EXHIBIT 4.10
NIKON-ASML PATENT CROSS-LICENSE AGREEMENT
THIS NIKON-ASML PATENT CROSS-LICENSE AGREEMENT (this "AGREEMENT") is made
and entered into as of November 12, 2004 (the "EFFECTIVE DATE") by and between
ASML Holding N.V., a corporation organized under the laws of the Netherlands
("ASML"), and Nikon Corporation, a corporation organized under the laws of Japan
("NIKON"). ASML and Nikon are hereinafter also referred to collectively as the
"PARTIES" and individually as a "PARTY."
RECITALS
WHEREAS, Nikon, ASML and Zeiss SMT entered into a Memorandum of
Understanding entered into as of September 27, 2004 ("MOU"), pursuant to which
they agreed, among other things, to settle certain litigation proceedings and
grant cross-licenses of certain patent rights; and
WHEREAS, pursuant to the MOU, Nikon and ASML are entering into that
certain Nikon-ASML Settlement and Release Agreement of even date herewith (the
"NIKON-ASML SETTLEMENT AND RELEASE AGREEMENT");
NOW, THEREFORE, the Parties agree as follows:
AGREEMENT
1. DEFINITIONS; INTERPRETATION
1.1 Terms Defined in this Agreement. The following terms when used in this
Agreement shall have the following definitions:
1.1.1 "ACQUIRED PATENT" is defined in Section 1.2.7.
1.1.2 "ACQUIRING PARTY" is defined in Section 1.2.7.
1.1.3 "AFFILIATE" means, with respect to any Person, any other
Person that controls, is controlled by or is under common control with such
first Person, but only for such time as control exists. For this purpose control
of a Person means possession, directly or indirectly, of the power to direct or
cause the direction of management, business affairs or policies (whether through
ownership of securities or partnership or other ownership interests, by contract
or otherwise).
1.1.4 "AGREEMENT TERM" means the period commencing on the Effective
Date and ending on December 31, 2014.
*** Indicates certain information omitted pursuant to a request for confidential
treatment filed separately with the Securities and Exchange Commission.
1.1.5 "ARBITRATION AGREEMENT" means the Arbitration Agreement dated
as of the Effective Date by and among Nikon, ASML, Zeiss SMT, and Xxxx Zeiss.
1.1.6 "ASML LICENSED PATENTS" is defined in Section 1.2.5.
1.1.7 "ASML LICENSED PRODUCTS" is defined in Section 1.3.1
1.1.8 "ASSERTING PARTY" is defined in Section 4.2.1.
1.1.9 "XXXX ZEISS" means Xxxx Zeiss AG, a corporation organized
under the laws of Germany.
1.1.10 "CLASS A PATENT" is defined in Section 1.2.7.
1.1.11 "CLASS B PATENT" is defined in Section 1.2.8.
1.1.12 "CLASS C PATENT" is defined in Section 1.2.9.
1.1.13 "CO-OWNED" (and the correlative "CO-OWNER") is defined in
Section 1.2.11.
1.1.14 "CONVERTIBLE PATENTS" is defined in Section 1.2.3.
1.1.15 "COVERED ENTITIES" of a Party means, with respect to a
Licensed Product, the direct and indirect resellers, distributors, users and
other customers of such Licensed Product of such Party and/or its Subsidiaries,
and any Person acquiring such Licensed Product from any of the foregoing.
1.1.16 "DESIGNATED NEUTRAL" means the Xxxxxxxxx Xxxxxx Xxxxxxx, or
if he is unable or unwilling to perform the relevant function, a substitute of
comparable experience who is mutually agreeable to the Parties.
1.1.17 "DESIGNATED NIKON PATENTS" means the three (3) Patent
applications listed on Schedule E hereto.
1.1.18 "DIRECT OR INDIRECT SALE" means the sale, lease, or other
conveyance of a product by a Party or its Subsidiaries to a third Person, or the
sale, lease, or other conveyance of a product by a Party or its Subsidiaries to
another Person which in turn sells, leases, or otherwise conveys such product to
the third Person substantially in the form acquired from such Party or its
Subsidiaries.
1.1.19 "E-BEAM LITHOGRAPHY" means electron beam lithography or other
charged particle beam lithography, including direct write electron beam
lithography.
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1.1.20 "EFFECTIVE APPLICATION DATE" of a Patent application means
the earliest of (a) the filing date of such application, and (b), in the event
that such application claims priority from the filing date of an earlier filed
application or applications (including provisional applications), the earliest
(i) filing date of any of such earlier filed application or applications, and
(ii) for all of such earlier filed applications that make further priority
claims to earlier dates, the Effective Application Dates of such earlier filed
applications.
1.1.21 "ELIGIBLE NIKON PATENT FAMILY" is defined in Section 1.2.21
1.1.22 "ELIGIBLE NIKON PATENT FAMILY MEMBER" is defined in Section
1.2.22.
1.1.23 "EXCESS ASSERTION" is defined in Section 2.8.5(b).
1.1.24 "EXCLUDED CLAIM" is defined in Section 1.2.15.
1.1.25 "EXCLUDED CLAIM CRITERIA" is defined in Section 1.2.16.
1.1.26 "EXCLUDED CLAIMS LIST" is defined in Section 2.3.1.
1.1.27 "EXCLUDED GLASS METHODS" means all methods or processes for
making Excluded Glass Products described in subclauses (a) and (b) of Section
1.1.28.
1.1.28 "EXCLUDED GLASS PRODUCTS" means (a) optical material,
including glass, silica glass, crystal, and calcium fluoride crystal, but not
including optical coatings, (b) optical blanks, and (c) unfinished lenses
purchased by a Party or its Subsidiaries from third parties other than Zeiss SMT
and its Subsidiaries.
1.1.29 "EXCLUDED LITHOGRAPHY TECHNOLOGY" is defined in Section
1.2.1.
1.1.30 "EXCLUDED NIKON PATENTS" is defined in Section 1.2.20.
1.1.31 "FINALLY RESOLVED" (and the correlative, "FINAL RESOLUTION")
with respect to a Suit, means that such Suit is (a) settled and dismissed with
prejudice, (b) subject to a final judgment as to which no appeal is possible or
taken within the time permitted, or (c) is withdrawn completely by the Person
bringing such Suit.
1.1.32 "FPD/LARGE AREA SUBSTRATE LITHOGRAPHY" means lithography to
manufacture flat panel displays or expose large area substrates other than
wafers (i.e., substrates other than wafers that are greater than 500mm along any
dimension).
1.1.33 "FULL RIGHTS TERMINATION" is defined in Section 2.8.4.
1.1.34 "GLASS SUPPLIER" is defined in Section 4.2.2.
1.1.35 "GOVERNMENTAL AUTHORITY" means any: (a) nation, principality,
state, commonwealth, province, territory, county, municipality, district or
other jurisdiction of any
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nature; (b) federal, state, local, municipal, foreign or other government; (c)
governmental or quasi governmental authority of any nature (including any
governmental division, subdivision, department, agency, bureau, branch, office,
commission, council, board, instrumentality, officer, official, representative,
organization, unit, body or entity and any court or other tribunal); or (d)
individual, entity or body exercising, or entitled to exercise, any executive,
legislative, judicial, administrative, regulatory, police, military or taxing
authority or power of any nature.
1.1.36 "INDEPENDENT AUDITOR" shall have the meaning set forth in
Section 5.5.
1.1.37 "LAW" means any law, statute, legislation, constitution,
principle of common law, resolution, ordinance, code, order, edict, decree,
proclamation, treaty, convention, rule, regulation, ruling, directive,
pronouncement, requirement (licensing or otherwise), determination, decision,
opinion or interpretation that is, has been or may in the future be issued,
enacted, adopted, passed, approved, promulgated, made, implemented or otherwise
put into effect by or under the authority of any Governmental Authority.
1.1.38 "LICENSABLE CO-OWNED PATENT" is defined in Section 1.2.12.
1.1.39 "LICENSE TERM" means the period commencing on the Effective
Date and ending on December 31, 2009.
1.1.40 "LICENSED PATENTS" is defined in Section 1.2.6.
1.1.41 "LICENSED PRODUCTS" is defined in Section 1.3.3.
1.1.42 "LITHOGRAPHY" is defined in Section 1.3.4.
1.1.43 "LITHOGRAPHY EQUIPMENT" is defined in Section 1.3.5.
1.1.44 "LITHOGRAPHY PATENT" is defined in Section 1.2.2.
1.1.45 "MASKLESS LITHOGRAPHY" means Lithography in which light is
patterned using individually-controllable elements and not a reflective or
transmissive mask.
1.1.46 "MOU" shall have the meaning set forth in the recitals.
1.1.47 "NET SELLING PRICE" means the gross revenues actually
received by a Party or its Subsidiaries from Direct or Indirect Sales of a
product, less (a) normal and customary rebates, and cash and trade discounts;
(b) sales, use and/or other excise taxes or duties; (c) insurance costs and
outbound transportation charges; (d) import and/or export duties; and (e)
amounts allowed or credited due to returns (not to exceed the original billing
or invoice amount).
1.1.48 "NIKON-ASML SETTLEMENT AND RELEASE AGREEMENT" shall have the
meaning set forth in the recitals.
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1.1.49 "NIKON-ZEISS PATENT CROSS-LICENSE AGREEMENT" means that
certain Nikon-Zeiss Patent Cross-License Agreement by and between Nikon and
Zeiss SMT of even date herewith, as amended from time to time.
1.1.50 "NIKON DEFENSIVE SUIT" is defined in Section 2.8.5(a).
1.1.51 "NIKON LICENSED PATENTS" is defined in Section 1.2.4.
1.1.52 "NIKON LICENSED PRODUCTS" is defined in Section 1.3.6.
1.1.53 "OPTICAL COMPONENTS" means (a) optical elements, modules and
systems, including illumination optical systems, projection optical systems,
manipulation devices and mounting means, and (b) processes, materials and
devices for designing, manufacturing, assembling, adjusting, measuring and
qualifying such optical elements, modules and systems, in each case for
Lithography Equipment.
1.1.54 "OWNED" (and the correlative "OWNERSHIP") is defined in
Section 1.2.10.
1.1.55 "PATENTS" means all classes or types of patents (including
design patents) and utility models of all countries of the world, and
applications therefor, together with any divisionals, continuations,
continuations-in-part, reissues and results of re-examinations thereof.
1.1.56 "PAYMENTS" shall have the meaning set forth in Section 5.1.
1.1.57 "PERSON" means any person or entity, whether an individual,
corporation, partnership, limited partnership, limited liability company, trust,
foundation, unincorporated organization, business association, firm, joint
venture or other legal entity.
1.1.58 "PRACTICALLY USABLE EMBODIMENTS" shall have the meaning set
forth in Section 1.2.16.
1.1.59 "PURCHASING PARTY" shall have the meaning set forth in
Section 4.2.2(a).
1.1.60 "RESTRICTED PATENT" is defined in Section 1.2.13.
1.1.61 "RUNNING ROYALTY PAYMENTS" is defined in Section 4.2.2(b)(v).
1.1.62 "SCHEDULE D OMITTED CLAIMS" is defined in Section 1.2.18.
1.1.63 "SCHEDULE D PATENTS" is defined in Section 1.2.17.
1.1.64 "SCHEDULE D PATENT FAMILY" is defined in Section 1.2.18.
1.1.65 "SCHEDULE D PATENT FAMILY MEMBER" is defined in Section
1.2.19.
1.1.66 "SCHEDULE D RESPONSE" is defined in Section 2.8.5(c).
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1.1.67 "SCHEDULE D SUIT" is defined in Section 2.8.5(c).
1.1.68 "SPECIAL MASK TECHNOLOGY" means (i) a pattern on a mask
having a modified shape (as compared to the desired shape of the pattern to be
printed on the substrate), where such modification is made for the purpose of
forming a circuit pattern onto a substrate ("SPECIAL PATTERN"); (ii) a mask with
a Special Pattern, modified transmittance (as compared to a binary mask) or
modified phase (as compared to a binary mask), where such modification is made
for the purpose of forming a circuit pattern onto a substrate ("SPECIAL MASK");
(iii) a method of exposing a substrate using a Special Mask; (iv) a method of
manufacturing a semiconductor chip using a Special Mask; (v) a method of
manufacturing a Special Mask; or (vi) data processing hardware, software,
methods or processes used to analyze, simulate, predict, generate or modify
pattern data used on a Special Mask.
1.1.69 "SPECIFICALLY DIRECTED TO" shall have the meaning set forth
in Section 1.2.16.
1.1.70 "SPECIFIED ENTITY" shall mean the Person listed in Schedule
F.
1.1.71 "SPECIFIED ENTITY SUIT" is defined in Section 2.8.5(a).
1.1.72 "SUBLICENSABLE" is defined in Section 1.2.14.
1.1.73 "SUBLICENSOR" is defined in Section 1.2.14.
1.1.74 "SUBSIDIARY" of a Person means any other Person with respect
to which such first Person has beneficial ownership, directly or indirectly, of
securities representing more than fifty percent (50%) of the power to elect such
other Person's board of directors or other managing authority or, in the case of
a non-corporate Person, equivalent interests.
1.1.75 "XXX" means (a) to threaten, bring, or participate in any
legal or equitable action, claim or demand in any court or before any tribunal
or any arbitration or compulsory and binding alternative dispute resolution
proceeding, either directly or indirectly, or (b) to instruct, request,
encourage, or assist any designee, agent, nominee or other third party to do the
same, unless legally compelled to do so by a valid subpoena or court order which
the recipient has opposed by all reasonable means. "Xxx" shall not be construed
to include offers to license Patents in connection with cross-license or other
license negotiations.
1.1.76 "SUIT" means any legal or equitable action, claim or demand
in any court or before any tribunal or any arbitration or compulsory and binding
alternative dispute resolution proceeding, or any threat thereof, but not
including offers to license Patents in connection with cross-license or other
license negotiations.
1.1.77 "TRANSACTION AGREEMENTS" is defined in Section 10.6.
1.1.78 "TRANSFER" shall have the meaning set forth in Section 9.3.
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1.1.79 "TRANSFEREE" shall have the meaning set forth in Section 9.3.
1.1.80 "TRANSITION PERIOD" means the period beginning upon the end
of the License Term and ending at the end of the Agreement Term.
1.1.81 "WITHHOLDINGS" shall have the meaning set forth in Section
5.2.
1.1.82 "ZEISS SMT PAYMENTS" shall have the meaning set forth in
Section 8.2.2.
1.1.83 "ZEISS SMT" means Xxxx Zeiss SMT AG, a corporation organized
under the laws of Germany.
1.2 Additional Definitions Relating to Licensed Patents.
1.2.1 "EXCLUDED LITHOGRAPHY TECHNOLOGY" means each of E-Beam
Lithography, FPD/Large Area Substrate Lithography, and Maskless Lithography.
1.2.2 "LITHOGRAPHY PATENT" means any Patent (a) that either (i)
issues from an application having an Effective Application Date on or before
December 31, 2002, or (ii) issues on or before December 31, 2014 from an
application having an Effective Application Date after December 31, 2002, and
(b) has one or more claims, other than Excluded Claims, which read on
Lithography Equipment or the manufacture or use thereof. For purposes of Section
6.3 only, a Patent application shall not constitute a "Lithography Patent"
unless and until such Patent application is published.
