EXHIBIT 10.45
[*]= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS WITH ASTERISKS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED.
LICENSE AGREEMENT
This License Agreement (this "Agreement"), dated as of July 1, 1999,
between IBIS TECHNOLOGY CORPORATION, a Massachusetts, USA corporation having its
principal place of business at 32 Cherry Hill Drive, Danvers, Massachusetts
01923, USA ("IBIS") and MITSUBISHI MATERIALS SILICON CORPORATION, a Japanese
corporation having its principal place of business at 314 Nishisangao, Noda-shi,
Chiba-ken, 278, JAPAN ("MSIL").
WITNESSETH:
WHEREAS, IBIS and Mitsubishi Materials Corporation, the parent company
of MSIL, are parties to a Business Development Agreement dated July 15, 1994
(the "Business Development Agreement") concerning the development, manufacture,
distribution and sale of Separated by Implanted Oxygen Wafers ("SIMOX"); and
WHEREAS, consistent with Phase II of the Business Development
Agreement, MSIL is purchasing from IBIS an Ibis 1000 SIMOX Implanter; and
WHEREAS, MSIL wishes to acquire from IBIS, and IBIS is willing to grant
to MSIL, an irrevocable license (except as otherwise provided herein) for
certain know-how and process technology to be utilized by MSIL in connection
with its operation of the Ibis 1000 SIMOX Implanter.
NOW, THEREFORE, for valuable consideration, the receipt and adequacy of
which are hereby acknowledged, and intending to be legally bound, the parties
hereto mutually agree as follows:
EXHIBIT 10.45
ARTICLE I - DEFINITIONS
1.1 "AFFILIATE" shall mean, with respect to a party to this Agreement,
any corporation, company, partnership and/or firm which controls or is
controlled by or is under common control with such party. For the purposes of
this Paragraph, control shall mean: (a) in the case of corporate entities,
direct or indirect ownership of at least fifty percent (50%) of the stock or
participating shares entitled to vote for the election of directors; and (b) in
the case of non-corporate entities, direct or indirect ownership of at least
fifty percent (50%) of the equity interest or the power to direct the management
and policies of such entity.
1.2 "NET SALES" shall mean, with respect to any quantity of SIMOX
Wafers subject to royalty under this Agreement that are sold by MSIL or any of
its Affiliates, the gross invoice selling price for that quantity of such SIMOX
Wafers, less: (a) discounts and allowances to customers and (b) credits for
returned goods. In the event that SIMOX Wafers subject to this Agreement are
sold in combination with any other product sold by MSIL or any of its
Affiliates, then "Net Sales," for purposes of determining royalty payments on
the combination, shall be calculated using one of the following methods:
(a) By multiplying the Net Sales of the combination by the
fraction A/A+B, where A is the gross selling price, during the
royalty paying period in question, of the SIMOX Wafers sold
separately, and B is the gross selling price, during the
royalty period in question, of the other product(s) sold
separately; or
(b) In the event that no such separate sales are made of SIMOX
Wafers or any of such other product(s) in such combination
package during the royalty paying period in question, Net
Sales, for the purposes of determining royalty payments, shall
be calculated on a fair and equitable basis.
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EXHIBIT 10.45
1.3 "PATENT RIGHTS" shall mean rights owned or controlled by IBIS which
arise under any United States or foreign patent applications or any patents
issuing from said applications, including any divisions, continuations,
continuations-in-part, re-examinations, extensions, or reissues thereof and
patents of addition thereto, and which claim any Technology (as hereinafter
defined). Presently existing Patent Rights are listed in Appendix A hereto.
1.4 "SIMOX IMPLANTER" shall mean the [*] Ibis 1000 Implanter with fill
automated cassette load lock purchased by MSIL from IBIS pursuant to a letter
from Mr. Yuichi Furukawa to IBIS dated April 14, 1998.
1.5 "SIMOX WAFERS" shall mean polished, single-crystalline silicon
wafers into which oxygen ions are implanted by the SIMOX Implanter or any
additional IBIS oxygen implanter purchased or leased by MSIL utilizing the
Standard SIMOX and/or Advantox-TM- processes referred to in Appendix A.
1.6 "TECHNOLOGY" shall mean all production recipes, process technology,
know-how, inventions, improvements, discoveries or Patent Rights which are
listed on Appendix A.
1.7 "TERRITORY" shall mean [*].
