Exhibit 10.19
TECHNOLOGY LICENSE AGREEMENT
This TECHNOLOGY LICENSE AGREEMENT (the "Agreement"), made this 5th day
of May, 2006 (the "Effective Date"), is by and among MICRON TECHNOLOGY, INC., a
Delaware corporation ("Micron"), PHOTRONICS, INC., a Connecticut corporation
("Photronics") and MP MASK TECHNOLOGY CENTER, LLC, a Delaware limited liability
company (the "Company").
RECITALS
WHEREAS, Micron and Photronics have formed the Company to develop and
fabricate advanced Reticles primarily dedicated to supporting Micron's prototype
and production Reticle requirements as directed by Micron and pursuant to the
Limited Liability Company Operating Agreement of even date herewith (the
"Operating Agreement") by and between Micron and Photronics;
WHEREAS, Micron and Photronics own certain technology assets that each
will license pursuant to the terms and conditions of this Agreement (i) to the
Company so that the Company may fulfill its Objectives (defined below) and (ii)
to each other for the purposes set forth herein; and
WHEREAS, Micron, Photronics and the Company have entered into separate
supply agreements under which Micron and Photronics will be able to obtain the
Reticles developed and fabricated using the technology licensed hereunder.
NOW, THEREFORE, in consideration of the promises contained, and of the
obligations herein made and undertaken, the parties hereto do hereby covenant
and agree follows:
1. DEFINITIONS
For purposes of this Agreement, the definitions set forth in this
Section 1 shall apply to the respective capitalized terms. All capitalized terms
not defined in this Agreement shall have the meaning set forth in the Operating
Agreement.
1.1 "Approved Technology" shall mean (i) all Technology and Software
initially provided by Micron or Photronics to the Company hereunder in
accordance with Section 3, and (ii) all other Technology and Software that has
been approved by the Technology Steering Committee for use in the Company.
1.2 "Company Improvements" shall mean (i) all Improvements made by or
for the Company to any of the Micron Technology, Micron Software or the
Photronics Technology; (ii) all documentation, works of authorship, know-how,
data and data bases, formulae, algorithms, processes, inventions and discoveries
(whether or not patentable), Software, ideas, concepts, techniques, methods,
content, technical information; engineering, production and other designs;
drawings, schematics, tooling requirements, and other information, technology
and materials, tangible or intangible, conceived, created, developed, first
fixed in a tangible medium or first
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Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
reduced to practice by, for or at the Company; and (iii) all Intellectual
Property Rights in each of the foregoing.
1.3 "Competing Product" means [****].
1.4 "Copy Critical" shall refer to [****]
1.5 "Copy Exact" shall refer [****].
1.6 "Designated Facility" means [****]
1.7 "Improvements" shall mean all derivative works of, improvements
upon and modifications to Technology.
1.8 "Intellectual Property Right" means any patents, patent
applications, including with respect to patents any patent rights granted upon
any reissue, division, continuation or continuation-in-part applications now or
hereafter filed, or utility models issued or pending, any registered and
unregistered design rights, any copyrights (including the copyright on
Software), trade secrets, know-how, or any other intellectual property rights or
proprietary rights whether registered or unregistered, and whether now known or
hereafter recognized in any jurisdiction, excluding trade names, service names,
trademarks, service marks, and trade dress.
1.9 "Licensed Technology" shall mean the New Technology, Standard
Technology and Unrestricted Technology, as applicable. All Company Improvements
shall be considered Licensed Technology, subject to classification thereof by
the Technology Steering Committee in accordance with Section 3.4.
1.10 "Micron Intellectual Property Rights" shall mean all Intellectual
Property Rights (i) owned by Micron or sublicenseable by Micron on the terms of
this Agreement without obligation to pay additional consideration to a licensor;
and (ii) necessary or useful to fulfill the Objectives or to design, develop or
manufacture Reticles, including any Intellectual Property Rights assigned by the
Company to Micron in accordance with this Agreement.
1.11 "Micron Software" shall mean the Software owned by Micron that
Micron provides to either the Company or to Photronics in accordance with this
Agreement.
1.12 "Micron Technology" shall mean all Technology (i) owned by Micron
or sublicenseable by Micron to the Company or to Photronics on the terms of this
Agreement without obligation to pay additional consideration to a licensor; and
(ii) necessary or useful to fulfill the Objectives or to design, develop or
manufacture Reticles, including any Company Improvements owned by Micron
pursuant to this Agreement.
