EXHIBIT 10.30
THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL
TREATMENT REQUEST. THE REDACTED MATERIAL IS MARKED "[***]" AND HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
INTERIM PATENT LICENSE AGREEMENT
THIS AGREEMENT is entered into this 28th day of June, 2000 (the
"Effective Date") by and between CFM Technologies Inc., having a place of
business at 000 Xxxxxxxx Xxxx., Xxxxx, XX 00000 ("CFM"), CFMT Inc., having a
place of business at 0000 Xxxxx Xxxx, Xxxxx 000X, Xxxxxxxxxx, XX 00000,
hereinafter collectively referred to as "Licensor," and STEAG Electronic Systems
AG, a German company having a place of business at Xxxxxxxxxxxxxxx Xxxxxxx 0-0,
00000 Xxxxx, Xxxxxxx, hereinafter referred to as "Licensee" or "STEAG."
WITNESSETH
WHEREAS, STEAG and Xxxxxxx Technology Inc., having a place of business at
0000 Xxxx Xxxxxx Xxxxxx, Xxxxxxx, XX 00000, hereinafter referred to as
"Mattson", are entering into a Strategic Business Combination Agreement,
pursuant to which, among other things, Mattson will acquire certain subsidiaries
of STEAG, including subsidiaries engaged in the semiconductor wet processing
business (the "Combination Agreement");
WHEREAS, CFM, M2C Acquisition Corporation ("M2C") and Mattson are entering
into an Agreement and Plan of Merger, pursuant to which, among other things, M2C
will merge with and into CFM, resulting in CFM becoming a wholly-owned
subsidiary of Mattson (the "Merger Agreement" and, together with the Combination
Agreement, the "Transaction Agreements");
WHEREAS, Mattson, STEAG and CFM have agreed that the transactions
contemplated by the Combination Agreement and the Merger Agreement will be
conditioned on each other and will close concurrently with each other, and that
each of such agreements will terminate automatically upon termination of the
other;
WHEREAS, Licensor is the owner of U.S. Patent No. 4,911,761 (the "'761
patent") and of other U.S. and foreign patents relating to wet processing of
semiconductors;
WHEREAS, Licensor and STEAG Electronic Systems, Inc. (f/k/a STEAG
MicroTech, Inc.) are parties to certain litigation involving the `761 patent,
including Civil Action No. 95-442 (RRM) in the U.S. District Court for the
District of Delaware and the pending second appeal in the U.S. Court of Appeals
for the Federal Circuit (No. 00-1086) of a finding of infringement and an
injunction issued by the district court (the "Injunction"); and
WHEREAS, beginning on the Effective Date, and terminating as set forth
hereinafter, Licensor is willing to grant to Licensee and Licensee is willing to
accept a license to the `761 patent and other Licensor patent rights, under the
terms and conditions set forth herein, which license will permit Licensee to
make, have made, use, import, sell and offer to sell equipment that otherwise
may or would constitute infringement of Licensor's patent rights, or be in
violation of the Injunction in the United States;
NOW, THEREFORE, in consideration of the premises and the mutual agreements
herein contained, the parties agree as follows:
ARTICLE 1 - DEFINITIONS
As used in this Agreement, the following terms shall have the following
meanings:
1.01 The term "Patent Rights" shall mean rights under
(a) U.S. Patent Nos. 4,911,761, 4,778,532, and 4,917,123,
(b) reexamination certificate No. B1 4,984,597,
(c) all issued patents, published applications, reissues and
reexamination certificates owned by Licensor reasonably necessary
to practice the subject matter of the patents listed immediately
above, and
(d) all foreign counterparts to any of said patents, published
applications, reissues and reexamination certificates.
1.02 "Licensed Product(s)" shall mean [***], wet bench products, and
replacement parts therefor, the manufacture, use, sale, offer for sale
or importation of which, but for the grant of the license herein,
would constitute infringement of Patent Rights. The [***], as
configured on or before the Effective Date, shall be deemed to be
Licensed Products.
1.03 "Net Sales Value" of Licensed Products sold by Licensee shall mean the
gross invoice price received therefor, less allowance for returns and
less (to the extent separately stated on such invoice) any normal
discounts and allowances actually granted and less any sales, use or
other excise taxes and shipping and packaging charges included in such
gross invoice price.
1.04 "Term" of this Agreement shall mean the period described in Section
6.01.
