2(b)
of the License Agreement with respect to all sublicense agreements granted by
ECC prior to the effective date of this Agreement.
(c) ECC shall be permitted to assign, without the consent of EKI,
all, but not less than all, of its rights, duties and obligations under this
Agreement in connection with the sale of its entire or substantially its entire
business, whether by merger, consolidation, sale of stock, sale of all or
substantially all assets or otherwise.
(d) ECC shall be permitted to grant security interests in its rights
under this License to secure favorable loan financing.
(e) Except as set forth in subparagraphs 2(b), 2(c) and 2(d) hereof,
ECC shall have no right to sublicense, assign, pledge, transfer or otherwise
hypothecate in any fashion any interest in or rights under the License, without
the prior written consent of EKI, which shall not be unreasonably withheld. Any
purported transfer in violation of the terms of this paragraph 2 shall be void
and shall constitute a material breach of ECC's obligations hereunder within the
meaning of paragraph 16(c) hereof.
3. FEES. As consideration for the grant of the License, ECC shall pay
to EKI the amount of $1,000 upon the execution of this Agreement. Upon the
payment of such amount, the License granted hereunder shall be deemed fully
paid-up for the entire term hereof.
4. RIGHT TO AUDIT. ECC shall keep and maintain complete and accurate
records concerning all aspects of the manufacture and sale of the ALI-ITE-TM-
Paper and Food Service Disposables. EKI shall have the right, at its expense,
to cause those records of ECC which deal with the design, manufacture, shipment
and sale of the ALI-ITE-TM- Paper or Food Service Disposables
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to be reviewed by such independent accountants, engineers and other
representatives (the "Representatives") as may be selected by EKI from time
to time. Such reviews may take place only during the normal business hours
of ECC and only upon written notice to ECC given at least three (3) business
days prior to such review. The Representatives conducting such review shall
be required to execute a confidentiality agreement, reasonably satisfactory
in form and content to counsel for ECC, pursuant to which the Representatives
shall agree that they will not disclose or use the information obtained
pursuant to such review to or for the benefit of any person or entity except
EKI.
5. IMPROVEMENTS.
(a) PRODUCT IMPROVEMENTS. If, while the License remains in effect,
ECC (or any of its sublicensees) should develop or acquire any Product
Improvement, ECC shall notify EKI of such Product Improvement within a
reasonable time of and in no event more than ninety (90) days after its
development and shall provide EKI with access to all information concerning such
Product Improvement as EKI shall reasonably request; provided, however, that all
such information shall be confidential and shall be subject to all restrictions
on disclosure as set forth in this Agreement or otherwise arising. ECC shall
assign to EKI all rights, title and interest in the Product Improvement for an
assignment fee of $1,000.00, and EKI shall grant back to ECC an exclusive,
world-wide, license to make, use and sell the Product Improvement in connection
with Food Service Disposables as if the Product Improvement were originally
within the scope of this Agreement. No additional royalty shall be required for
the exclusive license of the Product Improvement.
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(b) PROCESS IMPROVEMENTS. If, while the License remains in effect,
ECC (or any of its sublicensees) should develop or acquire any Process
Improvement, then ECC will notify (within a reasonable time not to exceed ninety
(90) days) EKI of the development of the Process Improvement and shall provide
EKI with access to all information concerning such Process Improvement as EKI
shall reasonably request; provided, however, that all such information shall be
confidential and shall be subject to all restrictions on disclosure as set forth
in this Agreement. ECC shall grant to EKI an exclusive, royalty-free license
(including the right to further sublicense) to make, use and sell the Process
Improvement for any use or purpose other than in connection with Food Service
Disposables in any territory for an assignment fee of $1,000.00.
(c) IMPROVEMENTS TO PRODUCT CONFIGURATION. The rights to any
Design Improvements shall be owned by the party that develops such Design
Improvements.
(d) EKI DEVELOPED AND JOINTLY DEVELOPED PRODUCT, PROCESS AND DESIGN
IMPROVEMENTS. Any Product Improvements, Process Improvements or Design
Improvements developed by EKI during the term of this Agreement (hereinafter
referred to as "EKI Improvements") and any Product Improvements, Process
Improvements or Design Improvements developed jointly by EKI and ECC during the
term of this Agreement (hereinafter referred to as "Jointly Developed
Improvements") shall be owned by EKI and, except as otherwise provided in this
Agreement, may be disclosed and/or licensed by EKI to third parties at EKI's
discretion in relation to uses or purposes other than in connection with Food
Service Disposables. Any Jointly Developed Improvements shall be deemed to be
licensed to ECC under this Agreement, shall be deemed to be included within the
definition of Technology, and shall be subject to all of the terms, conditions
and restrictions of this Agreement applicable to the Technology.
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(e) DISCLOSURE OF PRODUCT IMPROVEMENTS AND PROCESS IMPROVEMENTS.
EKI shall promptly disclose to ECC (i) all Product Improvements and all
Process Improvements that may be developed solely by EKI during the term of
this Agreement and (ii) unless contractually restricted from doing so by any
agreement EKI may have with a third party, all Product Improvements and all
Process Improvements that may be developed jointly by EKI and a third party
or otherwise acquired by EKI or licensed to EKI (along with the right to
sublicense such improvements) during the term of this Agreement. All such
Product Improvements and Process Improvements that may be disclosed by EKI to
ECC pursuant to this subparagraph shall be deemed to be licensed to ECC under
this Agreement, shall be deemed to be included within the definition of
Technology, and shall be subject to all of the terms, conditions and
restrictions of this Agreement applicable to the Technology.
6. PATENT MATTERS.
(a) PATENT RIGHTS FOR THE TECHNOLOGY. EKI shall have the
exclusive right (but not the obligation) to seek and obtain patent protection
for the Technology both in the United States and in all foreign
jurisdictions; provided, however, that EKI will use commercially reasonable
efforts to prosecute the pending United States patent applications listed on
Exhibits "A"-"C" hereto. All decisions concerning the process of seeking and
obtaining such patent protection shall be within the sole and exclusive
discretion of EKI, including but not limited to decisions concerning those
jurisdictions in which such protection shall be sought and the identity of
legal counsel and other professionals who will be retained to assist EKI in
seeking such protection. ECC shall pay or reimburse EKI for all costs and
expenses associated with filing, prosecuting, and maintaining patent and
patent applications (both domestic and foreign) directed to any of the
following (i) compositions
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(whether cement-based or non-cement-based) capable of use in Food Service
Disposables, (ii) methods of using compositions (whether cement-based or
non-cement-based) as Food Service Disposables, or (iii) methods of
manufacturing either Food Service Disposables or cement-based or
non-cement-based compositions. Except as provided in the following sentence,
EKI shall pay all costs and expenses associated with filing, prosecuting, and
maintaining patent and patent applications (both domestic and foreign) other
than those within the scope of the preceding sentence. However, if ECC
requests, in writing specifically referring to this subparagraph, that EKI
seek patent protection for the Technology in particular jurisdictions, and if
EKI determines in its reasonable discretion that seeking such protection will
not adversely affect its use of or rights to the technology in question, EKI
will seek the protection requested by ECC, provided that all costs and
expenses associated with filing, prosecuting and maintaining such patent
protection shall be paid by ECC. Any and all patents which are obtained
under this paragraph shall be and shall remain the sole and exclusive
property of EKI, subject only to the License. EKI shall keep ECC fully and
promptly informed of the status of the prosecution of each patent application
provided for by this paragraph and shall consult with ECC on all material
aspects of the prosecution of each such application; provided, however, that
the final decisions in regard to all amendments to and abandonment of such
patent applications shall be made by EKI, in its sole discretion.
(b) PATENT RIGHTS FOR PRODUCT IMPROVEMENTS. EKI shall have the right
to seek patent protection for any Product Improvement at its own cost and
expense. In the event that EKI does not seek patent protection for a Product
Improvement, ECC may elect to seek patent protection for the Product Improvement
at ECC's own cost and expense. In the event that neither EKI nor ECC seeks
patent protection for a Product Improvement, then a sublicensee may elect to do
so
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at its own cost and expense. ECC shall provide, and shall require its
sublicensees to provide, to EKI or its assignee such assistance as may be
reasonably requested, from time to time, in connection with such efforts,
including the execution of any documents necessary to obtain and maintain such
patent protection; provided, however, that EKI or its assignee will reimburse
ECC or its sublicensee, as the case may be, for any out-of-pocket fees and
expenses reasonably incurred in providing such assistance. The parties shall
keep each other informed of the status of the prosecution of each patent
application which a party elects to pursue and shall consult with each other on
all material aspects of the prosecution of such application, although all final
decisions in regard to a patent application shall remain within the sole
discretion of the party who is prosecuting such patent application.
