EXHIBIT 10.28
EXECUTION COPY
MORI(TM) SOURCE TECHNOLOGY
LICENSE AGREEMENT
This LICENSE AGREEMENT ("Agreement") is made and entered into as of
March 18, 1998 (the "Effective Date") by and between Lam Research Corporation, a
Delaware corporation ("Lam") and Trikon Technologies, Inc., a California
corporation formerly known as "Plasma & Materials Technologies, Inc."
("Trikon"), with respect to the following facts:
A. Trikon represents and warrants to Lam that its rights in and to
the Licensed Technology and the Trademarks (as defined below) are as set forth
in this Agreement; and
B. Trikon desires to grant to Lam, and Lam desires to acquire from
Trikon, subject to the terms and conditions of this Agreement, a license to
manufacture, use and sell Lam Licensed Products (as defined below), and to
otherwise develop and use the Licensed Technology and to use the Trademarks.
THE PARTIES AGREE AS FOLLOWS:
1. CERTAIN DEFINITIONS
As used in this Agreement:
1.1 "Affiliate" means with respect to any person: any company,
partnership, entity or other person that directly controls or is controlled by,
or is under common control with, the specified person; and "Affiliated Entity"
means any Affiliate other than an individual. A person shall be regarded as in
control of another person if it owns or controls at least fifty percent (50%) of
the shares of the subject person entitled to vote in the election of directors
or if it has the contractual power to designate fifty percent (50%) or more of
the directors of a corporation (or, in the case of an entity that is not a
corporation, for the election or designation of the corresponding managing
authority.
1.2 "Lam Licensed Products" means products and software made by or
for Lam or any of its Affiliated Entities that in whole or in part incorporate,
use or are made using the Licensed Technology.
1.3 "Copyright(s)" means all copyright, unregistered design rights,
semiconductor topography and mask work interests, including, without limitation,
all rights of authorship, use, publication, reproduction, performance,
transformation, moral rights and ownership of copyrightable works, designs
(other than registered designs), semiconductor topography works and mask works,
and any other copyright interest accruing under any copyright law or convention
throughout the world including the right to register or renew any copyright
interest.
1.4 "Improvements" [ ].
1.5 "Licensed Technology" means: all (a) Patent Rights, (b)
Technical Information, (c) Improvements, (d) Copyrights, and (e) the 300 mm
Alpha Process Module in each case relating to Plasma Sources, including without
limitation, Trikon's entire right, title and interest in the foregoing, and all
hardware, software and processes, conceived, developed, reduced to practice,
discovered, owned, licensed and/or acquired by Trikon or any of its Affiliates
or agents prior to or as of the Effective Date.
1.6 "Patents" means any and all issued patents, reissue or
reexamination patents, patents of importation, revivals of patents, revalidation
patents, utility models, certificates of invention, registrations of patents, or
extensions thereof, regardless of country or formal name.
1.7 "Patent Rights" means all United States and foreign utility and
design Patents, and published or unpublished regular patent and provisional
applications (including without limitation any and all applications of addition,
divisionals, continuations, continuations-in-part ("CIPs"), continuing
prosecution applications ("CPAs"), reexaminations, substitutions, extensions,
renewals, utility models, certificates of invention or reissues thereof or
therefor, invention disclosures and records of invention, and any license to
practice any of the foregoing, including without limitation the Patents and
patent applications listed on Exhibit 1.7.
1.8 "Plasma Sources" [ ].
1.9 "Proprietary Rights" means Copyrights, Patent Rights, Technical
Information and Trademarks.
1.10 "Technical Information" means any and all ideas, inventions,
disclosures, design rights, unpublished research and development information,
manufacturing and operating information, know-how, trade secrets and technical
data, software, process characterization data, and all documentation relating
thereto in any form including drawings, source code, plans, bills of material,
sources of information.
1.11 "Trademarks" means the trademarks listed on the attached Exhibit
1.11.
1.12 "300 mm Alpha Process Module" [ ].
2. "LICENSE GRANT"
2.1 LICENSED TECHNOLOGY. Subject to the terms and conditions of this
Agreement, Trikon hereby grants to Lam and its Affiliated Entities (a) a non-
exclusive, worldwide, perpetual (subject to Sections 2.3, Lam's payment of the
amounts set forth in Sections 3.1.b and 3.1.c, and Section 13 below), fully paid
license (the "License") to use, develop, distribute, reproduce, publish,
display, perform, modify and transform the Licensed Technology solely in
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connection with the use and development of the Lam Licensed Products, and to
make, have made, use, distribute, dispose of, offer to dispose of, sell, offer
for sale, service, have serviced, repair, have repaired, have sold, import and
have imported Lam Licensed Products, together with (b) the rights to sublicense
others to use the Licensed Technology in connection with Lam Licensed Products
and the Purchased Units (as such term is defined in Section 4 below).