[***]
ARTICLE 2 - LICENSE GRANT
2.01 Subject to the terms and conditions of this Agreement, Licensor hereby
grants to Licensee, and Licensee hereby accepts, a non-exclusive,
non-transferable worldwide license under the Patent Rights, without
the right to grant sublicenses (except as provided in Section 2.02),
to make, have made, use, sell, offer for sale, and import Licensed
Products during the Term of this Agreement.
2.02 Licensee shall have the right to grant sublicenses of the rights
granted pursuant to Section 2.01 to companies affiliated with Licensee
and engaged in the manufacture, sale, offering for sale and servicing
of Licensed Products. For purposes of the preceding sentence, a
company that is "affiliated" with Licensee is one that controls, is
controlled by or is under common control with Licensee, where
"control" refers to ownership of more than 50% of the capital stock or
other equity interests of a company.
2.03 Licensor shall have no right to assert against any customer of
Licensee or any of Licensee's affiliates or any of such customer's
successors and affiliates a claim for infringement of the Patent
Rights based on such person's or entity's use of the Licensed
Products.
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ARTICLE 3 - ROYALTIES AND CONSIDERATION
3.01 Licensee shall pay to Licensor a royalty of [***], with respect to
sales of Licensed Products within the United States after the
Effective Date and during the Term of this Agreement, as such amounts
may be adjusted pursuant to Sections 3.02 through 3.04, below. [***]
3.02 The royalty percentages set forth in clauses (i) and (ii) of Section
3.01 shall each be permanently reduced by Fifty Percent (50%) [***]
from and after the date that the Transaction Agreements are terminated
if such terminations result from any of the following events:
(i) The Merger Agreement is terminated pursuant to Section
8.1(d) thereof as a result of a failure to obtain the
required approvals of the shareholders of CFM; or
(ii) The Merger Agreement is terminated by CFM pursuant to
Section 8.1(j) thereof as a result of a "Parent Corporation
Material Adverse Effect" (as defined in the Merger
Agreement).
3.03 The royalty payments set forth in clauses (i) and (ii) of Section 3.01
[***] from and after, the date that the Transaction Agreements are
terminated if such terminations result from any of the following
events:
(i) The Merger Agreement is terminated by CFM pursuant to
Section 8.1(b) thereof within, but not after, the 90-day
period following the "Termination Date" (as defined in the
Merger Agreement");
(ii) The Merger Agreement is terminated by Mattson pursuant to
Section 8.1(f) thereof due to a "Company Triggering Event"
(as defined in the merger Agreement) or a material breach by
CFM of its obligations to call a shareholders meeting or
prepare and mail a joint proxy statement; or
(iii) The Merger Agreement is terminated by Mattson pursuant to
Section 8.1(g) thereof if CFM shall have willfully and
deliberately refused, prior to the Termination Date" (as
defined in the Merger Agreement), to consummate the
transactions contemplated by the Merger Agreement
notwithstanding the satisfaction or waiver of all conditions
precedent set forth in the Merger Agreement (other than
conditions the satisfaction of which is entirely within the
control of CFM).
3.04 Licensee shall pay to Licensor a one-time, fully-paid up royalty of
[***], payable within ten (10) business days after termination of the
Transaction Agreements, and the royalty payments set forth in clauses
(i) and (ii) of Section 3.01 shall not apply to sales of Licensed
Products after the date of termination, if the Transaction Agreements
are terminated as a result of any of the following events.
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(i) The Combination Agreement is terminated by STEAG pursuant to
Section 8.1(b) thereof within, but not after, the 90-day
period following the "Termination Date" (as defined in the
Combination Agreement);
(ii) The Combination Agreement is terminated by Mattson pursuant
to Section 8.1(h) thereof due to a breach by STEAG other
than breaches described in Section 6.02 (i) or (ii) of this
Agreement; or
(iii) The Combination Agreement is terminated by STEAG pursuant
to Section 8.1(j) thereof due to the "Closing Stock Price"
(as defined in the Combination Agreement) falling below the
level specified in such provision.
3.05 Except as provided in Section 3.02, 3.03 and 3.04, the royalty
payments set forth in clauses (i) and (ii) of Section 3.01 shall
remain in effect following termination of the Transaction Agreements
and for the remaining Term of this Agreement.
3.06 In the event that a dispute between the parties to either of the
Transaction Agreements arises with regard to the cause of termination
of the Transaction Agreements where the outcome of such dispute would
be determinative of whether a change in the royalty structure pursuant
to Section 3.02, 3.03 or 3.04 would apply, no such change in the
royalty structure shall become effective until the dispute (or the
portion of the dispute which affects the royalty structure) is settled
by the parties or determined by a final, non-appealable judgment by a
court of competent jurisdiction.