1.2.3 "CONVERTIBLE PATENTS" means, with respect to Patents of a
Party or its Subsidiaries, (i) Class B Patents that are Licensed Patents of such
Party, and (ii) any Class C Patents of such Party.
1.2.4 "NIKON LICENSED PATENTS" means all Class A Patents and Class B
Patents Owned or Sublicensable by Nikon or its Subsidiaries, excluding any
Excluded Claims thereof and excluding, subject to Section 2.8.3, all Excluded
Nikon Patents.
1.2.5 "ASML LICENSED PATENTS" means all Class A Patents and Class B
Patents Owned or Sublicensable by ASML or its Subsidiaries, excluding any
Excluded Claims thereof.
1.2.6 "LICENSED PATENTS" means the ASML Licensed Patents or the
Nikon Licensed Patents, as applicable. For purposes of this Agreement, the
Licensed Patents "of" ASML and/or its Subsidiaries means the ASML Licensed
Patents and the Licensed Patents "of" Nikon and/or its Subsidiaries means the
Nikon Licensed Patents, and the Licensed Patents "of" a Party and/or its
Subsidiaries means the ASML Licensed Patents and/or the Nikon Licensed Patents,
as applicable.
1.2.7 "CLASS A PATENT" means (a) a Patent that issues at any time
(whether before or after the end of the License Term) from an application having
an Effective Application
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Date on or before December 31, 2002, and (b) a Convertible Patent that is
converted by a Party pursuant to and in accordance with Section 2.5.
Notwithstanding subsection (a) above, a Patent of a Party that is purchased or
otherwise acquired by such Party ("ACQUIRING PARTY") from a third party (other
than an Affiliate of such Party), whether by assignment, merger, acquisition of
assets or otherwise, after the Effective Date, and that otherwise qualifies as a
Licensed Patent ("ACQUIRED PATENT"), shall be deemed to be a Class B Patent and
not a Class A Patent, regardless of its Effective Application Date (unless such
Patent is converted to a Class A Patent by a Party in accordance with Section
2.5); provided, however, that this sentence shall not apply to any Schedule D
Patent Family Member or any Patent that the Specified Entity or any of its
Affiliates has or had an obligation to assign to ASML or any of its
Subsidiaries. Notwithstanding anything to the contrary in this Section 1.2.7, if
(i) the Acquired Patent issues with the Acquiring Party being identified on the
face of the Acquired Patent or by patent office records as the initial owner or
assignee of record of such issued Acquired Patent, and (ii) such Acquired Patent
qualifies as a Class A Patent by virtue of its Effective Application Date, then
such issued Acquired Patent shall be deemed a Class A Patent unless the
Acquiring Party provides express written notice to the other Party that such
Patent is an Acquired Patent within three (3) months of the issuance of such
Acquired Patent.
1.2.8 "CLASS B PATENT" means (a) a Patent that issues on or before
the end of the License Term from an application having an Effective Application
Date after December 31, 2002, excluding (b) any such Patent that is converted to
a Class A Patent by a Party pursuant to and in accordance with Section 2.5.
Notwithstanding subsection (a) above, an Acquired Patent shall be deemed to be a
Class B Patent and not a Class A Patent, regardless of its Effective Application
Date (unless such Patent is converted to a Class A Patent by a Party in
accordance with Section 2.5); provided, however, that this sentence shall not
apply to any Schedule D Patent Family Member or any Patent that the Specified
Entity or any of its Affiliates has or had an obligation to assign to ASML or
any of its Subsidiaries. Notwithstanding anything to the contrary in this
Section 1.2.8, if (i) the Acquired Patent issues with the Acquiring Party being
identified on the face of the Acquired Patent or by patent office records as the
initial owner or assignee of record of such issued Acquired Patent, and (ii)
such Acquired Patent qualifies as a Class A Patent by virtue of its Effective
Application Date, then such issued Acquired Patent shall be deemed a Class A
Patent unless the Acquiring Party provides express written notice to the other
Party that such Patent is an Acquired Patent within three (3) months of the
issuance of such Acquired Patent.
1.2.9 "CLASS C PATENT" means a Patent having an Effective
Application Date after December 31, 2002 and issuing during the Transition
Period that would be an ASML Licensed Patent or Nikon Licensed Patent, as
applicable, had such Patent issued on or before the end of the License Term.
1.2.10 "OWNED" (and the correlative "OWNERSHIP") means, with respect
to a Patent of a Person, (a) a Patent that is solely assigned to and/or solely
owned by such Person (without regard to rights that employees may have in
inventions that they develop while employed by a Party, such as, for example,
the right to receive monetary compensation or assert
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preemptive rights), or (b) a Licensable Co-Owned Patent. A Patent shall not be
deemed "Owned" by the applicable Party to the extent and as long as it is a
Restricted Patent.
1.2.11 "CO-OWNED" (and the correlative "CO-OWNERS") means, with
respect to a Patent, a Patent that has been assigned to two or more Persons or
in which two or more Persons have an ownership interest.
1.2.12 "LICENSABLE CO-OWNED PATENT" means (a) a Patent that is
Co-Owned by a Party or its Subsidiaries and all other Co-Owners of which are
Affiliates of such Party or its Subsidiaries, (b) a Patent that is Co-Owned by
ASML and/or its Subsidiaries and all other Co-Owners of which are Zeiss SMT
and/or its Subsidiaries, and (c) a Patent that is Co-Owned by a Party or its
Subsidiaries and where any other Co-Owner is a third party (other than an
Affiliate of such Party) as to which, and only to the extent and for such time
as, and subject to the conditions under which, such Party or its Subsidiaries
have the right to grant licenses, immunities, and additional commitments within
the scope of the licenses and immunities granted under this Agreement (i)
without such grant requiring consent of any such third party, or (ii), where
such grant requires consent of any such third party or parties, if and to the
extent such consent is or has been granted by all such third parties.
1.2.13 "RESTRICTED PATENTS" means (a) any Patent that (i) is listed
on Schedule B-1 or Schedule C-1, as applicable (as initially attached hereto,
and not as such Schedules may be amended pursuant to Section 6.5 or otherwise),
or (ii) is published after the Effective Date and results from activities funded
by a Governmental Authority, in each case where the license of such Patent to
third parties is generally prohibited under applicable Law or the applicable
contract with such Governmental Authority in accordance with the standard
procedures of such Governmental Authority, but only as long as such prohibition
shall remain in force and effect, and (b) any Patent that is (i) Co-Owned by a
Party or its Subsidiaries and one or more third parties, and (ii) not a
Licensable Co-Owned Patent, but only as long as, and solely to the extent that,
it is not a Licensable Co-Owned Patent.
1.2.14 "SUBLICENSABLE" means, with respect to a Patent licensed or
sublicensed to a Party or any of its Subsidiaries (as applicable, the
"SUBLICENSOR"), a Patent as to which, and only to the extent and for such time
as, and subject to the conditions under which, the Sublicensor has the right to
grant licenses or sublicenses, and extend immunities and additional commitments,
to the other Party and its Subsidiaries and their respective Covered Entities
within the scope of the licenses, immunities, and additional commitments granted
or made under this Agreement without such grant resulting in the payment of
royalties or other payments to third parties, except for payments (i) relating
to the prosecution or maintenance of Patents, (ii) to Affiliates of the
Sublicensor, or (iii) to Persons for inventions made by such Persons while
employees or contractors of the Sublicensor.
1.2.15 "EXCLUDED CLAIM" means any Patent claim that:
(a) is contained on the Excluded Claims List, unless and until
such Patent claim ceases to meet the Excluded Claim Criteria as set forth in
Section 2.3.2; or
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(b) is not contained on the Excluded Claims List, but meets
the Excluded Claim Criteria, but only for so long as such Patent claim meets the
Excluded Claim Criteria; or
(c) reads only on Excluded Glass Products or Excluded Glass
Methods (provided that Patent claims reading only on unfinished lenses shall
constitute Excluded Claims solely with respect to unfinished lenses purchased by
a Party or its Subsidiaries from third parties other than Zeiss SMT and its
Subsidiaries); or
(d) includes any Special Mask Technology as a required element
that is material to the patentability of such claim.
1.2.16 "EXCLUDED CLAIM CRITERIA" with respect to a Patent claim
shall be deemed met if such Patent claim is Specifically Directed To equipment
or methods for an Excluded Lithography Technology. A Patent claim shall be
deemed to be "SPECIFICALLY DIRECTED TO" equipment or methods for an Excluded
Lithography Technology if, and only for so long as,
(i) the embodiments of the Patent claim that are practically usable in a
commercial setting ("PRACTICALLY USABLE EMBODIMENTS") encompass only equipment
or methods for any one or more Excluded Lithography Technologies, and
(ii) the Patent claim contains one or more limitations by reason of which
the Practically Usable Embodiments of the Patent claim encompass only equipment
or methods for the Excluded Lithography Technology and that are material to the
patentability of the Patent claim;
provided that:
(A) actual use in a commercial setting is not required for an embodiment
of a Patent claim to qualify as a Practically Usable Embodiment,
(B) an embodiment of a Patent claim is not a Practically Usable Embodiment
outside the Excluded Lithography Technology if it does not have practical
utility as an improvement upon, or alternative solution to, existing technology
other than the Excluded Lithography Technology,
(C) no Patent claim that covers actual and bona fide commercial
Lithography Equipment or Lithography methods, anywhere in the world from any
source, other than equipment or methods for an Excluded Lithography Technology,
shall qualify as an Excluded Claim, and
(D) if a dependent claim of a Patent depends from another claim of such
Patent that does not qualify as an Excluded Claim, such dependent claim shall
not qualify as an Excluded Claim simply by virtue of the fact that it recites an
Excluded Lithography Technology.
It is the Parties' intent to exclude only Patent claims in which the "heart of
the invention" of such Patent claim is practically usable only in equipment or
methods for an Excluded Lithography
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Technology.
The Parties anticipate that, in preparing the Excluded Claims List, they may
develop ideas for clarifying the Excluded Claim Criteria for whether certain
types of Patent claims should qualify as Excluded Claims. Accordingly, upon
completion of the Excluded Claims List, the Parties will revisit and negotiate
clarifications to such Excluded Claim Criteria in good faith, and if the Parties
agree on any such clarifications (each in its sole discretion), they will amend
the Excluded Claim Criteria to implement such clarifications.
1.2.17 "SCHEDULE D PATENTS" means the Patents listed on Schedule D
hereto.
1.2.18 "SCHEDULE D PATENT FAMILY" means, with respect to a Schedule
D Patent, collectively, such Schedule D Patent and (i) any Patents claiming
priority from such Schedule D Patent, but excluding claims of such Patents that
are not entitled to claim priority from such Schedule D Patent, and (ii) any
Patents from which such Schedule D Patent claims priority, but excluding claims
of such Patents that are not supported by such Schedule D Patent. The excluded
claims described in subclauses (i) and (ii) hereof, together with any Excluded
Claims of any Schedule D Patent Family Member, are referred to as "SCHEDULE D
OMITTED CLAIMS". For the avoidance of doubt, it is understood that there shall,
subject to reduction pursuant to Section 2.8.3, be three Schedule D Patent
Families, one based on each of the three Schedule D Patents.
1.2.19 "SCHEDULE D PATENT FAMILY MEMBER" means, with respect to any
Schedule D Patent Family, separately, each Patent in such Schedule D Patent
Family (excluding any Schedule D Omitted Claims thereof).
1.2.20 "EXCLUDED NIKON PATENTS" means issued Eligible Nikon Patent
Family Members that are designated by Nikon as set forth in Section 2.8.1.
1.2.21 "ELIGIBLE NIKON PATENT FAMILY" means, with respect to a
Designated Nikon Patent, collectively, such Designated Nikon Patent and (i) any
Patents claiming priority from such Designated Nikon Patent, but excluding
claims of such Patents that are not entitled to claim priority from such
Designated Nikon Patent, and (ii) any Patents from which such Designated Nikon
Patent claims priority, but excluding claims of such Patents that are not
supported by such Designated Nikon Patent. For the avoidance of doubt, it is
understood that there shall, subject to reduction pursuant to Section 2.8.3, be
three Eligible Nikon Patent Families, one based on each of the three Designated
Nikon Patents.
1.2.22 "ELIGIBLE NIKON PATENT FAMILY MEMBER" means, with respect to
any Eligible Nikon Patent Family, separately, each Patent in such Eligible Nikon
Patent Family.
1.3 Additional Definitions Relating to Licensed Products.
1.3.1 "ASML LICENSED PRODUCTS" means Lithography Equipment and all
applications therefor, but excluding Optical Components until the occurrence of
a Licensed Product Expansion, at which time the term "ASML Licensed Products"
shall automatically be
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deemed to mean "Lithography Equipment and all applications therefor, including
Optical Components" for all purposes hereunder, including the license grants in
Section 2.1, as more fully described in, and subject to the conditions set forth
in, Section 2.10. For purposes of clarity, "ASML Licensed Products" shall in all
events include ASML's products within the following product families, as and in
the form marketed by ASML as of the Effective Date: TwinScan, PAS, MicraScan and
Micralign series, including components thereof, as described in Section 1.3.5,
other than Optical Components as long as they are not ASML Licensed Products
pursuant to this Section 1.3.1.
1.3.2 "LICENSED PRODUCT EXPANSION" shall have the meaning set forth
in Section 2.10.
1.3.3 "LICENSED PRODUCTS" means the ASML Licensed Products or the
Nikon Licensed Products, as applicable.
1.3.4 "LITHOGRAPHY" means exposing a resist using optical (photons)
projection means (including extreme ultraviolet) or particle (including electron
beam) projection means.
1.3.5 "LITHOGRAPHY EQUIPMENT" means, individually and collectively,
any tool or machine for transferring a pattern onto a substrate by Lithography,
for use in the fabrication of integrated circuits, thin film heads, flat panel
displays, micromachines, and other applications with similar requirements
(including (i) separately installed components of such tool or machine, (ii) any
components integrated in such tool or machine, (iii) materials for use in, and
solely to the extent they are for use in, the operation of such tool or machine,
such as fluids and gases, and (iv) any software used to operate or control such
tool or machine), including where such tool or machine uses and/or incorporates
masks, or uses, incorporates and/or processes resists or substrates, including
wafers, provided that "Lithography Equipment" shall not include masks, resists,
or such substrates themselves.
1.3.6 "NIKON LICENSED PRODUCTS" means Lithography Equipment and all
applications therefor, including Optical Components. For purposes of clarity,
"Nikon Licensed Products" shall in all events include Nikon's products within
the following product families, as and in the form marketed by Nikon as of the
Effective Date: NSR series and FX series.
1.4 Interpretation.
1.4.1 Certain Terms. The words "hereof," "herein," "herewith,"
"hereunder" and similar words refer to this Agreement as a whole and not to any
particular provision of this Agreement. The term "including" is not limited and
means "including without limitation."
1.4.2 Section References; Titles and Subtitles. Unless otherwise
noted, all references to Sections and Schedules herein are to Sections and
Schedules of this Agreement. The titles, captions and headings of this Agreement
are inserted for convenience of reference only and are not intended to be a part
of or to affect the meaning or interpretation of this Agreement.
12
1.4.3 Reference to Persons, Agreements, Statutes. Unless otherwise
expressly provided herein, (a) references to a Person include its successors and
permitted assigns, (b) references to agreements (including this Agreement) and
other contractual instruments shall be deemed to include all subsequent
amendments, restatements and other modifications thereto or supplements thereof
and (c) references to any statute or regulation are to be construed as including
all statutory and regulatory provisions consolidating, amending, replacing,
supplementing or interpreting such statute or regulation.
