LICENSE AGREEMENT
Exhibit
10.7
THIS
LICENSE AGREEMENT (this “Agreement”) is entered into as of December 20, 2000
(the “Effective Date”), by and between Xxxxxxxxxx, a California corporation
“Xxxxxxxxxx”), and Xxx Research Corporation, a Delaware corporation (“Xxx”).
Each of Xxxxxxxxxx and Xxx is sometimes referred to herein as a “Party” and
sometimes are collectively referred to herein as the “Parties.” Capitalized
terms used and not otherwise defined herein shall have the meaning ascribed
thereto in the Purchase Agreement (as defined below).
RECITALS
WHEREAS,
Lam is engaged in the Semiconductor Processing and Integrated Circuit
Industry;
WHEREAS,
Xxxxxxxxxx is engaged in the Semiconductor Wafer Industry and other
industries;
WHEREAS,
Xxxxxxxxxx and Lam have entered into that certain Asset Purchase Agreement
dated
as of December 20, 2000 (the “Purchase Agreement”), pursuant to which Xxx agreed
to purchase, and Xxxxxxxxxx has agreed to sell the Acquired Assets;
and
WHEREAS,
this Agreement is entered into by the Parties pursuant to Section 2(e)(B) of
the
Purchase Agreement and constitutes the limited license by Xxx to Xxxxxxxxxx
of
the Acquired Assets under certain restrictions and circumstances as specified
herein.
AGREEMENT
NOW,
THEREFORE, in consideration of the foregoing and the mutual representations,
warranties, and covenants herein contained and other good and valuable
consideration, including but not limited to the consideration reflected in
the
Purchase Agreement, the receipt and adequacy of which is hereby acknowledged,
the Parties hereby agree as follows:
1. Definitions.
(a) “Improvements”
shall
mean any work, derivative, improvement, modification, enhancement, upgrade
or
adaptation of the Acquired Assets, by or for Xxxxxxxxxx and any Intellectual
Property rights related thereto.
2. Integrated
Circuit License and General License Grant.
(a) Integrated
Circuit License Grant.
Subject
to the terms and limitations provided in this Agreement, Xxx grants to
Xxxxxxxxxx a non-exclusive, fully paid-up, royalty-free, non-sublicenseable,
non-transferable worldwide right and license, during the term of this Agreement,
to use, upgrade or modify the Acquired Assets in any manner within the
Semiconductor Processing and Integrated Circuit Industry (including, without
limitation, to make, have made, sell, offer for sale, repair and reconstruct
Improvements thereon) and in accordance with this Agreement (the “Integrated
Circuit License”). The Integrated Circuit License may be exercised only for the
benefit of Xxxxxxxxxx, and shall commence as of the Effective Date provided
that
all other conditions of closing set forth in the Purchase Agreement are met
by
Xxxxxxxxxx.
(b) General
License Grant.
Subject
to the terms and limitations provided in this Agreement, Xxx grants to
Xxxxxxxxxx an exclusive, irrevocable, perpetual, fully paid-up, royalty-free,
sublicenseable, transferable, worldwide right and license to use the Acquired
Assets to make, have made, sell, offer for sale, repair and reconstruct
Improvements in or for any field other than the Semiconductor Processing and
Integrated Circuit Industry and in accordance with this Agreement (the “General
License”). The General License may be exercised only for the benefit of
Xxxxxxxxxx and its duly authorized transferees and licensees, and shall commence
as of the Effective Date provided that all other conditions of closing set
forth
in the Purchase Agreement are met by Xxxxxxxxxx.
(c) Restrictions.
Other
than the Integrated Circuit License and the General License expressly granted
in
this Agreement, no rights or licenses are granted or deemed granted hereunder
or
in connection herewith, including, but not limited to, any rights or licenses,
express or implied, to any other technology or Intellectual Property rights
owned by Xxx.
3. Ownership.
As
between the Parties and as of the Effective Date, Xxx is and shall remain the
sole and exclusive owner of all right, title and interest in and to the Acquired
Assets and any Intellectual Property rights related thereto, subject only to
the
Integrated Circuit License and the General License. As between the Parties,
Xxxxxxxxxx shall be the sole and exclusive owner of all right, title and
interest in and to any Improvements and any Intellectual Property rights related
thereto, subject to the right of first offer described in Section 4
below.
4. Right
of First Offer.