3.07 The royalty payments set forth in clauses (i) and (ii) of Section 3.01
shall not apply to sales of Licensed Products after, and the license
granted in this Agreement shall be royalty-free from and after,
expiration or a final, non-appealable determination by a court of
competent jurisdiction of unenforceability or invalidity of the `761
patent.
ARTICLE 4 - PAYMENT TERMS
4.01 All royalties payable pursuant to Article 3 hereof shall be paid in
United States Dollars by wire transfer on a quarterly basis together
with an identification of the Licensed Products sold during that
quarter sufficient to permit Licensor to verify preliminarily the
correctness of the royalty payment.
4.02 Payments provided for in this Agreement shall, when overdue, bear
interest at a rate per annum equal to one and one-half percent
(1 1/2%) per month from the date such payment shall be due until
payment shall be received by Licensor.
ARTICLE 5 - AUDIT RIGHTS
Licensee shall keep accurate and complete books of account containing
record of all data necessary for the determination of the amount of
the royalty payments that shall become due under Article 3 hereof, and
shall permit Licensor or its agent to examine such books of account at
all reasonable times during normal business hours to such extent as
may be necessary to determine the accuracy or inaccuracy of any of the
statements to be rendered by Licensee pursuant to Article 4 hereof.
Such inspection shall be completed at the expense of Licensor,
provided that if any deficiency exceeding three percent (3%) of the
money actually due shall be found in connection with the computation,
the cost of such inspection shall be borne by Licensee.
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ARTICLE 6 - TERM AND TERMINATION
6.01 Except as set forth below in this Article 6, the Term of this
Agreement shall commence on the Effective Date and end on the date
when the last of the patents included in the Patent Rights shall have
(i) expired or (ii) been determined to be invalid or unenforceable by
a final, non-appealable judgment by a court of competent jurisdiction.
6.02 Notwithstanding the provisions of Section 6.01, the Term shall end
upon termination of the Transaction Agreements if such terminations
result from any of the following events:
(i) The Combination Agreement is terminated by Mattson pursuant
to Section 8.1(g) thereof due to a breach by STEAG of
certain obligations under Section 5.3(a) of the Combination
Agreement;
(ii) The Combination Agreement is terminated by Mattson pursuant
to Section 8.1(h) thereof if STEAG shall have willfully and
deliberately refused, prior to the "Termination Date" (as
defined in the Combination Agreement), to consummate the
transactions contemplated by the Combination Agreement
notwithstanding the satisfaction or waiver of all conditions
precedent set forth in the Combination Agreement (other than
conditions the satisfaction of which is entirely within the
control of STEAG); or
(iii) The Transaction Agreements shall have previously been
terminated other than for any of the reasons described in
Section 3.02(i) or 3.03(ii) or (iii) and, within twenty-four
(24) months after the date of termination Mattson and STEAG
enter into a definitive agreement for a transaction
substantially similar to the transactions contemplated by
the Combination Agreement which includes STEAG's wet
processing business but does not involve CFM; PROVIDED, that
this Section 6.02(iii) shall not apply if, prior to
consummation of such new transaction between Mattson and
STEAG, CFM shall have entered into a definitive agreement
with respect to a transaction which would constitute an
"Acquisition Transaction" (as defined in the Merger
Agreement); PROVIDED, FURTHER, that the Term shall not be
affected if STEAG and Mattson enter into a transaction that
does not include STEAG's wet processing business .
6.03 In the event that a dispute between the parties to either of the
Transaction Agreements arises with regard to the cause of termination
of the Transaction Agreements where the outcome of such dispute would
be determinative of whether the Term would end pursuant to Section
6.02, the Term shall not end and this Agreement shall continue in full
force and effect until the dispute (or the portion of the dispute
which affects the Term) is settled by the parties or determined by a
final, non-appealable judgment by a court of competent jurisdiction.
6.04 Upon consummation of the transactions contemplated by the Transaction
Agreements, the license granted in this Agreement shall terminate with
respect to any affiliate of STEAG not acquired, directly or
indirectly, by Mattson. Notwithstanding the preceding sentence and the
provisions of Article 3, if any affiliate of STEAG currently provides
goods or services to STEAG's wet processing business and continues to
provide substantially similar goods or services to Mattson or any of
its subsidiaries following the closing under the Transaction
Agreements, the license granted hereby shall continue with respect to
such affiliate as and to the extent necessary to enable such affiliate
to provide such goods and services to Mattson and its subsidiaries,
except that such license shall be on a royalty-free basis.