(c) PATENT RIGHTS FOR PROCESS IMPROVEMENTS. An ECC sublicensee shall
have the right to seek patent protection for any Process Improvement at its own
cost and expense. In the event that a sublicensee does not seek patent
protection for a Process Improvement, ECC may elect to seek patent protection
for the Process Improvement at ECC's own cost and expense. In the event that
neither ECC nor a sublicensee elects to seek patent protection for a Process
Improvement, ECC shall promptly notify EKI in writing, and EKI shall have the
option, for a period of ninety (90) days after its receipt of such written
notice, to acquire by assignment from ECC or its sublicensee, as the case may
be, all rights, title and interests in and to the Process Improvement in
question, including the right to seek patent protection in EKI's name or its
designee, in consideration of a single lump-sum payment of One Thousand Dollars
($1,000.00). In the event EKI exercises the option provided for in the
preceding sentence, ECC and/or sublicensee, as the case may be, shall provide to
EKI or its designee such assistance as may reasonably be requested, from time to
time, in connection with EKI's or its designee's efforts to obtain protection of
the
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Process Improvement in question, including the execution of any documents
necessary to obtain and maintain such patent protection; provided, however, that
EKI or its assignee will reimburse ECC and/or its sublicensee, as the case may
be, for any out-of-pocket fees and expenses reasonably incurred in providing
such assistance. The parties shall keep each other informed of the status of
the prosecution of each patent application which a party elects to pursue and
shall consult with each other on all material aspects of the prosecution of such
application, although all final decisions in regard to a patent application
shall remain within the sole discretion of the party who is prosecuting such
patent application.
(d) In the event EKI elects to abandon any pending application within
the scope of the Technology, EKI shall provide timely notice of such election to
ECC, and ECC may elect to assume responsibility for further prosecution of any
such patent application at ECC's own cost and expense. In the event EKI elects
to abandon any such pending patent application and ECC elects to assume
responsibility for prosecution of such patent application, EKI shall, upon
written request from ECC, grant to ECC an irrevocable, nonexclusive and fully
paid up license to utilize the teachings of such patent application, including
an irrevocable, nonexclusive and fully paid up license under any and all patents
that may issue based on such patent application. Similarly, in the event EKI
elects not to continue payment of maintenance fees with respect to any issued
patent within the scope of the Technology, EKI shall provide timely notice of
such election to ECC, and ECC may elect to assume responsibility for payment
of all future maintenance fees with respect to such issued patent at ECC's
own cost and expense. In the event EKI elects not to pay maintenance fees
with respect to any such issued patent and ECC elects to assume
responsibility for payment
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of all future maintenance fees for such issued patent, EKI shall, upon
written request from ECC, grant to ECC an irrevocable, nonexclusive and fully
paid up license under such issued patent.
7. ADDITIONAL FOOD SERVICE DISPOSABLES.
(a) It is recognized and understood by the parties to this Agreement
that, in addition to the Food Service Disposables and ALI-ITE-TM- Paper licensed
under this Agreement, EKI has sought and will continue to seek patent and trade
secret protection for, and intends to license to others, a broad range of other
uses and products incorporating its microstructurally engineered compositions,
formulations, and materials. Nevertheless, if, during the term of this
Agreement, ECC determines that there exists a commercially feasible use,
application, function, or purpose for the compositions, formulations, or
materials which are in whole or in part disclosed (even though not claimed) in
the Technology, whether patentable or unpatentable, and which have no
substantial use as Food Service Disposables (hereinafter "New Use"), ECC shall
give written notice of such New Use to EKI (the "New Use Notice"). By way of
example and illustration only, a sublicensee of ECC may determine that there is
a commercial market for making and selling packages or containers for electrical
components or other articles not included in the definition of Food Service
Disposables from the same cementitious composition which it uses to make Food
Service Disposables under this Agreement. In this situation, the New Use would
be using EKI's cementitious compositions in the manufacture of such packages or
containers.
(b) If EKI does not have any existing intellectual property
protection (whether in the form of a patent application, a trade secret, or
the subject of previous or continuing research and development) relating to
the New Use, ECC shall use reasonable efforts to obtain for EKI the exclusive
right to negotiate, for a period of ninety (90) days after the New Use
Notice, with the
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entity which developed the New Use in order to obtain a license which will
authorize EKI to manufacture, use, sell, and commercialize the New Use. ECC
will negotiate in good faith the terms of the license for the New Use. In
the event that EKI is seeking or has been granted patent protection on the
compositions, formulations, or materials to be incorporated into the New
Use, EKI may at its option negotiate with ECC or its sublicensee for a
license to incorporate EKI's compositions into the New Use.
8. INFRINGEMENT MATTERS.
(a) EKI and ECC promptly will notify each other of any apparent
infringement of the Technology or the Trade Secrets, or of the Trademarks,
which comes to their attention while the License remains in effect. If any
such apparent infringement affects the use and application by ECC and/or its
sublicensees of the License, ECC shall have the option, at its sole cost and
expense, to bring suit to enjoin such infringement and to recover damages
therefor. In any action brought by ECC pursuant to this paragraph, ECC shall
select and control counsel for the prosecution of such suit. EKI shall (i)
have the right to receive, from time to time, full and complete information
from ECC concerning the status of such suit, (ii) have the right, at its own
expense, to be represented therein by counsel in an advisory or consultive
capacity, and (iii) cooperate fully with ECC and provide whatever assistance
is reasonably requested by ECC in connection with such suit, including the
preparation and signing of documents. Any and all damages collected as the
result of any such suit shall be paid, first, to ECC and EKI to reimburse
them for their actual costs incurred as a direct result of such suit, with
any balance to be treated, for all purposes, as compensation received by ECC
from the sale of Food Service Disposables. ECC shall not have the right to
settle any infringement suit described in this subparagraph without the prior
written consent of EKI, which
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consent shall not be unreasonably withheld. If ECC believes the suit is without
merit, is not economically justifiable, or for any other reason does not wish to
pursue the infringement, it shall notify EKI of its decision not to bring action
against the apparent infringer. Such notice by ECC must be given within 30 days
of the date upon which ECC is notified of the infringement in question. If ECC
elects, for any reason, not to pursue the apparent infringement under this
subparagraph, EKI shall have the right to bring suit to enjoin such infringement
and to recover damages therefor.
(b) In any action brought pursuant to paragraph 8(a) hereof, the
party initiating the suit (the "Initiating Party") shall select and control
counsel for the prosecution of such suit. The other party hereto (the
"Non-Initiating Party") shall (i) have the right to receive, from time to
time, full and complete information from the Initiating Party concerning the
status of such suit, (ii) have the right, at its own expense, to be
represented therein by counsel in advisory or consultative capacity, and
(iii) cooperate fully with the Initiating Party and provide whatever
assistance is reasonably requested by the Initiating Party in connection with
such suit, including the preparation and signing of documents. The
Initiating Party shall not have the right to settle any infringement suit
described in paragraph 8(a) hereof, without the prior written consent of the
Non-Initiating Party, which consent shall not be unreasonably withheld. The
costs and expenses, including attorneys' fees, of the Initiating Party in any
unsuccessful action alleging infringement will be borne by the Initiating
Party, but the costs and expenses, including attorneys' fees, of the
Initiating Party in any successful infringement action will be borne by the
Initiating Party and Non-Initiating Party in proportion to the amount of
damages awarded to each by the court. In no event, however, will the
Non-Initiating Party be obligated to reimburse the costs and expenses,
including
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attorneys' fees, of the Initiating Party in an amount in excess of the
damages awarded to the Non-Initiating Party in such action.
(c) The parties shall promptly notify each other of any claim of
infringement and of the commencement of any lawsuit against EKI, ECC, ECC's
sublicensees, or any customers of the foregoing, for the infringement of any
patent or other intellectual property right held by a third party which is
based upon the manufacture, use or sale of the Food Service Disposables or
ALI-ITE-TM-Paper pursuant to the License. With respect to only EKI and ECC,
ECC shall have the obligation to defend and control the defense of any such
lawsuit, at its sole cost and expense. EKI will assist ECC, without cost to
ECC, in the defense of such suit or action, by providing information and fact
witnesses as needed. EKI shall have the right to be represented in such suit
or action by its own legal counsel, at its own expense, provided that such
legal counsel will act only in an advisory capacity, except as provided
elsewhere in this paragraph. If ECC fails to assume the defense of any
infringement lawsuit described in this subparagraph, EKI shall have the
right, but not the obligation, to assume the defense of such lawsuit
utilizing legal counsel of its choice. Additionally, ECC and its
sublicensees will indemnify and hold EKI harmless from and against, and
hereby assume liability for the payment of any and all loss, liability or
damage, and for all costs and expenses, including reasonable costs of
investigation and reasonable attorneys, accountants and expert witness fees
(collectively "Losses") that may be imposed upon, suffered or incurred by EKI
as a consequence of or in connection with any lawsuit described in this
subparagraph, but only to the extent that such lawsuit is based upon the
manufacture, use or sale of the Food Service Disposables or ALI-ITE-TM- Paper
pursuant to the License. No lawsuit referred to in this subparagraph
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shall be settled without the prior written consent of EKI, which consent
shall not be unreasonably withheld.
9. ADDITIONAL DUTIES OF THE ECC. In addition to, and not in
limitation of, the other duties and obligations of ECC, as set forth in this
Agreement, ECC shall:
(a) Use commercially reasonable efforts to diligently exploit the
License by actively and aggressively manufacturing, marketing, advertising or
selling the Food Service Disposables and ALI-ITE-TM- Paper in the United
States and appropriate foreign jurisdictions.
(b) Use commercially reasonable efforts to seek and obtain
qualified sublicensees or joint venturers, both in the United States and in
appropriate foreign jurisdictions, for the manufacture, marketing, sale and
distribution of the Food Service Disposables and ALI-ITE-TM- Paper.