1.4.4 Further Negotiations. Any reference in this Agreement to
subsequent meetings, discussions, or negotiations between the Parties shall be
interpreted to include an obligation of the Parties to conduct such meetings,
discussions, or negotiations in good faith.
2. LICENSE GRANTS
2.1 Grant to ASML. Nikon on behalf of itself and its Subsidiaries,
hereby grants to ASML and its Subsidiaries, under the Nikon Licensed Patents,
retroactive to the Effective Application Date of each Nikon Licensed Patent, a
non-exclusive, non-sublicensable (provided that this restriction on sublicensing
shall not limit or otherwise affect the immunities and additional commitments
set forth in Sections 3 and 4), non-transferable (except as set forth in Section
9.1) license to (a) make, use (including use with patterns or masks for
processing substrates such as wafers), sell, offer to sell, import, export,
lease and otherwise convey ASML Licensed Products anywhere in the world, (b)
have ASML Licensed Products made by their suppliers anywhere in the world,
provided that such ASML Licensed Products (i) are made by such suppliers in
accordance with specifications provided by, or agreed upon with, ASML or any of
its Subsidiaries, and (ii) are not "off the shelf" products offered for sale,
lease, or other conveyance to Persons other than ASML or its Subsidiaries, (c)
practice any method or process anywhere in the world in connection with the
design, manufacture, installation, assembly, operation, adjustment, measurement,
qualification, maintenance, support, repair, or diagnosis of ASML Licensed
Products designed, made, used and/or sold under this Section 2.1, and (d) make,
have made, and use any tool, software, machine, or other apparatus anywhere in
the world in connection with the design, manufacture, installation, assembly,
operation, adjustment, measurement, qualification, maintenance, support, repair,
or diagnosis of ASML Licensed Products designed, made, used and/or sold under
this Section 2.1. Notwithstanding the foregoing, to the extent that the licenses
granted in this Section 2.1 include a sublicense under any third party rights,
such sublicense shall not exceed in scope the license granted to Nikon by the
applicable third party licensor or the rights that Nikon is otherwise authorized
to sublicense under any agreement with such third party licensor.
2.2 Grant to Nikon. ASML, on behalf of itself and its Subsidiaries,
hereby grants to Nikon and its Subsidiaries, under the ASML Licensed Patents,
retroactive to the Effective Application Date of each ASML Licensed Patent, a
non-exclusive, non-sublicensable (provided that this restriction on sublicensing
shall not limit or otherwise affect the immunities and additional commitments
set forth in Sections 3 and 4), non-transferable (except as set forth in Section
9.1) license to (a) make, use (including use with patterns or masks for
processing
13
substrates such as wafers), sell, offer to sell, import, export, lease and
otherwise convey Nikon Licensed Products anywhere in the world, (b) have Nikon
Licensed Products made by their suppliers anywhere in the world, provided that
such Nikon Licensed Products (i) are made by such suppliers in accordance with
specifications provided by, or agreed upon with, Nikon or any of its
Subsidiaries, and (ii) are not "off the shelf" products offered for sale, lease,
or other conveyance to Persons other than Nikon and its Subsidiaries, (c)
practice any method or process anywhere in the world in connection with the
design, manufacture, installation, assembly, operation, adjustment, measurement,
qualification, maintenance, support, repair, or diagnosis of Nikon Licensed
Products designed, made, used, and/or sold under this Section 2.2, and (d) make,
have made, and use any tool, software, machine, or other apparatus anywhere in
the world in connection with the design, manufacture, installation, assembly,
operation, adjustment, measurement, qualification, maintenance, support, repair,
or diagnosis of Nikon Licensed Products designed, made, used and/or sold under
this Section 2.2. Notwithstanding the foregoing, to the extent that the licenses
granted in this Section 2.2 include a sublicense under any third party rights,
such sublicense shall not exceed in scope the license granted to ASML by the
applicable third party licensor or the rights that ASML is otherwise authorized
to sublicense under any agreement with such third party licensor.
2.3 Excluded Claims List.
2.3.1 Creation. Within sixty (60) days of the Effective Date, the
Parties will attempt to agree on a list of Patent claims for each Excluded
Lithography Technology that will be excluded from the Licensed Patents (as so
agreed or as finalized by the Designated Neutral, the "EXCLUDED CLAIMS LIST").
The Excluded Claims List will only include Patent claims that are contained in
Patents nominated by each Party as follows: for each Excluded Lithography
Technology, each Party may nominate claims from no more than five (5)
English-language Patents, provided that for the purposes of the foregoing, a
Patent and all of its counterparts and its continuation, divisional, and
continuation-in-part applications will be counted as a single Patent. If the
Parties are unable to agree on the Excluded Claims List within sixty (60) days
of the Effective Date, the Designated Neutral will have the authority to
finalize the Excluded Claims List by including on the list all Patent claims
nominated by the Parties for each Excluded Lithography Technology (as described
above) that qualify as Excluded Claims pursuant to Sections 1.2.15 and 1.2.16,
and omitting from the Excluded Claims List all such Patent claims that do not
qualify as Excluded Claims pursuant to Sections 1.2.15 and 1.2.16. The Excluded
Claims List, with the entries agreed to by the Parties, and, as applicable,
finalized by the Designated Neutral, shall be incorporated into this Agreement
as Schedule A.
2.3.2 Significance of Inclusion. Inclusion of a Patent claim on the
Excluded Claims List will constitute a binding determination that such Patent
claim is an Excluded Claim, unless and until such Patent claim ceases to meet
the Excluded Claim Criteria because of changed circumstances (such as, for
example, the subsequent emergence or awareness of a practical use of an
embodiment of such Patent claim in a commercial setting other than for an
Excluded Lithography Technology).
14
2.3.3 Significance of Non-Inclusion. For purposes of clarification:
(a) the Excluded Claims List will be deemed exemplary and will not constitute an
exhaustive list of the Excluded Claims for any Excluded Lithography Technology
nor will the failure to nominate a Patent claim for the list be deemed an
admission that the claim is not an Excluded Claim; and (b) a Patent claim that
does not appear on the Excluded Claims List will be an Excluded Claim if (and
for so long as) it qualifies as an Excluded Claim pursuant to Sections 1.2.15
and 1.2.16, whether or not such Patent claim was in existence at the time of the
creation of the Excluded Claims List.
2.3.4 Process for Removing Claims from Excluded Claims List. If a
Party believes that a Patent claim, whether of such Party or of the other Party,
that is included in the Excluded Claims List has ceased to meet the Excluded
Claim Criteria because of changed circumstances as described in Section 2.3.2,
such Party shall notify the other Party in writing of such belief and, subject
to existing confidentiality obligations, the basis therefor. If the other Party
agrees in writing that such Patent claim should no longer be included within the
Excluded Patent Claims List, such Patent claim shall be deemed to be removed
from the Excluded Claims List for all purposes hereunder. If the other Party
does not so agree within thirty (30) days after its receipt of such notice, the
Parties shall, at the request of either Party, resolve the matter under the
Arbitration Agreement.
2.4 Inquiries as to Patents. In the event that a third party Sues a Party
or its Subsidiary and alleges or asserts that such Party has infringed, or
invites such Party to license, any one or more issued Patents of such third
party, or if a Party is otherwise actively engaged in licensing negotiations
with a third party with respect to any one or more issued Patents (each a
"PATENT IN DISPUTE"), such Party may request that the other Party confirm
whether each such Patent in Dispute is included within the Licensed Patents
(whether as an Owned Patent, a Sublicensable Patent or a Licensable Co-Owned
Patent) of such other Party hereunder (a "LICENSE INQUIRY"). License Inquiries
shall be in writing and shall set forth the identity of the applicable third
party and each Patent in Dispute. With respect to each License Inquiry, the
responding Party will inform the inquiring Party (a) if the Patent in Dispute is
a Licensed Patent of such responding Party, and (b) if so, the scope of the
rights thereunder, if any, to grant and extend the licenses, immunities, and
additional commitments granted and extended hereunder. If, after responding to
any License Inquiry, the responding Party becomes aware of any inaccuracy in the
response to a License Inquiry provided to the other Party, the responding Party
will, as its sole obligation or liability for any such failure, promptly notify
the other Party and provide a corrected response.
2.5 Conversion of Class B Patents To Class A Patents.
2.5.1 At any time from the Effective Date until six (6) months after
the end of the Agreement Term, each Party shall have the right to designate up
to five (5) Convertible Patents of the other Party to be converted into Class A
Patents, in which case such designated Convertible Patents, together with all
Patents anywhere in the world that issue from or claim priority to either the
application that issued as the designated Convertible Patent or any
15
application or applications from which the designated Convertible Patent claims
priority, including all counterparts (including foreign counterpart Patents),
divisionals, continuations, continuations-in-part, reissues and results of
re-examinations thereof ("RELATED PATENTS"), shall be deemed Class A Patents
effective as of and retroactive to the Effective Application Date of such
Convertible Patent (or, if earlier, the earliest Effective Application Date
among the Related Patents thereof) for all purposes of this Agreement (including
the respective licenses and immunities). For the avoidance of doubt, such
retroactive effect shall also apply with respect to Related Patents that issue
after such conversion.
2.5.2 Notwithstanding the period described in the first clause of
Section 2.5.1, in the event a Party designates a Convertible Patent of the other
Party to be converted into a Class A Patent (the "INITIALLY DESIGNATED PATENT")
and the other Party is of the opinion that such Initially Designated Patent
would, in whole or in part, not be a Licensed Patent of such other Party if it
were a Class A Patent (e.g., because such Patent is not Owned or Sublicensable
or to the extent it includes Excluded Claims), then such other Party shall
promptly notify such first Party thereof. If the Parties agree that such
Initially Designated Patent would not be a Licensed Patent of such other Party
if it were a Class A Patent, then such first Party shall have the right, within
six (6) months of such agreement, to designate another Convertible Patent (the
"SUBSEQUENTLY DESIGNATED PATENT") to be converted into a Class A Patent in lieu
of such Initially Designated Patent as to which Subsequently Designated Patent
the Parties agree that it would be a Licensed Patent of such other Party if it
were a Class A Patent. If the Parties do not so agree with respect to the
Initially Designated Patent or the Subsequently Designated Patent, they shall
resolve such dispute pursuant to the Arbitration Agreement. If it is determined
in such arbitration that such Initially Designated Patent or Subsequently
Designated Patent would not be a Licensed Patent of such other Party if it were
a Class A Patent, then such first Party shall provide in such arbitration
proceedings a list, in order of preference, of Convertible Patents to be
converted into a Class A Patent in lieu of such Initially Designated Patent or
Subsequently Designated Patent and the first of such Patents, if any, with
respect to which it is determined in such arbitration proceedings that it would
be a Licensed Patent of the other Party if it were a Class A Patent shall be
finally converted into a Class A Patent pursuant to Section 2.5.1 in lieu of
such Initially Designated Patent or Subsequently Designated Patent. If no
Convertible Patent on such list is determined to meet such requirements, such
Party may not convert any Convertible Patent into a Class A Patent in lieu of
such Initially Designated Patent or Subsequently Designated Patent.
2.6 Pre-Issuance Damages. To the extent, if any, that under applicable law
a Party has or its Subsidiaries have a right to claim damages or seek other
remedies with respect to activities of the other Party, its Subsidiaries, or its
or their respective Covered Entities or third party suppliers making Licensed
Products for such other Party as permitted under Sections 2.1 or 2.2, as
applicable, occurring prior to the issuance of a Patent with respect to such
Patent, each Party hereby waives and agrees not to assert such rights under
Patents issuing after the License Term and having an Effective Application Date
after December 31, 2002 and that would have been Licensed Patents of such Party
had they issued prior to the end of the License Term, but only with respect to
activities occurring prior to the end of the License Term that would have
16
been licensed or immune from suit under this Agreement if such Patent were a
Licensed Patent, and only for the period ending upon the end of the License
Term.
2.7 Restricted Patents.
2.7.1 Covenant Not to Xxx.
(a) Each Party covenants, to the extent not precluded by
contractual obligations that exist as of the Effective Date, that it shall not,
and shall cause its Subsidiaries not to, and shall not grant consent to, or
otherwise assist, encourage, or permit, any Co-Owner of any Restricted Patent to
Xxx the other Party or its Subsidiaries, or their respective third party
suppliers making Licensed Products or Optical Components (but, in the case of
ASML being such other Party, only as long as ASML has a sublicense from Zeiss
SMT under the Nikon-Zeiss Patent Cross-License Agreement, unless Optical
Components are ASML Licensed Products following a Licensed Product Expansion)
for such Party as permitted under Sections 2.1 or 2.2, as applicable, for direct
or indirect infringement (including for inducement of infringement or
contributory infringement) of any Restricted Patent (excluding any Excluded
Claims thereof) based on activities that would be covered by such Party's
license under Sections 2.1 or 2.2 or sublicense pursuant to and in accordance
with the Nikon-Zeiss Patent Cross-License Agreement, as and if applicable, if
such Restricted Patent were a Licensed Patent of such covenanting Party. Such
covenant shall last perpetually (i) with respect to Class A Patents, and (ii)
under Restricted Patents that are Class B Patents and Restricted Patents that
would be Class C Patents if they were Owned by the covenanting Party, with
respect to activities of the other Party occurring prior to the end of the
License Term that would be covered by the other Party's license under Sections
2.1, 2.2, or 2.3, as applicable, if such Restricted Patents were Licensed
Patents of the covenanting Party.
(b) Each Party covenants, to the extent not precluded by
contractual obligations that exist as of the Effective Date, that Sections 3.1,
3.2, 3.3, 4.2, and 4.3 shall apply to Restricted Patents to the same extent and
in the same manner and the same time periods as if such Restricted Patents were
Owned by such covenanting Party.
2.7.2 Consent to License. Subject to Section 2.7.3, each Party
hereby grants its consent to a license to the other Party of the full scope of
the licenses granted to such other Party under this Agreement under any
Restricted Patent of such Party, provided, however, that such grant does not
result in any payment obligations by such first Party to any Co-Owner of such
Restricted Patent, other than payments relating to prosecution or maintenance of
Patents.
2.7.3 No Obligation to Seek Consent. Notwithstanding anything to the
contrary in this Agreement, neither Party shall have any obligation to seek or
obtain consent from any Co-Owner of any Restricted Patent with respect to a
grant of any license or immunity under such Restricted Patent.
2.7.4 No Circumvention. Neither Party nor its respective
Subsidiaries shall make any sale, assignment, transfer, or other conveyance or
transaction (i) with respect to any
17
Lithography Patent that is a Licensed Patent Owned by such Party that would
result in such Licensed Patent becoming a Restricted Patent, and (ii), solely
during the Transition Period, with respect to any Lithography Patent that is a
Class B Patent or a Class C Patent Owned by such Party that would result in such
Lithography Patent becoming a Restricted Patent during the Transition Period..