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6.05 In the event that Licensee shall fail to comply with any material term
of this Agreement, Licensor shall have the option to give Licensee a
written notice of default. If Licensee shall not have cured such
default within thirty (30) days of such notice, Licensor shall have
the right to terminate this Agreement effective immediately upon
written notice. Notwithstanding the foregoing, Licensor shall have the
right to terminate this Agreement immediately upon written notice if
Licensee is required to pay the amount described in Section 3.04 of
this Agreement and fails to do so within the time period specified in
such Section 3.04.
6.06 The provisions of Articles 1, 5, 6, 7, 9, 10, 11, 13, and 14 shall
survive expiration or termination of this Agreement. In addition,
expiration or termination of this Agreement shall not relieve the
parties of any obligations accruing prior to such expiration or
termination, including the obligations set forth in Article 3 and 4.
The remainder of the earned royalties due to Licensor pursuant to
Article 3, if any, shall be paid by Licensee within twenty (20) days
from the effective date of termination of this Agreement.
ARTICLE 7 - NOTICE
All notices, requests or communications hereunder shall be in writing
and shall be deemed to have been fully given (i) upon delivery, if
delivered personally against written receipt; (ii) three (3) days
after posting by certified mail, postage prepaid, return receipt
requested; (iii) upon confirmed receipt, if delivered by telecopier;
or (iv) the next day if delivered by a recognized overnight commercial
courier, addressed in each instance to the parties at the following
address:
CFM Technologies Inc. STEAG Electronic Systems AG
000 Xxxxxxxx Xxxx., Xxxxxxxxxxxxxxx Xxxxxxx 0-0
Exton, PA, 19341 00000 Xxxxx, Xxxxxxx
Attn.: Xxxxx X. Xxxxxxx, Secretary Attn.: General Counsel
Facsimile No: 000-000-0000 Facsimile No: 011-49-201-801-6684
ARTICLE 8 - WARRANTIES
8.01 Licensor warrants and represents to Licensee that Licensor has the
right, title and interest to the Patent Rights sufficient to grant the
licenses and rights granted herein.
8.02 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, AND TO THE
MAXIMUM EXTENT PERMITTED BY LAW, LICENSOR MAKES NO REPRESENTATIONS AND
EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS' CLAIMS, ISSUED OR
PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT
DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A
REPRESENTATION MADE OR WARRANTY GIVEN BY LICENSOR THAT THE PRACTICE BY
LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT INFRINGE THE
PATENT RIGHTS OF ANY THIRD PARTY.
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ARTICLE 9 - LIMITATION OF LIABILITY
EXCEPT FOR BREACH OF SECTION 2.01, IN NO EVENT SHALL EITHER PARTY BE
LIABLE FOR INCIDENTAL, SPECIAL, CONSEQUENTIAL OR PUNITIVE DAMAGES OF
ANY KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST
PROFITS, REGARDLESS OF WHETHER SUCH PARTY SHALL BE ADVISED, SHALL HAVE
OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY OF THE
FOREGOING.
ARTICLE 10 - INDEMNITY
Licensee shall indemnify and hold harmless Licensor, its officers,
directors, employees, and affiliates from any third party product
liability loss, claim, demand, action, liability and expense
(including legal and expert fees and costs) arising out of, resulting
from or related to the manufacture, sale, use or import of Licensed
Products. Licensee shall control the investigation and defense of any
such action alleging such liability, with counsel of its choice
reasonably satisfactory to Licensor. Licensor shall cooperate in any
defense at Licensee's expense. Licensee may settle any such action
without Licensor's consent provided that there is no cost to Licensor
and otherwise with Licensor's consent, which will not be withheld
unreasonably.
ARTICLE 11 - CONFIDENTIALITY
11.01 Each of the parties undertakes to maintain the confidentiality of the
terms and conditions of this Agreement, provided that the parties may
disclose the existence and the terms and conditions of this Agreement
to their accountants, attorneys and in financial transactions, or as
required to enforce their rights hereunder, or as otherwise may be
required by law. Nothing contained herein shall prohibit either party
from disclosing publicly, or otherwise disclosing to third parties,
the existence of this agreement between the parties. The restrictions
in this Section 11.01 shall cease to apply to a party with respect to
information which has been disclosed publicly by the other party.
