1
Execution Version
LICENSE AGREEMENT
BETWEEN
IBIS TECHNOLOGY CORPORATION
AND
ORION EQUIPMENT, INC.
2
LICENSE AGREEMENT
THIS AGREEMENT, effective this 27th day of June, 1996, ("EFFECTIVE DATE")
by and between ORION EQUIPMENT, INC., a corporation organized and existing under
the laws of California with its principal place of business at 000 Xxxxxxx
Xxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000-0000 ("Licensee") and IBIS TECHNOLOGY
CORPORATION, a corporation organized and existing under the laws of the
Commonwealth of Massachusetts, with its principal place of business at 00X
Xxxxxx Xxxx Xxxxx, Xxxxxxx, Xxxxxxxxxxxxx 00000, X.X.X. ("IBIS").
WHEREAS, IBIS is the sublicensee of certain technology related to the use
of a periodically varying magnetic field to cause the scanning of a focused ion
beam in one dimension pursuant to the documents appended as Exhibit A; and
WHEREAS, IBIS is willing to further sublicense such technology on the terms
set forth herein; and
WHEREAS, Licensee desires to obtain a sublicense of such technology upon
the terms and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the mutual covenants and agreements of
the parties herein contained, the parties hereto, intending to be legally bound,
do hereby agree as follows:
ARTICLE 1 - DEFINITIONS
For the purpose of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "FIELD" shall mean all fields of use other than the commercial
production of SIMOX wafers.
1.2 "ION IMPLANTATION MACHINE" means a machine constructed to implant ions
uniformly over the surface of a substrate, and does not include other machines
such as ion projection lithography machines.
1.3 "LICENSED PRODUCTS" shall mean ORIGINAL 1-D MAGNETIC SCANNING MACHINES
and RETROFITTED 1-D MAGNETIC SCANNING MACHINES, the manufacture, use or sale of
which is within the claims of the PATENT RIGHTS.
1.4 "MAGNETIC SCANNING" means the use of a periodically varying magnetic
field to cause the scanning of a focused ion beam in one dimension.
1.5 "PATENT RIGHTS" shall mean: (a) 1-D patent rights: United States Patent
Application No. 07/843,391, now U.S. Patent No. 5,311,028; United States Patent
Application No. 08/106,351, now U.S. Patent No. 5,393,984; and United States
Patent Application No. 08/383,422, (b) United States Patent Application
08/259,919, filed June 10, 1994 (Wiggler), (c) a United States Patent
Application for the subject known as Dual Field Scanning, filed June 10, 1995,
entitled System and Method for Producing Superimposed Static and Time-Varying
Magnetic Fields, (d) any U.S. patents issuing , reissuing or otherwise based on
the inventions claimed in (a), (b) or (c) above, and any foreign patent
applications and patents corresponding thereto.
1.6 "ORIGINAL 1-D MAGNETIC SCANNING MACHINE" means an ION IMPLANTATION
MACHINE originally constructed, to employ MAGNETIC SCANNING to implant ions in
one dimension.
3
1.7 "RETROFITTED 1-D MAGNETIC SCANNING MACHINE" means an ION IMPLANTATION
MACHINE originally constructed to implant ions by means other than MAGNETIC
SCANNING, and subsequently retrofitted by Licensee to employ MAGNETIC SCANNING
to implant ions in one dimension.
ARTICLE 2 - GRANT OF LICENSE AND OPTION
2.1 GRANT OF LICENSE. IBIS hereby grants to Licensee, subject to the terms
herein recited, a non-exclusive, non-transferable (except as provided in ARTICLE
10.2 herein), perpetual, royalty-bearing, worldwide right and sublicense under
the PATENT RIGHTS to develop, make, have made, use, sell and distribute
RETROFITTED 1-D MAGNETIC SCANNING MACHINES in the FIELD.
2.2 GRANT OF OPTION. IBIS hereby grants to Licensee, subject to the terms
herein recited, an option to acquire a non-exclusive, non-transferrable (except
as provided in ARTICLE 10.2 herein), perpetual, royalty-bearing, worldwide right
and sublicense under the PATENT RIGHTS to develop, make, have made, use, sell
and distribute ORIGINAL 1-D MAGNETIC SCANNING MACHINES in the FIELD.