2.8 Excluded Nikon Patents.
2.8.1 Designation. Nikon shall be entitled to designate, from time
to time and at any time, in a writing provided to ASML and Zeiss SMT, issued
Eligible Nikon Patent Family Members to be included in the Excluded Nikon
Patents, provided that (a) the total number of Excluded Nikon Patents shall not
exceed, at any time, the total number of issued Schedule D Patent Family
Members, and (b) the number of Excluded Nikon Patents issued in any one country
shall not exceed, at any time, the number of Schedule D Patent Family Members
issued in the same country, provided that, for purposes of the foregoing, the
European Community and all of its member states shall collectively be deemed to
constitute "one country." Nikon shall be entitled to designate issued Eligible
Nikon Patent Family Members to be included within the Excluded Nikon Patents in
accordance with the foregoing, but Nikon shall not be entitled to subsequently
change any such designation. For purposes of clarity, (i) no Eligible Nikon
Patent Family Member shall be deemed to be an Excluded Nikon Patent unless and
until such Patent is designated by Nikon as an Excluded Nikon Patent pursuant to
and in accordance with this Section 2.8.1, and (ii) Nikon may pre-designate a
Patent pursuant to the foregoing at any time, including, for example, Patent
applications, provided that a Patent application shall not constitute an
Excluded Nikon Patent unless and until a Patent or Patents issue from such
application, at which time each such pre-designated issued Patent shall, as
designated or, if not otherwise designated, in the order of issuance, and
subject to the limitations set forth in subclauses (a) and (b) of this Section
2.8.1, constitute an Excluded Nikon Patent.
2.8.2 No License. Subject to Section 2.8.3, nothing in this
Agreement, nor the activities of the Parties under or in connection with this
Agreement, including, without limitation, the sale of any Licensed Product,
shall be construed to grant or otherwise convey or provide any right, license,
immunity, or other defense, whether directly, by implication, estoppel, or
otherwise, under any Excluded Nikon Patents to ASML or its Subsidiaries or any
third party acquiring Licensed Products or other products from ASML or its
Subsidiaries.
2.8.3 Schedule D Patents.
(a) When and if, and as long as, at least all claims other
than Schedule D Omitted Claims of all Patents within any one Schedule D Patent
Family either (a) become Owned or Sublicensable by ASML or its Subsidiaries,
such that they are included within the ASML Licensed Patents, and/or (b) expire
or are invalidated or abandoned, such that they are permanently not enforceable,
then Nikon or ASML (as determined pursuant to Section 2.8.3(b) below) shall
select one Eligible Nikon Patent Family (including all Eligible Nikon Patent
Family Members therein), excluding any Excluded Claims of any such Patents,
which (i) shall be deemed to be included within the Nikon Licensed Patents,
retroactive to the Effective
18
Application Date of such Patents, for all purposes hereunder (including the
licenses, immunities and additional commitments granted or extended hereunder),
and (ii) shall not be deemed to be, or designable as, Excluded Nikon Patents as
long as at least all claims other than Schedule D Omitted Claims of all Patents
within the corresponding Schedule D Patent and Schedule D Patent Family Members
thereof remain (A) Owned or Sublicensable by ASML or its Subsidiaries or (B)
subject to all the licenses, immunities, and additional commitments granted and
extended by ASML and its Subsidiaries hereunder.
(b) On the first occasion that the condition set forth in
Section 2.8.3(a) above occurs with respect to any one Schedule D Patent Family,
Nikon shall be entitled to select, and shall select, the first Eligible Nikon
Patent Family to be included in the Nikon Licensed Patents as set forth in
Section 2.8.3(a). On the occasion that the condition set forth in Section
2.8.3(a) above occurs with respect to a second Schedule D Patent Family, ASML
shall be entitled to select, and shall select, the second Eligible Nikon Patent
Family to be included in the Nikon Licensed Patents as set forth in Section
2.8.3(a). Each Party shall make the selection described in this Section 2.8.3(b)
in a writing provided to the other Party and Zeiss SMT no later than thirty (30)
days following ASML's notification to Nikon and Zeiss SMT that the condition set
forth in Section 2.8.3(a) has occurred. On the occasion that the condition set
forth in Section 2.8.3(a) occurs with respect to the remaining Schedule D Patent
Family, the remaining Eligible Nikon Patent Family shall automatically be
included in the Nikon Licensed Patents as set forth in Section 2.8.3(a).
(c) During the life of the Eligible Nikon Patent Family
Members, except while such Patents are included in the Nikon Licensed Patents as
provided under this Section 2.8.3, in which case Section 9.3 shall apply, Nikon
shall, and shall ensure that its Subsidiaries shall, maintain all rights under
each of the Eligible Nikon Patent Family Members necessary in order to grant to
ASML and its Subsidiaries the full scope of the licenses and immunities granted
under Nikon Licensed Patents hereunder should such Eligible Nikon Patent Family
Members be included in the Nikon Licensed Patents.
2.8.4 Consequences of Assertion. If Nikon or any of its Subsidiaries
Sues ASML, Zeiss SMT, their respective Subsidiaries, or any of their respective
vendors or Covered Entities, for direct or indirect infringement (including
inducement of infringement or contributory infringement) of any Excluded Nikon
Patent based on any activity that would be covered by a license or immunity
under this Agreement if such Excluded Nikon Patent were included within the
Nikon Licensed Patents, then ASML shall have the right to terminate (a) at any
time after the end of the Withdrawal Period (as defined below), if applicable,
or (b) if no Withdrawal Period is applicable, at any time thereafter, all of the
licenses, immunities, and other commitments granted and extended by ASML and its
Subsidiaries to Nikon and its Subsidiaries and their respective Covered
Entities, vendors, and Glass Suppliers under this Agreement (a "FULL RIGHTS
TERMINATION") upon written notice to Nikon, provided, however, that ASML shall
have no right to initiate or effect such Full Rights Termination (i) in the
cases expressly set forth in Section 2.8.5, or (ii) if Nikon or its Subsidiary
notifies ASML in writing of the existence of such Suit and together with such
notice provides to ASML copies of the initial court filing made
19
by Nikon or its Subsidiary in connection with such Suit within thirty (30) days
of the filing of any legal action, and Nikon or its Subsidiary takes, within two
(2) months after Nikon's or its Subsidiary's receipt of a written response by
ASML to such notice stating ASML's good faith belief that such Suit is within
the scope of this Section 2.8.4 and the reasons therefor (the "WITHDRAWAL
PERIOD"), all actions required on its part to withdraw such Suit completely.
Such Full Rights Termination shall have no effect on the licenses, immunities
and other commitments granted or extended to ASML, its Subsidiaries, Covered
Entities, vendors and Glass Suppliers by Nikon and its Subsidiaries as set forth
in this Agreement.
2.8.5 Defensive Assertion.
(a) No Termination for Nikon Defensive Suits. In the event
that the Specified Entity or any of its Affiliates Sues Nikon or any of its
Subsidiaries under any Schedule D Patent Family Member (a "SPECIFIED ENTITY
SUIT"), then, subject to this Section 2.8.5, Nikon and its Subsidiaries shall be
permitted to Xxx the Specified Entity or such Affiliate (a "NIKON DEFENSIVE
SUIT"). The Nikon Defensive Suit shall be under an aggregate number of Excluded
Nikon Patents that does not exceed the aggregate number of issued Schedule D
Patent Family Members that are asserted by the Specified Entity and its
Affiliates in the Specified Entity Suit. Section 2.8.4 shall not apply with
respect to such Nikon Defensive Suit, and ASML shall have no right to initiate
or effect a Full Rights Termination on account of such Nikon Defensive Suit.
(b) Excess Assertion By Nikon. If Nikon asserts against the
Specified Entity and/or its Affiliates in a Nikon Defensive Suit an aggregate
number of Excluded Nikon Patents greater than the aggregate number of issued
Schedule D Patent Family Members asserted by the Specified Entity and/or its
Affiliates against Nikon and/or its Subsidiaries in such action (an "EXCESS
ASSERTION"), then, if Nikon and/or its Subsidiaries fail to take all actions
required on their part to withdraw their claims completely under such number of
Excluded Nikon Patents as is required to eliminate the Excess Assertion within
thirty (30) days from such Excess Assertion, ASML may, at its sole discretion
upon written notice to Nikon and Zeiss SMT, designate any of the Excluded Nikon
Patents asserted in such Nikon Defensive Suit as Nikon Licensed Patents, up to a
number of Excluded Nikon Patents as required to eliminate the Excess Assertion,
and any Excluded Nikon Patents that are so designated shall be deemed ab initio
to be Nikon Licensed Patents for all purposes of this Agreement, including for
purposes of the immunities and other commitments granted or extended by Nikon
and its Subsidiaries under Sections 2.9, 3, and 4. In no event shall ASML be
entitled to initiate or effect a Full Rights Termination on account of any
Excess Assertion.
(c) Specified Entity Assertion of Schedule D Omitted Claims.
The Parties acknowledge that, because Schedule D Patent Family Members do not
include Schedule D Omitted Claims, a Suit by the Specified Entity or its
Affiliates in which only Schedule D Omitted Claims are asserted does not
constitute a Specified Entity Suit hereunder, and does not give rise to Nikon's
or its Subsidiaries' right to bring a Nikon Defensive Suit pursuant to Section
2.8.5(a). The Parties further acknowledge that it may be difficult to determine
whether a Patent claim asserted in a Suit by the Specified Entity and/or its
Affiliates is a Schedule D Omitted
20
Claim. Accordingly, if the Specified Entity and/or its Affiliates assert any
claim of any Schedule D Patent and/or any Patent claiming priority from a
Schedule D Patent and/or any Patent from which a Schedule D Patent claims
priority against Nikon and/or its Subsidiaries (a "SCHEDULE D SUIT"), and Nikon
and/or its Subsidiaries subsequently Xxx the Specified Entity and/or its
Affiliates under Excluded Nikon Patents (a "SCHEDULE D RESPONSE"), such Schedule
D Response by Nikon and/or its Subsidiaries shall not be grounds for a Full
Rights Termination pursuant to Section 2.8.4. Instead, (A) if a Party believes
that the Schedule D Suit is partly or solely based on Schedule D Omitted Claims,
such Party shall notify the other Party of such belief, and if the Parties
disagree as to whether such Schedule D Suit is partly or solely based on
Schedule D Omitted Claims, the Parties shall resolve such dispute under the
Arbitration Agreement including, if applicable, which of the Patent claims
asserted in such Schedule D Suit are Schedule D Omitted Claims, and (B) if it is
determined in such arbitration procedure that all or some of the Patent claims
asserted in the Schedule D Suit are Schedule D Omitted Claims, the consequences
shall be as set forth in the following subclauses (i) and (ii) of this Section
2.8.5.
(i) If (A) it is determined in such arbitration that all
Patent claims asserted by the Specified Entity or its Affiliates in such
Schedule D Suit against Nikon or its Subsidiaries are Schedule D Omitted Claims,
and (B) Nikon and its Subsidiaries fail to withdraw completely all Suits which
assert any Excluded Nikon Patents against the Specified Entity and/or its
Affiliates within thirty (30) days after such determination, then all Nikon
Excluded Patents asserted by Nikon and/or its Subsidiaries in such Suit shall be
deemed ab initio to be Nikon Licensed Patents for all purposes of this
Agreement, including for purposes of the licenses granted to ASML and its
Subsidiaries under Section 2.1 and the immunities and other commitments granted
or extended by Nikon and its Subsidiaries under Sections 2.9, 3, and 4. In no
event shall ASML be entitled to initiate or effect a Full Rights Termination on
account of any such Suit and/or failure to withdraw.
(ii) If it is determined in such arbitration procedure that
some but not all Patent claims asserted by the Specified Entity and/or its
Affiliates in the Specified Entity Action are Schedule D Omitted Claims, then
Section 2.8.5(a) or 2.8.5(b), as applicable, shall apply, it being understood
that, if the Specified Entity and/or its Affiliates asserted any claim of a
Schedule D Patent Family Member other than a claim that has been determined in
an arbitration procedure pursuant to this Section 2.8.5(c), or agreed by the
Parties in writing, to be a Schedule D Omitted Claim, such Schedule D Patent
Family Member shall be counted as a Schedule D Patent Family Member asserted by
the Specified Entity and/or its Affiliates for purposes of determining the
number of Nikon Excluded Patents that may be asserted in any Nikon Defensive
Suit in accordance with Section 2.8.5(a).
2.9 Transition Period Covenants and Limitation of Remedies.
2.9.1 Covenant Not To Xxx During Transition Period. Each Party
covenants that, during the Transition Period, it shall not, and shall cause its
Subsidiaries not to (such Party and its Subsidiaries being referred to as the
"NON-ASSERTING PARTY"), Xxx the other Party or its Subsidiaries, or their
respective third party suppliers making Licensed Products or Optical
21
Components (but, in the case of ASML being such other Party, only as long as
ASML has a sublicense from Zeiss SMT under the Nikon-Zeiss Patent Cross-License
Agreement, unless Optical Components are ASML Licensed Products following a
Licensed Product Expansion) for such Party as permitted under Sections 2.1 or
2.2, as applicable (as applicable, the "DEFENDANT PARTY"), for direct or
indirect infringement (including for inducement of infringement or contributory
infringement) of any (i) Class B Patents that were Licensed Patents of the
Non-Asserting Party prior to the end of the License Term, (ii) Class C Patents
Owned or Sublicensable by the Non-Asserting Party, or (iii), to the extent not
precluded by contractual obligations that exist as of the Effective Date,
Restricted Patents of the Non-Asserting Party, excluding, in each case, any
Excluded Claims thereof and, in each case, based on (a) the Defendant Party's
activities that would be covered by the Defendant Party's license under Sections
2.1 or 2.2, as applicable, or sublicense pursuant to and in accordance with the
Nikon-Zeiss Patent Cross-License Agreement, if such Class B Patents, Class C
Patents, or Restricted Patents were Licensed Patents (collectively "LITHOGRAPHY
ACTIVITIES"), but solely with respect to Lithography Activities that occur
during the Transition Period, or (b) activities of Covered Entities of the
Defendant Party to the extent such activities are within the scope of the
immunities granted by the Non-Asserting Party under this Agreement.
2.9.2 Limitation of Remedies As To Transition Period. Nothing in
Section 2.7 or in this Section 2.9 shall constitute any restriction or
limitation on the Non-Asserting Party's right and ability (a) to Xxx the
Defendant Party at any time after the Transition Period, or (b) to seek, after
the Transition Period, any remedies with respect to any activities occurring
during the Transition Period (including, without limitation, Lithography
Activities), provided, however, that with respect to Lithography Activities
occurring during the Transition Period, and only to the extent such Lithography
Activities occur during the Transition Period, such remedies shall be limited to
damages in the form of a reasonable royalty not to exceed *** percent (***%) of
the Net Selling Price of the applicable Licensed Products or Optical Components.
2.9.3 No Other Rights. Nothing in this Section 2.9 shall be
construed to grant or otherwise convey or provide any right or license under any
Patents, whether directly, by implication, estoppel, or otherwise. Nothing in
this Section 2.9, nor the Parties' or their Subsidiaries' conduct pursuant
hereto, shall give rise to any defense, claim, or counterclaim, including based
on laches or equitable estoppel, based on the failure of a Party or its
Subsidiaries to bring Suit or otherwise assert a claim during the Transition
Period where such Party or its Subsidiaries could not have brought such Suit or
assert such claim in accordance with this Section 2.9, and the Defendant Party
hereby expressly waives any such defense, claim, or counterclaim.