Subject
to the terms and conditions specified in this Section 4, Xxxxxxxxxx hereby
grants to Xxx a right of first offer with respect to any assignment, sale or
other transfer of Improvements by Xxxxxxxxxx:
(a) Each
time
Xxxxxxxxxx proposes to assign, license, sell or otherwise transfer “Transfer”)
any Improvement to a third party, Xxxxxxxxxx shall first deliver to Xxx a notice
by certified mail (“Notice”) stating (i) a detailed description of the
Improvement, (ii) its bona fide intention to Transfer the same, and (iii) the
price and terms upon which it proposes to do so.
(b) Thereafter,
Xxx shall have access to the Improvement reasonably sufficient to permit a
due
diligence evaluation of the same, and Xxxxxxxxxx shall cooperate as reasonably
requested to assist Xxx in such evaluation. Within thirty (30) days after
receipt of the Notice, Xxx may elect to purchase or otherwise obtain, at the
price and on the terms specified in the Notice, such Improvement pursuant to
and
in accordance with a definitive purchase and technology transfer agreement
as
negotiated by the Parties in good faith, during which time Xxxxxxxxxx shall
not
Transfer or encumber any portion of such Improvement or enter into discussions
with any third party concerning any such transaction.
(c) If,
pursuant to Section 4(b), Xxx does not elect to acquire an Improvement,
Xxxxxxxxxx may, during the one hundred eighty (180) day period following the
expiration of the period specified in Section 4(b) above, consummate a Transfer
of such Improvement with any third party at a price not less than, and upon
terms no more favorable to the offeree, than those specified in the Notice.
If
Xxxxxxxxxx does not Transfer such Improvement within such period, then the
right
provided to Xxx hereunder shall be deemed revived and no Transfer of the
improvement shall be effected unless first reoffered to Xxx in accordance
herewith.
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(d) This
right of first offer may not be assigned or transferred by Xxx, except to
any
wholly-owned subsidiary or parent of, or to any corporation or entity that
is,
within the meaning of the Securities Act of 1933, as amended, controlling,
controlled by or under common control with, Xxx.
5. Warranty
Disclaimer.
THE
ACQUIRED ASSETS ARE LICENSED TO XXXXXXXXXX “AS IS.” XXX MAKES NO WARRANTY,
EXPRESS OR IMPLIED, STATUTORY OR OTHERWISE, CONCERNING THE ACQUIRED ASSETS,
XXX
IMPROVEMENTS OR ANY OTHER SUBJECT MATTER UNDER THIS AGREEMENT, INCLUDING WITHOUT
LIMITATION, WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE
AND NONINFRINGEMENT.
6. Intellectual
Property Matters.
In the
event either Party becomes aware of any infringement of any Intellectual
Property right of the other which is related to the Acquired Assets or the
Improvements, it shall provide notice thereof in writing to the other Party.
Xxx
shall control, in its sole discretion, the protection and enforcement of the
Acquired Assets.
7. Confidentiality.
(a) Each
Party (a “Receiving Party”) agrees to keep confidential and not disclose or use
except in performance of its obligations under this Agreement, confidential
or
proprietary information related to the technology or business of the other
Party
(the “Disclosing Party”) that the Receiving Party learns in connection with this
Agreement and any other information received from the Disclosing Party,
including without limitation, to the extent previously, currently or
subsequently disclosed to the Receiving Party hereunder or otherwise:
information relating to products or technology of the Disclosing Party, or
to
the Disclosing Party’s business (including, without limitation, computer
programs, code, algorithms, schematics, data, know-how, processes, ideas,
inventions (whether patentable or not), names and expertise of employees and
consultants, all information relating to customers and customer transactions
and
other technical, business, financial, customer and product development plans,
forecasts, strategies and information) (all of the foregoing, “Confidential
Information”). Neither Party shall disclose the terms of this Agreement to any
third Party without the prior written consent of the other (except for its
attorneys, accountants, and other service providers as necessary, provided
that
such service providers are bound to maintain the confidentiality thereof).
Each
Party shall use reasonable precautions to protect the Confidential Information
of the other in its possession and employ at least those precautions that such
Party employs to protect its own similar confidential or proprietary
information. For the purposes of this Agreement, Acquired Assets and the
Improvements shall be deemed “Confidential Information.”