2.2 TRADEMARKS. Subject to the terms and conditions of this
Agreement, Trikon hereby grants to Lam and its Affiliated Entities a
nonexclusive, worldwide, perpetual (subject to Sections 2.3, Lam's payment of
the amounts set forth in Sections 3.1.b and 3.1.c, and Section 13 below), fully
paid license to use, at Lam's option, the Trademarks in connection with sale of
Lam Licensed Products.
2.3 TERM. unless terminated in accordance with Section 13 below, the
term of this Agreement is from the Effective Date to the date of expiration of
the last of the Patents to expire, or the date that the last of the Technical
Information enters the public domain, whichever is later.
3. COMPENSATION
3.1 CONSIDERATION. Lam shall pay Trikon non-refundable consideration
in the total amount of U.S. $14,000,000.00 (the "License Fee") for all licenses
and rights granted hereunder and U.S. $ 2,100,000.00 as full payment for the
Purchased Unit (as defined in Section 4 below), exclusive of all sales and use
taxes (which shall be the responsibility of Lam). Each portion of the License
Fee shall be payable by wire transfer in immediately available funds. Lam shall
pay the License Fee in non-refundable portions as follows:
a. U.S. $9,000,000.00 within two (2) business days of the
Effective Date;
b. U.S. $3,000,000.00 on or before December 15, 1998; and
c. U.S. $2,000,000.00 on or before June 15, 1999.
3.2 ROYALTIES.
a. Commencing on the date of first sale of a Lam Licensed Product
by Lam, a Lam Affiliate or an authorized distributor of the Lam Licensed Product
("First Sale Date"), Lam shall pay Trikon a running royalty of U.S. [ ] per
Plasma Source in a Lam Licensed Product sold by Lam, a Lam Affiliate or an
authorized distributor of the Lam Licensed Product.
b. During the period commencing on the First Sale Date and ending
one year after the First Sale Date ("First Sale Year"), the maximum aggregate
royalty payable to Trikon hereunder shall be U.S. $1,000,000.00. During the
period commencing at the end of the First Sale Year, the maximum aggregate
royalty payable to Trikon hereunder shall be U.S.
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$4,000,000.00 (exclusive of the U.S. $1,000,000.00 maximum aggregate royalty
payment for the First Sale Year.
c. All royalties payable to Trikon hereunder shall be exclusive
of all sales and use taxes or any other applicable charge (which shall be the
responsibility of Lam). Commencing on the First Sale Date, Lam agrees to make
quarterly written reports to Trikon within forty-five (45) days after the last
day of each calendar quarter and, as of such dates, stating in each such report
the number and description of each Lam Licensed Product sold during the
preceding calendar quarter. Concurrently with the making of each such report,
Lam shall pay to Trikon royalties in the amount specified in Sections 3.2.a of
this Agreement on the Lam Licensed Products included therein.
d. Lam will keep complete, true and accurate books of account and
records for the purpose of showing the derivation of all royalties payable to
Trikon hereunder. Such books and records will be kept at Lam's principal place
of business for at least three (3) years following the end of the calendar month
to which they pertain, and will be open for inspection by a representative of
Trikon for the purpose of verifying Lam's royalty statements, or Lam's
compliance in other respects with this Agreement, no more than once each
calendar year at reasonable times mutually agreed by Trikon and Lam. The
representative will be obliged to treat as confidential all relevant matters
under a reasonable confidentially agreement. Such inspections shall be at the
expense of Trikon, unless a variation or error exceeding ten percent (10%) of
the amount paid for the period covered by the inspection is discovered in the
course of any such inspection, whereupon all costs relating thereto shall be
paid by Lam. Lam will promptly pay to Trikon the full amount of any
underpayment.
3.3 In the event License Fee payments or royalty payments are not
received by Trikon within forty-five (45) days of the corresponding due date,
Lam shall pay to Trikon interest and charges at one and one half percent (1.5%)
or the maximum rate of interest allowed by law, whichever is lower on the
corresponding amounts that are past due.
3.4 CERTAIN DELIVERIES. Prior to or concurrently with the execution
of this Agreement, Trikon is delivering to Lam evidence reasonably satisfactory
to Lam that Trikon has obtained, if necessary, (a) all appropriate consents and
waivers of lenders, other contract parties and governmental entities and (b)
waivers of all contractual provisions that would restrict or prohibit
enforceability of this Agreement or the Technology Transfer Agreement.