2.10 Licensed Product Expansion. If Zeiss SMT or any third party files for
Zeiss SMT's insolvency and such insolvency proceedings are opened by a court of
competent jurisdiction or are not opened for lack of assets (Nichteroffnung des
Insolvenzverfahrens xxxxxxx Xxxxx), or if Zeiss SMT is the subject of a
bankruptcy or is dissolved, liquidated or ceases to do business in the ordinary
course and, as a consequence of any of the foregoing, ASML loses (and does not
retain through a successor to Zeiss SMT or its rights, by operation of law, or
otherwise)
22
any rights under Nikon Licensed Patents that were sublicensed to ASML from Zeiss
SMT pursuant to the Nikon-Zeiss Patent Cross-License Agreement, then the term
"ASML Licensed Products" shall automatically be deemed to mean "Lithography
Equipment and all applications therefor, including Optical Components" for all
purposes hereunder, including the license grants in Section 2.1 and the
immunities and other commitments extended by Nikon and its Subsidiaries under
this Agreement (the "LICENSED PRODUCT EXPANSION"); provided, however, that (i)
as a condition of such modification to the term "ASML Licensed Products", ASML
shall assume responsibility to pay any of the Zeiss SMT Payments that Zeiss SMT
has not paid to Nikon at the time of such modification, which amount(s) ASML
shall pay within thirty (30) days following the later of the due date therefor
or Nikon's notice to ASML thereof, and (ii) the scope of ASML's rights under
this Agreement with respect to Optical Components shall not exceed the scope of
a permissible sublicense to ASML under the Nikon-Zeiss Patent-Cross License
Agreement, as it exists as of the Effective Date, as described therein.
3. CERTAIN IMMUNITIES
3.1 Immunity for ASML Products.
3.1.1 The rights granted to ASML and its Subsidiaries in Section 2.1
shall include immunity as set forth in this Section 3.1 under the Nikon Licensed
Patents and the Class C Patents Owned or Sublicensable by Nikon or its
Subsidiaries for the Covered Entities of ASML and its Subsidiaries for such
Covered Entities' use, importation, offer for sale, sale, lease, and other
distribution or conveyance of ASML Licensed Products or Optical Components (but
only as long as ASML has a sublicense from Zeiss SMT under the Nikon-Zeiss
Patent Cross-License Agreement, unless Optical Components are ASML Licensed
Products following a Licensed Product Expansion) made, had made, sold, offered
for sale, leased, imported or otherwise conveyed by or for ASML or its
Subsidiaries pursuant to the license granted in Section 2.1. Such immunity means
that Nikon shall not, and shall cause its Subsidiaries not to, Xxx any Covered
Entity of ASML or its Subsidiaries for direct or indirect infringement
(including for inducement of infringement or contributory infringement) based on
such Covered Entities' use, importation, offer for sale, sale, lease, and other
distribution or conveyance of such ASML Licensed Product or Optical Components
(but only as long as ASML has a sublicense from Zeiss SMT under the Nikon-Zeiss
Patent Cross-License Agreement, unless Optical Components are ASML Licensed
Products following a Licensed Product Expansion) (a) at any time under any Class
A Patents that are Nikon Licensed Patents, regardless of when such ASML Licensed
Product or such Optical Component was first sold, leased, or otherwise
distributed or conveyed by ASML or its Subsidiaries, (b) at any time under Class
B Patents that are at any time Nikon Licensed Patents, with respect to ASML
Licensed Products or such Optical Components that were first sold, leased, or
otherwise distributed or conveyed by ASML or its Subsidiaries prior to or during
the License Term or the Transition Period, and (c) at any time under Class C
Patents enforceable by Nikon or its Subsidiaries, with respect to ASML Licensed
Products or such Optical Components that were first sold, leased, or otherwise
distributed or conveyed by ASML or its Subsidiaries prior to or during the
License Term or the Transition Period.
23
3.1.2 Notwithstanding anything to the contrary in this Agreement,
the immunity described in subclauses (b) and (c) of Section 3.1.1 is expressly
conditioned upon the applicable Covered Entity not Suing Nikon or any of its
Subsidiaries for Patent infringement with respect to Lithography Equipment or
any activities relating thereto (including the manufacture, use, sale, offer for
sale, or import of Lithography Equipment and any other activities described in
Section 2.2 hereof), and upon any such Suit such immunity shall retroactively be
null and void and of no effect with respect to such Covered Entity, and Nikon
and its Subsidiaries shall be entitled to seek any remedies against such Covered
Entity available under applicable Law, including with respect to past
activities, but only if Nikon has notified ASML of the existence of such Suit
and the Covered Entity has not taken all actions required on its part to
withdraw such Suit completely within two (2) months after such notification. No
Suit by Nikon or its Subsidiaries against such Covered Entity prior to any such
withdrawal shall constitute a breach of this Section 3.1 by Nikon or its
Subsidiaries as long as Nikon or its Subsidiaries take all actions required on
their part to withdraw such Suit completely within two (2) months after the
Covered Entity has taken all actions required on its part to withdraw its Suit
completely.
3.2 Immunity for Nikon Products.
3.2.1 The rights granted to Nikon and its Subsidiaries in Section
2.2 shall include immunity as set forth herein under the ASML Licensed Patents
and the Class C Patents Owned or Sublicensable by ASML or its Subsidiaries for
the Covered Entities of Nikon and its Subsidiaries for such Covered Entities'
use, importation, offer for sale, sale, lease, and other distribution or
conveyance of Nikon Licensed Products made, had made, sold, offered for sale,
leased, imported or otherwise conveyed by or for Nikon or its Subsidiaries
pursuant to the license granted in Section 2.2. Such immunity means that ASML
shall not, and shall cause its Subsidiaries not to, Xxx any Covered Entity of
Nikon or its Subsidiaries for direct or indirect infringement (including for
inducement of infringement or contributory infringement) based on such Covered
Entities' use, importation, offer for sale, sale, lease, and other distribution
or conveyance of such Nikon Licensed Product (a) at any time under any Class A
Patents that are ASML Licensed Patents, regardless of when such Nikon Licensed
Product was first sold, leased, or otherwise distributed or conveyed by Nikon or
its Subsidiaries, (b) at any time under Class B Patents that are at any time
ASML Licensed Patents with respect to Nikon Licensed Products that were first
sold, leased, or otherwise distributed or conveyed by Nikon or its Subsidiaries
prior to or during the License Term or the Transition Period, and (c) at any
time under Class C Patents enforceable by ASML or its Subsidiaries, with respect
to Nikon Licensed Products that were first sold, leased, or otherwise
distributed or conveyed by Nikon or its Subsidiaries prior to or during the
License Term or the Transition Period.
3.2.2 Notwithstanding anything to the contrary in this Agreement,
the immunity described in subclauses (b) and (c) of Section 3.2.1 is expressly
conditioned upon the applicable Covered Entity not Suing ASML or any of its
Subsidiaries for Patent infringement with respect to Lithography Equipment or
any activities relating thereto (including the manufacture, use, sale, offer for
sale, or import of Lithography Equipment and any other activities described in
Section 2.1 hereof), and upon any such Suit such immunity shall retroactively be
null and void and of no
24
effect with respect to such Covered Entity, and ASML, and its Subsidiaries shall
be entitled to seek any remedies available against such Covered Entity under
applicable Law, including with respect to past activities, but only if ASML has
notified Nikon of the existence of such Suit and the Covered Entity has not
taken all actions required on its part to withdraw such Suit completely within
two (2) months after such notification. No Suit by ASML or its Subsidiaries
against such Covered Entity prior to any such withdrawal shall constitute a
breach of this Section 3.2 by ASML or its Subsidiaries as long as ASML or its
Subsidiaries take all actions required on their part to withdraw such Suit
completely within two (2) months after the Covered Entity has taken all actions
required on its part to withdraw its Suit completely.
3.3 Excluded Glass Products Claims.
3.3.1 Neither Party will Xxx the other Party or its Subsidiaries, or
any of its or their respective Covered Entities, for direct or indirect
infringement (including for inducement of infringement or contributory
infringement) based on such Party's or its Subsidiaries', or any of their
respective Covered Entities' use, importation, offer for sale, sale, lease, and
other distribution or conveyance of Licensed Products of the other Party or any
Optical Components (but, if ASML is such other Party, only as long as ASML has a
sublicense from Zeiss SMT under Section 2.2 of the Nikon-Zeiss Patent
Cross-License Agreement, unless Optical Components are ASML Licensed Products
following a Licensed Product Expansion) sold as, installed in, or as replacement
or upgrade components for, such Licensed Products, (i) at any time under any
Excluded Claims described in Section 1.2.15(c) that would have constituted Class
A Patents and Licensed Patents of such first Party but for the application of
Section 1.2.15(c), regardless of when such Licensed Products or such Optical
Components were first sold, leased, or otherwise distributed or conveyed by the
other Party or its Subsidiaries, (ii) with respect to Licensed Products or such
Optical Components that were first sold, leased, or otherwise distributed or
conveyed by the other Party or its Subsidiaries prior to or during the License
Term or the Transition Period, at any time under any Excluded Claims described
in Section 1.2.15(c) that would have constituted Class B Patents and Licensed
Patents of such first Party but for the application of Section 1.2.15(c), and
(iii) with respect to Licensed Products or such Optical Components that were
first sold, leased, or otherwise distributed or conveyed by the other Party or
its Subsidiaries prior to or during the License Term or the Transition Period,
at any time under any claims of Patents having an Effective Application Date
after December 31, 2002 and issuing during the Transition Period that are
Excluded Claims described in Section 1.2.15(c) and that would have constituted
Licensed Patents of such Party but for the application of Section 1.2.15(c) had
such Patents issued during the License Term (the claims described in (ii) and
(iii) of the foregoing being "TRANSITION PERIOD CLAIMS"). For the avoidance of
doubt, the foregoing sentence shall not apply to Glass Suppliers of the other
Party or its Subsidiaries.
3.3.2 Notwithstanding anything to the contrary in this Agreement,
the immunity pursuant to Section 3.3.1 under Transition Period Claims is
expressly conditioned upon the applicable Covered Entity not Suing the
applicable Party or any of its Subsidiaries for Patent infringement, and upon
any such Suit such immunity shall retroactively be null and void and of no
effect with respect to such Covered Entity and the applicable Party and its
Subsidiaries shall
25
be entitled to seek any remedies available, including with respect to past
activities, but only if such Party has notified the other Party of the existence
of such Suit and the Covered Entity has not taken all actions required on its
part to withdraw such Suit completely within two (2) months after such
notification. No Suit by such Party or its Subsidiaries of such Covered Entity
prior to any such withdrawal shall constitute a breach of this Section 3.3 by
such Party or its Subsidiaries as long as such Party or its Subsidiaries take
all actions required on their part to withdraw such Suit completely within two
(2) months after the Covered Entity has taken all actions required on its part
to withdraw its Suit completely.
4. ADDITIONAL COMMITMENTS
4.1 Opposition Proceedings. Neither Party ("OPPOSING PARTY") nor its
Subsidiaries will present arguments, or request, encourage or assist any
designee, agent, or nominee or other strawman to present arguments, in any
opposition proceedings (which, for clarity, include reexaminations but do not
include interference proceedings) (i) directed against any claim of any Class A
Patent of the other Party or any of its Subsidiaries, to the extent that such
claim only covers subject matter that falls within the definition of the
Licensed Products of the Opposing Party, or (ii) to the extent that the other
Party covenants to the Opposing Party, in a form binding on the other Party and
its Subsidiaries and assigns, that it will never contend against the Opposing
Party or its Subsidiaries or their respective vendors, direct and indirect
resellers, distributors, users and other customers that such claim covers
subject matter that falls outside the definition of the Licensed Products of the
Opposing Party. Each Party shall have the right, but not the obligation, at any
time to provide the other Party with written notice identifying Subsidiaries of
such Party. If an Opposing Party presents arguments, or requests, encourages or
assists any designee, agent, or nominee or other strawman to present arguments,
in any opposition proceeding against a Subsidiary of the other Party that does
not do business under a name including the name of the other Party and has not
previously been identified in writing to the Opposing Party, or that the
Opposing Party does not actually know to be a Subsidiary of the other Party,
then such presentation, request, encouragement or assistance shall not be deemed
to be a breach of this Section 4.1, provided that, upon receipt of written
notice from the other Party of such Subsidiary relationship, such Opposing Party
shall promptly withdraw from such opposition proceeding.
4.2 Glass Product Suppliers
4.2.1 No Injunction. Subject to Section 4.2.4, a Party and its
Subsidiaries (collectively the "ASSERTING PARTY") will not seek or obtain an
injunction, restraint or other form of prohibitive order enjoining the supply of
Excluded Glass Products to the other Party or its Subsidiaries on the basis that
such Excluded Glass Products infringe, directly or indirectly, the Patents of
the Asserting Party. Subject to Section 4.2.4, the foregoing covenant and the
provisions of Section 4.2.2 shall last (i) perpetually under Class A Patents of
the Asserting Party, and (ii) until the end of the Agreement Term under Class B
Patents of the Asserting Party and under any patents that would have constituted
Class C Patents of the Asserting Party but for the
26
application of Section 1.2.15(c) (each such period, as applicable, the "GLASS
RESTRICTION PERIOD").
4.2.2 Payment of Glass Excess Payment.
(a) If, during the applicable Glass Restriction Period the
Asserting Party asserts or seeks to assert any applicable Patents against a
third party with respect to the supply of Excluded Glass Products by such third
party (a "GLASS SUPPLIER") to the other Party (the "PURCHASING PARTY"), then,
with regard to all Covered Excluded Glass Products, the Asserting Party shall
pay any Glass Excess Payment to the Purchasing Party as set forth in Section
4.2.3.
(b) For purposes of this Section 4.2:
(i) "COVERED EXCLUDED GLASS PRODUCTS" means Excluded
Glass Products that are (A) covered by a license under the Asserting Party's
Patents, or (B) the subject of a damages award for infringement of the Asserting
Party's Patents.
(ii) "GLASS EXCESS PAYMENT" means the portion of
Attributable Glass Proceeds, if any, that exceeds an amount equal to *** percent
(***%) of the Purchasing Party's Glass Product Expenses in any calendar year. By
way of example, if the Attributable Glass Proceeds in any calendar year are $***
and the Glass Product Expenses for such calendar year are $***, then the Glass
Excess Payment payable by the Asserting Party to the other Party in respect of
such calendar year shall be such portion of $*** that exceeds ***% of $***
($***), i.e., $*** in total. In no event shall the Purchasing Party be required
to pay any amount to the Asserting Party under this Section 4.2, even if in any
calendar year the Attributable Glass Proceeds are less than *** percent (***%)
of the Purchasing Party's Glass Product Expenses.
(iii) "GLASS PRODUCT EXPENSES" means the aggregate
amount paid by the Purchasing Party and its Subsidiaries to the Glass Supplier
for Covered Excluded Glass Products purchased by the Purchasing Party from the
Glass Supplier in the applicable calendar year.
(iv) "ATTRIBUTABLE GLASS PROCEEDS" means the sum of the
following received with respect to any one calendar year: (A) Running Royalty
Payments based on sales of Covered Excluded Glass Products to the Purchasing
Party in such calendar year, (B) Allocable Amortized Lump-Sum Payments allocable
to such calendar year, and (C) Allocable Damages that are attributable to sales
of Covered Excluded Glass Products to the Purchasing Party in such calendar
year.
(v) "RUNNING ROYALTY PAYMENTS" means running royalty
payments made by the Glass Supplier to the Asserting Party under an applicable
license agreement the amounts of which are based on sales by the Glass Supplier
of Covered Excluded Glass Products in any calendar year. "Running Royalty
Payments" excludes any other payments, such as, for example, up-front license
fees, annual license fees, or other lump sum
27
payments or payments other than variable payments based on sales of Covered
Excluded Glass Products.
