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EXHIBIT 10.3.14
LICENSE AMENDMENT AGREEMENT
THIS LICENSE AMENDMENT AGREEMENT (this "Amendment"), dated as of
November 17, 1995, is made among Komag, Incorporated, a Delaware corporation
("Komag"), Komag Material Technology, Inc., a Delaware corporation ("KMT"), and
Kobe Steel, Ltd., a Japanese company ("Kobe").
WHEREAS, Komag, KMT and Kobe are parties to a Joint Development and
Cross-License Agreement dated as of March 10, 1989 (the "License Agreement");
WHEREAS, the term of such License Agreement has expired and the
parties hereto wish to reinstate (on the terms and conditions set forth therein
as originally executed except as modified hereby) and extend the term of such
License Agreement; and
WHEREAS, Komag and Kobe Steel USA Holdings, Inc. are parties to a
Stock Purchase Agreement dated as of the date hereof (the "Stock Purchase
Agreement") and it is a condition precedent to the effectiveness of such Stock
Purchase Agreement that the parties hereto execute and deliver this Amendment.
NOW, THEREFORE, subject to the terms and conditions hereof, the
parties hereto agree as follows:
1 Definitions; Reinstatement of License Agreement. Terms
Defined in License Agreement. All capitalized terms used in this Amendment and
not otherwise defined herein shall have the meanings assigned to them in the
License Agreement.
2 Amendments to the License Agreement.
(a) Amendments. The License Agreement shall be restated and
amended as follows, effective as of the date of the occurrence of the Closing,
as defined in the Stock Purchase Agreement.
(i) Article I of the License Agreement is hereby
amended by adding in the following new Sections:
"Section 1.4 A "Inventing Party" shall mean a party to this
Agreement which employs one or more inventors as that term is used
before the U.S. Patent and Trademark Office, which inventor or
inventors contribute or contributes to the invention of a certain
Joint Invention."
"Section 1.4 B "Joint Inventions" shall mean all
discoveries, improvements and inventions, conceived or first
reduced to practice pursuant hereto, as those terms are used before
the U.S. Patent and Trademark Office which are jointly made by one
or more Inventing Parties."
(ii) Sections 2.1, 2.2 and 2.3 of the License Agreement
are hereby amended by deleting the phrase "or other products incorporating Disk
Substrates" appearing therein.
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(iii) Section 4.5 of the License Agreement is
hereby amended by deleting such Section 4.5 in its entirety and by inserting in
lieu thereof the following new Section 4.5:
"4.5 Joint Property. Joint Inventions shall be jointly owned
by the Inventing Parties, each Inventing Party having an equal and
undivided interest therein, subject to the limitations on
sublicensing set forth in Section 2.4 above as if such Joint
Inventions were held subject to licenses hereunder. In such event,
the Inventing Parties shall all determine whether a patent
application or applications shall be filed on such Joint
Inventions, the Inventing Party which will prepare and file such
application or applications, and the country or countries in which
the same are to be filed. The patent expenses incurred shall be
divided equally among the Inventing Parties. If the Inventing
Parties are not able to all agree to file an application or
applications on a Joint Invention, any one of the Inventing Parties
may elect to assume such expenses (the "Electing Party"). The
Electing Party shall control the preparation and prosecution of any
such applications and all rights in any patents granted thereon
shall belong exclusively to the Electing Party. Any Inventing
Party declining to bear its share of the expenses of prosecuting or
maintaining patents covering a Joint Invention (the "Declining
Party") agrees to execute any and all forms, assignments or other
documents to effect the foregoing; provided, however, that the
Declining Party shall automatically have a worldwide,
non-exclusive, royalty-free perpetual license under any patent or
patents which may be granted with respect to any such Joint
Invention; provided further, however, that such Declining Party
shall not have the right to assign, sublicense or otherwise
transfer the patent or patents, except to an Affiliate. The
administration of any licensing of Joint Inventions shall be
determined when the circumstances arise. Neither Kobe nor KOMAG
may, without the prior written consent of the other (which consent
may be withheld for any reason in its sole and absolute
discretion), assign or otherwise transfer its interest in any Joint
Invention except pursuant to Section 8.14 below."
