Exhibit 10.12
DEVELOPMENT LICENSE AGREEMENT
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This Development License Agreement is made on June 16, 1992 by and
among THERMA-WAVE, INC., a Delaware corporation ("TWI"), THERMA-WAVE K.K., a
Japanese corporation and wholly-owned subsidiary of TWI ("TWKK"), TORAY
INDUSTRIES, INC., a Japanese corporation ("TORAY") and SHIMADZU CORPORATION, a
Japanese corporation ("SHIMADZU").
RECITALS
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WHEREAS, TWI is the owner of certain patents and thermal wave and
laser technology presently used in the design and construction of wafer
measurement and defect inspection devices for the semiconductor industry; and
WHEREAS, TORAY and SHIMADZU each own certain patents and technology
presently used in, or which may be useful in connection with the further
development of, thermal wave and laser technology and/or the design and
development of new products incorporating such technology; and
WHEREAS, pursuant to an Agreement and Plan of Merger dated as of
October 30, 1991 (the "Merger Agreement"), TORAY and SHIMADZU, collectively,
have acquired a majority of the outstanding capital stock of TWI; and
WHEREAS, pursuant to a Patent, Technology and Trademark License dated
as of March 24, 1992 (the "Product License Agreement"), TWI has granted to TWKK
a license to use TWI's existing technology in connection with the manufacture,
marketing
and sale of TWI's current products and improvements thereto and authorized TWKK
to enter into contracts with TORAY and SHIMADZU pursuant to which they will
manufacture such products exclusively for sale by TWKK; and
WHEREAS, the parties desire, for their mutual benefit, to further the
development of thermal wave and laser technology and to develop new products
incorporating such technology for sale in the semiconductor industry and in
additional markets; and
WHEREAS, to accomplish the foregoing goals, the parties desire to
share access to their technology and to enter into certain other agreements to
facilitate the further development of such technology and the commercialization
of such new products.
NOW, THEREFORE, in consideration of the mutual covenants and
agreements set forth herein, the parties agree as follows:
I. DEFINITIONS:
1.1 Base Technology means, collectively, the TWI Base Technology, the
Toray Base Technology, the Shimadzu Base Technology and the TWKK Base
Technology.
1.2 Committee means the Research and Development coordinating Committee
to be established pursuant to Section 3.1 hereof.
1.3 Effective Date means December 2, 1991, the date TORAY and SHIMADZU
acquired a majority of the outstanding capital stock of TWI pursuant to the
Merger Agreement.
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1.4 Field of Research means (i) the entire field of thermal wave
technology, (ii) the field of laser technology related to thin film metrology,
(iii) the field of optical processing and (iv) any other field hereafter
designated by the Committee.
1.5 Intellectual Property Rights means, as the context indicates, the TWI
Intellectual Property Rights, the Toray Intellectual Property Rights, the
Shimadzu Intellectual Property Rights and/or the TWKK Intellectual Property
Rights.
1.6 New Developments means TWI Developments, TWKK Developments, Toray
Developments or Shimadzu Developments.
1.7 Shimadzu Base Technology means Technology owned by or in the
possession of SHIMADZU and identified and designated as "Shimadzu Base
Technology" pursuant to Section 3.4 hereof.
1.8 Shimadzu Developments means (i,) all enhancements, modifications,
improvements and additional applications of the Base Technology (other than TWI
Licensed Product Improvements), (ii) all new Technology, and (iii) all new
devices and products, in each case developed after the Effective Date by
SHIMADZU with the use of, based upon or incorporating, in any material respect,
TWI Intellectual Property Rights and/or TWKK Intellectual Property Rights.
1.9 Shimadzu Intellectual Property Rights means the Shimadzu Licensed
Patents and any Shimadzu Base Technology.
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1.10 Shimadzu Licensed Patents means (i) the patents and patent
applications set forth in Schedule A attached hereto, (ii) any patents or patent
applications hereafter identified and designated as "Shimadzu Licensed Patents"
by the Committee pursuant to Section 3.4 hereof, and (iii) any patents,
continuations, continuations-in-part, reissues, divisions, or extensions of any
of the foregoing.
1.11 Technology means know-how, data, drawings, designs, operating
experience and techniques, show-how, documents, models, the contents of patent
applications, inventions and equipment, whether or not patentable, and other
technical information in any form (including oral).
1.12 Toray Base Technology means Technology owned by or in the possession
of TORAY and identified, and designated as "Toray Base Technology" pursuant to
Section 3.4 hereof.
1.13 Toray Developments means (i) all enhancements, modifications,
improvements and additional applications of the Base Technology (other than TWI
Licensed Product Improvements), (ii) all new Technology, and (iii) all new
devices and products, in each case developed after the Effective Date by TORAY
with the use of, based upon or incorporating, in any material respect, TWI
Intellectual Property Rights and/or TWKK Intellectual Property Rights.
1.14 Toray Intellectual Property Rights means the Toray Licensed Patents
and any Toray Base Technology.
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1.15 Toray Licensed Patents means (i) the patents and patent applications
set forth in Schedule B attached hereto, (ii) any patents or patent applications
hereafter identified and designated as "Toray Licensed Patents" by the Committee
pursuant to Section 3.4 hereof, and (iii) any patents, continuations,
continuations-in-part, reissues, divisions, or extensions of any of the
foregoing.
1.16 TWI Base Technology means all Technology now or in the future owned by
TWI, or in the possession of TWI under a license which includes the right of
sublicense (other than Technology of the other parties hereto and TWI
Developments), within the Field of Research and/or pertaining to the design,
development or manufacture of devices or products related to the Field of
Research.