2.3 EXERCISE OF OPTION. Licensee may exercise the option granted pursuant
to Section 2.2 hereof by delivering written notice of such exercise to IBIS
together with the Option Exercise Fee as provided in Section 3.2 hereof. Upon
delivery of such notice and such Option Exercise Fee. Licensees shall have,
subject to the terms herein recited, the license described in Section 2.2
hereof.
2.4 SALE OF LICENSED PRODUCTS. IBIS acknowledges that Licensee cannot
restrict or control the end use of general purpose ION IMPLANTATION MACHINES.
However, Licensee acknowledges and agrees that it shall not, under rights
provided under this agreement, sell LICENSED PRODUCTS or scanning components
which are specifically designed for the commercial production of SIMOX wafers.
2.5 IMPROVEMENTS. If Licensee makes any invention which is an improvement
to inventions claimed in the PATENT RIGHTS, whether or not patentable, Licensee
shall disclose such invention to IBIS and grant to IBIS a non-exclusive,
perpetual, royalty free, worldwide right and license with the right to grant
sublicenses to use such invention(s).
ARTICLE 3 - ROYALTIES
3.1 INITIAL LICENSE FEE. Upon signing this Agreement, Licensee shall pay
IBIS a non-refundable license fee of One Hundred Twenty Thousand Dollars
($120,000) in consideration of the license granted pursuant to Section 2.1
hereof and the option granted pursuant to Section 2.2 hereof.
3.2 OPTION EXERCISE FEE. Upon and in connection with exercise of the option
granted by Section 2.3 hereof, Licensee shall pay IBIS a non-refundable option
exercise fee (the "Option Exercise Fee") of (a) Three Hundred Eighty Thousand
Dollars ($380,000.00) MINUS (b) the product of $25,000 and the number of
RETROFITTED 1-D MAGNETIC SCANNING MACHINES in excess of four (4) that are
shipped or put into use by Licensee prior to the option exercise date.
3.3 ROYALTIES. (a) Licensee agrees to pay to IBIS, as partial consideration
for the rights granted under this Agreement, Thirty Thousand Dollars ($30,000)
for each of the first four (4) RETROFITTED 1-D MAGNETIC SCANNING MACHINES
shipped or put into use by it and Twenty Five Thousand
-2-
4
Dollars ($25,000) for each RETROFITTED 1-D MAGNETIC SCANNING MACHINE shipped or
put into use by it in excess of four (4) RETROFITTED 1-D MAGNETIC SCANNING
MACHINES.
(b) Licensee agrees to pay to IBIS, as partial consideration for the rights
granted under this Agreement, Twenty Five Thousand Dollars ($25,000) for each of
the first sixty (60) ORIGINAL 1-D MAGNETIC SCANNING MACHINES shipped or put into
use by it and Fifteen Thousand Dollars ($15,000) for each ORIGINAL 1-D MAGNETIC
SCANNING MACHINE shipped or put into use by it in excess of sixty (60) ORIGINAL
1-D MAGNETIC SCANNING MACHINES;
(c) Amounts paid pursuant to Section 3.1 shall be credited against
royalties payable pursuant to Section 3.3(a) and amounts paid pursuant to
Section 3.2 shall be credited against royalties payable pursuant to Sections
3.3(a) or 3.3(b).
(d) The applicable royalty amounts payable hereunder shall be increased
annually, as of January 1 of each year, over the respective amounts established
for the preceding year by a factor equal to the increase in the U.S. Consumer
Price Index (CPI) for the prior year, taking the CPI in effect December 31, 1995
as the base index.
3.4 ROYALTY PERIOD. The obligation to pay royalties under Section 3.3 shall
continue in each country in which manufacture, use or sale of Licensed Products
occurs until the date of expiration of the last to expire of any patent issued
in such country which is part of the PATENT RIGHTS.