1.13 "New Photronics Facility" means the new Photronics Facility to be
built pursuant to the Transaction Documents in Boise, Idaho.
1.14 "New Technology" shall mean [****].
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Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
1.15 "Objectives" shall mean the following business purposes for which
the Company has been created and for which the Company is licensed hereunder:
(i) to develop and produce prototypes for advanced, next-generation, high-end
Reticles that meet Micron's specifications as provided to the Company from time
to time; (ii) to achieve sustainable, leading edge production capabilities using
only Approved Technology; (iii) to manufacture in production volumes approved
Reticles for Micron that meet Micron's specifications and fulfill Micron's
Reticle requirements; and (iv) to the extent the Company has excess capacity
after fulfilling all of Micron's Reticle requirements as set forth above, and as
permitted herein and pursuant to the Supply Agreement between the Company and
Photronics, manufacture prototype and production Unrestricted Reticles for
Photronics customers using only Approved Technology. These Objectives may be
changed in accordance with the procedures set forth in the Operating Agreement.
1.16 "Photronics Controlled Subsidiary" means a subsidiary of
Photronics that is primarily in the business of developing and fabricating
Reticles and that is directly, or indirectly through one or more intermediaries,
[****], and that is controlled by Photronics.
1.17 "Photronics Facility" shall mean [****].
1.18 "Photronics Improvements" means Improvements made by Photronics to
Micron Technology, but not including Improvements made by Photronics employees
or subcontractors while providing services to the Company.
1.19 "Photronics Intellectual Property Rights" shall mean all
Intellectual Property Rights (i) owned by Photronics or sublicenseable by
Photronics on the terms of this Agreement without obligation to pay additional
consideration to a licensor; and (ii) necessary or useful to fulfill the
Objectives or to design, develop or manufacture Reticles.
1.20 "Photronics Technology" shall mean all Technology (i) owned by
Photronics or sublicenseable by Photronics to the Company or to Micron on the
terms of this Agreement without obligation to pay additional consideration to a
licensor, and (ii) necessary or useful to fulfill the Objectives or to design,
develop or manufacture Reticles.
1.21 "Process Node" means a specific geometry loosely based on a
minimum line width at which semiconductor integrated circuit devices, and the
Reticles used in the manufacture of those devices, are manufactured; e.g.,
[****].
1.22 "Qualified" shall mean [****].
1.23 "Reticle" means a photomask, template or reticle that can be used
to transfer an image to a wafer or workpiece.
1.24 "Software" shall mean computer program instruction code, whether
in human-readable source code form, machine-executable binary form, firmware,
scripts, interpretive text, or otherwise, necessary or useful to design, develop
or manufacture Reticles, including related documentation. "Software" does not
include databases and other information
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stored in electronic form, other than executable instruction codes or source
code that is intended to be compiled into executable instruction codes.
1.25 "Specifications" shall have the meaning given thereto in the
Photronics to Micron Supply Agreement of even date herewith.
1.26 "Standard Technology" shall mean [****]. A list of Standard
Technology, if any, as of the Effective Date is set forth in Exhibit A hereto.
1.27 "Technology" shall mean all documentation, works of authorship,
know-how, data and data bases, formulae, algorithms, processes, inventions and
discoveries (whether or not patentable), ideas, concepts, techniques, methods,
content, technical information, engineering, production and other designs,
drawings, schematics, tooling requirements, and other information, technology
and materials, tangible or intangible, and necessary or useful to fulfill the
Objectives or to design, develop or manufacture Reticles. "Technology" shall not
include (i) Software, or (ii) customer data or information related to the
design, development or manufacture of Reticles for either Micron or Photronics
customers.
1.28 "Technology Transfer Protocol" shall mean the preferred
methodology and protocols for Micron to provide Technology implementation
training to Photronics hereunder and for implementing that Technology at the
Designated Facility. The initial Technology Transfer Protocol is attached hereto
as Exhibit B, but may be modified from time to time by the Technology Steering
Committee.
1.29 "Unrestricted Reticles" shall mean Reticles designed for use in
the manufacture of products other than Competing Products.
1.30 "Unrestricted Technology" shall mean [****].
2. LICENSES
2.1 License Grant by Micron to Company. Subject to the terms and
conditions of this Agreement, Micron grants to the Company a royalty-free,
non-exclusive, non-transferable license, without right of sublicense, under the
Micron Intellectual Property Rights and to the Micron Technology (excluding
Software), to develop, make, use, offer to sell and sell Reticles, and to create
Improvements to the Micron Technology, solely in accordance with the Objectives.
