EXHIBIT 10.50
LICENSE AGREEMENT
This Agreement is between Applied Materials, Inc. (hereinafter "LICENSOR"),
a Delaware corporation having its principle place of business at 0000 Xxxxx
Xxxxxxxxx, Xxxxx Xxxxx Xxxxxxxxxx 00000, and Plasma-Therm, Inc. (hereinafter
"LICENSEE"), a Florida corporation having its principle place of business at
00000 00xx Xxxxxx Xxxxx, Xx. Xxxxxxxxxx Xxxxxxx 00000.
WHEREAS, LICENSOR is the owner of all right, title and interest to certain
Licensed Patents as set forth below; and
WHEREAS, LICENSEE is desirous of obtaining a right to use the Licensed
Patents in the manufacture and sale of Licensed Products as set forth below.
NOW THEREFORE, for good and valuable consideration, the parties agree as
follows:
1. DEFINITIONS
1.1. LICENSED PATENTS. The term "Licensed Patents" shall mean U.S. Patent
No. 4,715,921; U.S. Patent No. 5,013,385; U.S. Patent No. 5,102,495; U.S. Patent
No. 5,308,431; U.S. Patent No. 5,344,542; Canadian Patent No. 1,331,163;
Canadian Patent No. 1,283,174; and Japanese Patent No. 2,596,422. Licensed
Patents shall also include any patent or certificate resulting from a reissue or
reexamination of any of the foregoing patents, as well as any patent issuing
from an application that relates to or claims priority from any patent
application which led to or resulted in any of the foregoing identified issued
patents.
1.2 FIELD OF USE. The term "Field of Use" shall mean the following
technical fields: (i) semiconductor photomasks; (ii) compound semiconductors,
including gallium arsenide, for
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wireless optoelectronic telecommunications on six inch or smaller substrates;
(iii) thin film heads; and (iv) systems used to fabricate MEMS devices
(micro-electro-mechanical systems).
1.3 LICENSED PRODUCTS. The term "Licensed Products" shall mean any product
within the Field of Use which in manufacture, use, sale, offer for sale, lease,
importation or other disposition is covered by the claims of the Licensed
Patents.
1.4 LICENSOR. The term "LICENSOR" shall mean Applied Materials, Inc., and
all of its legal representatives, predecessors, successors and assigns, and any
of its officers, directors, employees, subsidiaries, divisions, partnerships,
joint ventures, affiliates, attorneys, and agents.
1.5 LICENSEE. The term "LICENSEE" shall mean Plasma-Therm, Inc., and all of
its legal representatives, officers, directors, employees, attorneys, or agents.
The term "LICENSEE" shall include any subsidiaries, divisions, partnerships,
joint ventures, or affiliates of LICENSEE to the extent that more than fifty
percent of the controlling interest in such entity is owned or controlled,
directly or indirectly, by Plasma-Therm, Inc.
1.6 NET REVENUE. The term "Net Revenue" shall mean the price invoiced by
LICENSEE to a third party in a bona fide, arm's length transaction, or if not
invoiced, the price actually charged or the amount actually received by LICENSEE
in such transaction, less (i) any sales taxes, use taxes, value-added taxes or
other identifiable governmental or regulatory surcharge; and (ii) freight and
insurance charges to the extent actually incurred by LICENSEE and charged to the
third party.
1.7 EFFECTIVE DATE. The term "Effective Date" shall mean the date this
Agreement is signed by both parties.
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2. LICENSE
2.1 GRANT. Subject to the terms and conditions of this Agreement, LICENSOR
hereby grants to LICENSEE, and LICENSEE hereby accepts, a non-exclusive license
to make, use, sell, offer to sell, or import Licensed Products.
2.2 TRANSFER. LICENSEE may not assign or delegate or transfer its rights or
obligations under this Agreement either in whole or in part, without the prior
written consent of LICENSOR.
3. TERM AND TERMINATION
3.1 TERM. This Agreement shall expire concurrently with the last to expire
of any enforceable Licensed Patents, unless sooner terminated as provided
herein.
3.2 TERMINATION. Upon breach of any term of this Agreement, the
non-breaching party shall provide written notice of the breach to the breaching
party. If the breaching party fails to cure the breach within thirty days after
receiving written notice thereof, the non-breaching party may terminate the
agreement by giving written notice thereof to the breaching party.
3.3 TERMINATION BY LICENSOR. LICENSOR shall have the right to terminate
this Agreement by giving written notice to LICENSEE in the event: (i) a third
party acquires in a single transaction or a series of transactions a controlling
interest in the outstanding stock entitled to vote for the election of directors
of the LICENSEE; (ii) LICENSEE consolidates or merges with or into another
corporation or other entity, regardless of name of the surviving entity; (iii)
LICENSEE ceases actively doing business in the Field of Use; or (iv) LICENSEE
sells or otherwise transfers substantially all of its business assets related to
Licensed Products.
