EXHIBIT 10.19
TECHNOLOGY LICENSE AGREEMENT
THIS TECHNOLOGY LICENSE AGREEMENT (this "Agreement") is entered into
as of March 29, 1996 between Plasma & Materials Technologies, Inc., a California
corporation (the "Company"), and PMT CVD Partners, L.P., a California limited
partnership (the "Partnership").
R E C I T A L S:
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A. The Company designs, manufactures, markets and sells advanced
semiconductor manufacturing equipment, including a plasma source covered by
United States Patent No. 4,990,229, entitled "High Density Plasma Deposition and
Etching Apparatus" (together with its foreign counterparts, the "MORI Patent"),
which plasma source can be incorporated into, among other equipment, chemical
vapor deposition ("CVD") systems for the manufacture of semiconductors.
B. The Partnership has been formed pursuant to that certain Agreement
of Limited Partnership of PMT CVD Partners, L.P. dated as of an even date
herewith (the "Partnership Agreement"), to which the Company is a party and, in
connection therewith, the Company has agreed to contribute to the capital of the
Partnership a non-exclusive, royalty-free license for CVD applications for
semiconductor manufacturing under all PMT patents and technology (including
without limitation the MORI Patent and related technology).
C. The parties intend to effect such contribution of license rights
pursuant hereto.
A G R E E M E N T:
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NOW, THEREFORE, in consideration of the mutual covenants contained
herein and other good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, the parties hereto agree as follows:
1. Grant of License. Pursuant to Section 3.1(b) of the Partnership
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Agreement and for the consideration provided in the Partnership Agreement, the
Company hereby grants to the Partnership a non-exclusive, worldwide and fully
paid license, under all patents, copyrights, trade secrets and other
intellectual property of the Company (including without limitation the MORI
Patent and related technology), to design, develop, manufacture, have
manufactured, use, sell, lease or otherwise dispose of any and all CVD systems
for the manufacture of semiconductors, or any part thereof or spare part
therefor, including without limitation the plasma source or any spare part
therefor which is a component of or used in any such CVD systems. Such license
shall not be assignable or transferable, and may not be sublicensed, at all
times prior to September 30, 2001, but on and after such date such license may
be sold, assigned, sublicensed or otherwise dealt in and with solely for the
Partnership's own account and without royalty, accounting, reporting or other
obligation of any nature to
the Company. For purposes of the foregoing, "system" shall mean a stand-alone
set of equipment for the chemical vapor deposition of film in the semiconductor
manufacturing process, and shall not include components or spare parts (or
plasma sources or spare parts) except only to the extent manufactured solely for
use in systems as so defined. Furthermore, such license shall be limited solely
to CVD applications, and shall not confer upon the Partnership any license or
right with respect to systems, components or spare parts not used solely for CVD
applications. Such license shall further be subject to the limitations set forth
in Sections 4, 5 and 6 hereof. All such CVD systems, and all components thereof
and spare parts therefor which are within the scope of the license rights
granted hereby, are referred to herein as the "Products."
2. Technical Assistance. In order to assist the Partnership in the
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manufacture of the Products under this license, the Company agrees from time to
time during the term hereof (as provided in Section 9 hereof) to provide the
Partnership upon request with the following documents, information, technology
and manufacturing know-how related to the design, development or manufacture of
the Products, all at no cost to the Partnership:
(a) all technical information related to the Products;
(b) all engineering documentation related to the Products;
(c) all manufacturing documentation related to the Products;
(d) all quality assurance documentation related to the Products;
and
(e) all process information related to the Products.
3. Further Assistance. In order to further assist the Partnership to
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develop, manufacture, assemble, test and repair the Products, the Company agrees
as follows:
(a) from time to time during the term hereof, the Company shall
make reasonably available to the Partnership, for consultation at the Company's
facilities, qualified employees of the Company to render technical advice to the
Partnership regarding the manufacture, assembly, testing and repair of the
Products; and
(b) from time to time during the term hereof, the Company shall
allow the Partnership's personnel to visit the Company's manufacturing plants
for the study of systems, procedures, practices and methods as reasonably needed
to further enable the Partnership to develop, manufacture, assemble, test and
repair the Products.
The Partnership agrees to reimburse the Company for the Company's
reasonable out-of-pocket expenses incurred in connection with complying with
this Section 3,
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including all salary and wage expenses of employees or consultants of the
Company to the extent that their time is used to provide this assistance to the
Partnership.
4. Obligations with Respect to Watkins-Johnson Company. The
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Partnership acknowledges that the Company and Watkins-Johnson Company ("W-J")
are parties to, among other agreements, a Technology License and Sales Agreement
(the "W-J Agreement") which provides that, during the Covenant Period
(determined as provided therein), the Company will not (a) sell, offer for sale,
or solicit the purchase of its products for CVD applications for semiconductor
manufacturing, or (b) grant any licenses to make, have made, use, sell or modify
such products for CVD applications for semiconductor manufacturing.
Accordingly, the Partnership specifically acknowledges and agrees that the
license rights granted hereunder shall not include any rights to make, have
made, sell, offer for sale, use, modify or solicit the purchase of any products
for CVD applications during the Covenant Period. The Company represents and
warrants to the Partnership that the Covenant Period shall terminate no later
than July 1, 1996. The Company shall indemnify and hold harmless the
Partnership from and against any loss, liability, claim or expense arising by
reason of any claim by W-J that this Agreement or the transactions contemplated
hereby violate the W-J Agreement.