ARTICLE II- ESTABLISHMENT OF PROPRIETARY POSITION
2.1 IBIS will promptly inform MSIL of any improvements to the
Technology developed or acquired by IBIS and any patent applications and patents
thereon shall be owned by IBIS. MSIL will promptly inform IBIS of any
improvements to the Technology developed or acquired by MSIL, and any patent
applications and patents thereon shall be owned by MSIL; provided, however, if
IBIS desires to utilize such improvements, whether patented or unpatented, MSIL
shall grant a non exclusive license to IBIS to utilize any such improvement(s)
subject to a royalty fee to be paid by
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EXHIBIT 10.45
IBIS to MSIL in an amount to be negotiated, but shall not in any event exceed
[*] of IBIS' net sales of products utilizing any such improvements.
2.2 IBIS shall be responsible for filing and prosecuting United States
and foreign patent applications on the Technology developed or acquired by IBIS
to the extent deemed desirable by IBIS in its sole discretion. While IBIS shall
be responsible for making decisions regarding the scope and content of any such
applications and prosecution thereof, MSIL shall have an opportunity to review
and provide input thereto. The expenses in connection with filing and
prosecution of any such patent applications, United States and/or foreign, and
the maintenance of issued patents thereon shall be borne by IBIS.
2.3 In the event that IBIS elects not to file a patent application on
any invention referred to in Paragraph 2.2 of this Article or decides to
discontinue prosecution or maintenance of any such application or maintenance of
any patent issued thereon, MSIL may at its own expense file, prosecute, and/or
maintain any such patent application or patent as the case may be, on behalf of,
and in the name of IBIS and IBIS agrees to cooperate with any such efforts.
2.4 MSIL shall be responsible for filing and prosecuting Japanese and
foreign patent applications within the Territory on any improvements to the
Technology developed or acquired by MSIL to the extent deemed desirable by MSIL
in its sole discretion. While MSIL shall be responsible for making decisions
regarding the scope and content of any such applications and prosecution
thereof. IBIS shall have an opportunity to review and provide input thereto. The
expenses in connection with filing and prosecution of any such patent
applications, and the maintenance of issued patents thereon shall be borne by
MSIL.
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EXHIBIT 10.45
2.5 In the event that MSIL elects not to file a patent application on
any invention referred to in Paragraph 2.4 of this Article or decides to
discontinue prosecution or maintenance of any such application or maintenance of
any patent issued thereof. IBIS may at its own expense file, prosecute, and/or
maintain any such patent application or patent as the case may be on behalf of,
and in the name of MSIL and MSIL agrees to cooperate with any such efforts.
ARTICLE III - LICENSE TO MSIL
3.1 Upon the terms and conditions set forth herein, IBIS hereby grants
to MSIL and its Affiliates an irrevocable (except as otherwise provided herein)
license to utilize the Technology in connection with MSIL's and its Affiliates'
use of the SIMOX Implanter and any additional IBIS oxygen implanters purchased
or leased by MSIL for the purpose of manufacturing SIMOX Wafers.
3.2 The license granted by IBIS to MSIL and its Affiliates under
Paragraph 3.1 of this Article shall be exclusive within the Territory. MSIL and
its affiliates shall not have any right, other than the right to sell SIMOX
Wafers on a non-exclusive basis, under such license to utilize the Technology
for or in connection with the manufacture of SIMOX Wafers outside the Territory.
Such license does not include any right to grant sublicenses.
3.3 During the term of this Agreement and so long as MSIL is not in
default with respect to any payment due to IBIS hereunder, IBIS will not assert
Patent Rights to prevent MSIL from using or selling any quantity of SIMOX Wafers
manufactured or sold in accordance with this Agreement.
ARTICLE IV - ROYALTIES AND OTHER CONSIDERATION
4.1 Within 60 days following the execution of this agreement, MSIL
shall pay to IBIS a non-refundable initial royalty fee in the amount of U.S.
[*].
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EXHIBIT 10.45
4.2 In addition to the royalty fee set forth in Paragraph 4.1, MSIL
shall pay IBIS a royalty of [*] of Net Sales from time to time of SIMOX Wafers
up to [*]. The initial royalty fee paid pursuant to Paragraph 4.1 shall not be
credited against royalties payable to IBIS pursuant to this Paragraph 4.2.