1.17 TWI Developments means (i) all enhancements, modifications,
improvements and additional applications of the Base Technology (other than TWI
Licensed Product Improvements), (ii) all new Technology, and (iii) all new
devices and products, in each case developed after the Effective Date by TWI
with the use of, based upon or incorporating, in any material respect, Toray
Intellectual Property Rights, Shimadzu Intellectual Property Rights and/or TWKK
Intellectual Property Rights.
1.18 TWI Intellectual Property Rights means the TWI Licensed Patents and
the TWI Base Technology.
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1.19 TWI Licensed Patents means (i) the patents and patent applications set
forth in Schedule C attached hereto, (ii) any patents or patent applications
hereafter issued to or filed by TWI within the Field of Research, and (ii) any
patents, continuations, continuations-in-part, reissues, divisions, or
extensions of any of the foregoing.
1.20 TWI Licensed Products means TWI's current products, defined as the
Licensed Products in the Product License Agreement, together with any
Improvements, as defined in the Product License Agreement.
1.21 TWI Licensed Product Improvements means all enhancements,
modifications and improvements of the TWI Licensed Products, except any modified
TWI Licensed Product to the extent that it is useable in an application or
applications outside the semiconductor industry.
1.22 TWKK Base Technology means all Technology now or in the future owned
by TWKK, or in the possession of TWKK under a license which includes the right
of sublicense (other than Technology of the other parties hereto and TWKK
Developments), within the Field of Research and/or pertaining to the design,
development or manufacture of devices or products related to the Field of
Research.
1.23 TWKK Developments means (i) all enhancements, modifications,
improvements and additional applications of the Base Technology (other than TWI
Licensed Product Improvements),
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(ii) all new Technology, and (iii) all new devices and products, in each case
developed after the Effective Date by TWKK with the use of, based upon or
incorporating, in any material respect, TWI Intellectual Property Rights, Toray
Intellectual Property Rights and/or Shimadzu Intellectual Property Rights.
1.24 TWKK Intellectual Property Rights means the TWKK Licensed Patents and
the TWKK Base Technology.
1.25 TWKK Licensed Patents means (i) any patents or patent applications
hereafter issued to or filed by TWKK within the Field of Research, and (ii) any
patents, continuations, continuations-in-part, reissues, divisions, or
extensions of any of the foregoing.
II. LICENSE GRANTS:
2.1 TWI hereby grants to each of TWKK, TORAY and SHIMADZU, subject to the
terms and conditions of this Agreement, for and during the term of this
Agreement, the non-exclusive, royalty-free right and license, without right of
sublicense, to use the TWI Intellectual Property Rights for the limited purpose
of conducting research and new product development activities in Japan.
2.2 TORAY hereby grants to each of TWI and TWKK, subject to the terms and
conditions of this Agreement, for and during the term of this Agreement, the
non-exclusive, royalty-free right and license, without right of sublicense, to
use the Toray
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Intellectual Property Rights for the limited purpose of conducting research and
new product development activities in the United States of America (in the case
of TWI) and Japan (in the case of TWKK).
2.3 SHIMADZU hereby grants to each of TWI and TWKK, subject to the terms
and conditions of this Agreement, for and during the term of this Agreement, the
non-exclusive, royalty-free right and license, without right of sublicense, to
use the Shimadzu Intellectual Property Rights for the limited purpose of
conducting research and new product development activities in the United States
of America (in the case of TWI) and Japan (in the case of TWKK).
2.4 TWKK hereby grants to each of TWI, TORAY and SHIMADZU, subject to the
terms and conditions of this Agreement, the non-exclusive, royalty-free right
and license, without right of sublicense, to use the TWKK Intellectual Property
Rights for the limited purpose of conducting research and new product
development activities in the United States of America (in the case of TWI) and
Japan (in the case of TORAY and SHIMADZU).
2.5 The use of the Intellectual Property Rights of the respective parties
in any territory or for any purpose not expressly authorized by the foregoing
license grants or by the Product License Agreement is exclusively reserved for
the respective licensor, and each party expressly agrees not to use any
Intellectual Property Rights licensed to it hereunder in any
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other territory or for any other purpose. Without limiting the generality of
the foregoing, each party agrees that it will not engage, directly or
indirectly, in the manufacture, sale or marketing of any New Development
developed by it under the foregoing license grants, or use any such New
Development for its own internal purposes, except in accordance with the terms
of this Agreement and such additional agreement or agreements as the parties
shall enter into with respect to such New Development in accordance with the
terms of this Agreement.
III. COORDINATION OF RESEARCH AND DEVELOPMENT EFFORTS:
3.1 Within ninety (90) days after the date of this Agreement, the parties
agree to establish a Research and Development Coordinating Committee (the
"Committee") of eight (8) persons, composed of two (2) representatives each from
TWI, TWKK, TORAY and SHIMADZU. At least one (1) representative of each party
shall be fully qualified with respect to technical matters concerning the Field
of Research and the design of products related thereto.
3.2 TWI, TWKK, TORAY and SHIMADZU, through the Committee, will keep each
other informed regarding their respective research and development activities
using each others' Intellectual Property Rights and will provide quarterly
status reports on such activities. Notwithstanding the foregoing, either Toray
or Shimadzu may designate as "confidential" any development project
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being undertaken (i) by it using TWI Base Technology and/or TWKK Base Technology
or (ii) by TWI or TWKK using Toray Base Technology or Shimadzu Base Technology,
as the case may be. In any such case, status reports relating to such project
will thereafter be provided only among the Committee members representing Toray
or Shimadzu, as the case may be, and TWI and/or TWKK, as the case may be. The
Committee shall meet regularly, and not less frequently than once every six (6)
months.