(b) “Confidential
Information” shall not include information a Receiving Party can document is in
or (through no improper action or inaction by the Receiving Party or any
affiliate, agent or employee thereof) enters the public domain (and is readily
available without substantial effort). A Receiving Party, with prior written
notice to the Disclosing Party, may disclose such Confidential Information
to
the extent required to be disclosed to a governmental entity or agency in
connection with seeking any governmental or regulatory approval, or pursuant
to
the lawful requirement or request of a governmental entity or agency, provided
that reasonable measures are taken to guard against further disclosure,
including without limitation, seeking appropriate confidential treatment or
a
protective order, or notifying or assisting the Disclosing Party to do
so.
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(c) Each
Party acknowledges and agrees that due to the unique nature of the Confidential
Information, there can be no adequate remedy at law for any breach of its
obligations hereunder, that any such breach may allow the Receiving Party or
third parties to unfairly compete with the Disclosing Party, resulting in
irreparable harm to the Disclosing Party, and therefore, that upon any such
breach or any threat thereof, the Disclosing Party shall be entitled to
appropriate equitable relief in addition to whatever remedies it might have
at
law. A Receiving Party will notify the Disclosing Party in writing immediately
upon the occurrence of any such unauthorized release or other breach. Any breach
of this Section 7 will constitute a material breach of this
Agreement.
8. Term
and Termination.
(a) Term.
This
Agreement shall remain in effect unless terminated as provided herein, except
for the General License, which is irrevocable.
(b) Termination
for Cause.
Notwithstanding the foregoing, this Agreement may be terminated for cause
immediately by written notice upon the occurrence of any of the following
events:
(i) If
the
other ceases to do business, or otherwise terminates its business operations,
or
by Xxx if there is a change in control of Xxxxxxxxxx (which shall include,
without limitation, the acquisition of or beneficial ownership by one or more
related persons or entities of fifty percent (50%) or more of the
then-outstanding stock of Xxxxxxxxxx); or
(ii) If
the
other Party materially breaches any material provision of this Agreement and
fails to cure such breach within thirty (30) days of written notice describing
the breach; or
(iii) If
the
other Party ceases to carry on as a going concern or becomes insolvent or seeks
protection under any bankruptcy, receivership, trust deed, creditors
arrangement, composition or comparable proceeding, or if any such proceeding
is
instituted against the other (and not dismissed within ninety (90)
days).
(c) Termination
for Breach of Definitive Agreement.
The
Parties further acknowledge that a material breach of any term of a Definitive
Agreement shall constitute a material breach under this Agreement, and likewise,
a material breach of this Agreement shall constitute a material breach under
each other Definitive Agreement (each a “Breach”). Notwithstanding anything else
provided in a Definitive Agreement, any Breach by such Party shall be subject
to
the terms of Sections 8 of the Purchase Agreement.
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(d) Effect
of Termination and Survival.
In the
event of termination or expiration, the Integrated Circuit License and all
other
rights and obligations of the parties shall terminate except that the following
provisions shall survive termination: Sections 2(b), 3, 5, 7, 8. 10 and 12.
Neither Party shall incur any liability whatsoever for any damage, loss or
expenses of any kind suffered or incurred by the other arising from or incident
to any termination of this Agreement (or any part thereof) by such Party which
complies with the terms of this Agreement whether or not such Party is aware
of
any such damages or expenses. Termination is not the sole remedy under this
Agreement and, whether or not termination is effected, all other remedies will
remain available.
9. Limitation
of Liability.
EXCEPT
FOR BREACH OF THE OBLIGATIONS SET FORTH IN SECTIONS 2(b), 3, 7 and 10 HEREIN,
NEITHER PARTY SHALL BE LIABLE UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY
OR OTHER THEORY OR ANY INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING
WITHOUT LIMITATION LOST PROFITS) WITH RESPECT TO ANY SUBJECT MATTER OF THIS
AGREEMENT. NOTWITHSTANDING ANY OTHER PROVISIONS IN THIS AGREEMENT, NEITHER
PARTY
WILL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY FOR COST OF PROCUREMENT
OF SUBSTITUTE GOODS, SERVICES, TECHNOLOGY OR RIGHTS OR FOR ANY AMOUNT
AGGREGATING IN EXCESS OF FIVE HUNDRED THOUSAND DOLLARS ($500,000).