(c) If ECC becomes a publicly traded corporation or becomes
otherwise required to publicly disseminate its financial statements, ECC
shall provide EKI with annual financial reports of ECC which are published
and detail ECC's annual earnings and statement of net worth for the preceding
calendar or fiscal year. If ECC is required to file financial reports with
the S.E.C., then ECC may provide EKI with copies of those financial reports
required to be filed with the S.E.C. in lieu of the foregoing.
(d) Forty-five (45) days after the final day of each of ECC's
calendar or fiscal quarter end (the "Quarter"), ECC shall deliver to EKI a
written report (the "Development Report"), which shall set forth, in
reasonable detail, the scope and results of all research and development
activities relating to the Technology, the Food Service Disposables and/or
the ALI-ITE-TM-Paper undertaken by ECC or a sublicensee (as reported to ECC)
during the Quarter, which report shall also set forth, in reasonable detail,
a description of all marketing activities for the Technology,
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the Food Service Disposables and/or the ALI-ITE-TM- Paper undertaken during
the Quarter by ECC or a sublicensee (as reported to ECC). The Development
Reports shall be certified as correct and accurate, to ECC's knowledge and
belief, by an appropriate officer of ECC.
10. REPRESENTATIONS AND WARRANTIES OF EKI. EKI hereby represents and
warrants to ECC that:
(a) EKI is a general partnership duly organized, validly existing
and in good standing under the laws of the State of California. EKI has all
requisite partnership power and authority to own, operate and lease its
properties and to carry on its business as now being conducted, and is duly
qualified to do business in every jurisdiction wherein the nature of the
business conducted or the assets owned or leased by it make such
qualification material to the conduct of its business.
(b) EKI has all requisite partnership power and authority to enter
into this Agreement and to perform its obligations hereunder, including but
not limited to the right to license the Technology. This Agreement has been
duly and validly authorized, executed and delivered by EKI and, assuming the
due authorization, execution and delivery by ECC, is the legal, valid and
binding obligation of EKI, enforceable against it in accordance with its
terms, subject only to bankruptcy, insolvency, reorganization, moratorium and
other laws relating to or affecting creditors' rights generally and to
general principles of equity.
(c) To the best knowledge of EKI, no person, firm or entity has
made any claims or threatened, in writing or otherwise, that EKI is in
violation of or has infringed any patent, patent license, trade name,
trademark, service mark, brand mark, brand name, copyright, know-how, formula
or other proprietary or trade rights of such third party as they relate to
the Technology.
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To the best of EKI's present knowledge and belief, the use of the Technology
in the manufacture of the Food Service Disposables and/or ALI-ITE-TM- Paper
pursuant to the terms of this Agreement will not constitute infringement of
the proprietary rights of any third party. Except as provided in this
subparagraph, EKI makes no representation or warranty as to the ownership or
validity of the Technology.
(d) To the best knowledge of EKI, the execution, delivery and
performance of this Agreement by EKI and the consummation by it of the
transactions contemplated hereby will not (i) constitute a violation (with or
without the giving of notice or lapse of time) of any provision of applicable
law, (ii) require any consent, approval or authorization of any person or
governmental authority, (iii) result in a default under, acceleration or
termination of, or the creation in any party of the right to accelerate,
terminate, modify or cancel any agreement, lease, franchise, permit, note or
other restriction, encumbrance, obligation or liability to which EKI is a
party or by which it is bound or to which any of its assets are subject, (iv)
result in the creation of any lien or encumbrance upon EKI's assets, (v)
conflict with, result in the breach of, or constitute a default under any
provision of EKI's partnership agreement, or (vi) conflict with, result in a
tortious interference as a result of such conflict with, or otherwise
violate, any material contract or arrangement between EKI and any other
person. The representation and warranty given in this subparagraph shall not
be deemed or construed to expand or modify the representation and warranty
given by EKI in subparagraph 10(c) hereof.
(e) Neither EKI, nor anyone acting on its behalf, has taken any
action relating to any broker, finder, consultant or other expert which could
result in the imposition upon ECC
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of any obligation to pay a fee to any broker, finder, consultant or similar
expert in connection with the transactions contemplated hereby.
(f) EKI owns the entire right, title and interest in and to the
patents and patent applications set forth in Exhibits A, B and C hereto.
11. REPRESENTATIONS AND WARRANTIES OF ECC. ECC hereby represents and
warrants to EKI that:
(a) ECC is a corporation duly organized, validly existing and in
good standing under the laws of the State of Delaware. ECC has all requisite
corporate power and authority to own, operate and lease the properties and to
carry on its business as now being conducted, and is duly qualified to do
business in every jurisdiction wherein the nature of the business conducted
or the assets owned or leased by it make such qualification material to the
proper conduct of its business.
(b) ECC has all requisite corporate power and authority to enter
into this Agreement and to perform its obligations hereunder. This Agreement
has been duly and validly authorized, executed and delivered by ECC and,
assuming the due authorization, execution and delivery by EKI, is a legal,
valid and binding obligation of ECC, enforceable against it in accordance
with its terms, subject only to bankruptcy, insolvency, reorganization,
moratorium and other laws relating to or affecting creditors' rights
generally and to general principles of equity.
(c) To the best knowledge of ECC, the execution, delivery and
performance of this Agreement by ECC and the consummation by it of the
transactions contemplated hereby will not (i) constitute a violation (with or
without the giving of notice or lapse of time) of any provision of applicable
law, (ii) require any consent, approval or authorization of any person or
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governmental authority, (iii) result in a default under, acceleration or
termination of, or the creation in any party of the right to accelerate,
terminate, modify or cancel, any agreement, lease, franchise, permit, note or
other restriction, encumbrance, obligation or liability to which ECC is a
party or by which it is bound or to which any of its assets are subject, (iv)
result in the creation of any lien or encumbrance upon ECC's assets, (v)
conflict with, result in the breach of, or constitute a default under any
provision of ECC's Certificate of Incorporation or Bylaws, or (vi) conflict
with, result in tortious interference as a result of such conflict with, or
otherwise violate, any contract or arrangement between ECC and any other
person.
(d) Neither ECC, nor anyone acting on its behalf, has taken any
action relating to any broker, finder, consultant or other expert which could
result in the imposition upon EKI of any obligation to pay a fee to any
broker, finder, consultant or similar expert in connection with the
transactions contemplated hereby.
12. SURVIVAL OF REPRESENTATIONS AND WARRANTIES. The representations
and warranties of the parties, as set forth herein, shall be true and
accurate as of the effective date of this Agreement, and shall survive the
execution of this Agreement.
13. INDEMNIFICATION.
(a) EKI shall defend, indemnify and hold ECC harmless from and
against, and hereby assumes liability for the payment of any and all loss,
liability or damage, and for all costs and expenses (including reasonable costs
of investigations and reasonable attorneys, accountants, and expert witness
fees) that may be imposed upon, suffered or incurred by, or successfully
asserted against ECC as a consequence of or in connection with any claim (i)
that may be asserted against ECC that the Technology infringes the valid patent
and trade secret rights of any third party, (ii)
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that may be asserted against ECC based on a breach of any representations or
warranties set forth in paragraph 10 hereof, or (iii) based on the negligence
or willful misconduct of EKI.
(b) ECC shall defend, indemnify and hold EKI harmless from and
against, and hereby assumes liability for the payment of any and all loss,
liability or damage, and for all costs and expenses (including reasonable
costs of investigations and reasonable attorneys, accountants, and expert
witness fees) that may be imposed upon, suffered or incurred by, or
successfully asserted against EKI as a consequence of or in connection with
any claim or liability, other than those expressly set forth in subparagraph
13(a) hereof, arising out of or as a consequence of this Agreement,
including, but not limited to, any product liability claims that may be
asserted against EKI in relation to any Food Service Disposables
manufactured, marketed, distributed, used and/or sold by ECC pursuant to this
Agreement. In the event any action, suit or proceeding is brought against
EKI with respect to which there may be indemnification pursuant to this
subparagraph, the defense of such action, suit or proceeding (including all
settlements and arbitrations, trials, appeals or other proceedings) shall be
conducted by ECC at its sole cost and expense through legal counsel selected
by ECC. EKI shall have the right to participate in such defense at their own
expense through legal counsel of their choice. If ECC fails to defend any
such action, suit or proceedings, for any reason, such failure shall
constitute a material breach of this Agreement by ECC, and EKI may undertake
defense of such action, suit or proceeding, through legal counsel of their
choice at the sole cost and expense of ECC (provided such legal costs and
expenses are reasonable under the circumstances). The parties shall make
available to one another, their legal counsel and accountants, all
information and documents reasonably available to them which relate to such
action, suit or proceeding and shall render such other assistance as they may
reasonably
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require of one another in order to insure the proper and adequate defense of
any such action, suit or proceeding.
(c) Neither party shall have any liability to the other party
pursuant to an indemnity provided by this paragraph unless and until the
aggregate amount of all indemnified losses suffered or incurred by such
indemnified party after the effective date hereof equals or exceeds $100,000
(U.S. Dollars), at which time the indemnifying party shall be obligated to
pay the indemnified party the full amount of all indemnified losses,
including such initial $100,000 (U.S. Dollars) in losses. The amount of
indemnity payable pursuant to this paragraph shall be calculated after giving
affect to any insurance proceeds actually received by the indemnified party
provided that neither party shall subrogate to any insurance carrier any
rights or claims which it may have against the other party.
