SEMICONDUCTOR INDUSTRY
TOF MARKETING AGREEMENT
This Agreement is made and entered into this 31 day of October 1995,
by and between the following parties:
Sensar Corporation, (subsidiary of Xxxxxx Xxxxx, Inc.) a company
organized and existing under the laws of Utah, having its principal
place of business at 000 Xxxx 0000 Xxxxx, Xxxxx, Xxxx 00000
(hereinafter referred to as "Sensar").
as one party
and
SAES Getters S.p.A., a company organized and existing under the laws
of Italy, with its principal place of business in Xxx Xxxxxxxxx, 000
Xxxxx, Xxxxx, (hereinafter referred to as "SAES").
as the other party
WITNESSETH
WHEREAS, Sensar has developed a time-of-flight mass spectrometer
known as the Sensar TOF 2000 suitable for monitoring impurities in
nitrogen, argon, helium, and hydrogen (the TOF 2000 or any future
improved version(s) hereinafter referred to as the Product), which
has application in the Semiconductor Industry; and
WHEREAS, SAES is a worldwide known company involved in the field of
vacuum technology, and has wide experience in developing,
manufacturing and marketing of getters, purifiers and vacuum and
gas measuring instrumentation, and owns, directly or indirectly,
subsidiaries and companies, among which is SAES Pure Gas, Inc.,
in several countries (hereinafter referred to as "SAES Group"); and
WHEREAS, the parties did at one time enter into a Product Development
and Marketing Agreement whereby SAES became the exclusive distributor
of the TOF 2000 units, which Agreement has been terminated and is of
no further force and effect; and
WHEREAS, SAES remains interested in marketing the Product in the
Semiconductor Industry, and
NOW, THEREFORE, in consideration of the premises, and other good and
valuable consideration, the receipt and sufficiency of which the
parties hereto acknowledge, the parties agree to, and hereby do agree
as follows:
l. Appointment as Distributor.
a. The parties hereto acknowledge and agree that the Product
Development and Marketing Agreement dated the 12th day of January
1994 has been and is terminated and is of no further force or effect
and all rights of the parties with respect thereto have been
fulfilled, settled or satisfied and there are no claims, demands,
or rights of any kind presently outstanding as between the parties.
b. Sensar hereby appoints SAES exclusive worldwide distributor to
market and solicit orders for the sale of the Product in the
Semiconductor Industry, for all phases of production and processing
of semiconductors and other electronic devices, with the exclusion
of stack emission and atmospheric pollution control applications
(hereinafter referred to as the "Semiconductor Industry"). SAES
accepts this appointment upon the terms and conditions set forth
herein and agrees to use its best efforts to promote the sale of the
Product in the Semiconductor Industry.
SAES may appoint sub-distributors and may use SAES Group commercial
network for the promotion, the marketing and the sale of the
Product. Sensar shall not be entitled to sell, directly or
indirectly, nor to appoint other distributors, agents and/or
sellers for the Product in the Semiconductor Industry save as
provided for in this Agreement.
2. Marketing and Sales Responsibilities
a. SAES shall use its best efforts to solicit orders of sales of
the Product by solicitation, advertising, symposium presentations,
mailing, booths at trade shows, journal articles, journal
advertising, and such other methods as may be appropriate. SAES
shall from time to time, but not less than semi-annually, review
with Sensar its solicitation plan, including documentation related
thereto. In the course of solicitation of such orders, SAES shall
actively seek out new applications for these products in the
Semiconductor Industry and follow-up sales leads obtained from
any source. SAES shall be responsible for maintaining proper
records, forms, or other documentation consistent with good
accounting practices, and shall retain and deliver copies of all
advertising documentation to Sensar upon a request therefore.
b. During the term of this Agreement, SAES shall not act as a
distributor for any product that competes with the Product without
the written consent of Sensar. For purposes of this Agreement,
products using mass spectrometer devices to analyze gases at
atmospheric pressure are to be considered competitors. Sensar will
not market any products to the Semiconductor Industry or provide
information to competitors without the written consent of SAES.
c. SAES shall be responsible for conducting and covering all
expenses for marketing and sales efforts for the Products within
the Semiconductor Industry. This includes, but is not limited to:
preparing Product brochures and application notes, advertising,
mailing of marketing materials, participating in trade shows,
conducting surveys, and conducting demonstrations of the Product.
d. Sensar shall provide, in a timely manner and in good faith,
any technical data and assistance reasonably requested by SAES
for performing the marketing functions. Sensar shall furnish SAES
with literature, sales data, engineering materials, and such other
information as may be needed to solicit sales of the Product.