4.3 Royalty fees for SIIMOX Wafers with a buried oxide layer of greater
than [*] thick will expire on [*]. Royalty fees for SIMOX Wafers with a buried
oxide of less than [*] thick are subject to renegotiation of the parties after
[*], provided, however, that the royalty shall not be more than [*] of Net Sales
of such SIMOX Wafers and shall be valid until the date mutually agreed upon,
which shall be no later than the expiration date of the Patent Rights listed in
Appendix A. If parties are unable to agree on the royalty fee applicable after
[*], the license granted hereunder for SIMOX Wafers with buried oxide of less
than [*] thick shall terminate.
ARTICLE V - REPORTS PAYMENTS AND ACCOUNTING
5.1 Beginning with the calendar quarter in which MSIL or an Affiliate
makes a first commercial sale of SIMOX Wafers, MSIL shall provide to IBIS,
within thirty (30) days following the end of such quarter, a written report
setting forth the total Net Sales and the royalty due and payable to IBIS for
such quarter, and MSIL shall remit to IBIS with such report the amount of
royalty payments shown thereby to be due. Royalties shall be remitted in United
States dollars. For converting any royalty that accrued in another currency into
United States dollars, there shall
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EXHIBIT 10.45
be used the closing buying rates quoted by the WALL STREET JOURNAL for the last
business day of the month in which the royalties were earned.
5.2 MSIL shall keep complete and accurate records for the latest three
(3) years showing the Net Sales by MSIL of SIMOX Wafers subject to royalty under
this Agreement. Such records shall be in sufficient detail to enable the
royalties payable hereunder by MSIL to be determined. MSIL agrees to permit such
books and records to be examined, but not more often than twice in any calendar
year. The examination shall be by an independent certified public accounting
firm designated by IBIS and reasonably acceptable to and approved by MSIL. Any
such audit shall be conducted during business hours of MSIL upon reasonable
notice to MSIL. The purpose of any such audit shall solely be for verifying the
royalties payable as provided for in this Agreement and said accounting firm
shall only disclose to IBIS Net Sales and royalties on SIMOX Wafers sales and
royalties due and payable thereon to IBIS. Any such audit shall be at the
expense of IBIS unless any such audit reveals that MSIL has underpaid or
understated royalties due to IBIS by more than five percent (5%), in which case
MSIL shall reimburse IBIS for the cost of any such audit.
5.3 Any tax required to be paid under the laws or governmental
regulations of any country with respect to royalties payable to IBIS shall be
promptly paid by MSIL provided, however, that any payments from MSIL to IBIS may
be reduced by whatever taxes or charges, if any, which MSIL is required by law
to withhold from such payments. MSIL shall furnish IBIS with proof of payment of
such withholding taxes or charges to the appropriate governmental authority.
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EXHIBIT 10.45
ARTICLE VI- TERM AND TERMINATION
6.1 This Agreement shall become effective upon the date first written
above and shall expire on June 30, 2008, unless earlier terminated as herein
provided, and unless further extended for an additional period as may be
mutually agreed upon. After expiration of this Agreement, MSIL may freely use
all rights, the Technology and other information which MSIL is granted by IBIS
hereunder for SIMOX Wafers with a buried oxide layer of greater than [*] thick.
6.2 If any of the terms or conditions of this Agreement are breached by
IBIS and such breach is not corrected with thirty (30) days after written notice
thereof is given by MSIL to IBIS, then MSIL shall have the option to terminate
this Agreement by giving written notice thereof to IBIS. In such case, MSIL,
after termination of this Agreement, shall continue to have the right to freely
use all rights, the Technology and other information which MSIL is granted by
IBIS under this Agreement.
6.3 If any of the terms or conditions of this Agreement are breached by
MSIL and such breach is not corrected within thirty (30) days after written
notice thereof is given to MSIL by IBIS, then IBIS shall have the option to
terminate this Agreement by giving written notice thereof to MSIL whereupon MSIL
shall immediately cease and desist from any further utilization of the
Technology and the license granted hereunder shall be of no further force and
effect.