10. Indemnity.
Xxxxxxxxxx agrees to defend, indemnify and hold harmless Xxx, its directors,
employees and agents, from and against any and all damages, liabilities, costs
and expenses (including reasonable attorneys’ fees and expenses) arising out of
or related to Xxxxxxxxxx’x exercise of the Integrated Circuit License and/or the
General License, provided that Xxx promptly notifies Xxxxxxxxxx of any claim
it
receives or that its failure to do so does not materially prejudice Xxxxxxxxxx.
If, in accordance with the foregoing provisions of this Section 10, Xxx is
entitled to indemnification, Xxxxxxxxxx will have the right, at its sole
expense, to contest, defend and litigate any claim, action or proceeding (a
“Claim”), and may settle the same either before or after the initiation of
litigation, at such time and upon such terms as Xxx xxxxx fair and reasonable.
If Xxxxxxxxxx elects to contest, defend or litigate a Claim, then Xxx shall,
at
Xxxxxxxxxx’x expense, provide such reasonable cooperation as is reasonably
requested by Xxxxxxxxxx; provided, however, that Xxx may elect to participate
in
such defense at its own expense. Any final determination of a Claim, other
than
a settlement, will be binding upon Xxx. If, pursuant to this Section 10,
Xxxxxxxxxx elects not to contest, defend or litigate a Claim for which Xxx
is
entitled to indemnification hereunder and Xxx defends or settles the same,
then
Xxx will be reimbursed by Xxxxxxxxxx for all its expenses of defending the
same
which are incurred from time to time, including without limitation all
out-of-pocket costs and all reasonable legal and accounting fees and
expenses.
11. Assignment.
Except
as otherwise expressly provided in this Agreement, Xxxxxxxxxx shall not assign
(by operation of law or otherwise) or otherwise transfer this Agreement or
any
rights or obligations herein to anyone, including any parent, subsidiaries,
affiliated entities or third parties, or as part of the sale of any portion
of
its business, change of control, or pursuant to any merger, consolidation or
reorganization, without Xxx’x prior written consent. Upon any violation of this
Section 11 by Xxxxxxxxxx, Xxx shall have the right to terminate this Agreement
immediately upon written notice.
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12. Miscellaneous.
(a) Governing
Law.
This
Agreement shall be governed by and construed under, and the legal relations
between the parties hereto will be determined in accordance with the laws of
the
State of California and the United States without regard to conflicts of law
provisions thereof. The parties hereby agree to submit for binding arbitration
in accordance with the following paragraph any and all disputes in connection
with this Agreement and the performance thereof; except that Xxx may take legal
action in any jurisdiction in which specific collateral is located to realize
on
any such collateral or other security or to enforce specific performance of
Xxxxxxxxxx’x obligations hereunder or a judgment or other decision. To the
extent all or any part of this Section 12(a) is determined to be unenforceable,
the remaining provisions will remain in effect and be interpreted to best
effectuate the intent of the Parties.
(b) Arbitration.
Subject
to Section 12(a), any controversy or dispute arising out of or relating to
this
Agreement, or the breach thereof, shall be resolved by binding arbitration
conducted in accordance with the arbitration rules of the American Arbitration
Association (“AAA”) and judgment upon the award rendered by the arbitral
tribunal may be entered in any court having jurisdiction thereof. The tribunal
shall consist of a single arbitrator mutually agreeable to the parties, or
in
the absence of such an agreement within thirty (30) calendar days from the
first
referral of the dispute to the AAA (the “Referral Date”), designated by the AAA.
The place of arbitration shall be Santa Xxxxx County, California, unless the
parties shall have agreed to another location within fifteen (15) calendar
days
from. the Referral Date. The arbitral award shall be final and binding. The
parties waive any right to appeal the arbitral award, to the extent a right
to
appeal may be lawfully waived. Each Party retains the right to seek judicial
assistance: (i) to compel arbitration; (ii) to obtain interim measures of
protection prior to or pending arbitration (including, without limitation,
injunctive relief); (iii) to seek injunctive relief in the courts of any
jurisdiction as may be necessary and appropriate to protect the unauthorized
disclosure of its proprietary or confidential information; and (iv) to enforce
any decision of the arbitrator, including the final award. The arbitration
proceedings contemplated herein shall be as confidential and private as
permitted by law. Consequently, the parties hereto shall not disclose the
existence, content or results of any such proceedings, and materials submitted
in connection therewith shall not be admissible in any other proceeding,
provided, however, that this confidentiality provision shall not prevent a
petition to vacate or enforce an arbitral award, and shall not bar disclosures
required by law.
(c) Entire
Agreement.
