TECHNOLOGY SUBLICENSE AGREEMENT
(RELATING TO UNITED STATES)

        This TECHNOLOGY SUBLICENSE AGREEMENT (this "Agreement"), dated as of September 26, 2001 (the "Effective Date"), is by and between EarthShell Corporation, a Delaware corporation ("EarthShell"), and Green Earth Packaging, Inc., a Delaware corporation ("GP"). Each of EarthShell and GP may be referred to herein individually as a Party or collectively as the Parties.

RECITALS

        WHEREAS, pursuant to that certain Amended and Restated License Agreement, dated February 28, 1995, as amended (the "EKI License Agreement"), between E. Khashoggi Industries LLC, a Delaware limited liability company ("EKI"), and EarthShell, EarthShell has the exclusive right to utilize, and to sublicense to others the right to utilize, specified technology to manufacture and sell certain food service disposables; and

        WHEREAS, EarthShell is willing to grant, and GP desires to accept, a sublicense of such technology for use in certain food service disposables to be sold in the United States upon the terms and conditions set forth herein.

AGREEMENT

        NOW, THEREFORE, in consideration of the foregoing recitals and the covenants and agreements set forth herein, together with other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:

        1.    Definitions.    

        Capitalized terms used herein shall have the meanings set forth below:


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        2.    The Sublicense.    

        3.    Plant Facility    

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        4.    Royalty.    

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        5.    Right to Audit.    

        6.    Improvements to Technology.    

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        7.    Patent Matters.    

        8.    Infringement Matters.    

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        9.    Duties and Obligations of EarthShell.    

        In addition to, and not in limitation of, the other duties and obligations of EarthShell, as set forth in this Agreement, EarthShell shall have the following obligations hereunder:

        10.    Other Duties and Obligations of GP.    

        In addition to, and not in limitation of, the other duties and obligations of GP, as set forth in this Agreement, GP shall have the following obligations hereunder:

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        11.    Representations and Warranties of EarthShell.    

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        12.    No Consequential Damages; Limitation of Liability.    

        13.    Term and Termination.    

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        14.    Relationship of the Parties.    

        This Agreement shall not create any partnership, joint venture or similar relationship between GP and EarthShell, and no representation to the contrary shall be made by either party. Neither GP nor EarthShell shall have any authority to act for or on behalf of or to bind the other in any fashion, and no representation to the contrary shall be made by either such party.

        15.    Notices.    

If to EarthShell: EarthShell Corporation
800 Miramonte Drive
Santa Barbara, CA 93109-1419
United States
Attn: Rick DiPasquale
Telephone: 805-897-2294
Fax: 805-899-3517

If to GP: GP:

 

Green Earth Packaging, Inc.
One Galleria Tower
13355 Noel, Suite 1988
Dallas, Texas 75240
Telephone: 918-645-0217
Fax: 801-881-9687

        or to such other address as either Party shall have specified by notice in writing to the other Party at a later point of time.

        16.    Confidentiality.    

        Any information relating to this Agreement, the Technology or the business of GP or EarthShell is hereinafter referred to as "Confidential Information." All Confidential Information in tangible form (plans, writings, drawings, computer software and programs, etc.) or provided to or conveyed orally or visually, shall be presumed to be proprietary to the disclosing Party at the time of delivery to the other party; provided that all such information or material relating to the Technology shall be deemed to be Confidential Information of EarthShell. All Confidential Information of the disclosing Party hall be protected by the receiving party from disclosure with the same degree of care with which the receiving party protects its own Confidential Information of the disclosing Party from disclosure but in no event with less than a reasonable degree of care. The receiving party agrees (i) not to disclose such Confidential Information to any Person except to those of its employees or representatives who need to