3.3 TWI will make all reasonable efforts to disclose and make available to
TORAY, SHIMADZU and TWKK, within ninety (90) days following the Effective Date,
the TWI Base Technology in TWI's possession not heretofore disclosed to TORAY
and/or SHIMADZU and which TWI is not restricted from disclosing by
confidentiality agreements, including, but not limited to, certain
confidentiality agreements with IBM, Motorola and Intel. TWI Base Technology
which TWI subsequently becomes free to divulge, or which is subsequently
developed by or becomes available to TWI shall be disclosed and made available
to TORAY, SHIMADZU and TWKK promptly.
3.4 The following procedures shall be followed with respect to development
projects undertaken by the parties during the term of this Agreement:
3.4.1 Each party shall prepare and present to the Committee a
separate Research and Development Plan ("R&D Plan")
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for each new development project which such party proposes to undertake and for
which such party proposes to use the Intellectual Property Rights of one or more
of the other parties or seeks technical assistance from one or more of the other
parties. Each R&D Plan shall summarize the objectives of the development
project, the Technology which will be used by the proposing party and the
technological areas in which such party requires technical assistance or
support.
3.4.2 If the Committee approves an R&D Plan, the parties will use
their respective reasonable efforts to provide technical assistance to the
proposing party, subject to the provisions of Sections 3.8 and 3.9 hereof.
3.4.3 If the Committee approves an R&D Plan submitted by TWI or TWKK
in which the proposing party seeks to utilize Technology or patent rights owned
by TORAY and/or SHIMADZU, TORAY and/or SHIMADZU, as the case may be, will make
available to TWI and/or TWKK, a summary of all Technology and patent rights
owned by them, or in their possession under a license which includes the right
to sublicense (other than Technology of the other parties hereto) which may be
useful to TWI and/or TWKK in connection with the development project described
in the R&D Plan. Thereafter, representatives of TORAY and SHIMADZU will meet,
separately, with representatives of TWI and/or TWKK to review such Technology
and patent rights in more detail and to agree upon that Technology and those
patent rights,
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if any, which will be useful to TWI and/or TWKK in connection with the
development project. All such Technology and patent rights which are so
identified and agreed upon shall be summarized in a written Addendum to this
Agreement, referring to the specific R&D Plan to which such Technology and
patent rights pertain, shall be referred to as "Toray Base Technology," "Toray
Licensed Patents," "Shimadzu Base Technology" or "Shimadzu Licensed Patents," as
appropriate, and shall thereafter be treated as such for all purposes of this
Agreement. As soon as possible after the identification of Toray Base Technology
or Shimadzu Base Technology, in the manner described above, TORAY or SHIMADZU,
as the case may be, will make all reasonable efforts to disclose and make
available to TWI and TWKK, such Toray Base Technology and Shimadzu Base
Technology. Any additional Toray Base Technology or Shimadzu Base Technology
which is subsequently developed by or becomes available to them shall be
disclosed and made available to TWI and TWKK promptly.
3.5 TWKK is not currently in possession of any TWKK Base Technology. TWKK
will promptly make available to TWI, TORAY and SHIMADZU a summary of any TWKK
Base Technology which is subsequently developed by or becomes available to TWKK.
Such TWKK Base Technology shall be disclosed and made available to TORAY,
SHIMADZU and TWI promptly.
3.6 The form of disclosure herein contemplated shall, as far as reasonably
practicable, be made in writing, for example,
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by furnishing copies of materials such as specifications, descriptions or
drawings. Disclosure shall be in the English language and in sufficient detail
so that an engineer of average skill and training in the field of the technology
can understand it.
3.7 Each party shall bear its own costs relating to the activities of the
Committee and the transfer of Technology as provided herein, except to the
extent otherwise provided in the Product License Agreement.
3.8 TWI and TWKK will each make all reasonable efforts to assist TORAY and
SHIMADZU in their research and development activities which involve the use of
TWI Intellectual Property Rights and/or TWKK Intellectual Property Rights. TORAY
and/or SHIMADZU shall reimburse TWI and/or TWKK for all of their out-of-pocket
expenses and compensate TWI and/or TWKK for such technical assistance at rates
commensurate with industry standards, as agreed upon by the parties from time to
time.
3.9 TORAY and SHIMADZU will each make all reasonable efforts to assist TWI
and TWKK in their research and development activities which involve the use of
Toray Intellectual Property Rights and/or Shimadzu Intellectual Property Rights.
TWI and/or TWKK shall reimburse TORAY and/or SHIMADZU for all of their out-of-
pocket expenses and compensate TORAY and/or SHIMADZU for such technical
assistance at rates commensurate with industry standards, as agreed upon by the
parties from time to time.
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IV. OWNERSHIP OF TECHNOLOGY AND COMMERCIALIZATION OF NEW DEVELOPMENTS:
4.1 TWI shall remain the exclusive owner of all TWI Intellectual Property
Rights, and the rights of TORAY, SHIMADZU and TWKK therein shall be those of a
licensee as set forth in Article II hereof.
4.2 TWKK shall remain the exclusive owner of all TWKK Intellectual
Property Rights, and the rights of TORAY, SHIMADZU and TWI therein shall be
those of a licensee as set forth in Article II hereof.