3.5 PAYMENT. Royalties will be due and payable within sixty (60) days of
the end of each calendar quarter. Royalty payments shall be made in United
States Dollars at IBIS' offices in Danvers, Massachusetts.
ARTICLE 4 - REPORTS AND RECORDS
4.1 REPORTS. At the time of each royalty payment, Licensee shall provide a
full account of all business activities subject to royalty payments hereunder.
4.2 RECORDS. Licensee shall keep complete and accurate books of account
containing all particulars which may be reasonably necessary for the purpose of
showing the royalties payable to IBIS. Said books of account of Licensee shall
be kept at the principal place of business of Licensee. Said books and
particulars shall be available during normal business hours, upon reasonable
notice, for five (5) years following the end of the calendar year to which they
pertain, to the inspection of an independent certified public accountant
retained by IBIS for the purpose of verifying Licensee's records related to
Licensee's royalty obligations under this Agreement.
4.3 AUDIT COSTS. If an audit conducted on behalf of IBIS pursuant to
Section 4.2 reveals that Licensee has made an error in its favor of the sum of
royalty payments due IBIS in a calendar year, Licensee, in addition to payment
of the amount owing, shall be obliged to pay the audit fee in connection with
the audit, said payments to be made within sixty (60) days of delivery of the
auditor's report to Licensee. Except as provided in the prior sentence, IBIS
shall be responsible for all fees and expenses of said independent certificate
public accountant.
4.4 MARKING. Licensee agrees to xxxx all LICENSED PRODUCTS shipped or put
into use in the United States with all applicable U.S. patent numbers, to the
extent commercially practicable. All LICENSED PRODUCTS shipped to other
countries shall be marked in such a manner as to conform with
-3-
5
the patent laws and practice of the country to which such products are shipped,
to the extent commercially practicable.
ARTICLE 5 - ABATEMENT OF INFRINGEMENT
5.1 LICENSOR ACTION. Licensee shall give immediate notice to IBIS of any
infringement of PATENT RIGHTS by third parties which may come to its attention.
If at any time any third party shall infringe any unexpired patent licensed
hereunder, IBIS may at its election bring suit in its own name or in the name of
Licensee against such infringer. Licensee shall execute such legal papers
necessary for the prosecution of such suit as may be requested by IBIS, and IBIS
shall be liable for all costs and expenses of such litigation and shall be
entitled to receive and retain all recoveries therefrom. Licensee will at all
times fully cooperate with IBIS in the enforcement of the PATENT RIGHTS and
shall furnish IBIS all information and records requested by IBIS in connection
therewith.
5.2 LICENSEE ACTION. If IBIS fails for the period of ninety (90) days after
its attention has been called to the matter by notice in writing by Licensee, in
accordance with Section 5.1, to institute any proceedings or actions necessary
to prevent any infringement on a commercial scale competitive with Licensee,
Licensee may, unless otherwise objected to by IBIS within the ninety (90) day
period, at its own cost institute and prosecute actions or proceedings, if
necessary, in its name or in the name of IBIS, or both if required by law.
Licensee agrees to notify IBIS of any such action. IBIS agrees to cooperate
reasonably in the preparation for and prosecution of any such action. Any
amounts realized by Licensee from the successful prosecution of any such
infringement suit(s) will be applied first to reimburse IBIS for its cost and
expenses in connection therewith, then to reimburse Licensee for its costs and
expenses in connection with said suit(s), and the balance, if any, shall be
divided equally between the parties. Should IBIS object to Licenses initiating
suit, then Licensee's continuing obligation to pay royalties shall cease during
any such period of non-abatement.
ARTICLE 6 - REPRESENTATIONS AND WARRANTIES
6.1 AUTHORITY. Each party represents and warrants that it has the right and
authority to enter this Agreement.
6.2 EXCEPTIONS. Nothing in this Agreement shall be construed as:
(a) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is or will be
free from infringement of patents, copyrights or trademarks of third parties;
(b) conferring rights on Licensee to use in advertising, publicity or
otherwise the name of IBIS or of its employees or affiliates without prior
written approval of IBIS.