Sensar shall use its best efforts to provide materials and
technical assistance to SAES wherever and whenever it is
reasonably required to assist in the sales of the Product.
e. Sensar shall promptly refer any inquiries, requests, and/or
orders related to the Product for the Semiconductor Industry to
SAES, and SAES will refer the same to Sensar for any other markets.
f. Sensar reserves the right to maintain technical contacts and
relationships with potential and future customers, provided
however SAES shall be promptly informed of said contacts. In the
event services are performed by Sensar to customers, billing shall
be through SAES and Sensar shall be reimbursed for its services.
3. Manufacturing of Product.
a. Sensar shall, and has full rights to, manufacture the Product
for sale by SAES under this agreement. Sensar shall use its best
efforts to manufacture the Product in a timely manner to meet the
sales efforts of SAES. SAES shall allow ninety (90) days delivery
time for Products from date of order, although Sensar shall
deliver Products fully tested and in compliance to mutually
agreed specifications as rapidly as possible.
b. SAES may require Sensar to identify the Product with SAES' name
by adding a label of appropriate size, stating "Manufactured for
SAES Getters S.p.A. by Sensar Corporation, a subsidiary of
Xxxxxx Xxxxx Inc.," or such other language as may be agreed to
from time to time.
c. Sensar agrees that it shall indemnify, defend and hold SAES
harmless from and against any claims, damages, costs and expenses
(including attorney's fees) caused by the negligence of Sensar and
attributable to the Product including, without limitation, claims
for product liability or claims based on patent, copyright or
trademark infringement and caused by reason of any defective design
or manufacture of the Product and without the fault or negligence
of SAES. SAES agrees that it shall indemnify, defend and hold
Sensar harmless from and against any claims, damages, costs and
expenses (including attorney's fees) attributable to or arising
out of the fault or negligence of SAES.
4. Coordination of Activities.
a. SAES and Sensar will appoint contact persons through whom all
communications and authorizations between SAES and Sensar will be
made.
b. SAES shall report on a semi-annually basis its sales
activities, including sales forecasts, competitor situation, and
any other information reasonably requested by Sensar and related
to the Product.
c. SAES shall report to Sensar on a semi-annually basis any
technical information gathered from marketing and sales efforts
that could lead to improvements in the operation and/or
marketability of the Products, and Sensar will use its best
efforts to improve the Products to ensure competitiveness. Any
material reasonably considered to be confidential by any party
shall be identified as such and protected as provided in this
agreement.
d. Sensar shall keep SAES informed of its manufacturing
capabilities and delivery times. Sensar shall promptly inform
SAES of any problem which could limit or reduce its manufacturing
capabilities. SAES shall inform Sensar of anticipated purchase
orders as early as possible, in order for Sensar to plan its
production schedule.
e. The parties shall coordinate contacts with prospective
purchasers of the Product with representatives and technical
support personnel of both SAES and Sensar, as may be agreed to by
the parties. SAES shall bear the cost of travel, meals and
lodging of Sensar employees who may be requested to assist SAES
in such sales efforts.
5. Product Development Activities
a. SAES shall cooperate with Sensar and Sensar shall cooperate
with SAES to further enhance the application of the TOF 2000 to
the Semiconductor Industry. Sensar shall have the primary
development responsibility and SAES shall provide Sensar all
information that is available, or which may in the future become
available to SAES, regarding specifications, know-how, technical
assistance and engineering, which would assist Sensar in such
enhancement.