4.3 TORAY shall remain the exclusive owner of all Toray Intellectual
Property Rights, and the rights of TWI and TWKK therein shall be those of a
licensee as set forth in Article II hereof.
4.4 SHIMADZU shall remain the exclusive owner of all Shimadzu Intellectual
Property Rights, and the rights of TWI and TWKK therein shall be those of a
licensee as set forth in Article II hereof.
4.5 All TWI Licensed Product Improvements created or devised by TWI in the
course of its research and development activities hereunder shall be the sole
property of TWI, subject to the terms of the Product License Agreement. To the
extent that any such TWI Licensed Product Improvements are based on or
incorporate Toray Base Technology, Shimadzu Base Technology and/or TWKK Base
Technology, TWI shall pay to TORAY, SHIMADZU
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and/or TWKK a development fee or royalty, commensurate with industry standards,
as agreed upon by the parties on a case by case basis.
4.6 All TWI Licensed Product Improvements created or devised by TORAY,
SHIMADZU or TWKK in the course of their research and development activities
hereunder or their activities under the Product License Agreement shall be
irrevocably assigned to TWI without restriction, subject only to use by (i) TWKK
under the Product License Agreement and (ii) TORAY and/or SHIMADZU in the
manufacturing activities contemplated by the Product License Agreement. To the
extent that any such TWI Licensed Product Improvements are based on or
incorporate Toray Base Technology, Shimadzu Base Technology and/or TWKK Base
Technology, TWI shall pay to TORAY, SHIMADZU and/or TWKK a development fee or
royalty, commensurate with industry standards, as agreed upon by the parties on
a case by case basis.
4.7 Each New Development created or devised by TWI, TWKK, TORAY and/or
SHIMADZU in the course of their research and development activities hereunder
shall be jointly owned by the party or parties who created or devised such New
Development and the party or parties whose Intellectual Property Rights were
used in such development. The commercialization, marketing and other use of each
New Development (including the internal use of the New Development by the
parties hereto) shall be subject to the negotiation of a separate agreement
between the owners of such
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New Development (a "New Development Agreement"), and each party agrees to
refrain from the manufacture, sale, marketing or other use of any New
Development until a New Development Agreement has been entered into with respect
thereto.
4.8 Each New Development Agreement shall be negotiated, on a case by case
basis, taking into account the following agreements and objectives:
4.8.1 All transactions among the parties with respect to the
commercialization, marketing and other use of all New Developments shall be
negotiated on an arm's-length basis and contain terms and conditions consistent
with industry standards.
4.8.2 The party who is principally responsible for the creation or
development of a New Development shall have control over the manufacture and
marketing of the New Development, subject to the principles set forth in
Sections 4.8.4 and 4.8.5 hereof.
4.8.3 The party or parties whose Intellectual Property Rights are
used in the development of New Development will be entitled to receive a fee, or
royalties, based upon the significance of the Intellectual Property Rights used
or incorporated in such New Development, and any development funding or other
support which such party or parties provided.
4.8.4 New Developments which are marketable in the semiconductor
industry will be manufactured and marketed by the respective parties in a manner
consistent with the manufacture
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and marketing arrangements relating to the TWI Licensed Products set forth in
the Product License Agreement.
4.8.5 New Developments which are marketable outside the semiconductor
industry may be manufactured and marketed worldwide by the party who is
principally responsible for the creation or development of such New
Developments; provided, however, that the parties shall consult with one another
in good faith with respect to the participation by TWKK, TORAY and SHIMADZU in
the manufacture and marketing of TWI Developments in Asia and the participation
by TWI in the manufacture and marketing of Toray Developments, Shimadzu
Developments and TWKK Developments in North America and Europe.
4.9 The parties acknowledge that:
4.9.1 Any Technology or product developed by any party hereto without
the use of the Intellectual Property Rights of another party hereto shall be the
sole property of such party and not subject to this Agreement.
4.9.2 Any Technology or product developed by any California employee
of TWI which (i) is not similar or materially related to a then-current product
of TWI (including products then under development by TWI or products similar or
materially related to the products of TWI developed, or to TWI's knowledge then
under development, by TORAY, SHIMADZU and/or TWKK hereunder); (ii) is created
and/or devised by such employee without the use of any premises or property of
any party hereto
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or of any technology of any party hereto not available in published literature
or otherwise properly within the public domain; and (iii) qualifies fully under
the provisions of Section 2870 of the California Labor Code shall be the
property of such employee and not subject to this Agreement.
V. REPRESENTATIONS AND WARRANTIES:
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5.1 TWI represents and warrants that as of the date hereof:
5.1.1 It is the owner of or has the valid right to use the TWI Base
Technology and the TWI Licensed Patents, and its rights are free and clear of
all liens, claims, pledges, assignments, encumbrances and licenses except for
the pre-existing licenses set forth on Schedule D hereto.
5.1.2 It has the authority to grant licenses of the scope set forth
in this Agreement and has the right to enter into this Agreement and to execute
and perform all its obligations hereunder.
5.1.3 There are no outstanding orders, decrees, judgments,
stipulations, or interference, opposition, or other judicial or adversarial
administrative proceedings pending or, to the best of its knowledge, threatened
against it involving any TWI Intellectual Property Rights that (i) challenge its
ownership of or the validity of the TWI Intellectual Property Rights, (ii)
question the effectiveness of the TWI Base Technology, or (iii)
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allege that the use or practice of the TWI Intellectual Property Rights in the
manner contemplated hereunder infringes upon the intellectual property rights of
any third party.