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4. PAYMENT
4.1 INITIAL PAYMENT. LICENSEE shall pay to LICENSOR within five working
days following the Effective Date of this Agreement the sum of $XXXXX as a
non-refundable license fee for use, if any, of the Licensed Patents by LICENSEE
prior to the Effective Date.
4.2 ROYALTIES. LICENSEE shall pay to LICENSOR on an annual basis a royalty
of XXXXX, based on the initial sale of the system as it is shipped, regardless
of whether it has one or more processing modules. No royalty is due on the sale
of separate modules apart from the system. The minimum annual royalty shall be
$XXXXX; however, in any year in which annual royalties fall below $XXXXX,
royalties in excess of $XXXXX from the previous year (if any) may be carried
forward to meet the minimum annual royalty. Further, if LICENSEE exceeds
payments of $XXXXX in annual royalties for XXXXX consecutive years, the annual
minimum shall be abolished.
4.3 REPORTS AND PAYMENTS. LICENSEE shall provide to LICENSOR within thirty
days following the close of each calendar quarter a report summarizing all sales
of Licensed Products together with any royalty payment due thereon. In
particular, such report shall include at least the following: (i) the total Net
Revenue for the quarterly reporting period, including an itemized listing of the
Net Revenue in the currency in which it was billed, the exchange rates used and
the final United States Dollar value; and (ii) such additional information as
LICENSOR may reasonably prescribe from time to time to enable LICENSOR to
ascertain the computation of royalties. LICENSOR shall consider this information
to be confidential, and shall not disclose it to third parties.
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4.3 ACCOUNTING FOR PAST SALES. LICENSEE shall provide to LICENSOR within
two months following LICENSEE's signature of this Agreement a full disclosure
and accounting for sales of Licensed Products prior to the Effective Date,
including both the Clusterlock and Versalock systems.
4.4 AUDIT. LICENSEE shall maintain in accord with generally accepted
accounting principles account records sufficient to verify royalties payable by
LICENSEE to LICENSOR under this Agreement. Upon reasonable notice by LICENSOR
and no more than twice per year, LICENSEE shall make such records available for
examination and audit by an independent auditor selected and paid for by
LICENSOR. LICENSEE shall keep and maintain such records for the purpose of
access for at least five years after the termination of this Agreement.
5. MOST FAVORED LICENSEE
It is the intention of the parties that LICENSEE receive most favored
LICENSEE status and treatment under this Agreement. In the event that LICENSOR
grants a non-exclusive license under the Patent Rights in any Field of Use to
any other Person making or selling any product(s) that directly compete with
Licensed Products, and such license contains rates of royalties applicable to
the sale of such products(s) in any country or countries which (calculated on an
equivalent basis with respect to the Patent Rights) are lower than those
provided in this Agreement, LICENSOR shall (a) promptly notify LICENSEE in
writing of such license, and (b) extend to LICENSEE such lower rates of royalty
applicable to sales of the Products by LICENSEE and its Affiliates in such Field
of Use and in the same country or countries, effective as of the date or dates
on which such rates of royalty shall become effective pursuant to such license;
provided, that the extension of such lower rates of royalty to LICENSEE shall
only
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become effective hereunder if LICENSEE shall, within 60 days of receipt of
the notice described in clause (a) above, give written notice to LICENSOR that
LICENSEE (i) desires to have such lower rates of royalties substituted for the
rates of royalty set forth herein with respect to such country or countries and
(ii) accepts all terms of such license which are more favorable to LICENSEE than
corresponding terms of this Agreement and which are disclosed to LICENSEE in the
notice described in clause (a) above, including, without limitation, any
financial terms (but without any obligation on the part of LICENSOR to perform
any obligations relating thereto). LICENSOR shall not have any obligation under
this Section for any activities relating to the grant of a license under any of
the Patent Rights to any university, governmental authority or for any other
non-commercial purpose, or to comply with any law, rule, regulation, order or
decree of any governmental authority of competent jurisdiction, whether as a
result of compulsory licensing or otherwise.
6. REPRESENTATIONS AND WARRANTIES
6.1 AUTHORITY TO ACT. LICENSOR and LICENSEE, and each of them, represent
and warrant solely for the benefit of the other that it has the corporate power
and authority to execute, deliver and perform this Agreement.
6.2 OWNERSHIP OF INTELLECTUAL PROPERTY. LICENSOR represents and warrants
that it has all right, title and interest to the Licensed Patents. LICENSEE
acknowledges and agrees that the Licensed Patents are the sole property of
LICENSOR and that title and ownership shall remain vested in LICENSOR. LICENSEE
agrees to not do or permit to be done any action or thing which may impair
LICENSOR's ownership rights in and to the Licensed Patents. Nothing in this
Agreement shall be construed as a transfer of title or ownership in the Licensed
Patents.
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6.3 COOPERATION. LICENSEE shall promptly notify LICENSOR regarding any
infringement by a third party of any of the Licensed Patents. Upon LICENSOR's
request, and at LICENSOR'S expense, LICENSEE shall reasonably assist and
cooperate with LICENSOR in the prosecution of any action against a third party
infringer.