b. SAES shall loan Sensar at no cost to Sensar, such ultrahigh
purity gas purifier units suitable for oxygen and other gas
purification as used by the Semiconductor Industry in its
manufacturing process. These gas purifiers shall be used
initially at Sensar's Sandy, Utah, manufacturing facility in
its product improvement and technical development program and for
use of the parties in the joint development effort. The gas
purifier units shall remain the sole property of SAES and shall
be immediately returned to SAES in the event of the termination
of this Agreement, unless such equipment has been disposed of in
a different manner, as both parties shall have agreed.
c. There is a jointly-owned TOF 2000 unit located at Sensar's
facility which is to be used for continued research and development
to improve the performance, reduce costs, increase quality,
maintain reliability and enhance the Product's value to the
Semiconductor Industry.
d. Sensar and SAES shall cooperate in a joint effort to improve
Product performance, increase quality, reduce costs, extend the
capabilities, improve marketability and develop new
instrumentation that is applicable to the Semiconductor Industry.
Particular and immediate attention will be given by Sensar to
the following:
i. Completion of the "Microsoft Windows" version of the software.
ii. Development of high purity oxygen gas monitoring capability.
iii. Improvements in quality control.
Sensar shall have the responsibility for these tasks. In addition,
SAES hereby agrees to cooperate independently with Sensar, testing
the Product and carrying on needed evaluations, supplying adequate
gas test sources without charge as well as having SAES'
technicians visiting Sensar's facilities, at its own costs and
expenses.
6. Product Purchase Agreement and Schedule.
a. SAES shall purchase Products from Sensar at a FCA (Incoterms
1990) price of $150,000.00 each, for the TOF 2000 unit and
$180,000.00 each, for the TOF 2000 unit, including the gas
calibration system for four gases (Nitrogen, Hydrogen, Helium and
Argon) (but without the gas purifier units). These prices shall
be renegotiated at October of each year of validity of this
agreement. SAES shall be free to set its own price for sale of
the Products to the Semiconductor Industry.
b. SAES shall purchase two (2) TOF 2000s from Sensar in 1995
according to the following schedule. Upon signing of this
agreement, two (2) TOF 2000 units shall be ordered by SAES, for
delivery in ninety (90) days from the order date. For the
Products purchased from Sensar, SAES shall pay thirty percent
(30%) of the price of the Product(s) to Sensar at the time the
order is placed with Sensar. Other fifty percent (50%) will be
paid within fifteen (15) days of delivery of the completely
assembled and tested Product(s) as per the agreed tests
procedures. The remaining twenty percent (20%) will be paid
within fifteen (15) days of acceptance by the customer of the
Product(s) but however not later than forty-five (45) days after
delivery to customer of the Product(s). Delivery shall be FCA
(Incoterms 1990) Sensar's dock. All testing and payment shall
be within forty-five (45) days of the ship date of the TOF 2000s.
c. SAES shall purchase a minimum number of TOF 2000s (or
improved product if identified differently) from Sensar for each
of the years of the agreement. The schedule for purchases is:
Calendar year Number of TOF 2000s
1995 2
1996 6
1997 9
1998 11
1999 15
It is the parties intention to maintain a continuous flow of orders
to permit orderly production schedules and cash flow. Accordingly,
without prior agreement, order levels will not be less than one
unit of the Product per any calendar quarter. If no purchases
are made from Sensar by SAES for any period of three months, then
Sensar shall have the right to terminate the Agreement upon 30
days written notice to SAES and a good faith attempt to study and
resolve the reason for the lack of purchases. In any event, if
Sensar does not elect to terminate the Agreement, then SAES shall
not be bound by the minimum calendar years numbers set forth in
this Article 6.c. if the Product ceases to be competitive in the
Semiconductor Industry market.
7. Payments. All payments due according to this Agreement and
not otherwise provided for in this Agreement will have to be made
within forty-five (45) days after invoice.
8. Independent Contractor. The relationship of SAES to Sensar
is that of an independent contractor. SAES shall, at its expense,
maintain offices and conduct its business worldwide, and shall
have complete control of and be completely responsible for its
business, personnel, and policies.