2.2 License Grant by Micron to Photronics. Subject to the terms and
conditions of this Agreement, including the classification procedures, use
restrictions, and conditions set forth in Section 3, Micron grants to Photronics
and to each Photronics Controlled Subsidiary a non-exclusive, worldwide,
non-transferable (except as provided in Section 9.4), fully paid-up (subject to
Section 9.4) license, [****] under the Micron Intellectual Property Rights and
to the Licensed Technology, to develop, use, make at Photronics Facilities, have
Unrestricted Reticles made by the Company, import, offer to sell and sell
Reticles, and to create Improvements to the Micron Technology.
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Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
2.3 License Grant by Photronics to the Company. Subject to the terms
and conditions of this Agreement, Photronics grants to Company a royalty-free,
non-exclusive, non-transferable, fully paid-up license, without right of
sublicense, under the Photronics Intellectual Property Rights and to the
Photronics Technology and Photronics Improvements, to develop, make, use,
import, offer to sell and sell Reticles, and to create Improvements to the
Micron Technology, solely in accordance with the Objectives.
2.4 License Grant by Photronics to Micron. Subject to the terms and
conditions of this Agreement, Photronics grants to Micron a royalty-free,
non-exclusive, non-transferable, fully paid-up license, with right of sublicense
only to Photronics Improvements, under the Photronics Intellectual Property
Rights and to the Photronics Technology and Photronics Improvements, to develop,
make, have made, use, import, offer to sell and sell Reticles, and to create
Improvements to the Micron Technology.
2.5 Software Licenses from Micron to the Company. Micron grants to the
Company, subject to the terms and conditions of this Agreement, a royalty free,
nonexclusive, limited license to reproduce, install and execute the Micron
Software that Micron provides to the Company under Section 3 solely for the
Company's internal use and only to fulfill the Objectives. The Company may make
one copy of the Micron Software in machine-readable form for backup, disaster
recovery or archival purposes only, and may make additional working copies
beyond the copies provided by Micron as are reasonably necessary for the
Company's internal use only. All such copies of Micron Software shall include
all of the copyright and other proprietary notices of Micron contained on the
original copy. The Company shall not assign, sublicense, transfer, pledge,
lease, loan, rent to or share the Micron Software with any third party (except
for Photronics personnel performing services for the Company at the Company's
facilities). The Company shall not modify, decompile, reverse engineer,
disassemble, or otherwise translate the Micron Software without the prior
written consent of Micron in each case. Micron may from time to time provide the
Company with human-readable source code for specified Micron Software. In such
event, Micron will grant to the Company, subject to the terms and conditions of
this Agreement, a royalty free, nonexclusive, limited license to reproduce, make
derivative works of, install and execute such specified Micron Software.
2.6 Software License from Micron to Photronics. Upon the Lease
Commencement Date (as defined in the Build to Suit Lease between Micron and
Photronics of even date herewith), [****] and for use only at the New Photronics
Facility, Micron grants to Photronics, subject to the terms and conditions of
this Agreement, a royalty free, non-exclusive, limited license to reproduce,
install, and execute the Micron Software provided to Photronics pursuant to
Section 3 below.
(a) Photronics may make one copy of the Micron Software in
machine-readable form for backup, disaster recovery or archival purposes only,
and may make additional working copies beyond the copies provided by Micron as
are reasonably necessary for Photronics' internal use only at the New Photronics
Facility. All such copies of Micron Software shall include all of the copyright
and other proprietary notices of Micron contained on the original copy. [****]
Photronics shall not assign, sublicense, transfer, pledge, lease, loan, rent to
or share the Micron Software with any third party, or use the Micron Software to
perform
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services for any third party (excluding manufacture of Reticles by Photronics
for third parties as expressly permitted under this Agreement). Photronics shall
not modify, have modified, decompile, reverse engineer, disassemble, or
otherwise translate the Micron Software without the prior written consent of
Micron in each case.
(b) Micron may from time to time, upon the request of Photronics
and in Micron's sole discretion, provide Photronics with human-readable source
code for Micron Software. In such event, Micron will grant to Photronics, a
nonexclusive, limited license to reproduce, make derivative works of, install
and execute such Micron Software only at the New Photronics Facility and on the
terms and conditions agreed to by the parties.