6.4 COVENANT NOT TO XXX. LICENSOR shall not bring or maintain a civil
action or enforcement proceeding against any customer of LICENSEE for
infringement of any of the Licensed Patents to the extent that such customer
purchased product from LICENSEE that falls within the specified Field of Use.
6.5 PATENT MARKING. LICENSEE shall include and affix to all Licensed
Products any and all legends and notices for patents and applications therefor
consistent with the requirements of 00 Xxxxxx Xxxxxx Code ss. 287 or the
equivalent thereof in any foreign jurisdiction.
6.6 WARRANTY OF ENFORCEMENT. Enforcement of the Patents against any direct
competitor of LICENSEE will be in the sole discretion of LICENSOR. However, in
the event that LICENSOR learns of a likelihood of direct infringement of the
Patents by a direct competitor of LICENSEE in an amount exceeding $5,000,000 in
gross annual sales ("the minimum infringement"), LICENSOR will take steps to
either assure LICENSEE that the competitor is licensed on substantially equal
terms as LICENSEE, or bring suit to enjoin further infringement. Failure to
provide assurances or bring suit within the first 90 days of learning of the
direct infringement will suspend LICENSEE's obligation to pay royalties on its
own competing licensed products. If no action is taken within the second 90
days, then LICENSEE will be relieved of any obligation to pay future royalties
and royalties for the second 90 day period, and the license becomes a
royalty-free license for those products, unless LICENSOR subsequently obtains a
license or brings suit, at which time LICENSEE'S royalty obligations
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under this Agreement are revived. If during the second 90 days; (1) LICENSOR has
brought suit to enjoin infringement; or (2) has licensed an infringer, in which
the infringer is obligated to pay liquidated damages for past infringement, then
LICENSEE will pay all royalties which were suspended during the second 90 days.
Moreover, LICENSOR shall only be obligated to deal with one infringer at a time.
Therefore, failure to provide assurances or bring suit to enjoin infringement
with regard to additional infringing direct competitors during the time LICENSOR
is bringing suit against the one infringer or within the first and second 90
days of notice with respect to the one infringer will not suspend or relieve
LICENSEE's royalty obligation, based on LICENSOR's failure to provide assurances
or bring suit to enjoin infringement with regard to the additional infringing
direct competitors.
6.7 DISCLAIMER. LICENSOR EXPRESSLY DISCLAIMS ANY OTHER WARRANTY OR
REPRESENTATION REGARDING THE LICENSED PATENTS OR THE LICENSED PRODUCTS. Nothing
in this Agreement shall be construed as: (i) an obligation to furnish any
technical assistance, information or know-how; (ii) a warranty or representation
by LICENSOR as to the validity, enforceability or scope of any Licensed Patent;
(iii) a warranty or representation that any manufacture, sale, offer to sell,
lease, use, import or other disposition of Licensed Products hereunder will be
free from infringement of any patents, utility models, copyrights, mask works,
trade secrets, trademarks, trade names, or other proprietary rights of third
parties; and (iv) conferring any right to use in advertising, publicity, or
otherwise, any trademark, trade name, service xxxx of LICENSOR, or any
confusingly similar designation.
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7. GENERAL PROVISIONS
7.1 APPLICABLE LAW. This Agreement shall be construed in accordance with
California law.
7.2 VENUE AND JURISDICTION. Any action or proceeding arising out of this
Agreement shall be brought in a state or federal court of competent subject
matter jurisdiction located in Santa Clara, California. The parties specifically
consent to personal jurisdiction if such courts and each party irrevocably
waives its rights to contest venue in such courts.
7.3 SEVERABILITY. If any provision of this agreement is held by a court of
competent jurisdiction to be unenforceable, the remainder of this Agreement
shall be continued in full force and effect.
7.4 ENTIRE AGREEMENT - AMENDMENT. This Agreement constitutes the entire
agreement between the parties with respect to the subject matter hereof, and
supersedes and replaces all prior or contemporaneous understandings or
agreements, written or oral, regarding such subject matter. No amendment to or
modification of this Agreement shall be binding unless in writing and signed by
duly authorized representatives of both parties.
7.5 CONFIDENTIALITY. The parties shall maintain the terms and conditions of
this Agreement as confidential.
7.6 NOTICES. All notices and other correspondence regarding this Agreement
shall be delivered as follows:
FOR LICENSEE: FOR LICENSOR:
Plasma-Therm, Inc. Applied Materials, Inc.
00000 00xx Xxxxxx Xxxxx 0000 Xxxxx Xxxxxxxxx
Xx. Xxxxxxxxxx Xxxxxxx 00000 Xxxxx Xxxxx Xxxxxxxxxx 00000
ATTN: ATTN: Xxxxxxx X. Xxxxxxxx, Esq.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives.
LICENSEE LICENSOR
Plasma-Therm, Inc. Applied Materials, Inc.
Date:___________________________ Date:___________________________
By:_____________________________ By:_____________________________
Print Name:_____________________ Print Name:_____________________
Title:__________________________ Title:__________________________
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