4. PURCHASED UNIT
4.1 On or before March 31, 1998, Lam shall purchase one Trikon
MORI(TM)-based Pinnacle 8000R etch system with poly and oxide modules (the
"Purchased Unit") as further identified in a Lam purchase order substantially in
the mutually agreed to form attached hereto as Exhibit 4 (the "Purchase Order"),
subject to the delivery and other terms and conditions specified in the Purchase
Order. Payment to Trikon for the Purchased Unit shall be made by Lam within
thirty
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(30) days of delivery of the Purchased Unit to Lam.
4.2 Lam hereby represents to Trikon and its Affiliates that Lam has
been provided the right to inspect the Purchased Unit at Trikon's facility in
Chatsworth and that hereby accepts the Purchased Unit without the imposition of
any further acceptance criteria.
5. TECHNOLOGY TRANSFER AGREEMENT
Concurrently with their entering into this Agreement, the parties hereto
will enter into a MORI(TM) Source Technology Transfer Agreement in the form
attached hereto as Exhibit 5 (the "Technology Transfer Agreement"), and for the
separate consideration of U.S. $1,000,000.00 (which amount the parties hereby
acknowledge is not included in the License Fee), Trikon will effect transfer to
Lam of Technical Information included in the Licensed Technology on the terms
and conditions stated therein.
6. THIRD PARTY CLAIMS
6.1 INDEMNITY.
Trikon agrees to indemnify, defend and hold Lam and its Affiliates
harmless from and against any and all liabilities, losses, costs, fines,
demands, actions, claims, suits, proceedings, investigations, damages, judgments
and settlements including without limitation reasonable attorneys' fees,
resulting from or arising out of: (a) any infringement, misappropriation, or
violation of any proprietary rights of a third party in connection with the
exercise by Lam and/or its Affiliates of its rights hereunder in accordance with
all terms and conditions of this Agreement, or (b) breach by Trikon of any of
its obligations, covenants, representations or warranties set forth in this
Agreement (collectively, "Trikon Related Claims").
Notwithstanding the above, Trikon shall have no liability for any
claim of infringement, misappropriation or violation of any proprietary right of
a third party based on: (i) modification of the Licensed Technology by Lam if
the infringement would have been avoided without such modification; or (ii) the
combination or use of the Licensed Technology furnished herein with technology,
information or materials not furnished by Trikon if such infringement would have
been avoided by use of the Licensed Technology standing alone.
6.2 CONTROL.
Trikon shall have sole control of the defense, litigation and, subject
to the conditions set forth below, settlement of any Trikon Related Claim. Lam,
at its option and expense, shall have the right to be represented by counsel of
its choice and participate in the defense. In the event that any Trikon Related
Claim of infringement, misappropriation or violation of any proprietary rights
of a third party is substantiated, Trikon shall have the right, in its sole
discretion and at its own expense, to either: (a) procure for Lam such fully
paid rights as are coextensive with the rights granted Lam hereunder; or (b)
replace or modify the Licensed Technology in a manner reasonably
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satisfactory to Lam to make it non-infringing without materially impairing
performance of the Licensed Technology. Trikon agrees not to accept any
settlement of any Claim, without notifying Lam in advance thereof and
considering in good faith Lam's input regarding such settlement.
6.3 COOPERATION.
a. In the event any third party Trikon Related Claim is made
against Lam or its Affiliates within the scope of the indemnity set forth in
Section 6.1.a, Lam shall (a) provide prompt written notice of such third party
Trikon Related Claim to Trikon, (b) provide Trikon with such assistance as
Trikon may reasonably request in connection with the defense and/or settlement
of such third-party Trikon Related Claim, provided that all costs and expenses
incurred by either party shall be borne by Trikon, and (c) promptly comply with
all terms of any resolution or settlement of such third-party Trikon Related
Claim at Trikon's expense.
b. In the event any third party Lam Related Claim is made
against Trikon or its Affiliates within the scope of the indemnity set forth in
Section 6.1.b, Trikon shall (a) provide prompt written notice of such third
party Lam Related Claim to Lam, (b) provide Lam with such assistance as Lam may
reasonably request in connection with the defense and/or settlement of such
third-party Lam Related Claim, provided that all costs and expenses incurred by
either party shall be borne by Lam, and (c) promptly comply with all terms of
any resolution or settlement of such third-party Lam Related Claim at Lam's
expense.