(c) Photronics acknowledges that some of the Software [****] may be
third party Software that Micron does not have the right to sublicense. Micron
will identify applicable third party Software during the process of establishing
the New Photronics Facility. Photronics shall be responsible at its own expense
to independently license such third party Software. If such third party Software
is not available to be licensed, Micron and Photronics shall consult in good
faith about alternatives to such unavailable third party Software [****].
3. DELIVERABLES
3.1 Initial Delivery to the Company. Micron will provide to the Company
immediately after the Effective Date all Technology retained by Micron [****].
In addition, Micron will license and deliver to the Company the Software
retained by Micron [****]. Photronics will provide to the Company promptly after
the Effective Date the Approved Technology listed on Exhibit D hereto. The
parties acknowledge that the ability to provide certain Technology and Software
to the Company will be subject to the right to sublicense third party Technology
and Software pursuant to existing license agreements. [****].
3.2 Initial Delivery to Photronics. Within thirty (30) days following
the Effective Date, Micron will deliver to Photronics or make available to
Photronics the Licensed Technology retained by Micron [****]. In addition,
Micron will provide Photronics certain Micron Software for implementation and
use at the New Photronics Facility in accordance with the license grant set
forth in Section 2.6 above. A list of such Micron Software will be determined by
Micron prior to the Lease Commencement Date and will be provided to Photronics;
the list will include the Micron Software reasonably necessary to assist
Photronics [****]. The Licensed Technology and Micron Software will be made
available for electronic transfer in accordance with means to be mutually agreed
by Micron and Photronics, but where necessary, physical transfers may be
conducted.
3.3 Determination of Approved Technology. The Technology Steering
Committee, pursuant to the Technology Steering Committee charter attached hereto
as Exhibit E, will create general guidelines setting forth the process for
determining whether Technology, regardless of source, will be Approved
Technology for use by the Company and will make such determinations in
accordance with the charter and the guidelines. The Technology Steering
Committee may amend these guidelines from time to time. A negative determination
will not
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preclude the Technology Steering Committee from later determining that
Technology does constitute Approved Technology.
3.4 Determination of Licensed Technology and Availability of Licensed
Technology; Additional Deliveries of Micron Software. Within thirty (30) days
following the end of each calendar quarter, the Technology Steering Committee
will convene to analyze any Technology developed during such calendar quarter at
or by the Company. [****]. From time to time, Micron may provide Photronics
additional Micron Software [****] in accordance with the license grant in
Section 2.6. The quarterly Technology Steering Committee meetings may be used
for purposes of discussing the provision of additional Micron Software to
Photronics.
3.5 Photronics Use Restrictions. [****].
(a) [****].
(b) [****].
(c) [****].
3.6 Photronics Improvements. Photronics will notify the Company and
Micron no less frequently than once each calendar quarter of all Photronics
Improvements recognized, logged, or recorded by Photronics pursuant to its
standard internal processes for logging or tracking Improvements or inventions
on its own behalf or for which Photronics seeks to claim, register, record, or
file an application for recognition as an Intellectual Property Right of
Photronics. Photronics promptly shall make available all such Photronics
Improvements for use by the Company. As part of the quarterly meeting of the
Technology Steering Committee pursuant to Section 3.4 above, the Technology
Steering Committee will review any Photronics Improvements identified by
Photronics as having been created the previous quarter and shall determine
whether to treat the Photronics Improvements as Approved Technology. In
addition, Micron shall have the opportunity to receive access to all Photronics
Improvements, subject to the license grant set forth in Section 2.4.
3.7 Initial Designated Facility. [****].
3.8 New Facility. [****].
4. TRAINING AND SUPPORT.
4.1 Initial Designated Facility Support. Micron agrees to provide
Photronics technical support in connection with technology module transfers (as
the term "module" is used in the Technology Transfer Protocol) [****].
Photronics may request that the designated Micron support personnel travel to
the Designated Facility to provide technical support and Micron will approve
such travel in its reasonable judgment, based on the availability of the
appropriate Micron personnel and the nature of the request, provided that
Photronics shall pay all travel expenses for any Micron approved travel. Micron
shall have no obligation to provide support for
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implementation of Licensed Technology at Photronics facilities that are not the
Designated Facility.