9. Warranty, Service, Repair, Installation and User Instruction.
SAES assumes full responsibility for all warranty, service,
repairs and equipment returns. Sensar warrants to SAES that all
products shall be free from defects in materials and workmanship
for one (1) year following installation. During the warranty
period, all broken or defective parts under warranty, as set forth
in Sensar's User's Guide for the Products, not caused by misuse or
accident through fault or negligence by the customer are to be
replaced by Sensar at no charge upon written notification from
SAES. Labor costs associated with warranty repairs will be the
sole responsibility of SAES but shall be reimbursed by Sensar at
the then current SAES hourly rate for such services. All third
party warranties shall be passed on by Sensar to SAES. SAES is
further responsible for the installation and user instruction of
the Product. In this regard, SAES will distribute to clients only
literature reviewed and approved in writing by Sensar explaining
Sensar warranty.
10. Service Training and Servicing.
a. Sensar agrees to provide SAES engineers with all initial and
continuous training and documentation, as may be required in order
to ensure installation, start-up, training, warranty and customer
service to the Semiconductor Industry. SAES agrees to arrange for
initial training of personnel in servicing procedures. Such
training shall take place at the Sensar offices at the address set
forth above for the initial training or at such other mutually
agreed upon place. SAES shall be responsible for all costs of
transportation, food and lodging incurred with respect to
attending such training. Such training shall be given at such
time as may be mutually agreed to by the parties. Sensar and
SAES may decide that follow up training is required. Follow up
training may take place at Sensar or SAES' facilities, at such
time(s) as the parties deem appropriate. Each party shall pay its
own costs and expenses for such follow up training, except that
SAES shall bear the cost of travel, meals and lodging of Sensar's
employees who may be requested to provide such training away from
Sensar's facility.
b. Customer charges for service to equipment manufactured by
Sensar and placed in service by SAES shall be established by SAES.
Charges for service shall be fair and equitable, and shall reflect
the Sensar image in a favorable manner.
c. Replacement of parts and components shall be with Sensar or
Sensar approved parts and components only. Use of replacement
parts other than provided by Sensar, unless substitution is
specifically approved in writing, shall constitute a breach of
this Agreement unless an emergency situation exists and a Sensar
component or part is not available. For damages caused by use of
a non Sensar or unapproved component or part, the warranty
provision of this Agreement does not apply.
11. Term of Agreement. The term of this Agreement shall be for
an initial five (5) year term, commencing on the date of signature
of this Agreement by authorized representatives of both SAES and
Sensar. The term hereof shall be automatically renewed for
additional five year periods thereafter, unless the Agreement is
terminated by either party upon not more than 180 nor less than
ninety (90) days written notice prior to the end of the then
current term.
12. Patent License Agreement. This Agreement shall be subject to
the provisions of the Patent License Agreement between Sensar and
Xxxxxxx Xxxxx University covering U.S. Patent No 5,070,240 and
all other patents domestic or foreign issued out of or in
relation thereto.
13. Trademarks and Copyrights. SAES agrees with respect to the
Sensar name and proprietary marks as follows:
a. SAES shall not in any way do anything to infringe upon, harm,
or contest the right of Sensar in any trade xxxx or name which
incorporates the name "Sensar." SAES shall be entitled to use its
own name and xxxx in connection with the sales of Sensar products,
and may place its name or xxxx on the Product.
b. SAES intends that its use of any proprietary xxxx, or any
other xxxx or name that incorporates the name "Sensar" to inure to
the benefit of Sensar and agrees that any goodwill arising from
such use by SAES shall revert to Sensar in the event that this
Agreement is terminated for any reason.
14. Ownership of Product and Enhancements. SAES agrees and
acknowledges that the Product and any and all technology, rights,
patents, know-how or other intellectual property interests
relating thereto are the sole and separate property of Sensar,
subject only to such rights as Sensar shall or may transfer, sell
or assign to SAES by written agreement. SAES further agrees and
acknowledges that, all enhancements and improvements to the Product
are and shall be the sole and separate property of Sensar, and that
no ownership claim shall be made by SAES as to the Product,
enhancements thereof or improvements thereto, except such rights
as shall be specifically provided herein.