5.1.4 The execution, delivery, and performance by TWI of this
Agreement will not constitute a violation of or default under any indenture,
agreement, instrument, order, judgment, or decree to which TWI or any of its
property may be subject.
5.2 TORAY represents and warrants that as of the date hereof:
5.2.1 It is the owner of or has the valid right to use the Toray Base
Technology and the Toray Licensed Patents, and its rights are free and clear of
all liens, claims, pledges, assignments, encumbrances and licenses except for
the pre-existing licenses set forth on Schedule E hereto.
5.2.2 It has the authority to grant licenses of the scope set forth
in this Agreement and has the right to enter into this Agreement and to execute
and perform all its obligations hereunder.
5.2.3 There are no outstanding orders, decrees, judgments,
stipulations, or interference, opposition, or other judicial or adversarial
administrative proceedings pending or, to the best of its knowledge, threatened
against it involving any Toray Intellectual Property Rights that (i) challenge
its ownership of or the validity of the Toray Intellectual Property
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Rights, (ii) question the effectiveness of the Toray Base Technology, or (iii)
allege that the use or practice of the Toray Intellectual Property Rights in the
manner contemplated hereunder infringes upon the intellectual property rights of
any third party.
5.2.4 The execution, delivery, and performance by TORAY of this
Agreement will not constitute a violation of or default under any indenture,
agreement, instrument, order, judgment, or decree to which TORAY or any of its
property may be subject.
5.3 SHIMADZU represents and warrants that as of the date hereof:
5.3.1 It is the owner of or has the valid right to use the Shimadzu
Base Technology and the Shimadzu Licensed Patents, and its rights are free and
clear of all liens, claims, pledges, assignments, encumbrances and licenses
except for the pre-existing licenses set forth on Schedule F hereto.
5.3.2 It has the authority to grant licenses of the scope set forth
in this Agreement and has the right to enter into this Agreement and to execute
and perform all its obligations hereunder.
5.3.3 There are no outstanding orders, decrees, judgments,
stipulations, or interference, opposition, or other judicial or adversarial
administrative proceedings pending or, to the best of its knowledge, threatened
against it involving any
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Shimadzu Intellectual Property Rights that (i) challenge its ownership of or the
validity of the Shimadzu Intellectual Property Rights, (ii) question the
effectiveness of the Shimadzu Base Technology, or (iii) allege that the use or
practice of the Shimadzu Intellectual Property Rights in the manner contemplated
hereunder infringes upon the intellectual property rights of any third party.
5.3.4 The execution, delivery, and performance by SHIMADZU of this
Agreement will not constitute a violation of or default under any indenture,
agreement, instrument, order, judgment, or decree to which SHIMADZU or any of
its property may be subject.
5.4 TWKK represents and warrants that as of the date hereof:
5.4.1 It does not presently own or possess any TWKK Intellectual
Property Rights.
5.4.2 It has the authority to grant licenses of the scope set forth
in this Agreement and has the right to enter into this Agreement and to execute
and perform all its obligations hereunder.
5.4.3 The execution, delivery, and performance by TWKK of this
Agreement will not constitute a violation of or default under any indenture,
agreement, instrument, order, judgment, or decree to which TWKK or any of its
property may be subject.
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VI. CONFIDENTIALITY:
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6.1 Each party hereunder receiving Technology (a "Receiving Party")
disclosed by another party (the "Disclosing Party") agrees to maintain in
confidence such Technology; provided, however, that the foregoing provisions of
this Section shall not apply to any such Technology which:
(a) is in or enters the public domain through no fault of the
Receiving Party,
(b) was in the Receiving Party's possession at the time of disclosure
without restriction on use or disclosure, and was not acquired directly or
indirectly from the Disclosing Party,
(c) is received by the Receiving Party without restriction on use or
disclosure from a third party who is not, at the time of disclosure, under an
obligation of confidentiality to the Disclosing Party, or
(d) is removed from confidential status by prior written consent of
the Disclosing Party.
For purposes of this Section 6.1, "Technology" shall also include all analyses,
compilations, studies or other documents prepared by the Receiving Party
containing Technology furnished by the Disclosing Party.
6.2 In the event that a Receiving Party is requested or becomes legally
compelled to disclose any of the Technology of another party in connection with
any judicial or administrative
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proceeding, the Receiving Party will provide the Disclosing Party with prompt
written notice of such request(s) so that the Disclosing Party may seek a
protective order or other appropriate remedy to preserve confidentiality and/or
waive compliance with the provisions of this Agreement. In the event that such
protective order or other remedy is not obtained, or the Disclosing Party waives
compliance with thee confidentiality provisions of this Agreement, the Receiving
Party agrees that it will furnish only that portion of the Technology which is
required to comply with the request or demand and will make reasonable efforts
to obtain assurances that confidential treatment will be accorded to that
portion of the Technology which is being disclosed.
6.3 The undertakings in this Article VI shall survive any termination of
this Agreement for five years thereafter.
VII. TERM AND TERMINATION:
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7.1 The term of this Agreement shall extend for seven (7) years from its
Effective Date, unless earlier terminated in accordance with its terms. The
term shall be extended automatically for successive one-year periods thereafter
unless one party gives written notice of termination to the others not less than
sixty (60) days before the end of the initial term or any such extended term, as
applicable. The termination of this Agreement shall not affect the term of any
New Development
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Agreement then in effect, except to the extent provided in such New Development
Agreement.