14. PRODUCT LIABILITY INSURANCE. In addition to the indemnification
provided under subparagraph 13(b) hereof, ECC shall obtain, and shall maintain
during the entire term of this Agreement, a product liability insurance policy
with a reputable insurance carrier reasonably acceptable to EKI. For United
States carriers, such carriers must have an A.M. Best rating of "A-VI" or
better. Such policy shall provide ECC with product liability coverage with
minimum liability coverage in the amount of $1,000,000.00 (U.S. Dollars)
aggregate and $1,000,000.00 (U.S. Dollars) per occurrence. Such product
liability insurance policy shall provide that EKI will be given thirty (30) days
prior written notice of any amendment or modification that would reduce or
change coverage under, or termination or cancellation of, the policy. Upon
EKI's request, ECC shall provide EKI with a copy of such policy and of all
amendments or modifications thereto. ECC shall be required to obtain and
maintain the product liability insurance policy called for by the provisions
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of this subparagraph only from and after the date of the first public testing
or first commercial sale of a Food Service Disposable or ALI-ITE-TM- Paper by
ECC or any of its sublicensees.
15. CONFIDENTIALITY.
(a) ECC acknowledges that the Technology, the Trade Secrets, and
the Improvements, as they may exist from time-to-time, are and shall remain
the valuable, special, unique and proprietary assets of EKI and shall
constitute "EKI Confidential Information" hereunder. In order for any
additional information to be deemed to be "EKI Confidential Information"
hereunder, it must be in written form and appropriately marked "Confidential"
at the time of disclosure to ECC or designated as "Confidential," in writing,
within thirty (30) days of disclosure. Alternatively, if the information is
disclosed orally, it must be designated by EKI as "Confidential" at the time
of disclosure and confirmed to ECC as "Confidential," in writing, by EKI
within thirty (30) days of such disclosure. Any such orally disclosed and
designated information shall be deemed to be "EKI Confidential Information"
for all purposes unless EKI fails to confirm such fact in writing to ECC
within the required thirty (30) day period. Additionally, as used herein,
EKI Confidential Information shall not include any information or data which
ECC can show: (i) is in, or becomes generally known in, the public domain by
any means other than the failure by ECC to fulfill its obligations hereunder;
or (ii) is rightfully known to ECC at the time of disclosure by EKI; or
(iii) is, at any time, disclosed to ECC by a third party who has received and
disclosed such information without the breach of any obligation of
confidentiality to EKI or to any third party. For purposes of this
subparagraph, information shall not be deemed to be part of the public domain
or in ECC's knowledge merely because it may be embraced in a more general
disclosure or simply because it may be derived from combinations of
disclosures or information generally available to the public
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or within ECC's knowledge. The parties acknowledge that EKI's disclosure to
ECC of EKI Confidential Information will be necessary in order to enable ECC
to utilize the License in the manner contemplated by this Agreement, and EKI
shall make such disclosures of the EKI Confidential Information to ECC as EKI
reasonably determines are necessary, required or appropriate in that regard.
The parties acknowledge that they have a confidential relationship with one
another, and accordingly, ECC shall maintain all EKI Confidential Information
disclosed to it pursuant to this Agreement in confidence and shall not
disclose the same to any third party (with the exception of its sublicensees,
employees, accountants, attorneys and other agents and professional advisors)
either during or after the term of this Agreement unless required to do so by
court order or by law, in which case ECC shall notify EKI, in writing, prior
to making such disclosure and shall cooperate with EKI to preserve and
protect the confidentiality of the EKI Confidential Information in question
to the fullest extent possible. Additionally, except as specifically
contemplated by this Agreement, ECC shall not utilize any EKI Confidential
Information for its own benefit or for the benefit of any third party. Prior
to making any permitted disclosure of any EKI Confidential Information to its
sublicensees, employees, accountants, attorneys and other agents and
professional advisors, ECC shall require such persons, firms, or entities to
execute and deliver written nondisclosure agreements which shall obligate
such persons, firms and entities to comply with obligations of
confidentiality and nonuse substantially equivalent to those set forth in
this subparagraph.
(b) From time to time during the term of this Agreement, ECC may
disclose to EKI certain information which ECC deems to be proprietary and
confidential, including but not limited to business plans, marketing plans and
financial information (the "ECC Confidential
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Information"). The definition of "ECC Confidential Information," and EKI's
use and disclosure thereof, shall be governed by terms and conditions
identical to those which govern EKI Confidential Information, as set forth in
paragraph 15(a) hereof.
16. TERM AND TERMINATION.
(a) The term of this Agreement shall commence upon the effective
date hereof. Unless sooner terminated as hereinafter provided, this
Agreement shall continue in full force and effect in the United States until
the expiration of the last United States patent covering the Technology or
for so long as ECC or at least one of its sublicensees produces a Food
Service Disposable or ALI-ITE-TM- Paper which utilizes material proprietary
information or a material Trade Secret which is licensed hereby. Unless
sooner terminated as provided herein, this Agreement shall continue in full
force and effect outside the United States until the expiration of the last
patent issued anywhere in the world covering the Technology or for so long as
ECC or at least one of its sublicensees produces a Food Service Disposable or
ALI-ITE-TM- Paper which utilizes material proprietary information or a
material Trade Secret which is licensed hereby.
(b) ECC may terminate this Agreement, at any time, upon sixty (60)
days prior written notice of such termination to EKI.
(c) If either party is in breach of any of its material obligations
hereunder, then the non-breaching party may give the breaching party written
notice of such breach. If such breach is not cured within ninety (90) days
after the date such written notice is delivered or, if such default cannot be
cured within such ninety day period but the breaching party has taken action to
cure such default, then if the default is not cured within one hundred eighty
(180) days from the date of the
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original notice, the non-breaching party shall have the right immediately to
terminate the Sublicense by written notice to the breaching party.
17. EFFECT OF EXPIRATION OR TERMINATION.
(a) From and after the effective date of the expiration of the
term of this Agreement or the termination of the License pursuant to
paragraph 16 hereof, and subject to the exceptions set forth in this
subparagraph 17(a), neither ECC nor any of its sublicensees shall have any
right, whatsoever, to utilize the Technology, the Trade Secrets, or the
Improvements pertinent to this Agreement. ECC shall return to EKI all copies
of Confidential Information which is then in the possession of ECC, and shall
have no right pertinent to this Agreement to sell any Food Service Disposable
or ALI-ITE-TM- Paper which has theretofore been manufactured by ECC or its
sublicensees. Notwithstanding the foregoing, in the event of termination of
this Agreement for any reason other than the expiration of the term of this
Agreement pursuant to subparagraph 16(a) hereof, EKI shall grant to
McDonald's Corporation a license to use the Technology to make, have made,
use or sell Food Service Disposables under terms and conditions no less
favorable than those granted in sublicenses of ECC existing at the time of
such termination.
(b) The right of termination under subparagraph 17(c) hereof shall
be in addition to, and not in lieu of, all other rights and remedies the
terminating party may have under this Agreement, at law or in equity.
(c) The obligations concerning indemnification set forth in
paragraph 13 hereof, product liability insurance set forth in paragraph 14
hereof, and confidentiality set forth in paragraph 15 hereof shall survive
the expiration and termination of the License.
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18. MARKING AND UNITED STATES EXPORT CONTROL.
(a) Where technically feasible, ECC shall mark, or shall cause its
sublicensees to mark, the Food Service Disposables and related documents with
the applicable United States patent numbers, as required by applicable law,
or as reasonably instructed by EKI.
(b) ECC shall comply with all applicable laws, rules and
regulations of the United States, including but not limited to the Export
Regulations of the United States Department of Commerce, in connection with
the direct or indirect export of any of the Technology, ALI-ITE-TM- Paper or
Food Service Disposables. ECC acknowledges that EKI has not made and does not
make any representation that any license is or is not required in connection
with such export or, if required, that such license will be issued by the
United States Department of Commerce.
19. TRADEMARKS.
(a) The License granted herein shall also authorize, but not
obligate, ECC and its sublicensees to utilize, in connection with the
marketing, distribution and sale of the Food Service Disposables and/or
ALI-ITE-TM- Paper those trade names, trademarks, service marks, slogans and
logo marks (collectively the "Trademarks") of EKI which are set forth and
identified on attached Exhibit "E" and incorporated herein. Any trademark
independently developed by ECC will become its sole property. The parties
hereto acknowledge and agree that the trademark or trade name "EarthShell" is
owned by, and is the exclusive property of, ECC.
(b) To the extent an ECC sublicensee elects to use the Trademarks
on or in connection with the marketing, distribution, use and/or sale of the
Food Service Disposables and/or ALI-ITE-TM- Paper, ECC shall require of its
sublicensees that the specific placement, size, and detail of the Trademarks
on the Food Service Disposable and/or ALI-ITE-TM- Paper must conform to such
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specifications as EKI may from time to time provide, but shall not be
required to be placed on the Food Service Disposables and/or ALI-ITE-TM-
Paper in such a size, placement, detail or configuration so as to impair the
marketability of the Food Service Disposable and/or ALI-ITE-TM- Paper. In
addition, on any Food Service Disposables and/or ALI-ITE-TM- Paper
manufactured, marketed, distributed and sold by an ECC sublicensee and
bearing any Trademark, ECC shall require its sublicensee to include the
following legend: "This product is manufactured by _________________ under
license from EarthShell Container Corporation."