(vi) "LUMP-SUM PAYMENTS" means up-front or lump-sum
license fees paid by the Glass Supplier to the Asserting Party (e.g., annual
license fees, but excluding, in any event, Running Royalty Payments) in
consideration of, and to the extent reasonably attributable to, the grant of
license rights by the Asserting Party to the Glass Supplier, under the Asserting
Party's Patents covering Covered Excluded Glass Products, to make and sell
Covered Excluded Glass Products. For the avoidance of doubt, if, under the
applicable license agreement, the Asserting Party grants any rights, or provides
any consideration, other than only the right to manufacture and sell Covered
Excluded Glass Products, only such portion of any up-front or recurring lump-sum
license fees shall be taken into account, for purposes of calculating Lump-Sum
Payments, that is reasonably attributable to the grant of the right to
manufacture and sell Covered Excluded Glass Products (but not any portion of
such license fees that is reasonably attributable to other rights granted, or
other consideration provided, to the Glass Supplier under such license
agreement).
(vii) "ALLOCABLE DAMAGES" means the positive difference,
if any, between (A) such portion, if any, of damages finally assessed against
the Glass Supplier, and paid (including by way of setoff) to the Asserting
Party, for infringement of the Asserting Party's Patents based on the Glass
Supplier's sale of Covered Excluded Glass Products that is attributable to sales
of Covered Excluded Glass Products by the Glass Supplier to the Purchasing
Party; the ratio of such portion to the total damages finally assessed against
the Glass Supplier, and paid (including by way of setoff) to the Asserting
Party, for infringement of the Asserting Party's Patents based on the Glass
Supplier's sale of Covered Excluded Glass Products being referred to as the
"FRACTION", minus (B) the Fraction multiplied by the amount of damages, if any,
finally assessed against the Asserting Party in the same lawsuit, cause, or
action, or in a lawsuit pending at the same time, and paid (including by way of
setoff) to the Glass Supplier, for infringement of the Glass Supplier's Patents
based on the Asserting Party's sales of Excluded Glass Products.
(viii) "AMORTIZED LUMP-SUM PAYMENTS" means the
applicable portion of Lump-Sum Payments when such Lump-Sum Payments are
amortized on a straight line basis over the applicable Amortization Period.
(ix) "AMORTIZATION PERIOD" means, (A) with respect to
up-front license fees, the shorter of (I) a period of six (6) years from the
payment date of such up-front license fee, or (II) the initial term of the
applicable license agreement, and (B) with respect to any recurring lump-sum
license fees, the applicable period for which such recurring lump-sum license
fee is made under the applicable license agreement (e.g., one year in case of an
annual license fee).
(x) "ALLOCABLE AMORTIZED LUMP-SUM PAYMENTS" means such
portion of the Amortized Lump-Sum Payment, if any, that is attributable to sales
of
28
Covered Excluded Glass Products by the Glass Supplier to the Purchasing Party in
the applicable calendar year.
(c) For purposes of clarification, nothing in this Section 4.2
or any other provision of this Agreement shall constitute, or shall be deemed to
constitute, a restriction on the amount of any payments that may be sought by or
payable to the Asserting Party or any of its Subsidiaries from a Glass Supplier,
whether on account of Excluded Glass Products supplied to the Purchasing Party
or otherwise.
4.2.3 Payments and Records. The payments, if any, owed to the
Purchasing Party pursuant to Section 4.2.2 by the Asserting Party shall be made
annually within ninety (90) days following the last day of each calendar year of
the Agreement Term. The Parties agree to keep full and accurate books and
records setting forth in reasonable detail the Attributable Glass Proceeds, the
Glass Product Expenses, and the calculation of the Glass Excess Payment. The
Purchasing Party shall report its Glass Product Expenses, if any, to the
Asserting Party no later than thirty (30) days following the last day of each
calendar year of the Agreement Term. In the event that the Asserting Party
receives in any one calendar year (the "CURRENT YEAR") any Attributable Glass
Proceeds based on sales in, or otherwise attributable or allocable to, any
previous calendar year(s) ( "PREVIOUS YEAR(S)"), the Asserting Party will notify
the Purchasing Party thereof within thirty (30) days following the last day of
such Current Year and the Purchasing Party may then, unless previously reported,
report its Glass Product Expenses for such Previous Year(s) to the Asserting
Party within ninety (90) days following the last day of such Current Year. The
Asserting Party will then calculate or recalculate the Glass Excess Payment, if
any, for such Previous Year(s) and submit its report relating thereto within one
hundred twenty (120) days following the last day of the Current Year, together
with the payment of any Glass Excess Payment owed and not previously paid for
such Previous Year(s).
4.2.4 Defensive Actions. The provisions of Sections 4.2.1 through
4.2.3 will be suspended, and during such suspension shall cease to bind the
Asserting Party with respect to (but only with respect to) any Glass Supplier or
any of its Subsidiaries if such Glass Supplier or any of its Subsidiaries seeks
an injunction, restraint or other form of prohibitive order from any Government
Authority against the Asserting Party on the basis that the Asserting Party or
any of its products or services allegedly infringes, directly or indirectly, the
Patents of such Glass Supplier ("GLASS PROCEEDINGS") prior to any Suit by the
Asserting Party against such Glass Supplier. Such suspension shall last as long
as such Glass Proceedings are not Finally Resolved. Upon Final Resolution of
such Glass Proceedings, the provisions of Sections 4.2.1 through 4.2.3 shall (i)
be again effective from and after such Final Resolution, if such Glass
Proceedings are Finally Resolved by either an amicable settlement between the
Asserting Party and the Glass Supplier or a withdrawal of all such Glass
Proceedings by the Glass Supplier, and (ii) terminate and permanently cease to
bind the Asserting Party with respect to such Glass Supplier in all other cases.
Upon termination or during any suspension of the provisions of Sections 4.2.1
through 4.2.3 the Asserting Party shall be entitled to seek any remedies
available, including with respect to past activities.
29
4.3 Special Mask Technology
4.3.1 Definitions. For purposes of this Section 4.3:
(a) "EXCLUDED SPECIAL MASK CLAIM" means an Excluded Claim that
is described in Section 1.2.14(d);
(b) "CLASS A EXCLUDED SPECIAL MASK CLAIM" means an Excluded
Special Mask Claim that would have been included in a Class A Patent within the
Licensed Patents of a Party or its Subsidiaries (collectively, the "LICENSOR
PARTY") but for the application of Section 1.2.14(d).
(c) "CLASS B EXCLUDED SPECIAL MASK CLAIM" means an Excluded
Special Mask Claim that would have been included in a Class B Patent within the
Licensed Patents of a Licensor Party but for the application of Section
1.2.14(d).
(d) "CLASS C EXCLUDED SPECIAL MASK CLAIM" means an Excluded
Special Mask Claim that is included in a Patent Owned or Sublicensable by a
Licensor Party having an Effective Application Date after December 31, 2002 and
issuing during the Transition Period.
4.3.2 Limited Party Immunity. The Licensor Party will not Xxx the
other Party or its Subsidiaries (collectively, the "OTHER PARTY") at any time,
during or after the Agreement Term:
(a) for direct or indirect infringement (including
contributory infringement and inducement to infringe) of any Class A Excluded
Special Mask Claim based on (i) activities of the Other Party occurring at any
time before, during or after the Agreement Term that would be covered by the
Other Party's license under Sections 2.1 or 2.2, as applicable, if such Class A
Excluded Special Mask Claim were a licensed claim within a Licensed Patent, or
(ii) a Covered Entity's use, import, repair, offer for sale, sale, lease, and
other distribution or conveyance at any time before, during or after the
Agreement Term of Licensed Products or Optical Components (but, if ASML is such
Other Party, only as long as ASML has a sublicense from Zeiss SMT under the
Nikon-Zeiss Patent Cross-License Agreement, unless Optical Components are ASML
Licensed Products following a Licensed Product Expansion) that were first sold,
leased, or otherwise distributed or conveyed by the Other Party at any time
before, during or after the Agreement Term and the sale, lease, or other
distribution or conveyance of which by the Other Party would be covered by the
Other Party's or its Subsidiaries' license under Sections 2.1 or 2.2, as
applicable, if such Class A Excluded Special Mask Claim were a licensed claim
within a Licensed Patent.
(b) for direct or indirect infringement (including
contributory infringement and inducement to infringe) of any Class B Excluded
Special Mask Claim or Class C Excluded Special Mask Claim based on either (i)
any activities of the Other Party occurring at any time during (but not after)
the Agreement Term that would be covered by the Other Party's license under
Sections 2.1 or 2.2, as applicable, if such Class B Excluded Special Mask Claim
or Class
30
C Excluded Special Mask Claim, as applicable, were a licensed claim within a
Licensed Patent, or (ii) a Covered Entity's use, import, repair, offer for sale,
sale, lease, and other distribution or conveyance at any time before, during or
after the Agreement Term of Licensed Products or Optical Components that were
first sold, leased, or otherwise distributed or conveyed by the Other Party at
any time before or during (but not after) the Agreement Term and the sale,
lease, or other distribution or conveyance of which by the Other Party or its
Subsidiaries would be covered by the Other Party's or its Subsidiaries' license
under Sections 2.1 or 2.2, as applicable, if such Class B Excluded Special Mask
Claim or Class C Excluded Special Mask Claim were a licensed claim within a
Licensed Patent.
4.3.3 Limited Covered Entity Immunity. Subject to Section 4.3.4, the
Licensor Party will not Xxx any Covered Entity of the Other Party:
(a) at any time during or after the Agreement Term, for direct
or indirect infringement (including contributory infringement and inducement to
infringe) of any Class A Excluded Special Mask Claim based on such Covered
Entity's use, import, repair, offer for sale, sale, lease, and other
distribution or conveyance at any time before, during or after the Agreement
Term of Licensed Products or Optical Components (but, if ASML is such Other
Party, only as long as ASML has a sublicense from Zeiss SMT under the
Nikon-Zeiss Patent Cross-License Agreement, unless Optical Components are ASML
Licensed Products following a Licensed Product Expansion) that were first sold,
leased, or otherwise distributed or conveyed by the Other Party at any time
before, during or after the Agreement Term and the sale, lease, or other
distribution or conveyance of which by the Other Party or its Subsidiaries would
be covered by the Other Party's or its Subsidiaries' license under Sections 2.1
or 2.2, as applicable, if such Class A Excluded Special Mask Claim were a
licensed claim within a Licensed Patent;
(b) at any time, during or after the Agreement Term, for
direct or indirect infringement (including contributory infringement and
inducement to infringe) of any Class B Excluded Special Mask Claim or Class C
Excluded Special Mask Claim based on such Covered Entity's use, import, repair,
offer for sale, sale, lease, and other distribution or conveyance at any time
before, during or after the Agreement Term of Licensed Products or Optical
Components (but, if ASML is such Other Party, only as long as ASML has a
sublicense from Zeiss SMT under the Nikon-Zeiss Patent Cross-License Agreement,
unless Optical Components are ASML Licensed Products following a Licensed
Product Expansion) that were first sold, leased, or otherwise distributed or
conveyed by the Other Party or its Subsidiaries at any time before or during
(but not after) the License Term and the sale, lease, or other distribution or
conveyance of which by the Other Party or its Subsidiaries would be covered by
the Other Party's or its Subsidiaries' license under Sections 2.1 or 2.2, as
applicable, if such Class B Excluded Special Mask Claim or Class C Excluded
Special Mask Claim were a licensed claim within a Licensed Patent; and
(c) during the Transition Period, for direct or indirect
infringement (including contributory infringement and inducement to infringe) of
any Class B Excluded Special Mask Claim or Class C Excluded Special Mask Claim
based on such Covered Entity's
31
use, import, repair, offer for sale, sale, lease, and other distribution or
conveyance at any time prior to the end of the Transition Period of Licensed
Products or Optical Components (but, if ASML is such Other Party, only as long
as ASML has a sublicense from Zeiss SMT under the Nikon-Zeiss Patent
Cross-License Agreement, unless Optical Components are ASML Licensed Products
following a Licensed Product Expansion) that were first sold, leased, or
otherwise distributed or conveyed by the Other Party at any time prior to or
during (but not after) the Transition Period and the sale, lease, or other
distribution or conveyance of which by the Other Party or its Subsidiaries would
be covered by the Other Party's or its Subsidiaries' license under Sections 2.1
or 2.2, as applicable, if such Class B Excluded Special Mask Claim or Class C
Excluded Special Mask Claim were a licensed claim within a Licensed Patent.
4.3.4 Limitation of Certain Remedies Against Covered Entities as to
Transition Period. Nothing in this Agreement (including, without limitation,
Section 4.3.3(c) above) shall constitute any restriction or limitation on the
Licensor Party's right and ability to Xxx, after the end of the Transition
Period, any Covered Entity of the Other Party for direct or indirect
infringement (including contributory infringement and inducement to infringe) of
any Class B Excluded Special Mask Claim or Class C Excluded Special Mask Claim
based on such Covered Entity's use, import, repair, offer for sale, sale, lease,
and other distribution or conveyance at any time prior to the end of the
Transition Period of Licensed Products or Optical Components that were first
sold, leased, or otherwise distributed or conveyed by the Other Party at any
time after the end of the License Term; provided, however, that with respect to
Licensed Products or Optical Components (but, if ASML is such Other Party, only
as long as ASML has a sublicense from Zeiss SMT under the Nikon-Zeiss Patent
Cross-License Agreement, unless Optical Components are ASML Licensed Products
following a Licensed Product Expansion) that were first sold, leased, or
otherwise distributed or conveyed by the Other Party during the Transition
Period, the Licensor Party's remedies in any such action against any Covered
Entity of such Other Party shall be limited to damages in the form of a
reasonable royalty not to exceed *** percent (***%) of the Net Selling Price of
all applicable Licensed Products.
4.3.5 Defensive Actions. Notwithstanding anything to the contrary in
this Agreement, the immunity described in Section 4.3.3 and the application of
Section 4.3.4 are expressly conditioned upon the applicable Covered Entity not
Suing the Licensor Party for Patent infringement, and upon any such Suit such
immunity shall retroactively be null and void and of no effect with respect to
such Covered Entity, and the Licensor Party shall be entitled to seek any
remedies available against such Covered Entity under applicable Law, including
with respect to past activities, but only if the Licensor Party has notified the
Other Party of the existence of such Suit and the Covered Entity has not taken
all actions required on its part to withdraw such Suit completely within two (2)
months after such notification. No Suit by the Licensor Party against such
Covered Entity prior to any such withdrawal shall constitute a breach of this
Section by the Licensor Party as long as the Licensor Party takes all actions
required on its part to withdraw such Suit completely within two (2) months
after the Covered Entity has taken all actions required on its part to withdraw
its Suit completely.
5. PAYMENTS
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5.1 Payments. ASML or ASML Netherlands B.V. (provided that ASML
Netherlands B.V. can make such payments only for so long as it remains a Dutch
corporation) shall pay to Nikon the aggregate sum of Eighty-Seven Million U.S.