5. Rights and Obligations with respect to Anelva Corporation. The
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Partnership acknowledges that the Company and Anelva Corporation, a corporation
existing under the laws of Japan ("Anelva"), are parties to a Memorandum of
Intent dated December 7, 1995 providing for, and pursuant thereto shall enter
into, among other agreements, a Joint Development Agreement, a Sales and
Marketing Agreement and a Manufacturing Agreement for the development,
manufacturing and marketing of CVD systems incorporating the Company's helicon
plasma source for oxidizing film for 200 millimeter wafers, and any improvements
thereto (the "JD Products"). The Partnership specifically acknowledges and
agrees that (a) it shall succeed to and assume all rights and obligations of the
Company under such Joint Development Agreement, and (b) pursuant to the
marketing rights to be granted to Anelva by the Company under the Sales and
Marketing Agreement, Anelva will have, during the Term of the Sales and
Marketing Agreement, the exclusive right (i) to market and sell the JD Products
for installation and use in the Anelva Territories (as defined below in this
paragraph) and to market and sell components and spare parts for the JD Products
in the Anelva Territories, and (ii) to market and sell the JD Products and
components and spare parts for the JD Products to the Anelva Japanese Customers
(as defined below in this paragraph). Accordingly, the license rights granted
herein by the Company to the Partnership shall be subject to such exclusive
rights of Anelva and, during the Term of the Sales and Marketing Agreement, the
Partnership shall not market or sell any JD Products for installation in the
Anelva Territories or to the Anelva Japanese Customers. For purpose of the
foregoing, the term "Anelva Territories" means Japan, Taiwan and all of Asia,
excluding Korea (but specifically including China, Hong Kong, Vietnam, Thailand,
Cambodia, Burma, India, Pakistan, Bangladesh, Sri Lanka, Indonesia, Singapore,
Malaysia, Philippines and the Eastern and Central Asian republics of the former
U.S.S.R.), and all of the Pacific Region
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(including Australia). Furthermore, for purposes of the foregoing, the term
"Anelva Japanese Customers" means NEC Corporation and its affiliates, Hitachi
and its affiliates, Matsushita and its affiliates, Sony and its affiliates,
Fujitsu and its affiliates, Mitsubishi and its affiliates, and any customer with
which Anelva has an existing relationship as acknowledged and agreed upon in
writing by Anelva and the Company.
6. Export Regulations. It is agreed that the worldwide license
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granted to the Partnership herein is subject to all applicable restrictions
regarding the sale, transfer and/or export by the Partnership or its assigns or
sublicensees of any of the Products or any technology relating thereto pursuant
to the Export Administration Regulations of the United States Department of
Commerce, Office of Export Administration, as in effect from time to time during
the term hereof and, in accordance with such Regulations as presently in effect,
the Partnership agrees that it shall not sell, transfer or export any such
technology, or any Products or other commodities resulting therefrom, without
the prior approval of the United States government (and the Partnership agrees
to execute and deliver to the Company, upon request at any time or from time to
time during the term hereof, further written certifications to such effect.)
7. Confidentiality of Proprietary Information. The Partnership
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hereby agrees that, during the term hereof and continuing after its termination
or expiration, it will keep in confidence and prevent the disclosure to any
unauthorized persons of any proprietary information, technology and
manufacturing know-how of the Company which is licensed to the Partnership or
otherwise made available to the Partnership hereunder. However, such
obligations of the Partnership shall terminate to the extent that any such
information, technology or know-how (a) is in or enters the public domain
through no fault of the Partnership, or (b) is or becomes independently known to
the Partnership free of any obligation of confidentiality hereunder.
8. No Warranty by the Company. The Company makes no warranty to the
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Partnership as to the accuracy, sufficiency or suitability for use of any
technical information provided to the Partnership hereunder, or for the quality
of any Products made hereunder. The Company assumes no responsibility for
consequential damages, which might arise out of the manufacture, sale or use of
any of the Products.
9. Term; Termination. The license granted under Section 1 hereof
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shall be for perpetuity. For all other purposes, the term hereof shall be ten
(10) years.
10. Scope of Agreement. This Agreement constitutes the entire
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understanding and agreement between the parties regarding this specific matter
and supersedes all prior representations and agreements. It may not be modified
or amended other than by an instrument in writing executed by the parties.
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11. Governing Law. This Agreement shall be construed and governed in
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accordance with the laws of the State of California.
12. Notices. All notices required or permitted shall be in writing
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and addressed as follows:
If to the Company, to:
Plasma & Materials Technologies, Inc.
9255 Deering Avenue
Chatsworth, California 91311
Attention: Dr. Gregor A. Campbell
With a copy to:
Lawrence C. Weeks, Esq.
Riordan & McKinzie
5743 Corsa Avenue, Suite 116
Westlake Village, California 91362
If to the Partnership, to:
PMT CVD Partners, L.P.
c/o Plasma & Materials Technologies, Inc.
9255 Deering Avenue
Chatsworth, California 91311
Attention: Mr. John W. La Valle
With a copy to:
Mark Tanoury, Esq.
Cooley Godward Castro Huddleson & Tatum
3000 Sand Hill Road
Building 3, Suite 230
Menlo Park, California 94025
or to such other address as either party may from time to time, designate in
writing to the other.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed and become effective as of the date first set forth above.
COMPANY: PLASMA & MATERIALS TECHNOLOGIES, INC.
By: /s/ Dr. Gregor A. Campbell
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Dr. Gregor A. Campbell
President and Chief Executive Officer
PARTNERSHIP: PMT CVD PARTNERS, L.P.
By: CVD, Inc.,
General Partner
By: /s/ John W. La Valle
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John W. La Valle
Chief Financial Officer and Secretary
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