15. Termination.
a. Any provision herein to the contrary notwithstanding, this
Agreement may be terminated at any time by any part in the event
of any material breach by the other party of any of the terms of
conditions of this Agreement or in the event of other acts of a
party that the other party reasonably believes will adversely
affect the Product, without prejudice to any right or remedy the
terminating party might have. The terminating party will notify
the other party if it believes such a condition exists, and the
other party will have sixty (60) days to rectify the situation
before any further action is taken by the terminating party.
b. This Agreement shall terminate immediately and without notice
at the election of the other party, without prejudice to any
right or remedy the terminating party might have, upon (i) the
insolvency of the other party or (ii) a change in more than Fifty
percent (50%) in control of a party to a non related party.
c. Upon termination of this Agreement, SAES shall promptly return
to Sensar, at its principal office in the United States set forth
above, or at such other place as Sensar may designate, all property
of Sensar in SAES' possession, including but not limited to, all
Sensar drawings, specifications, literature, equipment and spare
parts, if any.
d. Upon termination of this Agreement, Sensar shall promptly
return to SAES at its principal office in Italy, or at such other
place as SAES may designate, all property of SAES in Sensar
possession, including but not limited to the provided gas
purification units.
e. Sensar shall not be liable to SAES or any person making a
claim in place of SAES for any indemnity or claimed payment
claimed on account of the termination of this Agreement, provided
that Sensar has complied with the terms of this Agreement.
f. In the event this Agreement is not renewed as per Article 11
hereof, where SAES desires to extend the initial term hereof, or
is terminated by Sensar not for breach by SAES of its obligations,
and provided that Sensar is continuing to market the Product and
provided also that SAES has actually sold during the term of this
Agreement more than sixty (60) Products, then SAES shall be
entitled to a goodwill indemnity as consideration for the
introduction of Sensar name and products in the Semiconductor
Production Gas Market as well as for consideration for SAES
activity in the development of the Product. Said goodwill
indemnity shall be calculated as follows:
twenty percent (20%) of the last twelve (12) months actual
sales made by SAES if said sales are between US $1,000,000 and
US $3,000,000;
ten percent (10%) of the last twelve (12) months actual sales
made by SAES if said sales are between US $3,000,001 and
US $5,000,000;
five percent (5%) of the last twelve (12) months actual sales
made by SAES if said sales are above US $5,000,001.
The calculation of the goodwill indemnity shall be based on
segments. Accordingly, for illustrations purposes only, if sales
are US $3,500,000, the goodwill indemnity due shall be the sum of
20% of US $3,000,000 and 10% of US $500,000.
Sensar expressly agrees to pay SAES said goodwill indemnity
within three (3) months from the termination of the Agreement.
16. Succession. This Agreement, shall inure to the benefit of
and be binding upon the parties hereto and upon their assignees
and successors in interest of any kind whatsoever.
17. Failure to Enforce. The failure of a party to enforce any of
the provisions, rights or options of this Agreement shall in no way
be considered a waiver of such provisions, rights or options, or in
any way affect the validity of this Agreement. The exercise by a
party of any of its rights or options hereunder shall not preclude
or prejudice such party from exercising the same or any other
rights or options it may have under this agreement, irrespective
of any previous action or proceeding taken by such party.
18. Notices. All notices, requests, demands, and other
communications under this Agreement shall be in writing and shall
be deemed to have been duly given on the date of service if
served personally on the party to whom notice is to be given, or
on the third day after mailing, if mailed to the party to whom
notice is to be given, by first-class, registered or certified
mail, postage prepaid, and unless either party should notify the
other party in writing of a change of address, properly addressed
to the party's address first set out above.
19. Entire Agreement. This Agreement, constitutes the entire
agreement between the parties pertaining to the subject matter
contained in it and supersedes all prior and contemporaneous
agreements, representations and understanding of the parties
relating thereto. It may not be changed orally only by an
agreement in writing signed by the party against whom enforcement
of any waiver, change, modification, extension or discharge is
sought. No representations or promises not expressed herein shall
be binding on either party hereto for any purposes.
20. Section Headings. The section headings herein have been
inserted for convenience only and shall not be deemed to limit or
otherwise affect the construction of any provision herein.
21. Attorney's Fees. In the event of a breach of this Agreement,
the breaching party shall pay to the enforcing party all
reasonable costs of enforcement, with or without suit, including
a reasonable attorney's fee, together with such other legal cost
as may be authorized by law.