Dollars (US$ 87,000,000), to be payable in the following installments
("PAYMENTS"):
a) Sixty Million U.S. Dollars (US$ 60,000,000) on the Effective
Date, receipt of which amount on November 16, 2004 is hereby
acknowledged by Nikon;
b) Nine Million U.S. Dollars (US$ 9,000,000) on the first
anniversary of the Effective Date;
c) Nine Million U.S. Dollars (US$ 9,000,000) on the second
anniversary of the Effective Date; and
d) Nine Million U.S. Dollars (US$ 9,000,000) on the third
anniversary of the Effective Date.
5.2 Taxes. All Payments shall be paid such that, after deduction or
withholding of any taxes or other amounts due on such Payments (not including
income taxes owed by Nikon) (collectively, "WITHHOLDINGS"), Nikon receives the
entire amounts of such Payments as if no Withholdings had been required.
5.3 Late Payments. For purposes of clarification, ASML shall owe no
interest on any Payments set forth in Section 5.1.
5.4 Other Payment Provisions. All amounts payable by ASML to Nikon shall
be paid by wire transfer of U.S. Dollars in immediately available funds to the
account of "Nikon Corporation," account number ***, Bank of Tokyo-Mitsubishi
Ltd., Head Office, Xxxxxxxxxx 0-0-0, Xxxxxxx-xx, Xxxxx, Xxxxx (SWIFT Code
XXXXXXXX), or such other financial institution and account number as Nikon may
designate in writing to ASML, such notice to be received by ASML no later than
two (2) months prior to the applicable date on which payment is due. Each Party
shall be responsible for the proper allocation of payments made under this
Agreement in its own tax filings and financial statements.
5.5 Audit. The Parties agree to keep full and accurate books and records
setting forth in reasonable detail the payments payable to the other Party
hereunder, or Glass Product Expenses to be recorded hereunder, and the
calculation thereof. Each Party (the "AUDITING PARTY") shall have the right to
appoint an internationally recognized accounting firm (but not the
Auditing Party's accounting firm) reasonably acceptable to the other Party (the
"INDEPENDENT AUDITOR") to audit the financial books and records that the other
Party (the "AUDITED PARTY) is expressly required to keep under this Agreement
with respect to payments owed to the Auditing Party, or Glass Product Expenses
to be recorded, under this Agreement (the "RELEVANT BOOKS AND RECORDS"). The
Audited Party may require the Independent Auditor, prior to any such audit, to
agree to reasonable confidentiality restrictions and the Independent
33
Auditor shall (i) treat as confidential information of the Audited Party all
information obtained in connection with such audit and (ii) not disclose the
same to the Auditing Party or others, except that the Independent Auditor may
disclose to the Auditing Party only whether the audit revealed an underpayment,
or an inaccuracy with respect to Glass Product Expenses, and the amount of such
underpayment or inaccuracy, if any. An audit shall be permitted only upon at
least thirty (30) days' prior written notice to the Audited Party, and in no
event more than once during any calendar year (unless an audit in any calendar
year revealed an underpayment, in which case the Auditing Party may conduct one
(1) additional audit in such calendar year). The Independent Auditor shall
conduct the audit during normal business hours solely as necessary to confirm
the accuracy of the Relevant Books and Records. The Independent Auditor may not
be paid on a contingency fee basis and shall provide its report simultaneously
to both Parties. The Auditing Party shall be solely liable for all costs and
expenses accrued in connection with such audit. In the event the audit reveals
an underpayment or inaccuracy, prompt adjustment of all unpaid amounts owed
under this Agreement shall be made by the Audited Party, provided that nothing
contained herein is intended to waive or limit the Audited Party's right to
contest the accuracy of any finding of the Independent Auditor.
6. WARRANTIES AND DISCLAIMERS
6.1 Authority. Each Party represents and warrants to the other Party that
(a) it has all requisite corporate power and authority to execute and deliver
this Agreement and to carry out the provisions of this Agreement, and (b) the
execution, delivery and performance by such Party of this Agreement have been
approved by all requisite action on the part of such Party, and no other
corporate proceeding on the part of such Party is necessary to authorize this
Agreement.
6.2 No Conflicts. Each Party represents and warrants to the other Party
that (a) it has the right, and will continue during the Agreement Term to have
the right, to grant to the other Party and its Subsidiaries the licenses, rights
and immunities granted hereunder in accordance with the terms of this Agreement,
and (b) such grant of licenses, rights and immunities and such Party's
execution, delivery and performance of this Agreement do not, and will not
during the Agreement Term, conflict with, violate or result in any breach of any
provision of any license, agreement, contract, understanding, arrangement,
commitment or undertaking of any nature (whether written, oral or otherwise) to
which such Party is a party.
6.3 No Encumbrances With Respect To Owned Licensed Patents.
6.3.1 ASML Representations. ASML hereby represents and warrants to
Nikon that, (a) except as set forth in Schedule B-1, no Lithography Patent that
is either solely assigned to and/or owned (use of the non-defined term being
intentional) by, or Co-Owned by, ASML or its Subsidiaries as of the Effective
Date (but excluding any Excluded Claims thereof) is subject to any lien,
encumbrance or other restriction (including any contractual restriction such as
an exclusive license) that would prevent or prohibit ASML or its Subsidiaries
from granting to Nikon the full scope of the rights granted under Section 2.2
(excluding rights that employees may have in inventions that they develop while
employed by ASML or its Subsidiaries, such as, for example, the right to receive
monetary compensation or assert preemptive rights), and (b)
34
except as set forth in Schedule B-2, since January 1, 1996, neither ASML nor its
Subsidiaries have assigned any issued Patents to a third party, except for
assignments that were the result of Patent maintenance decisions in the ordinary
course of ASML's or its Subsidiaries' business, which Patents would, if Owned by
ASML or its Subsidiaries as of the Effective Date, constitute a Lithography
Patent included within the ASML Licensed Patents.
6.3.2 Nikon Representations. Nikon hereby represents and warrants to
ASML that, (a) except as set forth in Schedule C-1, no Lithography Patent that
is either solely assigned to and/or owned (use of the non-defined term being
intentional) by, or Co-Owned by, Nikon or its Subsidiaries as of the Effective
Date (but excluding any Excluded Claims thereof) is subject to any lien,
encumbrance or other restriction (including any contractual restriction such as
an exclusive license) that would prevent or prohibit Nikon or its Subsidiaries
from granting to ASML the full scope of the rights granted under Section 2.1
(excluding rights that employees may have in inventions that they develop while
employed by Nikon or its Subsidiaries, such as, for example, the right to
receive monetary compensation or assert preemptive rights), and (b) except as
set forth in Schedule C-2, since January 1, 1996, neither Nikon nor its
Subsidiaries have assigned any issued Patents to a third party, except for
assignments that were the result of Patent maintenance decisions in the ordinary
course of Nikon's or its Subsidiaries' business, which Patents would, if Owned
by Nikon or its Subsidiaries as of the Effective Date, constitute a Lithography
Patent included within the Nikon Licensed Patents.
6.4 No Transfers or Encumbrances in Anticipation of Litigation or
Execution. Each Party hereby represents to the other, as of the Effective Date,
that it has not transferred or assigned any ownership interest in any Patents to
any third party, or encumbered any Patents in a manner that would prevent or
prohibit such Party or its Subsidiaries from granting to the other Party and its
Subsidiaries the full scope of the rights granted hereunder, in anticipation of
Patent litigation with the other Party or in anticipation of the execution of
this Agreement.
6.5 Inadvertent Omissions. In the event that a Party discovers after the
Effective Date an inadvertent, good faith omission from its Schedule B or
Schedule C, as applicable, such Party shall have the right to update the
applicable Schedule hereunder, provided that such omission does not result in
any material disadvantage to the other Party.
6.6 No Circumvention. No Circumvention. Each Party agrees that, during the
License Term, neither it nor its Subsidiaries shall initiate any corporate
reorganization, merger, spinoff or restructuring that has the foreseeable effect
that Lithography Patents having an Effective Application Date after the
Effective Date, that would be Licensed Patents of such Party absent such
reorganization, merger, spinoff or restructuring, would be Owned by a Related
Company of such Party that is not a Subsidiary of such Party, unless, at the
sole election of the first Party, (a) such Related Company is obligated to grant
or extend to the other Party the licenses, immunities, and other commitments
that are set forth in this Agreement, or (b) such first Party retains sufficient
rights or is granted sufficient sublicensable rights by such Related Company to
grant or extend to the other Party the licenses, immunities, and other
commitments that are set forth in this Agreement. For purposes of this Section
6.6, "RELATED COMPANY"
35
means, with respect to any Person, any other Person that possesses or is under
common possession with such first Person, but only for such time as such
possession exists. For this purpose, "possession" of a Person (and the
correlative "possesses") means beneficial ownership, directly or indirectly, of
securities representing more than fifty percent (50%) of the power to elect such
other Person's board of directors or other managing authority or, in the case of
non-corporate Person, equivalent interests.
6.7 Disclaimer. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER
PARTY MAKES (AND EACH PARTY HEREBY EXPRESSLY DISCLAIMS), WITH RESPECT TO THIS
AGREEMENT, ANY REPRESENTATIONS OR WARRANTIES, WHETHER EXPRESS, IMPLIED OR
STATUTORY, INCLUDING ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE OR NON-INFRINGEMENT, AND ANY WARRANTIES THAT MAY ARISE FROM
COURSE OF PERFORMANCE, COURSE OF DEALING OR USAGE OF TRADE.
7. LIMITATION OF LIABILITY
TO THE EXTENT PERMITTED BY APPLICABLE LAW, IN NO EVENT SHALL EITHER PARTY
BE LIABLE TO THE OTHER PARTY UNDER ANY LEGAL THEORY FOR ANY INDIRECT, SPECIAL,
INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES, or ANY damages for loss of
profits, revenue OR businesS, ARISING OUT OF ANY BREACH OF THIS aGREEMENT BY
SUCH PARTY, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES, OR FOR ANY FINES, PENALTIES, OR LEVIES ASSESSED AGAINST THE OTHER PARTY
BY ANY GOVERNMENTAL AUTHORITY.
8. TERM AND TERMINATION
8.1 Term of Agreement. This Agreement will be effective as of the
Effective Date, and except as expressly set forth in Section 8.2, will continue
in full force and effect until the end of the Agreement Term, after which it
will expire, subject to Sections 8.2.1 and 8.5. Except as expressly set forth in
Section 8.2, neither Party shall have the right, during the Agreement Term, to
terminate this Agreement, any of its obligations hereunder, or any of the
rights, licenses, immunities, or additional commitments granted or extended by
such Party hereunder.
8.2 Expiration/Termination of Licenses.
8.2.1 Expiration of License Term. Except as otherwise set forth in
Sections 2.8.4 and 8.2.2 of this Agreement, and notwithstanding any breach of
this Agreement other than non-payment and failure to cure such non-payment as
set forth in Section 8.2.2, (a) the licenses and rights granted in Sections 2.1
and 2.2 to each Party and its Subsidiaries under the other Party's Class B
Patents shall terminate on the expiration of the License Term, (b) the rights
and licenses granted in Sections 2.1 and 2.2 to each Party and its Subsidiaries
under each of the other Party's Class A Patents shall continue until the
expiration of such Class A Patent, notwithstanding the expiration of the License
Term or Agreement Term, and (c) the immunities
36
and additional commitments under Sections 2.7, 2.9, 3 and 4 shall continue as
provided in those Sections, respectively.
8.2.2 Non-Payment By Zeiss SMT or ASML. If ASML fails to pay to
Nikon any of the payment installments set forth in Section 5.1 on the due dates
thereof or if Zeiss SMT fails to pay to Nikon any of the outstanding payments
described in Section 5.1 of the Nikon-Zeiss Patent Cross-License Agreement (in
the form in which such agreement exists as of the Effective Date) by the due
dates thereof (the "ZEISS SMT PAYMENTS"), then Nikon shall provide written
notice of such non-payment to both ASML and Zeiss SMT. If neither ASML nor Zeiss
SMT pays all delinquent amounts identified in such notice to Nikon within thirty
(30) days after Nikon's written notice of such non-payment, then Nikon shall
have the right to terminate the rights, licenses, immunities, and additional
commitments granted to ASML and its Subsidiaries and their respective Covered
Entities, vendors and Glass Suppliers in Sections 2, 3, and 4. For purposes of
clarification, no termination of such rights, licenses, immunities, and
additional commitments shall terminate or otherwise affect the rights, licenses,
immunities, and additional commitments granted to Nikon and its Subsidiaries,
and their respective Covered Entities, vendors, and Glass Suppliers in Sections
2, 3, and 4. Notwithstanding anything to the contrary in this Section 8.2.2,
once all payments set forth in Section 5.1 and all Zeiss SMT Payments have been
paid to Nikon in full (regardless of whether such payments are made by Zeiss SMT
or ASML), Nikon shall have no right to terminate the rights, licenses and
immunities granted by Nikon and its Subsidiaries to ASML and its Subsidiaries
hereunder.
8.3 Change of Control of Subsidiaries. If a Subsidiary of a Party ceases
to be a Subsidiary of such Party ("CHANGE OF STATUS"), (a) the licenses, rights,
immunities, and additional commitments granted to such Subsidiary and Covered
Entities, vendors, or Glass Suppliers of such Subsidiaries under Sections 2, 3,
and 4 shall immediately terminate upon the consummation of such Change of
Status, without limiting the immunity, as provided in Sections 2.7, 3.1, 3.2,
3.3, and 4.3, as applicable, of the relevant Covered Entities to which such
Covered Entities were entitled as of the date of such termination, and (b) the
licenses, rights and immunities granted in this Agreement under the Licensed
Patents of such Subsidiaries will remain in effect, in accordance with the terms
and conditions of this Agreement, with respect to such of those Licensed Patents
that have an Effective Application Date prior to the consummation of such Change
of Status, but not with regard to any Patents that have an Effective Application
Date after the consummation of such Change of Status.
8.4 Continuing Liability. The expiration of this Agreement shall not
release either Party from any liability, obligation or agreement which has
already accrued under this Agreement at the time of such expiration. The
expiration of this Agreement shall not constitute a waiver or release of, or
otherwise be deemed to prejudice or adversely affect, any rights, remedies or
claims, whether for damages or otherwise, which a Party may have hereunder, at
law or otherwise.
8.5 Survival. The provisions of Sections 1, 2.1 (only with respect to
Class A Patents that are Licensed Patents as provided in Section 8.2.1), 2.2
(only with respect to Class A Patents
37
that are Licensed Patents as provided in Section 8.2.1), 2.4 (only with respect
to Class A Patents), 2.5 (for the periods set forth therein), 2.6, 2.7 (as set
forth therein), 2.8, 2.9.2, 2.9.3, 3.1 (only as set forth therein), 3.2 (only as
set forth therein), 3.3 (only as set forth therein), 4.1, 4.2 (only as set forth
therein), 4.3 (only as set forth therein), 5 (as applicable), 6.7, 7, 8.2, 8.3,
8.4, 8.5, 9, and 10, and any other sections of this Agreement to the extent
expressly provided herein, shall survive, to the extent applicable, the
expiration of this Agreement.
9. ASSIGNMENT
9.1 Sale of Lithography Business. Either Party may assign this Agreement,
together with all of its rights and obligations hereunder as well as all of the
rights sublicensed to ASML and its Subsidiaries (and the other benefits
extended) pursuant to Section 2.2 of the Nikon-Zeiss Patent Cross-License
Agreement, to any Person that acquires all of such Party's rights in the
Lithography Patents included within the Licensed Patents of such Party and all
or substantially all of the other assets of the business of manufacturing and
selling Licensed Products of the assigning Party or its Subsidiary, as
applicable, provided, however, that the assigning Party shall remain liable for
the performance of all of its obligations under this Agreement.