(c) In connection with any use of the Trademarks by ECC or a
sublicensee, ECC shall not represent in any manner that it has any ownership
interest therein and shall not challenge or impugn the ownership of the
Trademarks. ECC acknowledges that use of the Trademarks shall not create in
its own favor any right, title, or interest in or to the Trademarks, but that
all uses of these marks by ECC shall inure to the benefit of EKI. ECC shall
cooperate with EKI in the execution of any appropriate and necessary
documents in connection with the registration of any Trademark. Upon
termination of this Agreement, ECC shall cease and desist from use of the
Trademarks in any way, including any word or phrase that is similar to or
likely to be confused with such marks. However, in the event of termination,
ECC and its sublicensees shall have the right to sell at market price
existing stock and inventory of manufactured Food Service Disposables and
ALI-ITE-TM- Paper for a period of one hundred and eighty days and thereafter
shall deliver to EKI or its duly authorized representative all materials upon
which the Trademarks appear.
(d) All Food Service Disposables produced pursuant to this Agreement
bearing any Trademark shall be produced in compliance with the specifications
and procedures set forth
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in the EKI Quality Standards Manual. ECC shall permit EKI to conduct
periodic inspections/audits to ensure compliance with the EKI Quality
Standards Manual.
(e) Should any Food Service Disposable bearing any Trademark that
is manufactured, sold or otherwise commercialized by ECC contain any material
defect in its appearance or function, ECC shall cease any further
manufacture, sale or other commercialization of such Food Service Disposable
containing such material defect. Unless ECC corrects such defect within a
reasonable time following its discovery by or disclosure to ECC, ECC shall be
in breach of a material obligation of this Agreement.
20. SPECIAL TAX PROVISIONS. ECC (or its sublicensees or customers)
shall be solely responsible for the payment and discharge of any taxes,
duties, or withholdings relating to any transaction of ECC or its
sublicensees in connection with the manufacture, use, sale, license or
commercialization in any country of the Technology, Trade Secrets,
ALI-ITE-TM- Paper or the Products; except that EKI shall be responsible for
any taxes, duties or withholding relating to the payment to EKI of any
payment under this Agreement and ECC shall be permitted to perform any
withholding with respect to such payments and fees required by law or
regulation.
21. EQUITABLE RELIEF. A breach or default by ECC of the provisions of
paragraph 15 hereof shall cause EKI to suffer irreparable harm and, in such
event, EKI shall be entitled, as a matter of right, to a restraining order
and other injunctive relief from any court of competent jurisdiction,
restraining any further violation thereof by ECC, its officers, agents,
servants, employees, and those persons in active concert or participation
with them. The right to a restraining order or other injunctive relief shall
be supplemental to any other right or remedy EKI may have,
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including, without limitation, the recovery of additional damages for the
breach or default of any of the terms of this Agreement.
22. RELATIONSHIP OF THE PARTIES. This Agreement shall not create any
partnership, joint venture or similar relationship between the parties hereto
and no representations to the contrary shall be made by either party.
Neither party shall have any authority to act for or on behalf of or to bind
the other party in any fashion, and no representations to the contrary shall
be made by either party.
23. NOTICES. Any notice which is required or permitted to be given to
a party to this Agreement shall be deemed to have been given only if such
notice is reduced to writing and delivered personally, or by United States
mail with postage prepaid and return receipt requested, or by telecopier
(FAX) transmission, confirmed by letter, or by reputable overnight courier
(pursuant to instructions requiring next day delivery) to the party in
question as set forth below:
EKI: E. Khashoggi Industries
800 Miramonte Drive
Santa Barbara, California 93109-1419
Attention: President
Fax: (805) 899-3517
with copy to:
E. Khashoggi Industries
800 Miramonte Drive
Santa Barbara, California 93109-1419
Attention: Chief Legal Officer
Fax: (805) 899-3517
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ECC: EarthShell Container Corporation
800 Miramonte Drive
Santa Barbara, California 93109-1419
Attention: President
Fax: (805) 897-2298
Either party may change its address by giving notice of such change in the
manner set forth herein. If delivered personally, a notice shall be deemed
delivered when actually received at the address specified herein. Any notice
given to a party by mail shall be deemed delivered three (3) days following
the date upon which it is deposited in the mail, with postage prepaid and
return receipt requested. Any notice given to a party by FAX shall be deemed
delivered on the date it is actually transmitted to the party in question at
the FAX number specified above. Any notice given to a party by overnight
courier shall be deemed delivered on the first business day following the
date it is placed in the possession of such courier.
24. ASSIGNMENT. The Agreement may not be assigned by either party
hereto without the prior written consent of the other party; provided,
however, that ECC shall be permitted to assign without the consent of EKI,
all, but not less than all, of its rights, duties and obligations under this
Agreement in connection with the sale of its entire or substantially its
entire business, whether by merger, consolidation, sale of stock, sale of all
or substantially all assets or otherwise.
25. ENTIRE AGREEMENT. This Agreement supersedes any prior
understandings or agreements, whether written or oral (including the License
Agreement and all addenda and amendments thereto), and any contemporaneous
oral agreements, between the parties hereto in regard to the subject matter
hereof and contains the entire agreement between the parties in regard to
the subject matter hereof. Notwithstanding the foregoing, the parties hereto
acknowledge and agree that the certain Agreement for Allocation of Patent
Costs, dated July 31, 1993, shall continue
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in full force and effect, and that all references therein to paragraph 8(a)
of the ECC - EKI License Agreement shall be treated as references to
paragraph 8 of this Agreement. This Agreement may not be changed or modified
orally, but only by an agreement, in writing, signed by both the parties
hereto.
26. SAVINGS CLAUSE. Should any part or provision of this Agreement be
rendered or declared invalid by reason of any law or by decree of a court of
competent jurisdiction, the invalidation of such part or provision of this
Agreement shall not invalidate the remaining parts or provisions hereof, and
the remaining parts and provisions of this Agreement shall remain in full
force and effect.
27. WAIVER. Neither the failure or delay on the part of either party
to exercise any right, power or privilege hereunder shall operate as a waiver
thereof, nor shall any single or partial exercise of any such right or
privilege preclude any other or further exercise thereof or of any other
right or privilege.
28. GOVERNING LAW. This Agreement shall be governed by and construed
in accordance with the laws of the State of California, without giving effect
to the choice of law rules thereof.
29. RESOLUTION OF DISPUTES.
(a) In the event of a breach of this Agreement, or a dispute as to
the meaning of this Agreement, or any of its terms which the parties cannot
resolve by themselves amicably, the parties agree to submit such dispute to
resolution in the manner hereinafter described. First, the parties shall
endeavor to resolve the dispute through the use of an acceptable alternative
dispute resolution procedure. If, within 30 days after one party notifies
the other in writing of the existence of a dispute which it desires to be
resolved under this paragraph, the parties have not agreed upon
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an acceptable alternative dispute resolution procedure, then the matter shall
be resolved by arbitration as set forth below and according to the rules of
the American Arbitration Association, except as herein modified by the
parties. Unless otherwise agreed to in writing, all alternative dispute
resolutions or arbitration hearings will be held in Santa Barbara, California.
(b) The parties shall cooperate and use their respective best
efforts to encourage compliance with the following time periods: (i) within
10 days after the failure to agree to an acceptable alternative dispute
resolution procedure, each party will select an arbitrator, and notify the
other party of its selection; (ii) within 15 days after such notice, the
respective arbitrators will select a third arbitrator as Chairman of the
panel; (iii) a hearing by the arbitration panel shall be held within 30 days
after the selection of the Chairman; and (iv) a majority decision and
resolution shall be reached within 30 days of such hearing. Decisions of the
panel must be in writing and will be final and binding on the parties, and
judgment may be entered thereon by any court having jurisdiction of the
parties.
(c) Each party shall bear its own costs of presenting its case in
an alternative dispute resolution procedure, or arbitration, as the case may
be.
(d) The validity, construction and performance of this Agreement
shall be governed by and interpreted in accordance with the laws of the State
of California (as if all aspects of the Agreement were to be performed in
California).
30. FORCE MAJEURE.
(a) The failure of either party to perform its obligations under this
Agreement (except the obligation to make payments) shall not subject such party
to any liability to the other or subject this Agreement to termination if such
failure is caused by acts such as, but not limited
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to, acts of God, earthquake, explosion, flood, drought, war, riot, sabotage,
embargo, compliance with any order or regulation of any governmental entity
acting with color of right, intervention or delays created by any regulatory
authority, or by any other similar cause beyond the reasonable control of the
parties. The party so affected shall promptly notify the other party of the
event of force majeure, and shall use all reasonable efforts to remove such
event as soon as reasonably practicable.
(b) Notwithstanding the provisions of paragraph 30(a) hereof,
should either party be prevented from performing its obligations hereunder
for a period of six (6) months as a result of an event of force majeure, then
upon the expiration of such six (6) month period, the other party may
terminate this Agreement upon thirty (30) days notice to the non-performing
party, and both parties shall be relived from all duties and obligations
under this Agreement, except as otherwise provided in paragraph 17 hereof.
