Exhibit 10.26
PATENT LICENSE AGREEMENT
THIS AGREEMENT is entered into this 28th day of December, 1998 (the
"Effective Date") by and between CFM TECHNOLOGIES INC., having its principal
place of business at 0000 Xxxxxxxxxx Xxxxx, Xxxx Xxxxxxx, XX 00000, CFMT Inc.,
having its principal place of business at 0000 Xxxxx Xx, Xxxxx 000-XXxxxxxxxxx,
XX 00000, hereinafter collectively referred to as "CFM," and STEAG MICROTECH,
INC., having its principal place of business at 0000 Xxxxx Xxxx Xxxxx, Xxxxxx,
Xxxxx 00000, hereinafter referred to as "STEAG".
WITNESSETH:
WHEREAS, CFM is the owner of U.S. Patent No. 4,911,761;
WHEREAS, the parties desire to submit a mutually beneficial proposal to IBM
to supply certain equipment for IBM's U.S. plant in Burlington, Vermont;
WHEREAS, STEAG is subject to an injunction issued by the District Court for
the District of Delaware, resulting from a finding of infringement liability
which is now on appeal;
WHEREAS, in order for STEAG to supply certain Marangoni drying equipment to
IBM, IBM has required STEAG to be licensed by CFM under U.S. Patent No.
4,911,761; and
WHEREAS, CFM is willing to grant such a limited-purpose license, and STEAG
is willing to accept the license, under the terms and conditions herein.
NOW, THEREFORE, in consideration of the premises and the mutual agreements
herein contained, the parties agree as follows:
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ARTICLE 1 - DEFINITIONS
As used in this Agreement, the following terms shall have the following
meanings:
1.01 The term "Patent Rights" shall mean rights under U.S. Patent 4,911,761.
1.02 "Licensed Product(s)" shall mean certain drying equipment and
replacement parts therefor to be sold by STEAG to IBM, the use of such
equipment having been held to be covered by one or more issued claims of
the Patent Rights by the US District Court of the District of Delaware
in CFMT, Inc., et al. vs. STEAG, Civil Action 95-442. For purpose of
this Agreement only, the STEAG Marangoni dryers, as configured on the
Effective Date, shall be deemed to be Licensed Products.
1.03 "Net Sales Value" of Licensed Products sold by STEAG to IBM shall mean
the gross invoice price received therefor, less allowance for returns
and less (to the extent separately stated on such invoice) any normal
discounts and allowances actually granted and less any sales, use or
other excise taxes and shipping charges included in such invoice price.
In cases when the Licensed Products are included as part of a larger
system, the Net Sales Value will be fixed at U.S. $150,370 irrespective
of the price of the total system.
1.04 "Field of Use" shall mean sales of the Licensed Product to IBM pursuant
to a certain proposal of STEAG (attached as Exhibit A) and IBM's Request
For Quotation dated December 16, 1998.
1.05 "Territory" shall mean the United States.
1.06 "Term of this Agreement" shall mean the period described in Article
6.01.
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ARTICLE 2 - LICENSE
2.01 Subject to the terms and conditions of this Agreement, CFM hereby grants
to STEAG, and STEAG hereby accepts, a non-exclusive, non-transferable
license in the Field of Use under the Patent Rights, without the right
to grant sublicenses except as in Article 12: (a) to have manufactured
by STEAG's affiliate, STEAG Microtech GmbH, and to import into the
United States solely for sale to IBM in connection with the proposal
attached as Exhibit A during the Term of this Agreement, and (b) to
provide after-sales service and spare parts to IBM to maintain and
repair during their useful life no more than twenty-one (21) Licensed
Products.
2.02 CFM shall not assert against IBM any claim for infringement of the
Patent Rights by IBM's internal commercial use of the Licensed Products
obtained from STEAG under this Agreement.
2.03 Neither this License Agreement nor anything contained herein shall be
construed as an agreement that the `761 patent is either valid or
infringed by STEAG.
ARTICLE 3 - ROYALTIES
3.01 STEAG shall pay CFM fifteen percent (15%) of the STEAG Net Sales Value
of Licensed Products. Such 15% payment shall not be construed as a STEAG
recognition or admission of the correctness of the 15% royalty rate
found by the jury in CFMT, Inc. et al. vs. STEAG, U.S. District Court,
Delaware, Civil Action 95-442.