ARTICLE VII - DISCLAIMER OF WARRANTIES
7.1 IBIS hereby warrants to MSIL that to its best knowledge and belief
and to that of its Officers there are at the date hereof no rights of third
parties which could be infringed by the performance of this Agreement by MSIL
and which might detract from the value to MSIL of this Agreement. In the event
that any third party claims against MSIL that the Patent Rights or the
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EXHIBIT 10.45
Technology is infringing such party's corresponding rights and IBIS or MSIL
fails to defend against such claims, IBIS shall reimburse and be liable to MSIL
for any charge, costs, damages or royalties for which MSIL may incur or be
compelled to pay, provided, however, that IBIS shall have no reimbursement or
other liability to MSIL in respect of any alleged infringement of rights held by
Lucent Technologies, Inc or any affiliate or assignee there of; and provided
further that such reimbursement or liability of IBIS shall not exceed the total
royalties paid under Article IV of this Agreement to IBIS by MSIL;
alternatively, IBIS may procure for MSIL the right to use the Technology or
modify the Technology to avoid the alleged infringement without material
impairment of its functionality.
7.2 IBIS hereby warrants to MSIL that there is no pending claim or
litigation challenging the validity of the Technology.
7.3 EXCEPT FOR THE CONFIRMATION AND WARRANTIES AS PROVIDED IN PARAGRAPH 7.1
AND 7.2 OF THIS ARTICLE HEREOF, IBIS MAKES NO WARRANTY OR REPRESENTATION THAT
ANYTHING MADE, USED OR SOLD OR OTHERWISE DISPOSED OF UNDER THE LICENSE GRANTED
IN THIS AGREEMENT IS OR BE FREE FROM INFRINGEMENT OF PATENTS, COPYRIGHTS OR
TRADEMARKS OF THIRD PARTIES. IBIS HAS NOT CONDUCTED ANY STUDY OF PATENTABILITY
OF THE TECHNOLOGY AND MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND WITH
RESPECT TO THE LIKELIHOOD OF THE ISSUANCE OF ANY PATENTS OR THE VALIDITY OF ANY
PATENTS WHICH HAVE ISSUED OR MAY ISSUE IN RESPECT TO OR IN CONNECTION WITH THE
TECHNOLOGY. FURTHER, THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY, SUITABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE VIII - ASSIGNABILITY
Either party may, without the prior written consent of the other,
assign this Agreement of its rights or obligations hereunder to an Affiliate or
to a party with which it may merger or to which it may sell or transfer all or
substantially all of its assets in the line of business to which this Agreement
relates. Except as set forth in this paragraph, neither this Agreement nor any
of the rights or obligations of either party hereunder shall be assignable or
otherwise transferable by such party without the prior written consent of the
other party.
ARTICLE IX - STATUS OF THE PARTIES
For purposes of this Agreement, the parties shall at all times be
independent contractors and not employees or agents of the other. No partnership
or joint venture is created hereby and neither party is authorized or empowered
to act as agent for the other for any purpose or to make
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EXHIBIT 10.45
any statement, contract, warranty, representation or commitment on behalf of
the other. MSIL and its employees' activities in connection with this
Agreement will be conducted by MSIL at its own risk.
ARTICLE X - CONFIDENTIALITY
10.1 The Technology shall be received by MSIL (including all
appropriate employees, agents and independent contractors) in strictest
confidence and used solely in furtherance of the activities contemplated by
this Agreement, and shall be accorded at least the same degree of
confidentiality and secrecy with which MSIL holds its own most confidential
information of a similar nature but in no event less than reasonable care.
The Technology shall not be disclosed in whole or in part to any persons
other than: (i) employees or agents of MSIL or independent contractors
employed by MSIL who have reasonable need for access to such information in
connection with MSIL's performance under this Agreement and who are bound to
MSIL by a written agreement of confidentiality containing terms consistent
with those contained in this Paragraph; and (ii) governmental authorities, as
required, to obtain necessary regulatory clearances. The foregoing
restrictions shall not apply to any such information: (a) which is, or
subsequently may become, within the knowledge of the general public, without
the fault of MSIL, (b) which is or was known to MSIL prior to the time of
receipt thereof from IBIS, as shown by competent written records, or (c)
which is subsequently rightfully obtained from sources other than IBIS and
without confidential restriction in favor of MSIL. In the event that MSIL
becomes legally required to disclose any aspect of the Technology, MSIL shall
provide IBIS with prompt notice so that IBIS may, at its election, seek a
protective order or other appropriate remedy and/or waive compliance with the
provisions of this Agreement. In the event that such protective order or
other remedy is not obtained, or that IBIS waives compliance with the
provisions of this
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EXHIBIT 10.45
Agreement, MSIL shall furnish only that portion of the Technology which is
legally required in the opinion of MSIL's counsel.