31. TIME OF ESSENCE. The parties acknowledge that time is of the
essence in regard to every provision of this Agreement.
32. COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
33. TERMINOLOGY. As used in this Agreement, the singular shall include
the plural and the plural shall include the singular. Titles of sections and
paragraphs in this Agreement are for convenience only, and neither limit nor
amplify the provisions of the Agreement, and all references in this Agreement
to a section or paragraph shall refer to the corresponding section or paragraph
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<PAGE>
of this Agreement unless specific reference is made to the sections of
another document or instrument.
IN WITNESS WHEREOF, the parties have caused this Patent Assignment and
License Agreement to be executed and delivered by their duly authorized
representatives upon the date first herein written.
EKI:
E. KHASHOGGI INDUSTRIES,
a California General Partnership
By: E. KHASHOGGI HOLDINGS, L.P.,
Managing General Partner of E. Khashoggi
Industries
By: E. KHASHOGGI INDUSTRIES, INC.,
General Partner of E. Khashoggi Holdings,
L.P.
By:
-----------------------------------------
ESSAM KHASHOGGI,
President of E. Khashoggi Industries,
Inc.
ECC:
EARTHSHELL CONTAINER CORPORATION,
a Delaware Corporation
By:
---------------------------------------------------
Richard K. Hulme, President
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EXHIBIT "A"
CORE TECHNOLOGY
A. ISSUED UNITED STATES LETTERS PATENTS
1. U.S. Letters Patent No. 4,225,247, issued September 30, 1980, and
entitled "Mixing and Agitating Device."
2. U.S. Patent No. 4,552,463, issued November 12, 1985, and entitled
"Methods and Apparatus for Producing a Colloidal Mixture."
3. U.S. Letters Patent No. 4,944,595, issued July 31, 1990, and entitled
"Apparatus for Producing Cement Building Material."
4. U.S. Letters Patent No. 5,061,319, issued October 29, 1991, and entitled
"The Process for Producing Cement Building Material."
5. U.S. Letters Patent No. 5,232,496, issued August 3, 1993, and entitled
"Process for Producing Improved Building Material and Product Thereof."
6. U.S. Patent No. 5,356,579, issued October 18, 1994, and entitled
"Methods of Manufacture and Use for Low Density Hydraulically Bonded
Cement Compositions."
7. U.S. Patent No. 5,358,676, issued October 25, 1994, and entitled
"Hydraulically Bonded Cement Compositions and Their Methods of
Manufacture and Use."
B. PENDING UNITED STATES PATENT APPLICATIONS
8. U.S. Patent Application entitled "Food and Beverage Containers Made from
Inorganic Aggregates and Polysaccharide, Protein, or Synthetic Organic
Binders, and the Methods of Manufacturing Such Containers."
9. U.S. Patent Application entitled "Cementitious Materials for Use in
Packaging Containers and their Methods of Manufacture."
10. U.S. Patent Application entitled "Cementitious Materials for Use in
Cushioning, Spacing, Partitioning, Portioning or Wrapping Objects and
the Methods of Manufacturing Such Materials."
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11. U.S. Patent Application entitled "Design Optimized Compositions and
Processed for Microstructurally Engineering Cementitious Mixtures."
12. U.S. Patent Application entitled "Highly Insulative Cementitious
Matrices and Methods for Their Manufacture."
13. U.S. Patent Application and entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing, and Packaging Food and
Beverages and Methods for their Manufacture."
14. U.S. Patent Application entitled "Methods and Systems for Manufacturing
Containers and Other Articles of Manufacture from Hydraulically Settable
Mixtures."
15. U.S. Patent Application entitled "Articles of Manufacture Molded from
Inorganically Filled Compositions."
16. U.S. Patent Application entitled "Methods of Molding Articles from
Inorganically Filled Compositions."
17. U.S. Patent Application entitled "Methods for Continuously Placing
Filaments within Hydraulically Settable Compositions being Extruded into
Articles of Manufacture."
18. U.S. Patent Application entitled "Systems and Apparatus for Continuously
Placing Filaments within Hydraulically Settable Compositions being
Extruded into Articles of Manufacture."
19. U.S. Patent Application entitled "Coated Hydraulically Settable
Containers and Other Articles for Storing, Dispensing, and Packaging
Food or Beverages."
20. U.S. Patent Application entitled "Compressed Low Density Hydraulically
Bonded Composite Articles."
21. U.S. Patent Application entitled "Compressed Hydraulically Bonded
Composite Articles."
C. ISSUED FOREIGN PATENTS.
22. Great Britain Patent No. 174,994, issued June 17, 1992, and entitled
"Method and Apparatus for Producing a Colloidal Mixture."
23. Canadian Patent No. 1,207,212, issued July 8, 1986, and entitled "Method
and Apparatus for Producing a Colloidal Mixture."
24. Japanese Patent No. 1,552,158, issued March 3, 1990, and entitled
"Method and Apparatus for Producing a Colloidal Mixture."
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<PAGE>
25. Australian Patent No. 594,555, issued June 26, 1990, and entitled
"Method and Apparatus for Producing a Colloidal Mixture."
26. Canadian Patent No. 1,298,282, issued March 31, 1992, and entitled
"Apparatus for Producing Cement Building Material."
27. Canadian Patent No. 1,298,830, issued April 14, 1992, and entitled
"Process for Producing Cement Building Material."
28. German Patent No. 3,586,229, issued July 23, 1992, and entitled "Method
and Apparatus for Producing a Colloidal Mixture."
29. Canadian Patent No. 1,321,609, issued August 24, 1993, and entitled
"Cement Building Material."
D. PENDING FOREIGN PATENT APPLICATIONS
30. Canadian Patent Application entitled "Process for Producing Improved
Building Material and Product Thereof."
31. European Patent Application entitled "Process for Producing Improved
Building Material and Product Thereof."
32. Japanese Patent Application entitled "Process for Producing Improved
Building Material and Product Thereof."
33. Canadian Patent Application entitled "Hydraulically Bonded Cement
Compositions and Their Methods of Manufacture and Use."
34. European Patent Application entitled "Hydraulically Bonded Cement
Compositions and Their Methods of Manufacture and Use."
35. PCT Patent Application entitled "Hydraulically Settable Containers and
Other Articles for Storing, Dispensing and Packaging Food and Beverages
and Methods for their Manufacture."
36. Argentine Patent Application entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing and Packaging Food and
Beverages and Methods for their Manufacture."
37. Chilean Patent Application entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing and Packaging Food and
Beverages and Methods for their Manufacture."
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38. Chinese Patent Application entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing and Packaging Food and
Beverages and Methods for their Manufacture."
39. Colombian Patent Application entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing and Packaging Food and
Beverages and Methods for their Manufacture."
40. Indian Patent Application entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing and Packaging Food and
Beverages and Methods for their Manufacture."
41. Mexican Patent Application entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing and Packaging Food and
Beverages and Methods for their Manufacture."
42. Peruvian Patent Application entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing and Packaging Food and
Beverages and Methods for their Manufacture."
43. Philippine Patent Application entitled "Hydraulically Settable
Containers and Other Articles for Storing, Dispensing and Packaging Food
and Beverages and Methods for their Manufacture."
44. South African Patent Application entitled "Hydraulically Settable
Containers and Other Articles for Storing, Dispensing and Packaging Food
and Beverages and Methods for their Manufacture."
45. Taiwanese Patent Application entitled "Hydraulically Settable Containers
and Other Articles for Storing, Dispensing and Packaging Food and
Beverages and Methods for their Manufacture."
46. Venezuelan Patent Application entitled "Hydraulically Settable
Containers and Other Articles for Storing, Dispensing and Packaging Food
and Beverages and Methods for their Manufacture."
47. PCT Patent Application entitled "Sealable, Liquid-Tight, Thin-Walled
Containers Composed of Hydraulically Settable Materials and Methods for
Manufacturing Such Containers."
48. Argentine Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
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49. Chilean Patent Application entitled "Sealable, Liquid-Tight, Thin-Walled
Containers Composed of Hydraulically Settable Materials and Methods for
Manufacturing Such Containers."
50. Chinese Patent Application entitled "Sealable, Liquid-Tight, Thin-Walled
Containers Composed of Hydraulically Settable Materials and Methods for
Manufacturing Such Containers."
51. Colombian Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
52. Egyptian Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
53. Indian Patent Application entitled "Sealable, Liquid-Tight, Thin-Walled
Containers Composed of Hydraulically Settable Materials and Methods for
Manufacturing Such Containers."
54. Iranian Patent Application entitled "Sealable, Liquid-Tight, Thin-Walled
Containers Composed of Hydraulically Settable Materials and Methods for
Manufacturing Such Containers."
55. Israeli Patent Application entitled "Sealable, Liquid-Tight, Thin-Walled
Containers Composed of Hydraulically Settable Materials and Methods for
Manufacturing Such Containers."
56. Mexican Patent Application entitled "Sealable, Liquid-Tight, Thin-Walled
Containers Composed of Hydraulically Settable Materials and Methods for
Manufacturing Such Containers."
57. Peruvian Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
58. Philippine Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
59. Saudi Patent Application entitled "Sealable, Liquid-Tight, Thin-Walled
Containers Composed of Hydraulically Settable Materials and Methods for
Manufacturing Such Containers."