(c) conferring rights on IBIS to use in advertising, publicity or otherwise
the name of Licensee or of its employees or affiliates without the prior written
approval of Licensee.
6.3 DISCLAIMER. EXCEPT AS EXPRESSLY PROVIDED HEREIN, IBIS MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY,
SUITABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT. IBIS HAS
-4-
6
NOT CONDUCTED ANY STUDY OF THE PATENTABILITY OF THE TECHNOLOGY AND MAKES NO
REPRESENTATIONS OR WARRANTIES OF ANY KIND WITH RESPECT TO THE LIKELIHOOD OF THE
ISSUANCE OF ANY PATENTS, OR THE VALIDITY OF ANY PATENTS WHICH HAVE ISSUED OR MAY
ISSUE, IN CONNECTION THEREWITH.
ARTICLE 7 - TERM AND TERMINATION
7.1 BANKRUPTCY. If Licensee undergoes a liquidation in bankruptcy, or files
a petition for liquidation in bankruptcy, or applies for or consents to the
appointment of a receiver of trustee, of makes an assignment for the benefit of
creditors, whether by the voluntary act of Licensee or otherwise, and if
Licensee fails to terminate any such proceeding within one hundred twenty (120)
days after its commencement, IBIS may at its election terminate this Agreement
upon thirty (30) days written notice to Licensee. Licensee agrees to provide
written notice to IBIS of Licensee's or third party's intention to file a
petition for liquidation of Licensee in bankruptcy prior to such filing, if
known.
7.2 MATERIAL BREACH. Upon any material breach or default by Licensee, IBIS
shall have the right to terminate this Agreement and the rights and license
granted hereunder by thirty (30) days written notice to Licensee. Such
termination shall become effective at the end of such thirty (30) day period
unless Licensee has cured any breach or default prior to the expiration such
period.
7.3 LATE ROYALTIES. Any royalties which are not paid when due shall accrue
interest at the average prime rate plus two (2) percent as established in the
Wall Street Journal for the period from the date such amount shall have been due
until such amount is paid in full.
7.4 OBLIGATIONS ON TERMINATION. Upon termination of this Agreement for any
reason, nothing herein shall be construed to release either party from any
obligation which matured prior to the effective date of such termination.
7.5 SURVIVAL. Sections 4.2, 6.1, 6.3 and Article 8 shall survive
termination of this Agreement as well as the right of IBIS to collect any
accrued royalties as recited in Article 3.
ARTICLE 8 - INDEMNIFICATION
Licensee agrees to hold harmless, indemnify and defend IBIS and its
officers, directors, agents and employees, from all liabilities, demands,
damages, expenses and losses arising out of (a) use by Licensee, or by any party
acting on behalf of or under authorization from Licensee, including, without
limitation, customers of Licensee, of the PATENT RIGHTS; and (b) use, sale or
other disposition by Licensee, or by any party acting on behalf of or under
authorization from Licensee, including, without limitation, customers of
Licensee, of LICENSED PRODUCTS. The provisions of this Article 8 shall survive
termination of this Agreement.
-5-
7
ARTICLE 9 - PAYMENTS, NOTICES AND COMMUNICATIONS
Except as otherwise provided for herein, any payment, notice or other
communication pursuant to this Agreement shall be in writing, shall be addressed
to the receiving party's address set forth below or to such other address as a
party may designate by notice hereunder, and shall be either (i) delivered by
hand, (ii) sent by overnight courier, or (iii) sent by registered mail, return
receipt requested, postage prepaid.
In the case of IBIS: IBIS Technology Corporation
00X Xxxxxx Xxxx Xxxxx
Xxxxxxx, XX 00000
ATTN: Xxxxxxxx Xxxxxx, President
In the case of LICENSEE: Orion Equipment, Inc.
000 Xxxxxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
ATTN: President
All notices, requests, consents and other communications hereunder shall be
deemed to have been given either (i) if by hand, at the time of the delivery
thereof to the receiving party at the address of such party set forth above,
(ii) if sent by overnight courier, on the next business day following the day
such notice is delivered to the courier service, or (iii) if sent by registered
mail, on the 5th business day following the day such mailing is made.