9.2 No Other Assignment. Except as permitted under Section 9.1, neither
Party may assign, delegate, or otherwise transfer any of its rights or
obligations under this Agreement to any other Person without the prior written
consent of the other Party. Any purported or attempted assignment, delegation or
other transfer of any rights or obligations under this Agreement in
contravention of the foregoing sentence shall be null and void.
9.3 Transfer of Patents. In the event of any sale, assignment, transfer,
exclusive license, or other conveyance of any ownership interest in a Party's
Licensed Patents ("TRANSFER"), such Party shall (i) ensure that the purchaser,
assignee, transferee, or exclusive licensee ("TRANSFEREE") shall be bound by all
applicable licenses, immunities, covenants, and restrictions contained in this
Agreement, (ii) require that such Transferee agree in writing prior to any such
Transfer to be bound by all licenses, immunities, covenants, and other
restrictions hereunder, and (iii) ensure that such Transfer does not affect such
Party's right and ability to perform all of its obligations under this
Agreement. In no event shall such Party be relieved or excused from any of its
obligations under this Agreement as a result of such Transfer. Notwithstanding
anything to the contrary contained in Section 10.12, each Party shall have the
right to file this Agreement, and ASML shall have the right to file any
sublicense agreement with Zeiss SMT (including, to the extent attached thereto,
the Nikon-Zeiss SMT Patent Cross-License Agreement) or any summary or
translation hereof or thereof with any patent office or other Governmental
Authority in order to notify potential Transferees of the existence and terms of
this Agreement or such sublicense as it relates to any Licensed Patents proposed
to be Transferred, provided that prior to any such filing the other Party shall
be given an opportunity to propose reasonable redactions to be made to the filed
version of this Agreement or such sublicense and the Parties shall cooperate
with respect to agreeing on such redactions. Each Party shall provide all
reasonable cooperation requested by the filing Party, at the filing Party's
38
expense, including, without limitation, the execution, delivery and filing of
any applicable instruments, notifications, forms, affidavits and the like.
9.4 Successors and Assigns. Subject to the other provisions of this
Section 9, this Agreement shall be binding upon and shall inure to the benefit
of the Parties and their respective successors and permitted assigns.
10. MISCELLANEOUS
10.1 Limitation. Nothing contained in this Agreement shall be construed
as:
10.1.1 a warranty or representation by either Party as to the
validity, enforceability or scope of any Patents; or
10.1.2 conferring upon any Person any license, right or immunities
under any Patents except the licenses, rights and immunities expressly granted
hereunder; or
10.1.3 a warranty or representation that any acts licensed hereunder
will be free from infringement or other violation of Patents, copyrights, mask
work rights, trade secrets or other intellectual property rights, other than
infringement of those Licensed Patents under which licenses, rights and
immunities have been expressly granted hereunder; or
10.1.4 an obligation of either Party or its Subsidiaries to file or
maintain any patent application, secure any Patent or maintain any Patent in
force; or
10.1.5 an arrangement to Xxx third parties for infringement of any
Patent or other intellectual property right or conferring any right to Xxx third
parties for infringement of any Patent or other intellectual property right.
10.2 Relationship of the Parties. In the exercise of their respective
rights, and the performance of their respective obligations hereunder, the
Parties are and will remain independent contractors. Nothing in this Agreement
will be construed to constitute the Parties as partners, or principal and agent
for any purpose whatsoever. Neither Party will bind, or attempt to bind, the
other Party to any contract or other obligation, and neither Party will
represent to any third party that it is authorized to act on behalf of the other
Party.
10.3 Governing Law. This Agreement will be governed by and construed in
accordance with the laws of the State of New York, United States of America
(without application of any choice or conflicts of laws rules or principles that
would require the application of the laws of any other jurisdiction).
10.4 Dispute Resolution. The Parties hereby agree that any controversy,
claim or dispute arising out of or relating to this Agreement or the breach
hereof shall be resolved in accordance with the terms and conditions of the
Arbitration Agreement. Except as permitted
39
under the Arbitration Agreement, the Parties hereby give up and waive any rights
they might have to have such disputes decided in a court or jury trial.
10.5 Language. This Agreement is in the English language only, which
language shall be controlling in all respects, and all versions hereof in any
other language shall be for accommodation only and shall not be binding upon the
Parties. All communications and notices to be made or given pursuant to this
Agreement shall be in the English language.
10.6 Entire Agreement; Amendment; Waiver. This Agreement (including the
Schedules hereto), the Arbitration Agreement, the Patent Cooperation Agreement
between Nikon and ASML of even date herewith, and the Nikon-ASML Settlement and
Release Agreement (together the "TRANSACTION AGREEMENTS") constitute the full
and entire understanding and agreement between Nikon and ASML with regard to the
subject matter hereof, and supersede any communications, representations,
understandings and agreements (including the MOU), either oral or written,
between Nikon and ASML prior to, but not on, the date hereof, with respect to
such subject matter. This Agreement may not be altered or amended except by a
written instrument signed by authorized legal representatives of both Parties.
Any waiver of the provisions of this Agreement or of a Party's rights or
remedies under this Agreement must be in writing to be effective. Failure,
neglect or delay by a Party to enforce the provisions of this Agreement or its
rights or remedies at any time will not be construed and will not be deemed to
be a waiver of such Party's rights under this Agreement and will not in any way
affect the validity of the whole or any part of this Agreement or prejudice such
Party's right to take subsequent action. No single or partial exercise of any
right, power or privilege granted under this Agreement shall preclude any other
or further exercise thereof or the exercise of any other right, power or
privilege. Except as expressly set forth in this Agreement, the rights and
remedies provided in this Agreement are cumulative and are not exclusive of any
rights or remedies provided by law or in any other agreement between the
Parties.
10.7 Notices and Other Communications. All notices required or permitted
under this Agreement shall refer to this Agreement and will be deemed given: (a)
when delivered personally; (b) when sent by confirmed facsimile; or (c) three
(3) business days after deposit with an internationally recognized commercial
overnight carrier specifying next-day delivery, with written verification of
receipt. All such notices, requests, demands and other communications shall be
addressed as follows:
If to Nikon:
Nikon Corporation
0-0, Xxxxx-xxx 0-xxxxx
Xxxxxxxxx-xx
Xxxxx 000-0000
Xxxxx
Attn: General Manager, Intellectual Property Department
Fax: x00-0-0000-0000
40
With a copy to (which shall not constitute notice):
Xxxxxxxx & Xxxxxxxx LLP
000 Xxxxxx Xxxxxx
Xxx Xxxxxxxxx, XX 00000
Attn: Xxxxxx Xxxxxxxx
Fax: x0 (000) 000-0000
If to ASML:
ASML Holding N.V.
De Run 6501
5504 DR Veldhoven
The Netherlands
Attn: General Counsel
Fax: x00 (00) 000-0000
With a copy to (which shall not constitute notice):
Xxxxxx Xxxxxx Xxxxxxxxx Xxxx and Xxxx LLP
00 Xxxxx Xxxxxx
Xxxxxx, XX 00000
Attn: Xxxxxxx X. Xxx
Fax: x0 (000) 000-0000
or to such other address or facsimile number as a Party may have specified to
the other Party in writing delivered in accordance with this Section 10.7.
10.8 Expenses. Except as otherwise expressly set forth in this Agreement,
each Party will bear its own costs and expenses, including fees and expenses of
legal counsel and other representatives used or hired in connection with the
transactions described in this Agreement.
10.9 Severability. If any provision in this Agreement is found or held to
be invalid or unenforceable, then the meaning of such provision will be
construed, to the extent feasible, so as to render the provision enforceable and
still achieve the Parties' intent in entering into this Agreement, and if no
feasible interpretation would save such provision, it will be severed from the
remainder of this Agreement, which will remain in full force and effect. In such
event, the Parties and Zeiss SMT will use all reasonable efforts to negotiate,
in good faith, a substitute, valid and enforceable provision or agreement which
most nearly effects the Parties' intent in entering into this Agreement.
10.10 Construction. This Agreement shall be deemed to have been drafted by
both Parties and, in the event of a dispute, neither Party shall be entitled to
claim that any provision should be construed against the other Party by reason
of the fact that it was drafted by the other Party.
41
10.11 Execution. This Agreement may be executed in counterparts, each of
which so executed will be deemed to be an original and such counterparts
together will constitute one and the same agreement. Execution and delivery of
this Agreement by exchange of facsimile copies bearing the facsimile signature
of a Party shall constitute a valid and binding execution and delivery of this
Agreement by such Party.
10.12 Confidentiality of Terms. Neither Party shall (and shall ensure that
none of its agents, representatives or attorneys shall) disclose the terms of
this Agreement to any third parties, except that either Party may disclose the
existence of this Agreement to third parties, and may disclose the terms of this
Agreement (a) to the extent reasonably necessary, in confidence, to its legal
counsel and accountants, (b) to Governmental Authorities as required by any
applicable Law or the applicable rules or regulations of any securities exchange
on which any of such Party's securities are listed (in either case, as
determined by such Party upon advice of counsel), provided that prior to any
such required disclosure, the disclosing Party gives the non-disclosing Party
reasonable advance notice of such disclosure, minimizes the scope of such
disclosure (including by making redactions to documents provided as part of such
disclosure and by cooperating with the non-disclosing Party to obtain protective
orders) to the extent permitted under applicable Law, and otherwise coordinates
with the non-disclosing Party with respect to the scope of such disclosure, (c)
in connection with the enforcement of this Agreement or any other Transaction
Agreement, or (d) as permitted under Section 9.3. Notwithstanding the foregoing,
neither Party will be prohibited from disclosing, in their entirety, the terms
of any of Sections 2.8, 3.1, 3.2, 3.3, 4.2 or 4.3, and the obligations of the
Parties under this Section 10.12 shall not apply to any terms of this Agreement
that have been disclosed by either Party as permitted by subclauses (a)-(d)
above.
10.13 Publicity. No Party shall (and shall ensure that none of its agents,
representatives or attorneys shall) originate any publicity, news release, or
other public announcement, written or oral, relating to this Agreement without
the prior written approval of each other Party except as otherwise required by
Law. Such approval shall not be unreasonably withheld. Notwithstanding the
foregoing, nothing in this Section 10.13 shall prevent or prohibit, or be
construed to require approval by any Party for, (a) any disclosure of
information or matters relating to this Agreement to a Party's customers,
resellers, or suppliers in the ordinary course of business where, with respect
to information that constitutes confidential information of another Party under
one or more of the Transaction Agreements, such disclosure is subject to the
terms of a non-disclosure agreement in customary form, or (b) any publicity,
news release or other public announcement of information that (i) is or becomes
available to the general public other than in violation of Section 10.12 or
obligations of confidentiality under any other Transaction Agreement, or (ii)
otherwise does not constitute confidential information of another Party under
the Transaction Agreements.
10.14 Section 365(n). Each Party, as licensor, acknowledges and agrees
that the licenses, immunities and rights granted under this Agreement to the
other Party and its Subsidiaries by such licensor are licenses, immunities and
rights as to "intellectual property" within the definition of Section 101(35A)
of the United States Bankruptcy Code (the "CODE").
42
The Parties hereto further agree that, in the event of the commencement of a
bankruptcy proceeding by or against the licensor Party under the Code, the
licensee Party and its Subsidiaries shall be entitled, at such licensee Party's
option, to retain all their licenses, immunities and rights under this
Agreement, including without limitation the licenses and immunities granted
under Sections 2.1 and 2.2, respectively, pursuant to Code Section 365(n). To
the extent that United States law is held by a court of competent jurisdiction
not to apply with respect to a non-US bankruptcy proceeding of a Party, each
Party shall take all actions that are reasonably necessary to effectuate the
intent of the foregoing provisions in the country in which it and each
Subsidiary holding any rights with respect to its Licensed Patents is
incorporated or conducts its business, subject to any mandatory provisions of
applicable law. Without limiting the generality of the foregoing, Nikon agrees
to take all reasonable measures necessary to ensure the survival of the rights,
immunities, and licenses granted to ASML and its Subsidiaries in the event that
Nikon or any of its Subsidiaries is subject to a bankruptcy proceeding under the
laws of Japan, and ASML agrees to take all reasonable measures necessary to
ensure the survival of the rights, immunities, and licenses granted to Nikon and
its Subsidiaries in the event that ASML or any of its Subsidiaries is subject to
a bankruptcy proceeding under the laws of the Netherlands, in each case in
accordance with applicable law.
10.15 Nikon-Zeiss Patent Cross-License Agreement. Nikon agrees that it
shall not, without the prior written consent of ASML, agree or consent to any
amendment, modification, or termination of the Nikon-Zeiss Patent Cross License
Agreement that limits in scope or duration Zeiss SMT's rights to grant
sublicenses to ASML and its Subsidiaries (and to extend to ASML, its
Subsidiaries and their respective Covered Entities benefits of immunities,
covenants not to xxx, and additional commitments) under Section 2.2 of the
Nikon-Zeiss Patent Cross License Agreement as of the Effective Date hereof.
10.16 Further Assurances. Each Party agrees (a) to furnish upon request to
the other Party such further information, (b) to execute and deliver to the
other Party such other documents, and (c) to do such other acts and things, in
each case as the Party may reasonably request for the purpose of carrying out
the purposes, terms and conditions of this Agreement.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK.]
43
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
and delivered by their respective duly authorized representatives as of the date
first above written.
NIKON CORPORATION ASML HOLDING N.V.
By: /s/ Kenzi Enya By: /s/ Ton xxx Xxxx
Name: Kenzi Enya Name:Ton xxx Xxxx
Title: Vice Chairman and Title: VP and Chief IP Counsel
Chief Financial Officer
44
SCHEDULE A
EXCLUDED CLAIMS LIST
To be added pursuant to Section 2.3.1.
45
SCHEDULE B-1
ASML DISCLOSURES PURSUANT TO SECTION 6.3.1(a)
None.
46
SCHEDULE B-2
ASML DISCLOSURES PURSUANT TO SECTION 6.3.1(b)
COUNTRY NAME FILING NR FILING DATE PATENT NR ASSIGNEE
European (E.P.O.) 12/19/2001 1 217 450 Xxxx Zeiss Stiftung
Germany DE 10061480.9 12/8/2000 Xxxx Zeiss Stiftung
Germany 10144246.7 9/5/2001 Xxxx Zeiss Stiftung
47
SCHEDULE C-1
NIKON DISCLOSURES PURSUANT TO SECTION 6.3.2(a)
All Patents that are based on the same priority document as the Patents listed
in the following table shall be deemed part of Schedule C-1 without being
expressly listed in the following table.
COUNTRY NAME APPLICATION NUMBER DATE OF FILING LAID OPEN NUMBER DATE LAID OPEN PATENT NUMBER COUNTERPART PATENTS
------------ ------------------ -------------- ---------------- -------------- ------------- -------------------
***
48
SCHEDULE C-2
NIKON DISCLOSURES PURSUANT TO SECTION 6.3.2(b)
***
49
SCHEDULE D
SCHEDULE D PATENTS
The three Patent applications having international publication numbers:
***
***
***
50
SCHEDULE E
DESIGNATED NIKON PATENTS
The three Patent applications having international publication numbers:
***
***
***
51
SCHEDULE F
SPECIFIED ENTITY
***, a corporation organized under the laws of ***.