7.2 The appointment of a trustee in bankruptcy for any party, an
assignment of assets for the benefit of any party's creditors, the levy or
execution upon any license herein granted, the adjudication of any party's
bankruptcy, or the rejection of the license herein granted by any party's
trustee in bankruptcy shall constitute a breach of this Agreement, which shall
entitle each other party, at its option, either to terminate this Agreement on
five (5) days prior written notice, or to avail itself of any other appropriate
legal or equitable remedy.
7.3 Notwithstanding the foregoing, the expiration or termination of this
Agreement for any reason shall not affect the continued operation or enforcement
of any provision of this Agreement which, by its express terms, is to survive
expiration or termination.
7.4 Following the termination of this Agreement, each party hereto shall
cease all use of the Intellectual Property Rights (except for Technology which
is no longer confidential under the terms of Article VI hereof) of the others,
except to the extent provided in any New Development Agreement then in effect
and surviving the termination of this Agreement.
-24-
VIII. ARBITRATION:
-----------
8.1 In the event of any dispute or difference of opinion or controversy
between any of the parties arising out of or in connection with this Agreement
or with regard to performance of any obligation hereunder by any party,
including without limitation the parties' failure to reach agreement on the
terms of any New Development Agreement, the affected parties shall use their
reasonable efforts to settle such dispute or difference of opinion amicably by
good faith negotiation for a period of thirty (30) days, commencing upon the
receipt of written demand for negotiation setting forth the basis of the
dispute. After the expiration of the 30-day negotiation period, either party
may commence an arbitration to resolve such dispute as set forth below.
8.2 All disputes, differences of opinion, or controversies which may
arise between the parties hereto out of or in relation to or in connection with
this Agreement or the breach thereof, shall be finally settled by arbitration in
San Francisco, California by a panel of three (3) arbitrators in accordance with
the Rules of the American Arbitration Association, in the form pertaining at the
time the arbitration is initiated. Each party shall each select an arbitrator,
and the two arbitrators so selected shall select a third arbitrator. If the two
(2) arbitrators selected are unable to agree upon the name of a third
arbitrator, such third arbitrator shall be
-25-
appointed from a panel in accordance with the Rules of the American Arbitration
Association. The parties shall use their best efforts to complete the
arbitration proceeding within four (4) months from the expiration of the
negotiation period set forth in Section 8.1 above.
8.3 The parties agree that the arbitrators shall be empowered to render
whatever judgment or relief is deemed appropriate by the panel, including
remedies of money damages, injunctive relief, or specific performance of this
Agreement. Judgment upon the award rendered by arbitrators may be entered by any
court having jurisdiction thereof.
8.4 The prevailing party shall be entitled to recover from the non-
prevailing party the reasonable expenses of the prevailing party, including,
without limitation, reasonable attorneys' fees and costs.
8.5 Notwithstanding the foregoing, any party shall be entitled to seek
temporary injunctive relief from any court of competent jurisdiction to prevent
any unauthorized use or disclosure of any Intellectual Property Rights pending
the determination of the arbitration.
IX. CHOICE OF LAW:
-------------
This Agreement shall be construed and enforced hereunder in accordance with
the internal laws of the State of California.
-26-
X. ASSIGNMENT:
----------
This Agreement may not be assigned, transferred, or otherwise conveyed or
pledged by any party without the prior written consent of the other parties.
Any attempt to assign, transfer, convey, or pledge this Agreement (or any right
or obligation hereunder) in contravention of this Article shall be null and
void.
XI. FORCE MAJEURE:
-------------
The terms and conditions mutually agreed upon in this Agreement shall be
subject to force majeure. No party shall be considered in default in the
performance of its obligations hereunder if such performance is prevented or
delayed because of war, hostilities, revolution, civil commotion, strike, lock-
out, epidemic, accident, fire, wind, flood, or because of any law, order,
proclamation, regulation, or ordinance of any government or of any subdivision
thereof, or because of any act of God, or any other act or action of like
character; provided that notice of such force majeure is given by the affected
party to the other within seven (7) days of the beginning of said force majeure
or the date on which it becomes reasonably apparent that the controlling event
will create a state of force majeure. Should one or both of the parties be
prevented from fulfilling their contractual obligations by a state of force
majeure lasting continuously for a period of one hundred eighty (180) days, the
-27-
parties shall consult with each other regarding the future implementation of
this Agreement.
XII. MISCELLANEOUS:
-------------
12.1 No waiver, approval, or consent permitted or contemplated by this
Agreement shall be valid or effective for any purpose as against any party
unless set forth in a written instrument executed by such party. In addition,
resort to any remedy at law or as otherwise provided for in this Agreement shall
not be construed as a waiver of any other rights and remedies to which such
party is entitled under this Agreement or under applicable law. The failure of
a party to insist, in any one or more instances, upon the strict performance of
any of the terms, conditions, or covenants of this Agreement shall not be
construed as a waiver or relinquishment of such term, condition, or covenant.
12.2 Nothing herein contained shall be construed to place the parties in
the relationship of partners, joint venturers, principal and agent, or employer
and employee. No party shall have the power to assume, create, or incur
liability or any obligation of any kind, express or implied, in the name of or
on behalf of any other party by virtue of this Agreement.
-28-
XIII. NOTICES:
-------
All notices, reports, requests, or demands to be given by either party to
the other under the provisions of this Agreement shall be forwarded, by
facsimile or certified mail, properly addressed to the respective parties as
follows:
TWI:
Therma-Wave, Inc.