4.2 Support Related to New Photronics Facility. [****].
4.3 On-site Training in Accordance with the Technology Transfer
Protocol. In addition to the support specified in Sections 4.1, 4.2 and 4.5,
Micron and Photronics anticipate that Micron will provide Photronics onsite
training to be conducted at the Company to assist Photronics to learn and
implement the Licensed Technology and Micron Software as authorized by this
Agreement. The anticipated and preferred methodology for conducting this onsite
training is set forth in the Technology Transfer Protocol, although this may be
changed by the TSC . Both Micron and Photronics will make available the
appropriate personnel to conduct and receive the onsite training in accordance
with the guidelines and time periods set forth in the Technology Transfer
Protocol.
4.4 Additional Support. Photronics may request additional support from
the General Manager and the General Manager may agree to provide such additional
support in its sole discretion. Any such additional support hours shall be
charged to Photronics at [****].
4.5 Software Support. Photronics may request Software maintenance and
support from Micron. During the term, this Software maintenance and support
shall be charged to Photronics at [****]. During any wind-down period in which
Software licenses survive the termination of this Agreement or the joint venture
relationship contemplated by the Transaction Documents, Micron agrees to provide
Photronics software maintenance and support services for a period of one (1)
year for any Micron Software then installed at the New Photronics Facility at
rates and upon terms consistent with Micron's then-standard software support
rates and terms. All Micron Software support shall be subject to the terms and
conditions set forth in Section (2) of Schedule 4.1(B) of the Information
Technology, Operational and General Administrative Services Agreement of even
date herewith. To the extent that there is any conflict between the terms and
conditions of the foregoing referenced section and this Agreement, as to
Software support that Micron provides to Photronics, the terms of this Agreement
shall prevail. The New Photronics Facility may from time to time request that
Micron make enhancements or improvements to the Micron Software or other
Software installed at the New Photronics Facility. Any enhancements or
improvements to the Micron Software or other Software installed at the New
Photronics Facility are subject to the prior written approval of the Technology
Steering Committee. Subject to the approval of the Technology Steering
Committee, the same modifications may be made to the Micron Software and other
Software installed at the Company.
5. PAYMENTS
5.1 Initial Technology License Fee. On the Effective Date, Photronics
will pay Micron Seventy-two Million Dollars ($72,000,000) for the initial
provision of Licensed Technology and the licenses granted to Photronics under
this Agreement to use such Licensed Technology. Such amount shall be
non-refundable.
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Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
5.2 Costs. Unless otherwise set forth herein, each of Photronics and
Micron shall bear its own costs and expenses regarding receipt and
implementation of Technology licensed and made available to it under this
Agreement. If Photronics requests that Micron provide any support on-site at a
Photronics Facility, or otherwise requires a Micron employee to travel to
provide technical support pursuant to Section 4 above, Photronics agrees to bear
the reasonable travel and lodging expenses of the applicable Micron personnel in
addition to any other fees that may apply.
5.3 Taxes. To the extent that any taxes are applicable to the license
and delivery of Licensed Technology and Micron Software to Photronics pursuant
to this Agreement, Photronics shall be responsible for and shall pay any
applicable sales, use, excise, withholding or similar taxes, including value
added taxes and customs duties due on the importation of Licensed Technology and
arising from the license to Photronics under this Agreement, excluding any taxes
based on Micron's net income.
6. OWNERSHIP; INTELLECTUAL PROPERTY PROTECTION
6.1 Ownership. Except as expressly set forth herein, this Agreement,
the delivery of Technology and Software and the licenses granted hereunder shall
not affect each of Photronics and Micron's ownership of its Technology and
Software and the Intellectual Property Rights owned by such parties and licensed
or provided to one or more parties under this Agreement. Micron shall own any
and all derivative works, enhancements, improvements or modifications to Micron
Software. All rights not expressly granted herein are reserved.
6.2 Ownership of Company Improvements. Subject to the license grants
set forth in Section 2, Micron shall own all Company Improvements. To the extent
that Photronics or the Company obtains any ownership interest in or to such
Company Improvements, Photronics and the Company hereby assign and agree to
assign to Micron all of their right, title and interest in and to any Company
Improvements. Notwithstanding the foregoing, the Technology Steering Committee
may, in its discretion and upon Photronics' written request, determine that
certain Technology that would otherwise be deemed a Company Improvement but that
is primarily based on or derived from Photronics Technology, shall be deemed a
Photronics Improvement and treated as such under Section 6.3 below.