3.02 Within thirty (30) days after the delivery of each Licensed Product,
STEAG shall pay to CFM one hundred percent (100%) of the royalty due
pursuant to Article 3.01. Each payment will be accompanied by a written
report in such detail as CFM reasonably requires of all amounts paid.
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ARTICLE 4 - PAYMENT TERMS
4.01 All royalties and other amounts payable pursuant to Article 3 hereof
shall be paid in United States Dollars by wire transfer.
4.02 Payments provided for in this Agreement shall, when overdue, bear
interest at a rate per annum equal to one and one-half percent (1 1/2%)
per month from the date such payment shall be due until payment shall be
received by CFM.
ARTICLE 5 - AUDIT RIGHTS
STEAG shall keep accurate and complete books of account containing record
of all data necessary for the determination of the amount of the royalty
payments that shall become due under Article 3 hereof, and shall permit CFM or
its agent to examine such books of account at all reasonable times during normal
business hours to such extent as may be necessary to determine the accuracy or
inaccuracy of any of the statements to be rendered by STEAG pursuant to Article
4 hereof. Such inspection shall be completed at the expense of CFM, provided
that if any deficiency exceeding three percent (3%) of the money actually due
shall be found in connection with the computation, the cost of such inspection
shall be borne by STEAG.
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ARTICLE 6 - TERM AND TERMINATION
6.01 The term of this Agreement shall commence on January 1, 1999 and end on
the earlier of December 31, 2000, or delivery to IBM of the eleventh and
final permitted Licensed Products herein.
6.02 In the event that STEAG shall fail to comply with any material term of
this Agreement, CFM shall have the option to give STEAG a written notice
of default. If STEAG shall not have cured such default within thirty
(30) days of such notice, CFM shall have the right to terminate this
Agreement effective immediately upon written notice.
6.03 The provisions of Articles 1, 5, 6.03, 7, 9, 10, 12, 13, 14 and the
license granted in Article 2.01(b) shall survive expiration or
termination of this Agreement. In addition, expiration or termination of
this Agreement shall not relieve the parties of any obligations accruing
prior to such expiration or termination, including the obligations set
forth in Article 3. The remainder of the earned royalties due to CFM
pursuant to Article 3, if any, shall be paid by STEAG within twenty (20)
days from the Effective Date of termination of this Agreement
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ARTICLE 7 - NOTICE
All notices, requests or communications hereunder shall be in writing
and shall be deemed to have been fully given: (i) upon delivery, if delivered
personally against written receipt; (ii) three (3) days after posting by
certified mail, postage prepaid, return receipt requested; (iii) upon confirmed
receipt, if delivered by telecopier; or (iv) the next day if delivered by a
recognized overnight commercial courier, addressed in each instance to the
parties at the following address:
CFM Technologies Inc. STEAG MicroTech, Inc.
0000 Xxxxxxxxxx Xxxxx 0000 Xxxxx Xxxx Xxxxx
Xxxx Xxxxxxx, XX 00000 Xxxxxx, XX 00000
Attn.: L. Xxxx Xxxxxxx Attn.: X. Xxxxxxxxx, President
Facsimile No: 610-696-8300 Facsimile No: 000-000-0000
ARTICLE 8 - WARRANTIES
8.01 CFM warrants and represents to STEAG that CFM has the right, title and
interest to the Patent Rights sufficient to grant the licenses and
rights granted herein. CFM warrants and represents that it will not
assert any other patents or claims which would interfere with the
enjoyment of the rights granted herein.
8.02 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, CFM MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS' CLAIMS,
ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER
OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A
REPRESENTATION MADE OR WARRANTY GIVEN BY CFM THAT THE PRACTICE BY STEAG
OF THE LICENSE GRANTED HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OF
ANY THIRD PARTY.
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ARTICLE 9 - LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR INCIDENTAL, SPECIAL
CONSEQUENTIAL OR PUNITIVE DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR
INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER SUCH PARTY SHALL BE
ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE
POSSIBILITY OF THE FOREGOING.