00000 Xxxxxxx Xxxxx Xxxxx
Xxxxxxx, Xxxxxxxxxx 00000
U.S.A.
Attention: Xx. Xxxxx Xxxxxxxxxx
Facsimile: (000) 000-0000
TWKK:
Therma-Wave K.K.
0-0-00 Xxxxxxxxx
Xxxxxx, Xxxxxxxx
Xxxxx
Attention: Xxxxxxxxx Xxxxxxxx
Facsimile: (011-81-462-22-7755)
TORAY:
Toray Industries, Inc.
Xxxxxx Xxxx Xxxxxx Xxxxxxxx
0-0, Xxxxxx 1-chome
Urayasu, Chiba 000
Xxxxx
Attention: Takeoki Akatsuka
Facsimile: (011-81-473-50-6070)
SHIMADZU:
Shimadzu Corporation
1, Nishinokyo - Xxxxxxxxxxx
Xxxxxxx-xx, Xxxxx 000
Xxxxx
Attention: Xxxxxxx Xxxxxxxx
Facsimile: (011-81-75-822-0709)
-29-
or at such other address or addresses as any party may from time to time
designate by written notice as its address or addresses for the purpose hereof.
XIV. SECTION HEADINGS:
----------------
The Section and Article headings contained herein are for reference
purposes only and shall not in any way affect the meaning or interpretation of
this Agreement.
XV. SOLE UNDERSTANDING:
------------------
This Agreement embodies all of the understandings and obligations between
the parties with respect to the subject matter hereof, and there are no other
understandings and obligations between the parties with respect to the subject
matter hereof. No change, alteration, or modification hereof shall be effective
unless made in writing, approved by TWI's Board of Directors and (so long as he
is an employee of TWI) by Xxxxx Xxxxxxxxxx and signed by the parties hereto.
XVI. COUNTERPARTS:
------------
This Agreement may be executed in counterparts, each one of which will be
construed an original but all of which shall be considered one and the same
instrument.
-30-
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed as of the day and year first written above.
THERMA-WAVE, INC. THERMA-WAVE K.K.
By: /s/ Xxxxx Xxxxxxxxxx By: /s/ X. Xxxxxxxx
Its: Chairman and CEO Its: President
TORAY INDUSTRIES, INC. SHIMADZU CORPORATION
By: /s/[signature illegible] By: /s/ Xxxxxxx Xxxxxxxx
Its: Director Its: Director
-31-
SCHEDULE A
----------
SHIMADZU LICENSED PATENTS
-------------------------
None
SCHEDULE B
----------
TORAY LICENSED PATENTS
----------------------
None
-33-
SCHEDULE C
----------
TWI LICENSED PATENTS
--------------------
A. U.S. Patents
--------------
1. Issued Patents
--------------
Patent No. Title Issue Date Record Owner
---------- ----- ---------- --------------
4,255,971 Thermoacoustic Microscopy 03/17/81 Therma-Wave, Inc.
4,484,820 Method for evaluating the quality of the bond between 11/27/84 Therma-Wave, Inc.
two members utilizing thermoacoustic microscopy
4,513,384 Thin film thickness measurements and depth profiling 04/23/85 Therma-Wave, Inc.
utilizing a thermal wave detection system
4,521,118 Method for detection of thermal waves with a laser probe 06/04/85 Therma-Wave, Inc.
4,522,510 Thin film thickness measurement with thermal waves 06/11/85 Therma-Wave, Inc.
4,579,463 Detecting thermal waves to evaluate thermal parameters 04/01/86 Therma-Wave, Inc.
4,632,561 Evaluation of surface and subsurface characteristics of 12/30/86 Therma-Wave, Inc.
a sample
4,634,290 Method and apparatus for detecting thermal waves 01/06/87 Therma-Wave, Inc.
4,636,088 Method and apparatus for evaluating surface conditions 01/13/87 Therma-Wave, Inc.
of a sample
4,679,946 Evaluating both thickness and compositional variables in 07/14/87 Therma-Wave, Inc.
a thin film sample
4,750,822 Method and apparatus for optically detecting surface 06/14/88 Therma-Wave, Inc.
states in materials
4,795,260 Apparatus for locating and testing areas of interest on 01/03/89 Therma-Wave, Inc.
a workpiece
-34-
Patent No. Title Issue Date Record Owner
---------- ----- ---------- ------------
4,854,710 Method and apparatus for evaluating surface and 08/08/89 Therma-Wave, Inc.
subsurface features in a semiconductor
4,952,063 Method and apparatus for evaluating surface and 08/28/90 Therma-Wave, Inc.
subsurface features in a semiconductor
4,999,014 Method and apparatus for measuring thickness of thin 03/12/91 Therma-Wave, Inc.
films
5,042,951 High-resolution elipsometric apparatus 08/27/91 Therma-Wave, Inc.
5,042,952 Method and apparatus for evaluating surface and 08/27/91 Therma-Wave, Inc.
subsurface features in a semiconductor
5,074,669 Method and apparatus for evaluating ion implant dosage 12/24/91 Therma-Wave, Inc.
levels in semiconductors
2. Pending Patent Applications
---------------------------
Serial No. Filing Date
---------- -----------
615,447 11/19/90
624,036 12/07/90
670,040 03/15/91
813,900 12/23/91
-35-
B. Foreign Patents
---------------
1. Issued Patents
--------------
Country Patent No. Issue Date Title Record Owner
--------------- ---------- ---------- ------ -----------------
Japan 1,430,258 03/09/88 Thermoacoustic Microscopy Therma-Wave, Inc.