6.3 Ownership of Photronics Improvements. Subject to the license grants
set forth in Section 2 and disclosure obligations set forth in Section 3.6,
Photronics shall own all Photronics Improvements and any Intellectual Property
Rights in or to such Photronics Improvements.
6.4 Patent Prosecution. Micron shall have the right in its sole
discretion to prepare, file, prosecute and maintain, at its own expense, any
patent applications and Patents claiming Company Improvements, and to conduct
any interferences, re-examinations, reissues, oppositions or requests for patent
term extension or governmental equivalents thereto. Subject to Section 7,
Photronics shall have the right in its sole discretion to prepare, file,
prosecute and maintain, at its own expense, any patent applications and Patents
claiming Photronics
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Improvements, and to conduct any interferences, re-examinations, reissues,
oppositions or requests for patent term extension or governmental equivalents
thereto.
6.5 Cooperation. The Company and Photronics shall each reasonably
cooperate with and assist Micron at their own expense in connection with
Micron's patent prosecution activities related to Company Improvements. The
Technology Steering Committee will (a) facilitate communication among the
parties regarding patent applications with respect to Company Improvements, (b)
discuss and provide input to Micron on patent strategy with respect to Company
Improvements, and (c) upon Micron's or Photronics request, review applications
and other substantive papers with respect to Company Improvements prior to
filing with the patent office.
6.6 Enforcement.
(a) Notice. Micron and Photronics shall each promptly notify
Company of its knowledge of any actual or potential infringement of Intellectual
Property Rights associated with the Approved Technology.
(b) Cooperation; Costs. Each party agrees to render such reasonable
assistance in connection with enforcement activities described in this Section
6.6 as the enforcing party may request. Costs of maintaining any such action
shall be paid by and belong to the party bringing the action.
(c) Recoveries. If any actions are undertaken for the benefit of
the Company, any damages or settlement recovered from any such action (after the
deduction of the costs and fees of the action) shall be allocated as follows:
(i) to Micron if the action was undertaken by Micron; or (ii) to Micron and
Photronics in proportion to their actual monetary contributions to the
undertaking of the action if the action is undertaken for the benefit of the
Company and agreed upon in advance by Micron and Photronics to be shared.
(d) Third Party Claims of Infringement. If the manufacture, use or
sale of any Reticles pursuant to this Agreement results in any claim, suit or
proceeding alleging patent infringement against the Company, Micron or
Photronics, the party named as the defendant in that claim, suit or proceeding
shall promptly notify the other parties hereto in writing setting forth the
facts of such claims in reasonable detail. The named defendant shall keep the
other parties hereto reasonably informed of all material developments in
connection with any such claim, suit or proceeding. The other parties shall,
upon request, provide reasonable assistance and cooperation to the named
defendant and may elect to participate in the defense of the claim, suit or
proceeding, at its own expense using counsel of its own choice.
7. CONFIDENTIALITY
All information provided, disclosed or obtained in connection with this
Agreement or the performance of any of the Parties' activities under this
Agreement shall be subject to the Confidentiality Agreement. Furthermore, the
terms and conditions of this Agreement shall be considered "Confidential
Information" under the Confidentiality Agreement for which each
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Party is considered a "Receiving Party" under such agreement. [****]. To the
extent there is a conflict between this Agreement and the Confidentiality
Agreement, the terms of this Agreement shall control. Furthermore, each party
acknowledges and agrees that the authorized sale of a product under any of the
Transaction Documents shall not constitute a breach of any confidentiality
obligations under this Agreement or the Confidentiality Agreement to the extent
that the authorized sale of a product inherently discloses Confidential
Information of a Party. If the Confidentiality Agreement is terminated or
expires and is not replaced, the Confidentiality Agreement shall continue with
respect to confidential information provided in connection with this Agreement,
notwithstanding such expiration or termination, for the duration of the initial
term and any and all extension periods or until a new Confidentiality Agreement
is entered into between the parties.
8. LIMITED REPRESENTATIONS AND WARRANTIES
8.1 Mutual Representations. Each party hereby represents and warrants
to the other parties as follows:
(a) The execution, delivery and performance of this Agreement by such
party have been duly authorized by all necessary action on the part of
such party.
(b) This Agreement has been duly executed and delivered by such party
and, assuming due authorization, execution and delivery by the other
party, constitutes a legal, valid and binding obligation of such party,
enforceable against such party in accordance with its terms.