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know such Confidential Information in connection with the conduct of its business and who have agreed in writing to maintain the confidentiality of such Confidential Information, and (ii) that neither it nor any of its employees or representatives will use such Confidential Information for any purpose other than in connection with the conduct of its business pursuant to this Agreement; provided that such restrictions shall not apply if such Confidential Information (A) is or hereafter becomes public other than by a breach of this Agreement, (B) was already in the receiving party's possession and not subject to an obligation of confidentiality prior to any disclosure of the Confidential Information to the receiving party, (C) has been or is hereafter obtained by the receiving party from a third party which, to the knowledge of the receiving party, was not bound by any confidentiality obligation with respect to the Confidential Information, (D) is required to be disclosed pursuant to judicial order, but only to the extent of such order and after reasonable notice to the disclosing party so as to allow the disclosing party to intervene to seek confidential treatment or (E) is required to be disclosed by any government authority which regulates the business of the receiving party, but only to the extent of such required disclosure and after reasonable notice to the disclosing party so as to allow the disclosing party to intervene to seek confidential treatment. Without limiting the generality of the foregoing, GP shall ensure that no third party is given access to the Plant Facility unless such third party has entered into a non-disclosure agreement with each of GP and EarthShell (it being understood that such non-disclosure agreements will not be required from couriers, suppliers, or other third parties that have limited access only to loading docks, mail rooms, office reception areas and other areas in which Products are not being manufactured and in which no Confidential Information is visible or accessible).

        17.    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 or 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.

        18.    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.

        19.    Governing Law.    

        This Agreement shall be governed by and construed in accordance with the laws of Delaware, without giving effect to the choice of law rules thereof.

        20.    Amendment.    

        This Agreement may be amended only by the consent of each of the Parties expressed in writing, signed by their duly authorized representatives.

        21.    Dispute Resolution.    

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        22.    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.

        23.    Assignment.    

        The rights and obligations in, to and under this Agreement shall be binding upon and inure to the benefit of the Parties, their legal representatives, successors and assigns. Neither Party may assign this Agreement or any rights hereunder without the prior written consent of the other Party.

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        24.    Entire Agreement.    

        This Agreement supersedes any prior understandings or agreements, whether written or oral, and any contemporaneous oral agreements, between the Parties hereto in regard to the subject matter hereof contains the entire agreement between the Parties in regard to the subject matter hereof.

        IN WITNESS WHEREOF, the Parties have caused this Technology Sublicense Agreement to be executed and delivered by their duly authorized representatives upon the date first herein written.

  EARTHSHELL CORPORATION

 

 

By:

 

 

 

 
    
    Name:  
    Title:  
       

 

 

GREEN EARTH PACKAGING, INC.

 

 

By:

 

 

 

 
    
    Name:  
    Title:  
       

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EXHIBIT A

Licensed Patents

U.S. Patent No.
  Brief Title

5,580,624 Molded Inorganically Filled Food or Beverage Containers
5,618,341 Methods for Dispersing Fibers in Aqueous Starch-Based Compositions
5,631,053 Hinged Molded Inorganically Filled Containers
5,658,603 Systems For Molding Inorganically Filled Containers
5,660,900 Molded Foam Starch Containers With Inorganic Filler
5,683,772 Molded Foam Starch Containers Reinforced With Fibers
5,679,145 Starch-Based Compositions With Fibers and Optional Inorganic Filler
5,691,014 Coated Inorganically Filled Containers
5,702,787 Molded Inorganically Filled Containers
5,705,203 Apparatus for Making Molded Foam Starch Containers
5,705,239 Molded Inorganically Filled Containers
5,705,242 Coated Inorganically Filled Food or Beverage Containers
5,707,474 Method of Making Molded Hinged Inorganically Filled Containers
5,709,827 Method of Making Foam Starch Containers With Fibers/Optional Fillers
5,716,675 Method of Treating Foam Starch Containers with Coating Materials
5,753,308 Method of Making Inorganically Filled Food or Beverage Containers
5,776,388 Method of Making Molded Foam Starch Containers
5,783,126 Method of Making Molded Foam Starch Containers With Inorganic Filler
5,830,305 Method of Making Inorganically Filled Containers
5,843,544 Hinged Molded Foam Starch Containers
5,868,824 Aqueous Starch-Based Compositions With Inorganic Filler
6,030,673 Foam Starch Containers With Laminate and/or Biodegradable Coating
6,090,195 Aqueous Inorganically Filled Compositions

U.S. Serial No.

 

Brief Title

09/390,583 Coated Fiber-Reinforced Starch Foam Containers
09/539,549 Planar Mold Press Apparatus
09/541,331 Fiber Dispersion Methods
09/568,638 System for Metering and Delivering Molding Composition
09/758,477 Flash Removal System

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EXHIBIT B

Description of Products

        1.    9" Plates.

        2.    10" Plates

        3.    12 oz. Bowls

        4.    Trays

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EXHIBIT C

Customers

        To be determined

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Source: OneCLE Business Contracts.