Great Britain 2,047,896 01/26/83 Thermoacoustic Microscopy Therma-Wave, Inc.
EPO: 102,730 10/12/88 A method for detecting thermal waves in a Therma-Wave, Inc.
Great Britain sample
France
Netherlands
Germany 33 78231.8
EPO: 97,473 11/05/86 Evaluating the thickness of a layer or Therma-Wave, Inc.
Great Britain determining change in thermal
France characteristics with depth by thermal wave
Netherlands detection
Germany 33 67460.4
EPO: 162,681 07/27/90 Method and apparatus for evaluating both Therma-Wave, Inc.
Great Britain thickness and compositional variables in a
France layered or thin film sample
Netherlands
Germany 35 78824
EPO: 163,466 09/05/90 Method and apparatus for evaluating both Therma-Wave, Inc.
Great Britain thickness and compositional variables in a
France layered or thin film sample
Netherlands
Germany 35 79497.6
EPO: 165,711 08/07/91 Detecting thermal waves to evaluate Therma-Wave, Inc.
Great Britain thermal parameters
France
Netherlands
Germany
2. Pending Patent Applications
---------------------------
-36-
Country Serial No. Filing Date Title Status Record Owner
------- ---------- ----------- ----- --------------- -----------------
Japan 58-135426 07/25/83 Method for detection of Publication No. Therma-Wave, Inc.
thermal waves with a h3-33-222
laser probe issued 05/16/91
Japan 58-107991 06/17/83 Thin film thickness Decision to Therma-Wave, Inc.
measurements and depth publish
profiling utilizing a
thermal wave detection
system
Japan 59-053682 03/22/84 Thin film thickness Decision to Therma-Wave, Inc.
measurement with thermal publish
waves
Japan 60-105732 05/17/85 Method and apparatus for Decision to Therma-Wave, Inc.
evaluating surface publish
conditions of a sample
Japan 60-105731 05/17/85 Detecting thermal waves Decision to Therma-Wave, Inc.
to evaluate thermal publish
parameters
Japan 60-105733 05/17/85 Evaluating both Not examined Therma-Wave, Inc.
thickness and
compositional variables
in a thin film sample
Japan 61-42052 02/28/86 Evaluating surface and Examination Therma-Wave,
subsurface features in a pending Partners
semiconductor
Japan 61-94973 04/25/86 Evaluation of surface Not examined Therma-Wave, Inc.
and subsurface
characteristics of a
sample
Japan 62-54324 03/11/87 Method and apparatus for Not examined Therma-Wave, Inc.
optically detecting
surface states in
materials
-37-
Country Serial No. Filing Date Title Status Record Owner
------- ---------- ----------- ----- ------ -----------
Japan 63-115008 05/13/88 Apparatus for locating Not examined Therma-Wave, Inc.
and testing areas of
interest on a workpiece
Japan P2-116410 05/02/90 Method and apparatus for Not examined Therma-Wave, Inc.
measuring thickness of
thin film
Japan P2-111884 05/01/90 High resolution Not examined Therma-Wave, Inc.
elipsometric apparatus
Japan P2-409840 12/12/90 Method and apparatus for Not examined Therma-Wave, Inc.
evaluating ion implant
dosage levels in
semiconductors
EPO: 291,276A2 05/10/88 Locating and testing Pending Therma-Wave, Inc.
France areas of interest on a
Great Britain workpiece
Netherlands
Germany
EPO: 396,409 05/02/90 High resolution Pending Therma-Wave, Inc.
France elipsometric apparatus
Great Britain
Netherlands
Germany
EPO: 397,388 05/02/90 Method and apparatus for Pending Therma-Wave, Inc.
France measuring thickness of
Great Britain thin films
Netherlands
Germany
EPO: 432,963 12/05/90 Method and apparatus for Pending Therma-Wave, Inc.
France evaluating ion implant
Great Britain dosage levels in
Netherlands semiconductors
Germany
-38-
Country Serial No. Filing Date Title Status Record Owner
------- ---------- ----------- ----- ------ ------------
PCT US91/00795 10/23/91 Apparatus for generating Not examined Therma-Wave, Inc.
surface topographical
images
-39-
SCHEDULE D
----------
PRE-EXISTING TWI LICENSES
-------------------------
1. License Agreement between Therma-Wave, Inc. and VLSI Technology dated
September 23, 1987.
2. License Agreement between Therma-Wave, Inc. and Exxon Production
Research Company dated February 13, 1987.
3. Master Software License Agreement between Therma-Wave, Inc. and any
purchaser of its basic software packages to operate Therma-Wave's Process
Control and Inspection Systems.
-40-
SCHEDULE E
----------
PRE-EXISTING TORAY LICENSES
---------------------------
None
-41-
SCHEDULE F
----------
PRE-EXISTING SHIMADZU LICENSES
------------------------------
None
-42-
Reference:
SCHEDULE D to DLA is attached hereto by reference.
SCHEDULE D
----------
PRE-EXISTING TWI LICENSES
-------------------------
1. License Agreement between Therma-Wave, Inc. and VLSI Technology dated
September 23, 1987.
2. License Agreement between Therma-Wave, Inc. and Exxon Production
Research Company dated February 13, 1987.
3. Master Software License Agreement between Therma-Wave, Inc. and any
purchaser of its basic software packages to operate Therma-Wave's Process
Control and Inspection Systems.
-43-