(c) To each party's knowledge, such party's execution, delivery and
performance of this Agreement do not (i) violate, conflict with or
result in the breach of any provision of the charter or by-laws (or
similar organizational documents) of such party, or (ii) conflict with
or violate any law or governmental order applicable to such party or
any of its assets, properties or businesses.
8.2 Limited Warranty. Micron and Photronics each represent and warrant
that it has all necessary right, title or interest and has obtained all
necessary consents to perform its obligations and to grant the licenses it
grants under this Agreement, and that, to its knowledge, and without conducting
specific investigation, the Technology or Software that it provides access to
under this Agreement does not infringe upon or misappropriate the Intellectual
Property Rights of any third party.
8.3 Disclaimer. [****].
9. TERMINATION
9.1 Term of Agreement. This Agreement shall become effective on the
first day that it has been executed by both parties and shall remain in force
for ten (10) years and will renew automatically for additional five (5) year
terms, unless either Micron or Photronics terminates its
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Securities and Exchange Commission.
participation in the Company or unless the Agreement is sooner terminated in
accordance with Section 9.2 or Section 9.3 below.
9.2 Termination.
(a) Micron and Photronics may terminate this Agreement upon mutual
written consent.
(b) Either Micron or Photronics may terminate this Agreement at any
time in the event that the other materially breaches this Agreement and, if the
material breach is capable of cure, such material breach continues uncured for a
period of ninety (90) days after written notice thereof. Provided that if the
breach is capable of being cured and the breaching Party has worked diligently
and in good faith since the receipt of the notice to cure such breach, but has
not cured the breach during the allotted time, the cure period will be extended
for an additional ninety (90) days.
9.3 Other Causes for Termination. Upon dissolution of the Company, or
termination of the Operating Agreement, or a Permitted Photronics Change in
Control (as defined in the Operating Agreement), this Agreement shall
automatically terminate, and all rights to receive further disclosures of
Technology and Software shall automatically terminate.
9.4 Permitted Photronics Change in Control License Transfer Fee.
[****].
9.5 Survival. In the event of termination of this Agreement, the
parties' rights and obligations under Sections 4.4, 6, 7, 8, 9.4, 9.5, 10 and 11
shall survive and continue in effect. In addition, and notwithstanding anything
to the contrary contained herein, except for a termination of the Agreement
under Section 9.2(b), the licenses granted under Section 2 shall survive the
termination or expiration of this Agreement, provided that [****].
10. LIMITATION OF LIABILITY
[****] Each party acknowledges that the foregoing limitations are an essential
element of the Agreement between the parties and that in the absence of such
limitations the pricing and other terms set forth in this Agreement would be
substantially different. Each Party shall have a duty to mitigate any damages
hereunder in accordance with applicable law.
11. MISCELLANEOUS
11.1 Amendments. This Agreement may not be amended without the prior
written consent of each party hereto.
11.2 No Waiver. Any provision of this Agreement may be waived if, and
only if, such waiver is in writing and is duly executed by the party against
whom the waiver is to be enforced. No failure or delay by any party in
exercising any right, power or privilege under this Agreement shall operate as a
waiver thereof nor shall any single or partial waiver or exercise thereof
preclude the enforcement of any other right, power or privilege.
12
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
11.3 Notices. Unless otherwise provided herein, all notices, requests,
instructions or consents required or permitted under this Agreement shall be in
writing and will be deemed given: (a) when delivered personally; (b) when sent
by confirmed facsimile; (c) ten (10) Business Days after having been sent by
registered or certified mail, return receipt requested, postage prepaid; or (d)
three (3) Business Days after deposit with an internationally recognized
commercial overnight carrier specifying next-day delivery, with written
verification of receipt. All communications will be sent to the addresses listed
on Exhibit A of the Operating Agreement (or to such other address or facsimile
number as may be designated by a party giving written notice to the other
parties pursuant to this Section 11.3).
11.4 Independent Development. Subject to the license restrictions and
confidentiality obligations set forth in this Agreement, nothing in this
Agreement shall be construed to preclude either Micron or Photronics from
directly or indirectly designing, developing, acquiring, using, marketing,
licensing or selling any technology, prototypes, or production Reticles that is
similar, related to or competitive with those developed, designed or
manufactured by the other party or by the Company.
11.5 Governing Law. This Agreement will be governed by and construed in
accordance with the laws of the State of Delaware, United States of America, as
applied to agreements among Delaware residents entered into and wholly to be
performed within the State of Delaware (without reference to any choice or
conflicts of laws rules or principles that would require the application of the
laws of any other jurisdiction).