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60. South African Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
61. Taiwanese Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
62. Venezuelan Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
63. Zimbabwean Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
64. Georgian Patent Application entitled "Sealable, Liquid-Tight,
Thin-Walled Containers Composed of Hydraulically Settable Materials and
Methods for Manufacturing Such Containers."
65. PCT Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
66. Argentine Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
67. Chilean Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
68. Chinese Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
69. Colombian Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
70. Egyptian Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
71. Indian Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
72. Iranian Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
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<PAGE>
73. Israeli Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
74. Mexican Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
75. Peruvian Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
76. Philippine Patent Application entitled "Design Optimized Compositions
and Processes for Microstructurally Engineering Cementitious Mixtures."
77. Saudi Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
78. South African Patent Application entitled "Design Optimized Compositions
and Processes for Microstructurally Engineering Cementitious Mixtures."
79. Taiwanese Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
80. Venezuelan Patent Application entitled "Design Optimized Compositions
and Processes for Microstructurally Engineering Cementitious Mixtures."
81. Zimbabwean Patent Application entitled "Design Optimized Compositions
and Processes for Microstructurally Engineering Cementitious Mixtures."
82. Georgian Patent Application entitled "Design Optimized Compositions and
Processes for Microstructurally Engineering Cementitious Mixtures."
83. Australian Patent Application entitled "Hydraulically Settable
Containers."
84. Brazilian Patent Application entitled "Hydraulically Settable
Containers."
85. Canadian Patent Application entitled "Hydraulically Settable Containers."
86. European Patent Application entitled "Hydraulically Settable Containers."
87. Japanese Patent Application entitled "Hydraulically Settable Containers."
88. South Korean Patent Application entitled "Hydraulically Settable
Containers."
89. New Zealand Patent Application entitled "Hydraulically Settable
Containers."
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90. Russian Federation Patent Application entitled "Hydraulically Settable
Containers."
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<PAGE>
EXHIBIT "B"
MOLDABLE COMPOUND TECHNOLOGY
A. ISSUED UNITED STATES LETTERS PATENTS
B. PENDING UNITED STATES PATENT APPLICATIONS
1. U.S. Patent Application entitled "Inorganically Filled, Starch-Bound
Compositions for Manufacturing Containers and Other Articles Having a
Thermodynamically Controlled Cellular Matrix."
2. U.S. Patent Application entitled "Methods and Systems for Manufacturing
Containers and Other Articles Having a Thermodynamically Controlled
Cellular Matrix From Inorganically Filled, Starch-Bound Compositions."
3. U.S. Patent Application entitled "Compositions and Methods for
Manufacturing Fiber-Reinforced, Inorganically Filled, Starch-Bound Articles
having a Foamed Cellular Matrix."
4. U.S. Patent Application entitled "Articles having Starch-Bound Cellular
Matrix Reinforced with Uniformly Dispersed Fibers."
5. U.S. Patent Application entitled "Methods and Systems for Manufacturing
Articles having Starch-Bound Cellular Matrix Reinforced with Uniformly
Dispersed Fibers."
6. U.S. Patent Application entitled "Starch-Based Compositions having
Uniformly Dispersed Fibers used to Manufacture High Strength Articles
having a Fiber-Reinforced, Starch-Bound Cellular Matrix."
C. ISSUED FOREIGN PATENTS
D. PENDING FOREIGN PATENT APPLICATIONS
7. PCT Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
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<PAGE>
8. Argentine Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
9. Chilean Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
10. Chinese Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
11. Colombian Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
12. Egyptian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
13. Indian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
14. Iranian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
15. Israeli Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
16. Mexican Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
17. Peruvian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
18. Philippine Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
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<PAGE>
19. Saudi Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
20. South African Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
21. Taiwanese Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
22. Venezuelan Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
23. Zimbabwean Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
24. Georgian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
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EXHIBIT "C"
ALI-ITE-TM- PAPER TECHNOLOGY
A. ISSUED UNITED STATES LETTERS PATENTS
B. PENDING UNITED STATES PATENT APPLICATIONS
1. U.S. Patent Application entitled "Methods and Systems for Manufacturing
Articles from Sheets of Unhardened Hydraulically Settable Compositions."
2. U.S. Patent Application entitled "Methods and Apparatus for Manufacturing
Moldable Hydraulically Settable Sheets Used in Making Containers, Printed
Materials, and Other Objects."
3. U.S. Patent Application entitled "Sheets Made from Moldable Hydraulically
Settable Materials and Methods for Manufacturing Such Sheets."
4. U.S. Patent Application entitled "Methods and Apparatus for Manufacturing
Articles of Manufacture from Hydraulically Settable Sheets."
5. U.S. Patent Application entitled "Articles of Manufacture Fashioned from
Hydraulically Settable Sheets."
6. U.S. Patent Application entitled "Hinges for Hydraulically Settable
Materials."
7. U.S. Patent Application entitled "Hinges for Inorganically Filled
Compositions."
8. U.S. Patent Application entitled "Sheets Having a Highly Inorganically
Filled Organic Polymer Matrix."
9. U.S. Patent Application entitled "Methods of Making Sheets Having a Highly
Inorganically Filled Organic Polymer Matrix."
10. U.S. Patent Application entitled "Article of Manufacture Fashioned from
Sheets Having a Highly Inorganically Filled Organic Polymer Matrix."
11. U.S. Patent Application entitled "Methods and Apparatus for Manufacturing
Articles of Manufacture from Sheets Having a Highly Inorganically Filled
Organic Polymer Matrix."
C. ISSUED FOREIGN PATENTS
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D. PENDING FOREIGN PATENT APPLICATIONS
12. PCT Patent Application entitled "Methods and Apparatus for Manufacturing
Articles of Manufacture from Sheets Having A Highly Inorganically Filled
Organic Polymer Matrix."
13. Argentine Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
14. Chilean Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
15. Chinese Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
16. Colombian Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
17. Indian Patent Application entitled "Methods and Apparatus for Manufacturing
Articles of Manufacture from Sheets Having A Highly Inorganically Filled
Organic Polymer Matrix."
18. Mexican Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
19. Peruvian Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
20. Philippine Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
21. South African Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
22. Taiwanese Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
23. Venezuelan Patent Application entitled "Methods and Apparatus for
Manufacturing Articles of Manufacture from Sheets Having A Highly
Inorganically Filled Organic Polymer Matrix."
24. Egyptian Patent Application entitled "Highly Inorganically Filled
Compositions, Articles of Manufacture Made of Highly Inorganically Filled
Compositions, and Methods for Making Same."
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25. Iranian Patent Application entitled "Highly Inorganically Filled
Compositions, Articles of Manufacture Made of Highly Inorganically Filled
Compositions, and Methods for Making Same."
26. Israeli Patent Application entitled "Highly Inorganically Filled
Compositions, Articles of Manufacture Made of Highly Inorganically Filled
Compositions, and Methods for Making Same."
27. Saudi Patent Application entitled "Highly Inorganically Filled
Compositions, Articles of Manufacture Made of Highly Inorganically Filled
Compositions, and Methods for Making Same."
28. Zimbabwean Patent Application entitled "Highly Inorganically Filled
Compositions, Articles of Manufacture Made of Highly Inorganically Filled
Compositions, and Methods for Making Same."
29. Georgian Patent Application entitled "Highly Inorganically Filled
Compositions, Articles of Manufacture Made of Highly Inorganically Filled
Compositions, and Methods for Making Same."
30. PCT Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
31. Argentine Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
32. Chilean Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
33. Chinese Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
34. Colombian Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
35. Egyptian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
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36. Indian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
37. Iranian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
38. Israeli Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
39. Mexican Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
40. Peruvian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
41. Philippine Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
42. Saudi Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
43. South African Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
44. Taiwanese Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
45. Venezuelan Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
46. Zimbabwean Patent Application entitled "Methods and Systems for
Manufacturing Packaging Materials, Containers, and Other Articles of
Manufacture from Hydraulically Settable Mixtures and Highly Inorganically
Filled Compositions."
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47. Georgian Patent Application entitled "Methods and Systems for Manufacturing
Packaging Materials, Containers, and Other Articles of Manufacture from
Hydraulically Settable Mixtures and Highly Inorganically Filled
Compositions."
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EXHIBIT "D"
TRADE SECRETS
The term "Trade Secrets" as defined in paragraph 1(k) of the appended
agreement shall include any technical or business information, any invention,
equipment or apparatus, method or process, technology, know-how, trade
secret, drawing, data, evaluation, specifications, quality and inspection
standards, sales literature, report, business plan, memorandum, market study,
customer lists, training materials, computer program or software (including
both source and object code), or any other document or thing which is in
whole or in part confidential, proprietary, or secret and which is owned or
controlled by EKI and which EKI has the right to grant licenses thereon
during the term of this Agreement and which relates in whole or in part to
any of the following:
1. The compositions, including the variable and preferred parameters for each
component, used in the Technology.
2. The processing steps, including the variable and preferred parameters
for each step, used in the Technology.
3. The equipment and apparatus used in the manufacture of Food Products
and/or ALI-ITE-TM Paper.
4. Quality control, testing, and research and development data, reports,
and information, including patent applications in preparation.
5. Customers and suppliers of the components and equipment for the
Technology, including any agreements.