22. Severability. In the event any section, paragraph, or portion
of this Agreement shall be or be deemed to be by any court having
lawful jurisdiction of the subject matter of this Agreement void,
voidable, or invalid for any reason, this Agreement shall be
otherwise valid and enforceable as if said void, voidable, or
invalid article, section, paragraph, or portion of this Agreement
had not been a part hereof in the first instance.
23. Authority to Bind. Each party executing this Agreement
hereby warrants that it has full and legal authority to execute
this Agreement for and on behalf of the respective parties, and
no further approval or consent of any other person is necessary
in connection therewith. Further, each party executing this
Agreement covenants and represents that the execution of this
agreement is not in contravention of and will not result in a
breach of any other agreement, contract, instrument, order,
judgment or decree to which such person is a party.
24. Counterparts. This Agreement may be executed in duplicate
originals, each of which shall be considered an original, but all
of which taken together shall constitute one and the same
original instrument. For purposes of this Article 24, facsimile
copies of this Agreement executed and transmitted by a party
shall be binding against such party as an original thereof.
25. Force Majeure. A party shall be excused for the period of
any delay in the performance of any obligations hereunder when
prevented from so doing by cause or causes beyond such party's
control, including labor disputes, civil commotion, war,
governmental regulations or controls, fire or other casualty,
inability to obtain any material or service or acts of God.
26. Miscellaneous. Nothing in this Agreement shall be deemed to
constitute the parties as partners, joint venturers, an association
or any other type of joint entity, nor shall this Agreement
constitute any employee of either party hereto or an agent or
representative, legal or otherwise, of the other party for any
purpose whatsoever. Neither party is authorized to make any
statement or representation on behalf of the other without the
prior written consent of the other party. Neither party assumes,
nor shall it be liable for, any liabilities or obligations of the
other whether past, present or future.
27. Governing Law - Mediation - Situs. The parties hereby agree
that this Agreement shall be governed by the laws of the State of
Utah.
The parties hereby agree to avoid litigation where possible and
to resolve all disputes arising out of the subject matter of this
Agreement by mediation and agree to be bound by the provisions of
the Delaware Voluntary Alternative Dispute Resolution Act - which
terms are incorporated herein by reference - and in particular by
the Alternative Dispute Resolution (ADR) provisions of Title 6,
Chapter 77, entitled the Voluntary Alternative Dispute Resolution
Act of the Delaware Code. Mediation shall take place at a
mutually convenient place agreed to by the parties.
In the event a dispute between the parties is not resolved by
mediation, then the parties shall have access to Court. In this
regard, the parties expressly stipulate that all litigation under
this agreement not related to Intellectual Property and/or of
which Xxxxxxx Xxxxx University may be a party may be brought in
the state courts of Delaware and/or the United States District
Court for Delaware and consent to the jurisdiction of such courts
in any such matters.
In addition the parties expressly stipulate that all litigation
under this agreement related to Intellectual Property issues and/or
of which Xxxxxxx Young University may be a party shall be brought
in the state courts of Utah and/or the United States District
Court for Utah and consent to the jurisdiction of such courts in
any such matters.
For purposes of serving possible filing for legal cases and
enforcing possible judgments, injunctions, seizures, etc., SAES
hereby declares it is doing business in the United States with a
wholly-owned subsidiary, SAES Getters USA, Inc., located in
Colorado Springs, Colorado, which hereby acknowledges to this
Agreement as well as with SAES Pure Gas Inc. located in San Luis
Obispo, California which also hereby acknowledges to this
Agreement.
This Agreement has been drafted in English and shall be interpreted
in the English language as generally accepted in the State of Utah,
regardless of any translation hereof.
IN WITNESS WHEREOF, the parties hereto have hereunto set their
hands and seals effective the day and year first above written.
SENSAR CORPORATION;
By /s/ Xxxxx X. Xxxxxx
Its Chairman
SAES GETTERS S.p.A.;
By /s/
Its Managing Director
Acknowledged and agreed
SAES Getters USA, Inc.
By /s/
Its President
Acknowledged and agreed
SAES Pure Gas, Inc.
By /s/
Its President