ARTICLE 10 - INDEMNITY
STEAG shall indemnify and hold harmless CFM, its officers, directors,
employees, and affiliates from any IBM or other third party product liability
loss, claim, demand, action, liability and expense (including legal and expert
fees and costs) arising out of, resulting from or related to the manufacture,
sale or use of Licensed Products. STEAG shall control the investigation and
defense of any such action alleging such liability, with counsel of its choice
reasonably satisfactory to CFM. CFM shall cooperate in any defense at STEAG's
expense. STEAG may settle any such action without CFM's consent provided that
there is no cost to CFM and otherwise with CFM's consent, which will not be
withheld unreasonably.
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ARTICLE 11 - CONFIDENTIALITY
11.01 Each of the parties undertakes to maintain the confidentiality of the
terms and conditions of this Agreement, provided that the parties may
disclose the existence and the terms and conditions of this Agreement as
required to enforce their rights hereunder, or as otherwise may be
required by law. Neither party may issue a press release disclosing or
otherwise disclose to third parties, except for IBM, the existence of
this Agreement between the parties.
11.02 Both parties agree that the terms and existence of this Agreement shall
not be used as evidence or otherwise in support of patent litigation
between them.
ARTICLE 12 - ASSIGNMENT
STEAG may not assign this Agreement, in whole or in part, without the
prior written consent of CFM. Notwithstanding the previous sentence, STEAG may,
without such consent, transfer or assign all of its rights and obligations under
this Agreement to an entity that is STEAG's successor in connection with a
merger or that purchases all or substantially all of STEAG's stock or assets to
which this Agreement pertains. Subject to the above limitations, this Agreement
will mutually benefit and be binding upon the parties, their successors and
assigns.
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ARTICLE 13 - DISPUTE RESOLUTION
Any and all claims, disputes or controversies arising under, resulting
from, or related to this Agreement ("Dispute"), shall be resolved by negotiation
and, if necessary, litigation, as follows. The party raising such Dispute shall
promptly advise the other party in writing describing in reasonable detail the
nature of such Dispute ("Notice of Dispute"). The senior management of the
parties shall by good faith negotiations attempt to resolve the Dispute within
thirty (30) days of the Notice of Dispute. In the event the senior management
negotiations shall not resolve the Dispute in the thirty-day period, then either
party may seek legal relief in any court of competent jurisdiction.
ARTICLE 14 - GENERAL PROVISIONS
14.01 This Agreement shall be governed by, interpreted and construed in
accordance with the laws of the Commonwealth of Pennsylvania. Venue for
any dispute arising under this Agreement will be in Philadelphia,
Pennsylvania. Each of the parties hereby irrevocably submits to the
exclusive venue and jurisdiction of the United States federal court
sitting in Philadelphia, Pennsylvania in any action, suit or proceeding
brought against it by the other party under this Agreement.
14.02 STEAG acknowledges that it is subject to United States laws and
regulations controlling the export of technical data, computer software
and other commodities and agrees not to export or allow the export or
re-export of such data, software or other commodities in violation of
such laws and regulations.
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14.03 This Agreement may be signed in any number of counterparts, each of
which shall be an original, with the same effect as if the signatures
were upon the same instrument.
14.04 This Agreement constitutes the entire agreement between the parties with
respect to the subject matter hereof and supersedes all prior
agreements, understandings and negotiations, both written and oral,
between the parties with respect to the subject matter of this
Agreement. No representation, inducement, promise, understanding,
condition or warranty not set forth herein has been made or relied upon
by either party hereto.
14.05 In the event any provision of this Agreement is held by a tribunal of
competent jurisdiction to be contrary to the law, the remaining
provisions of this Agreement will remain in full force and effect. The
parties hereto agree to replace such unenforceable provision with a new
provision which has the most nearly similar permissible economic or
other effect.
14.06 No failure or delay by either party in enforcing any right or remedy
under this Agreement shall be construed as a waiver of any future or
other exercise of such right or remedy by such party. No waiver shall be
effective unless made in writing and signed by an authorized
representative of the waiving party.
14.07 No modification of this Agreement shall be binding unless it is in
writing and is signed by an authorized representative of the party
against whom enforcement of the modification is sought.