11.6 Construction; Interpretation.
(a) Certain Terms. The words "hereof," "herein," "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."
(b) Section References; Titles and Subtitles. Unless otherwise
noted, all references to Sections and Exhibits herein are to Sections and
Exhibits 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.
(c) Reference to Persons, Agreements, Statutes. Unless otherwise
expressly provided herein, (i) references to a Person include its successors and
permitted assigns, (ii) 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 (iii) 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.
(d) Presumptions. No party, nor its counsel, shall be deemed the
drafter of this Agreement for purposes of construing the provisions of this
Agreement, and all provisions of this Agreement shall be construed in accordance
with their fair meaning, and not strictly for or against any party.
13
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
11.7 Rights and Remedies Cumulative. The rights and remedies provided
by this Agreement are cumulative and the use of any one right or remedy by any
party shall not preclude or waive its right to use any or all other remedies.
Said rights and remedies are given in addition to any other rights the parties
may have by law, statute, ordinance or otherwise.
11.8 No Assignment; Binding Effect. Except as otherwise expressly
provided in Section 9.4, no party may assign, delegate or otherwise transfer any
of its rights or obligations hereunder to any third party, whether by
assignment, transfer, Change in Control, or other means, without the prior
written consent of each other party. Any attempted assignment in violation of
the foregoing shall be null and void. Subject to the foregoing, this Agreement
shall be binding on and inure to the benefit of the parties, their heirs,
executors, administrators, and successors.
11.9 Severability. If any provision in this Agreement will be found or
be held to be invalid or unenforceable, then the meaning of said provision will
be construed, to the extent feasible, so as to render the provision enforceable,
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
unless the severed provision is essential and material to the rights or benefits
received by any party. In such event, the parties will use their respective best
efforts to negotiate, in good faith, a substitute, valid and enforceable
provision or agreement which most nearly affects the parties' intent in entering
into this Agreement.
11.10 Counterparts. 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.
11.11 Dispute Resolution. The parties hereby agree that claims,
disputes or controversies of whatever nature, arising out of, in connection
with, or in relation to the interpretation, performance or breach of this
Agreement (or any other agreement contemplated by or related to this Agreement),
shall be resolved in accordance with the dispute resolution procedures set forth
in the Operating Agreement.
11.12 Third-Party Beneficiaries. None of the provisions of this
Agreement shall be for the benefit of or be enforceable by any creditor of the
Company or by any third-party creditor of any Member. This Agreement is not
intended to confer any rights or remedies hereunder upon, and shall not be
enforceable by, any Person other than the parties hereto, their respective
successors and permitted assigns.
11.13 Entire Agreement. This Agreement, together with the other
documents, exhibits and schedules referred to herein and therein, constitute the
entire agreement among the parties hereto pertaining to the subject matter
hereof, and supersede any and all prior oral and written, and all
contemporaneous oral, agreements or understandings pertaining thereto. There are
no agreements, understandings, restrictions, warranties or representations
relating to such subject
14
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
matter among the parties other than those set forth herein and in the other
documents, exhibits and schedules referred to herein and therein.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement as of the day and year first above written.
MICRON TECHNOLOGY, INC.
By:
----------------------------------------
Name:
--------------------------------------
Title:
---------------------------------------
PHOTRONICS, INC.
By:
----------------------------------------
Name:
--------------------------------------
Title:
---------------------------------------
MP MASK TECHNOLOGY CENTER, LLC
By:
----------------------------------------
Name:
--------------------------------------
Title:
---------------------------------------
EXHIBITS:
Exhibit A: Approved Technology and Licensed Technology
Exhibit B: Technology Transfer Protocol
Exhibit C: Software
Exhibit D: Approved Technology of Photronics
Exhibit E: Technology Steering Committee Charter
15
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
Exhibit 10.19
Exhibit A
Approved Technology and Licensed Technology
[****]
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
Attachment 1 to Exhibit A
Initial Approved Technology List
[****]
17
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
Exhibit B
Technology Transfer Protocol
[****]
18
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
Exhibit C
Software
[****]
19
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
Exhibit 10.19
Exhibit D
Approved Technology of Photronics
[****]
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
Exhibit 10.19
Exhibit E
Technology Steering Committee Charter
[****]
**** Material omitted pursuant to a request for confidential treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately with the
Securities and Exchange Commission.