11.02 Each party agrees that the terms and existence of this agreement
shall not be used as evidence or otherwise in support of patent
litigation between them.
ARTICLE 12 - ASSIGNMENT
Licensee may not assign this Agreement, in whole or in part, without
the prior written consent of Licensor. Notwithstanding the preceding
sentence, except as provided in Section 6.02 (iii), Licensee may,
without the consent of Licensor, transfer or assign all of its rights
and obligations under this Agreement to any entity that is Licensee's
successor in connection with a merger or sale or other transfer of all
or substantially all of Licensee's business or assets, PROVIDED that
such assignee agrees in writing to be bound by the terms and
conditions of this Agreement.
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ARTICLE 13 - DISPUTE RESOLUTION
Except for the right of either party to apply to a court of competent
jurisdiction for a temporary restraining order, a preliminary
injunction, or other equitable relief, any and all claims, disputes or
controversies arising under, resulting from, or related to this
Agreement ("Dispute"), shall be resolved by negotiation and, if
necessary, by binding and final arbitration, as follows. The party
raising such Dispute shall promptly advise the other party in writing
describing in reasonable detail the nature of such Dispute. The senior
management of the parties shall by good faith negotiations attempt to
resolve the Dispute within thirty (30) days of the notice of Dispute.
In the event the senior management negotiations shall not resolve the
Dispute in the thirty-day period, then either party may seek relief
before a mutually acceptable arbitrator under the rules of the AAA in
arbitration proceedings held in New York City, New York; provided,
however, all substantive issues, including relief, shall be governed
by, interpreted and construed in accordance with Section 14.01. All
proceedings shall be conducted in the English language. Any award
rendered in such arbitration may be enforced by either party in any
Court of competent jurisdiction.
ARTICLE 14 - GENERAL PROVISIONS
14.01 This Agreement shall be governed by, interpreted and construed in
accordance with the laws of the Commonwealth of Pennsylvania. The
parties irrevocably consent and submit to the exclusive jurisdiction
of the state and federal courts of Pennsylvania, as applicable,
subject to the dispute resolution procedures set forth in Article 13.
14.02 Licensor acknowledges that it is subject to United States laws and
regulations controlling the export of technical data, computer
software and other commodities and agrees not to export or allow the
export or re-export of such data, software or other commodities in
violation of such laws and regulations.
14.03 This Agreement may be signed in any number of counterparts, each of
which shall be an original, with the same effect as if the signatures
were upon the same instrument.
14.04 This Agreement constitutes the entire agreement between the parties
with respect to the subject matter hereof and supersedes all prior
agreements, understandings and negotiations, both written and oral,
between the parties with respect to the subject matter of this
Agreement. No representation, inducement, promise, understanding,
condition or warranty not set forth herein has been made or relied
upon by either party hereto.
14.05 In the event any provision of this Agreement is held by a tribunal of
competent jurisdiction to be contrary to the law, the remaining
provisions of this Agreement will remain in full force and effect. The
parties hereto agree to replace such unenforceable provision with a
new provision which has the most nearly similar permissible economic
or other effect.
14.06 No failure or delay by either party in enforcing any right or remedy
under this Agreement shall be construed as a waiver of any future or
other exercise of such right or remedy by such party. No waiver shall
be effective unless made in writing and signed by an authorized
representative of the waiving party.
14.07 No modification of this Agreement shall be binding unless it is in
writing and is signed by an authorized representative of the party
against whom enforcement of the modification is sought.
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14.08 The parties to this Agreement are and shall remain independent
contractors. Nothing herein shall be construed to create a partnership
or joint venture between them, and neither shall have the power of
authority to bind or obligate the other in any manner not expressly
set forth herein.
14.09 This Agreement shall not be construed for or against any party based
on any rule of construction concerning who prepared this Agreement or
otherwise.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year above first written.
CFM TECHNOLOGIES INC. STEAG ELECTRONIC SYSTEMS AG
Signature: By: /S/ XXXXX X. XXXXXXX Signature: By: /S/ XXXXXXXX XXXXXXXX
Name: Xxxxx X. Xxxxxxx Name: Xxxxxxxx Xxxxxxxxx
Title: ____________________ Title: ____________________
CFMT, INC.
Signature: ____________________ Signature: ____________________
Name: ____________________ Name: ____________________
Title: ____________________ Title: ____________________
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