This
Agreement and any other Definitive Agreement, together with all attachments
hereto and thereto, constitute the entire understanding and agreement of the
parties with respect to the subject matter of this Agreement, and supersedes
all
prior and contemporaneous understandings and agreements, whether written or
oral, with respect to such subject matter. Any changes to the Agreement must
be
in writing and signed by authorized representatives of all parties.
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(d) Waiver.
Any
failure on the part of any Party to enforce at any time, or for any period
of
time, any of the provisions of this Agreement shall not be deemed or construed
to be a waiver of such provisions or of the right of such Party thereafter
to
enforce each and every such provision. No waiver will be binding unless executed
in writing by the Party making the waiver.
(e) Independent
Contractors.
The
Parties hereto are independent contractors and nothing contained in this
Agreement shall be deemed or construed to create a partnership, joint venture,
employment, franchise, or agency relationship between the parties. Neither
Party
has any right or authority to bind the other in any way.
(f) Headings.
Headings and captions are for convenience only and are not to be used in the
interpretation of this Agreement.
(g) Severability.
If any
provision of this Agreement shall be held by a court of competent jurisdiction
to be contrary to law, the remaining provisions of this Agreement shall remain
in full force and effect.
(h) Notices.
All
notices, requests, demands, applications, services of process, and other
communications which are required to be or may be given under this Agreement
will be in writing and will be deemed to have been duly given if sent by
telecopy or facsimile transmission, answer back requested, or delivered by
courier or mailed, certified first class mail, postage prepaid, return receipt
requested, to the parties to this Agreement at the following
addresses:
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If
to Xxx:
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Xxx Research Corporation
0000
Xxxxxxx Xxxxxxx
Xxxxxxx,
XX 00000-0000
Facsimile:
(000) 000-0000
Attention:
Xxxxx Xxxxxx, Vice President-Treasurer
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with
a copy to:
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Xxxxxxx,
Phleger & Xxxxxxxx LLP
Xxx
Xxxxxx
Xxxxx
Xxxxxx Xxxxx
Xxx
Xxxxxxxxx, XX 00000
Facsimile:
(000) 000-0000
Attention:
Xxxxx X. Xxxxx, Esq.
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If
to Xxxxxxxxxx:
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Xxxxxxxxxx
000
Xxxxxxx Xxxx
Xxx
Xxxx Xxxxxx, XX 00000
Facsimile:
(000) 000-0000
Attention:
Xxx Xxxxx
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with
a copy to:
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Xxxxx
& Rodewald, P.C.
0000
Xxxxxxx Xxxxxx
Xxx
Xxxx Xxxxxx, XX 00000
Facsimile:
(000) 000-0000
Attention:
Xxxxxx X. Xxxxx, Esq.
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if
to
such other address as either Party will have furnished to the other by notice
given in accordance with this Section. Such notice will be effective, (i)
if
delivered in person or by courier, upon actual receipt by the intended
recipient, or (ii) if sent by telecopy or facsimile transmission, on the
date of
transmission unless transmitted after normal business hours, in which case
on
the following date, (iii) if mailed, upon the date of first attempted
delivery.
(i) No
Third Party Beneficiaries.
This
Agreement shall not confer any rights or remedies upon any Person other than
the
Parties and their respective successors and permitted assigns.
(j) Construction.
The
Parties have participated jointly in the negotiation and drafting of this
Agreement. In the event an ambiguity or question of intent or interpretation
arises, this Agreement shall be construed as if drafted jointly by the Parties
and no presumption or burden of proof shall arise favoring or disfavoring either
Party by virtue of the authorship of any of the provisions of this
Agreement.
(k) Counterparts.
This
Agreement may be executed in any number of counterparts and each such
counterpart shall be deemed an original.
(This
space intentionally left blank.)
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IN
WITNESS WHEREOF, the Parties have, by their respective duly authorized officers,
executed this License Agreement as of the Effective Date.
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XXX
RESEARCH CORPORATION,
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XXXXXXXXXX,
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a
Delaware corporation
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a
California corporation
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/s/
April X. Xxxxxxxxxx, Secretary
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||
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By:
/s/ Xxxxxxx X. Xxxxxxxx
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/s/
Xxxxx X. Xxxxx
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Name:
Xxxxxxx X. Xxxxxxxx
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Name:
Xxxxx X. Xxxxx
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Title:
President/COO
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Title:
CEO
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