14.08 Headings are used in this Agreement for convenience only and shall not
affect any construction or interpretation of this Agreement.
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14.09 The parties to this Agreement are and shall remain independent
contractors. Nothing herein shall be construed to create a partnership
or joint venture between them, and neither shall have the power of
authority to bind or obligate the other in any manner not expressly set
forth herein.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed as of the day and year above first written.
CFMT, INC. STEAG MICROTECH, INC.
------------------------------------- ------------------------------------
By: /s/ Xxxxx X. Xxxxxxx By: /s/ Xxxxxxxx Xxxxxxxxx
------------------------------ -----------------------------
Title: /s/ Treasurer Title: /s/ President & CEO
---------------------------- ---------------------------
CFM TECHNOLOGIES, INC.
-------------------------------------
By: /s/ Xxxxx X. Xxxxxxx
------------------------------
Title: /s/ President & CEO
-----------------------------
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EXHIBIT A
IBM ARCPS REPLACEMENT - DECK AND LAYOUT SPECIFICATIONS from IBM
200mm ARCPSWETS -1298 Specification, Appendix E Rev 2.0
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DECK SPECIFICATION 1 - BHF/SC-1/SC-2 DRYERS
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*R05v LEFT TO RIGHT: 2
BHF(500:1), JR1, BHF(8:5:1), SC1, JR2, SC2, JR3, FR/Dryer1,
FR/Dryer2, I/O Area.
R07v LEFT TO RIGHT: 2
BHF(500:1), JR1, BHF(8:5:1), SC1, JR2, SC2, JR3, FR/Dryer1,
FR/Dryer2, I/O Area.
*113v LEFT TO RIGHT: 2
BHF(500:1), JR1, BHF(8:5:1), SC1, JR2, SC2, JR3, FR/Dryer1,
FR/Dryer2, I/O Area.
R06v RIGHT TO LEFT: 2
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I/O Area, Dryer2/FR, Dryer1/FR, JR3, BLANKC, JR2,
BHF(5:1), JR1, BHF(500:1).
*Note: Decks R05V &113V shall also be accompanied by power monitors
for the megasonics modules.
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DECK SPECIFICATION 2 - CR/PHOS & HOT PEROXIDE (H2O2) DRYERS
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R43v RIGHT TO LEFT: 2
X/X Xxxx, Xxxxx0/XX, Xxxxx0/XX, XXXXXX0, BLANKC, DI Rinse2,
Cr/Phos, DI Rinse1, Hot H2O2.
266v RIGHT TO LEFT: 2
I/O Area, Dryer2/FR, Dryer1/FR, BLANKR3, BLANKC, DI Rinse2,
Cr/Phos, DI Rinse1, Hot H2O2.
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DECK SPECIFICATION 3 - MONITOR RECLAIM DRYERS
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R08v LEFT TO RIGHT: 2
S-Etch, DI Jet Rinse1, 49% HF, DI Jet Rinse2, BLANKC, BLANKR3,
FR/Dryer1, FR/Dryer2, I/O Area.
120v RIGHT TO LEFT: 2
X/X Xxxx, Xxxxx0/XX, Xxxxx0/XX, XXXXXX0, XXXXXX, DI Jet Rinse2,
49% HF, DI Jet Rinse1, S-Etch
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DECK SPECIFICATION 4 - MONITOR REWORK DRYERS
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R48v LEFT TO RIGHT: 2
SC1, DI XX0, XX/Xxxxxx, XX XX0, XX/Xxxxxx, XX XX0, XX/Xxxxx0,
FR/Dryer1, I/O Area
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DECK SPECIFICATION 5 - HOT PHOSPHORIC ACID DRYERS
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R20v RIGHT TO LEFT: 1
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X/X Xxxx, XX/Xxxxx, XX Xxxxx, X0XX0, XX Xxxxx,
X0XX0.
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SPECIFICATION 6 - KOH/SC-1/DHF/DI-03 (SPIKED HCL)
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R10v LEFT TO RIGHT: 2
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KOH, JR, DHF, DI-O3(spiked HCL), SC1, DI-03(spiked HCL), Dryer1/FR,
Dryer2/FR, I/O Area.
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DRYER TOTAL 21
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