ARTICLE 10 - MISCELLANEOUS PROVISIONS
10.1 TAX PAYMENT. Licensee may withhold any withholding taxes as required
by any applicable laws regarding its payments under this Agreement. Licensee
shall provide IBIS with certification of any such tax payments for IBIS tax
credit purposes.
10.2 ASSIGNMENT. Neither party may assign its rights or obligations
hereunder without the prior written consent of the other party, which consent
may not be unreasonably withheld, except that:
(a) Licensee, may, without such consent and at its sole discretion, assign
this Agreement or the resulting license to a company of which Licensee controls
directly or indirectly the majority of the voting power, provided that the
assignee undertakes to be bound to perform, and Licensee hereby undertakes and
covenants to guaranty the full performance by such assignee of, all obligations
of Licensee under this Agreement and any license granted pursuant to its
exercise and
(b) IBIS may, without such consent, assign its right to receive royalties
hereunder at its sole discretion, provided that IBIS will, prior to the
assignment, provide Licensee evidence of the agreement between the assignee and
IBIS that creates the obligation to assign and give Licensee full information
regarding the assignee's name, address and other necessary data on the assignee.
10.3 GOVERNING LAW. This Agreement shall be construed, governed,
interpreted and applied in accordance with the laws of the Commonwealth of
Massachusetts, U.S.A., except that questions affecting construction and effect
of any patent shall be determined by the law of the country in which the patent
was granted.
-6-
8
10.4 ENTIRE AGREEMENT. The parties hereto acknowledge that this instrument
sets forth the entire agreement and understanding of the parties hereto as to
the subject of the matter hereof, and shall not be subject to any change or
modification except by the execution of a written instrument subscribed to be
the parties hereto.
10.5 SEVERABILITY. The provisions of this Agreement are severable, and in
the event that any provisions of this Agreement are determined to be invalid or
unenforceable under any controlling body of law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
10.6 DISPUTES. Any dispute, claim, or difference arising in connection with
this Agreement or as to the rights or liabilities of the parties hereunder (each
such event being hereinafter called a "dispute"), shall be referred to
arbitration in Boston, Massachusetts in accordance with the then obtaining the
Rules of the American Arbitration Association. The Arbitrational tribunal shall
consist of three arbitrators. The party initiating arbitration shall nominate
one arbitrator (who shall not be affiliated with such party) in the request for
arbitration and the other party shall nominate a second arbitrator (who shall
not be affiliated with such party) in the answer thereto. The two arbitrators so
named will then jointly appoint the third arbitrator as chairman of the
Arbitration Tribunal. In the event a party shall fail to nominate its arbitrator
or the two shall fail to nominate the third arbitrator, such nomination shall be
made by the office of the American Arbitration Association in Boston,
Massachusetts. The award of the Arbitration tribunal shall be final and judgment
upon such an award may be entered in any competent court or application may be
made to any competent court for judicial acceptance of such an award and an
order of enforcement. In the event of any procedural matter not covered by the
aforesaid Rules, the procedural law of the Commonwealth of Massachusetts shall
govern.
10.7 COUNTERPARTS. This Agreement may be executed in multiple counterparts,
each of which shall be deemed on original, and counterpart signature pages may
be assembled to form a single document.
-7-
9
IN WITNESS WHEREOF, and intending to be bound hereby, the parties have
caused this agreement to be signed by their duly authorized representatives.
IBIS TECHNOLOGY CORPORATION ORION EQUIPMENT, INC.
By: /s/ Xxxxxxxx Xxxxxx By: /s/ Xxxxxx X. Xxxxxxxxxxxx
------------------------ --------------------------------
Name: Xxxxxxxx Xxxxxx Name: Xxxxxx X. Xxxxxxxxxxxx
---------------------- ------------------------------
Title: President Title: Chief Executive Officer
--------------------- -----------------------------
Date: June 27, 1996 Date: June 27, 1996
-8-