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EXHIBIT "E"
The term "Trademarks" as defined in paragraph 19(a) of the appended
agreement includes any of the following trademarks, service marks, slogans,
and logo marks (including legal equivalent trademarks, service marks,
slogans, and log marks), whether rights are acquired through registration in
the United States (or any state therein), registration in a foreign country,
or actual use, owned by EKI or which EKI has the right to license when
utilized in the "Fields of Use";
1. ALIITE
2. ALI-ITE
3. ALI-ITE Logo
4. Earth Cup
5. Earth to Earth
6. Healing the Earth Through Advanced Concrete Technology
7. EKI
8. EKI logo
9. MEC
10. Micrete
11. Microengineered Cement
12. Microengineered Concrete
13. Microstructural Engineering Design
- 56 -
<PAGE>
EXHIBIT "F"
ILLUSTRATIVE LIST OF DISPOSABLE, SINGLE USE FOOD SERVICE DISPOSABLES
EXAMPLES OF ITEMS WITHIN THE DEFINITION OF "FOOD SERVICE DISPOSABLES":
Bags - for carry out of food purchased in
food service disposable packages,
with or without handles
Beverage containers - Hot and/or cold beverage
- May or may not be insulating
- With or without handles. Includes
collectables that are disposable/
reusable
- Malt mixing collars
- Single service milk-containing cartons (16 oz. or
less)
Beverage Container Lids All types, including
- no spill
- domed
- sippers
Bowls All shapes, sizes
Cutlery (including - knife, fork, spoon
Sticks/Skewers) - large serving utensils
- chopsticks
- hors d'ouvers picks
- popsicle sticks
- corndog sticks
- shish-kabob skewers
- tooth picks
- steak markers
Food Containers tubs used for:
- popcorn
- deli salads
- takeout anything
- ice cream
- chicken buckets
- 57 -
<PAGE>
Portion cups (souffle cups)
- sauces
- condiments
- butter
- candies
- side orders
- pills, medications
Trays used for:
- french fries
- nachos
- tacos
- burritos
- snacks
- hot dogs
- meal service
- vending
- single or multi-compartments
Boxes as used for:
- fry scoops
- popcorn
- chinese takeout
- kid's fun meal
- candy (vending)
- pie wedges
- bulky meals, pies, single compartment
- multi-compartment meals
Boats as used for:
- egg rolls
- ice cream sundaes
- hot dogs, chili dogs
- hoagies, sub sandwiches
- chicken fingers
- baked potatoes
Cones
- snow cones
- ice cream cone holders
- foods
Food Container Lids All kinds
- 58 -
<PAGE>
Hinged Lid Containers Clamshells type boxes for specialty or
general food portion or meal carryout
such as:
- hamburgers
- chicken nuggets
- salads
- single or multi-portion meals
- with or without multiple compartments
Napkins All kinds
Plates/Platters - All shapes, including round
- oval
- rectangular
- deep
- with or without compartments
- individual portion or serving sized
- cake/pie plates
Plates/Platters Lids All types including domed, insulating, etc.
Placemats/Table Covers - placemats
- tray liners
- doilies
- menus
- table covers
Serving Dishes - pitchers
- catering trays
- casserole dishes
- chafing/steam table dishes
Straws/Stirrers - drinking straws
- puncture straws
- stirring straws/sticks
Wraps Wraps of all kinds, for all kinds of foods:
- burger/hot dog wraps
- pizza sheets
- doggie bags/wraps
- popcorn/snack bags
- french fry sleeves
- sandwich bags
- 59 -
<PAGE>
OUTSIDE THE DEFINITION OF "FOOD SERVICE DISPOSABLES":
Baking - pie/cake tins
- muffin/eclair tins
- muffin/eclair cups
- fluted pan liners
- cake circles/squares
- loaf pans
- bundt pans
- casseroles
- cookie/cake sheets
- cake decorating triangles
Single or Multiple - cereal boxes/bowls
Portion
Packaged Foods - sealed yogurt/desert cups
- sealed soups, stews, chili, pasta
- condiment packs (salt, pepper, catsup,
salsa, relish, etc.)
- sealed frozen food containers
- egg cartons
- dairy product containers
- produce containers
- meat & deli trays
Wraps - freezer papers
- bakery papers
- candy bar wrappers
Aeseptic or Sealed
Packaging
Secondary Packaging - corrugated containers
- paper bags
Sealed Containers for - soft drink cans
Long Term Storage - milk cartons
of Liquids - sealed juice or drink containers
- 60 -
<PAGE>
AT THE COMPANY
- --------------
Scott Houston
Chief Financial Officer
(805)897-2294
EARTHSHELL CORPORATION ANNOUNCES FIRST QUARTER 1998 RESULTS
Santa Barbara, CA...May 15,1998 -- EarthShell Corporation (Nasdaq:ERTH)
today announced a net loss for the three months ended March 31, 1998 of $4.2
million, or $0.05 per share on 83.8 million weighted average common shares
outstanding, compared to a net loss of $3.7 million, or $0.04 per share on
82.5 million weighted average common shares outstanding in the same period of
1997.
Total expenses for the three months ended March 31, 1998 increased to $3.1
million compared to $2.9 million in last year's similar period, chiefly
related to scheduled commercial development activities.
Commenting on today's announcement, Scott Houston, Chief Financial Officer of
EarthShell, said, "We are pleased with the results for the first quarter of
1998, which were very much in line with our expectations. Our objective is to
establish EarthShell products as the preferred disposable packaging for the
foodservice industry. The funds generated from our IPO have given us the
opportunity to accelerate these efforts."
Simon Hodson, Chief Executive Officer of EarthShell noted that the planned
process to build the Company's management team has progressed significantly
over the past few weeks. In particular, EarthShell recently announced the
appointment of William F. McLaughlin, 49, as President and Chief Operating
Officer. Prior to joining EarthShell, from 1994 to 1998, Mr. McLaughlin was
the President and Chief Executive Officer of Sweetheart Cup Company Inc., a
leading foodservice packaging company based in Owings Mills, MD, which was
recently acquired by the Fonda Group. Prior to joining Sweetheart, Mr.
McLaughlin served as Executive Vice President for Nestle Foodservice Company
in Glendale, CA.
Other recent hires include David Kennedy as General Counsel, Bill Spengler as
Senior Vice President, Corporate Planning and Development, and Vincent Truant
as Vice President, Marketing and Sales. Kennedy, 45, is an expert in
intellectual property licensing, formerly with the firm Gibson Dunn &
Crutcher, LLP; Spengler, 43, is the
<PAGE>
former Chief Financial Officer of Sweetheart, and previously held senior
finance and business development posts with Black and Decker and
Bristol-Myers Squibb; Truant, 50, is the former Vice President and General
Manager for Sweetheart's McDonald's business unit, and has prior marketing
management experience with both Miller Brewing Company and Eli Lilly and
Company.
"We believe that the combined experience and proven competency of this new
management gives important added strength to our ability to achieve the goals
of the company," said Mr. Hodson. "The team's first priority is to support
the execution of the agreement with Sweetheart for the supply of Big Mac-TM-
sandwich containers to McDonald's restaurants in the United States, and then to
look to supporting the demand from other customers."
Sweetheart is the first licensee to commercialize the EarthShell composite
material technology, and has a three-year contract to supply the Big Mac-TM-
sandwich containers, subject to product specifications being met.
EarthShell completed its initial public offering on March 23, 1998, at which
time it issued 10.5 million shares of common stock in a public offering,
raising total net proceeds of $205.9 million.
EarthShell Corporation is a development stage company engaged in the
licensing and commercialization of a proprietary composite material for the
manufacture of disposable packaging for the foodservice industry.
THIS PRESS RELEASE MAY CONTAIN "FORWARD-LOOKING STATEMENTS" WITHIN THE
MEANING OF THE PRIVATE SECURITIES LITIGATION REFORM ACT OF 1995. SUCH
FORWARD-LOOKING STATEMENTS INVOLVE KNOWN AND UNKNOWN RISKS, UNCERTAINTIES OR
OTHER FACTORS WHICH MAY CAUSE ACTUAL RESULTS, PERFORMANCE OR ACHIEVEMENTS OF
THE COMPANY TO BE MATERIALLY DIFFERENT FROM ANY FUTURE RESULTS, PERFORMANCE
OR ACHIEVEMENTS EXPRESS OR IMPLIED BY SUCH FORWARD-LOOKING STATEMENTS. FACTORS
THAT MIGHT CAUSE SUCH A DIFFERENCE, INCLUDE, BUT ARE NOT LIMITED TO, THOSE
DISCUSSED IN THE MANAGEMENT'S DISCUSSION AND ANALYSIS OF FINANCIAL CONDITION
AND RESULTS OF OPERATIONS IN THE COMPANY'S PROSPECTUS AND OTHER DOCUMENTS
FILED BY THE COMPANY WITH THE SECURITIES AND EXCHANGE COMMISSION.
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<FISCAL-YEAR-END> DEC-31-1998
<PERIOD-END> MAR-31-1998
<CASH> 151,902,271
<SECURITIES> 0
<RECEIVABLES> 403,376
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<CURRENT-ASSETS> 152,305,647
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0
29,954
<COMMON> 970,497
<OTHER-SE> 156,210,229
<TOTAL-LIABILITY-AND-EQUITY> 160,389,557
<SALES> 0
<TOTAL-REVENUES> 0
<CGS> 0
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<OTHER-EXPENSES> (3,082,822)
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<INTEREST-EXPENSE> (1,084,861)
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