10.2 The confidentiality obligations in Paragraph 10.1 above shall be
applied to any Affiliate of MSIL which has access to the Technology.
10.3 The same confidentiality obligations as those set forth in the
Paragraph 10.1 above shall be applied to IBIS with respect to any information
received by IBIS from MSIL under this Agreement, including, but not limited to,
any improvements to the Technology.
ARTICLE XI- ABATEMENT OF INFRINGEMENT
If at any time any third party shall infringe any unexpired Patent
Rights licensed hereunder and MSIL shall give notice in writing to IBIS of the
existence of such infringement, then MSIL may at its election bring suit in its
own name or in the name of IBIS against such infringer. IBIS shall execute such
legal papers necessary for the prosecution of such suit as may be requested by
MSIL, and MSIL shall be liable for all costs and expenses of such litigation and
shall be entitled to receive and retain all recoveries therefrom. IBIS will at
all times fully cooperate with MSIL in the enforcement of the Patent Rights and
shall furnish MSIL all information and records requested by MSIL in connection
therewith. The foregoing shall in no manner preclude IBIS from taking any action
in its own behalf against any infringer.
ARTICLE XII - NOTICE
Any notice required under this Agreement shall be considered given upon
the earlier of: (i) when actually received at the address set forth below; or
(ii) two business days after such notice, properly addressed and shipped by
overnight service providing evidence of delivery or by
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EXHIBIT 10.45
certified mail, return receipt requested, is sent by either party to the other.
The proper addresses for notice are as follows:
If to IBIS: IBIS Technology Corporation
32 Cherry Hill Drive
Danvers, Massachusetts
- USA
Attention: President
If to MSIL: Mitsubishi Materials Silicon Corporation
314 Nishisangao
Noda-shi, Chiba-ken 278
JAPAN
Attention: General Manager, SIMOX PROJECT
ARTICLE XIII- MISCELLANEOUS
13.1 The formation, validity, construction and performance of this
Agreement are governed by the laws of Japan. Any disputes arising out of or
relating to this Agreement or breach thereof shall be finally settled by
arbitration in Danvers, MA USA in accordance with the Rules of the American
Arbitration Association if MSIL demands arbitration and in Tokyo, Japan in
accordance with the Rules of the Japan Commercial Arbitration Association if
IBIS demands arbitration.
13.2 This Agreement constitutes the entire Agreement between the
parties hereto with respect to the subject matter hereof and as such supersedes
all previous written and oral negotiations, agreements, contracts,
representations, letters of intent, understandings and commitments with respect
thereto. This Agreement may be modified, discharged, amended, or extended only
by a writing signed by a duly authorized representative of the parties.
13.3 Should any court of competent jurisdiction later consider any
portion of this Agreement to be invalid, illegal or unenforceable, it shall be
considered severed from this Agreement. All other provisions, rights or
obligations shall continue without regard to the
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EXHIBIT 10.45
severed provision that the remaining provisions of this Agreement are in
accordance with the intention of the parties.
13.4 Neither MSIL nor IBIS shall make any news release or other public
statement, whether to the press, stockholders or otherwise, disclosing the terms
of this Agreement or of any amendment hereto, or the performance hereunder or
the existence of the arrangement between the parties without the prior written
approval of the other party except as required by applicable law or regulation.
MSIL shall not use IBIS' name or any IBIS' trademark without the prior written
consent of IBIS.
IN WITNESS WHEREOF, and intending to be bound hereby, the parties have
caused this agreement to be signed by their duly authorized representatives.
IBIS TECHNOLOGY CORPORATION
By: /S/ MARTIN J. REID
------------------------------
Name: MARTIN J. REID
------------------------------
Title: PRESIDENT & CEO
------------------------------
Date: SEPTEMBER 21, 1999
------------------------------
MITSUBISHI MATERIALS SILICON CORPORATION
By: /S/ MINORU MIZUKOSHI
------------------------------
Name: MINORU MIZUKOSHI
------------------------------
Title: PRESIDENT
------------------------------
Date: SEPT. 13, 1999
------------------------------
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EXHIBIT 10.45
APPENDIX A
TECHNOLOGY
IBIS 1000 Oxygen Implanter energy and dose requirements, process flow and
annneal conditions to replicate "Standard" SIMOX, Advantox-TM- 120 and
Advantox-TM- 170 & 190.
Advantox-TM- product line based on IBIS Technology Corporation energy contouring
[*].
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