(iv) Section 5.1 of the License Agreement is hereby
amended by deleting such Section 5.1 in its entirety and by inserting in lieu
thereof the following new Section 5.1:
"5.1 Term. This Agreement shall become effective on December
28, 1995 and shall remain in full force and effect for two (2)
years unless earlier terminated pursuant to Sections 5.2 or 5.3;
provided, that such term shall be automatically renewed for
subsequent two (2) year periods (subject to the effect of Sections
5.2 and 5.3) unless a written objection of any party hereto is
received by the other parties hereto prior to the end of the then
current term, in which case this Agreement will expire at the end
of such then current term."
(v) Section 7.2 of the License Agreement is hereby
amended by adding the following new clause (c):
"(c) Notwithstanding anything to the contrary in Section
7.2, any Proprietary Information shall no longer be deemed to be
"confidential" or "proprietary" for purposes of this Agreement five
(5) years after the date such Proprietary Information is disclosed
by any party to any other party hereto."
(vi) Section 7.3(a) of the License Agreement is hereby
amended by adding ", California" after the occurrence of "Palo Alto" therein.
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(vii) Section 8.1 of the License Agreement is hereby
amended by (a) deleting "Xxxxxxx X. Xxxxxxxx" and by inserting in lieu thereof
"Xxxxxx X. Xxxxxx" and (b) deleting all text relating to Xxxxxx & Xxxxx and by
inserting in lieu thereof the following new text:
"Xxxxxx & Xxxxx
Xxx Xxxxxxxx Xxxxx
Xxxxx 000
Xxx Xxxxxxxxx, XX 00000
Attention: Xxxxxxx X. Xxxxx, Esq.
Facsimile: (000) 000-0000"
(viii) Section 8.14(a) of the License Agreement is hereby
amended by adding the phrase "and except as to those rights specified in
Sections 4.2, 4.3 and 4.4" after the word "below" in the second line thereof.
(b) Amendment to Table of Contents. The Table of Contents of the
License Agreement shall be amended to the extent necessary to reflect the
amendments to the License Agreement made in subsection (a).
(c) References Within License Agreement. Each reference in the
License Agreement to "this Agreement" and the words "hereof," "herein,"
"hereunder," or words of like import, shall mean and be a reference to the
License Agreement as amended by this Amendment.
3 Miscellaneous.
(a) License Agreement Otherwise Not Affected. Except as
expressly reinstated and amended pursuant hereto, the License Agreement shall
remain unchanged and in full force and effect. Without limitation, the
provisions of Sections 8.4, 8.5, 8.6, 8.10 and 8.14 of the License Agreement
shall be deemed to be applicable to this Amendment.
(b) Complete Agreement; Amendments. This Amendment, together
with the License Agreement, contains the entire and exclusive agreement of the
parties hereto and thereto with reference to the matters discussed herein and
therein. This Amendment supersedes all prior commitments, drafts,
communications, discussions and understandings, oral or written, with respect
thereto. This Amendment may not be modified, amended or otherwise altered
except in accordance with the terms of the License Agreement.
(c) Severability. Whenever possible, each provision of this
Amendment shall be interpreted in such manner as to be effective and valid
under all applicable laws and regulations. If, however, any provision of this
Amendment shall be prohibited by or invalid under any such law or regulation in
any jurisdiction, it shall, as to such jurisdiction, be deemed modified to
conform to the minimum requirements of such law or regulation, or, if for any
reason it is not deemed so modified, it shall be ineffective and invalid only
to the extent of such prohibition or invalidity without affecting the remaining
provisions of this Amendment, or the validity or effectiveness of such
provision in any other jurisdiction.
(d) Counterparts. This Amendment may be executed in any number
of counterparts and by different parties hereto in separate counterparts, each
of which when so executed shall be deemed to be an original and all of which
taken together shall constitute but one and the same agreement.
(e) Interpretation. This Amendment is the result of negotiations
among the parties hereto, and is the product of all parties hereto.
Accordingly, this Amendment shall not be construed against a particular party
merely because of such party's involvement in the preparation thereof.
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IN WITNESS WHEREOF, the parties hereto have duly executed this
Amendment, as of the date first above written.
KOMAG, INCORPORATED
By
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Title:
KOMAG MATERIAL TECHNOLOGY, INC.
By
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Title:
KOBE STEEL, LTD.
By
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Title:
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