7. TRIKON REPRESENTATIONS AND WARRANTIES
Trikon represents and warrants to Lam and its Affiliates, based on its
reasonable knowledge as follows:
7.1 ORGANIZATION. Trikon: (a) is a corporation duly organized,
validly existing and in good standing under the laws of the state of California;
and (b) has all necessary corporate power to own, license and transfer the
Purchased Unit and the Licensed Technology without restriction or encumbrance,
to carry on its business as now being conducted, and to enter into and deliver
this Agreement, the Technology Transfer Agreement and the Purchase Order and to
consummate the transactions contemplated by each of them.
7.2 AUTHORITY. The execution and delivery of this Agreement,
the Technology Transfer Agreement and the Purchase Order, and the performance of
each of them by Trikon, have been duly authorized by all necessary corporate
action on the part of Trikon. Each of this Agreement, the Technology Transfer
Agreement and the Purchase Order constitutes a legal, valid and binding
obligation of Trikon, enforceable against Trikon in accordance with its terms,
subject as to enforcement: (a) to bankruptcy, insolvency, reorganization,
arrangement, moratorium and other laws of general applicability relating to or
affecting creditors' rights; and (b) to general principles of equity, whether
such enforcement is considered in a proceeding in equity or at law.
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7.3 NO CONFLICTS. Neither the execution and delivery of this
Agreement, the Technology Transfer Agreement or the Purchase Order, nor the
performance of any of them by Trikon will: (a) conflict with or result in any
breach or violation of the terms of any decree, judgment, order, law or
regulation of any court or other governmental body now in effect applicable to
Trikon, any of its Affiliates, the Licensed Technology, the Purchased Unit, or
the Trademarks; (b) conflict with, or result in, with or without the passage of
time or the giving of notice, any breach of any of the terms, conditions and
provisions of, or constitute a default under, or result in the creation of any
lien, charge, easement, security interest, mortgage, conditional sale contract,
equity, right of way, covenant, restriction, title defect, objection, claim or
other encumbrances upon any of the Licensed Technology, Purchased Unit or
Trademarks pursuant to, any indenture, mortgage, lease, agreement or other
instrument to which Trikon or any of its Affiliates is a party or by which
Trikon, any of its Affiliates, the Licensed Technology, Purchased Unit or
Trademarks are bound; (c) permit the acceleration of the maturity of any
indebtedness of Trikon or of any other person secured by the Licensed
Technology, Purchased Unit or Trademarks; or (d) violate or conflict with any
provision of Trikon's charter documents.
7.4 CONSENTS. No consent, approval or waiver from any third party,
and no consent, approval or authorization of, or declaration, filing or
registration with, any government or regulatory authority, is required to be
obtained or made by Trikon or any of its Affiliates in order to permit the
execution and delivery of this Agreement, the Technology Transfer Agreement, and
the Purchase Order by Trikon, and the consummation of the transactions
contemplated by each of them.
7.5 LICENSED TECHNOLOGY. Trikon represents and warrants that: (a)
the Licensed Technology includes all of its technology and Proprietary Rights
relating to Plasma Sources, and no technology or Proprietary Rights relating to
Plasma Sources are owned or otherwise held by any Affiliate of Trikon; (b)
except as set forth on Exhibit 7.5 as to Improvements only, the Licensed
Technology does not infringe upon or violate any Proprietary Rights of any other
person; (c) except as set forth on Exhibit 7.5 as to Improvements only, no claim
has been asserted by any other person that the use of the Licensed Technology
constitutes an infringement or misappropriation of any Proprietary Rights of
another or constitutes unfair competition; (d) Trikon is the true, lawful and
legal and beneficial owner or authorized licensee of the Licensed Technology,
free and clear of any claims, liens or encumbrances and Trikon's ownership is
more than a shop right; (e) except as set forth on Exhibit 7.5 as to
Improvements only, all Patents, Copyrights and Trademarks included in the
Licensed Technology are valid and in full force and effect, and all maintenance
and annuity fees have been fully paid and all fees paid during prosecution and
after issuance of the Patents have been paid in the correct entity status
amounts; (f) the License granted by Trikon does not and will not conflict with
any rights granted to other persons or violate any previous agreement between
Trikon or any of its Affiliates and any other person; (g) except as set forth on
Exhibit 7.5 with respect to prosecution of Improvements only, no fraud or
misrepresentation has been made by Trikon during the prosecution of the Patent
Rights, Copyrights or Trademarks, or has been included in the documentation for
or other disclosure of the Licensed Technology; and (h) Trikon has or can obtain
all consents to exclusion of all inventors deleted from or not included in all
applications of the Patent Rights.
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7.6 TRADEMARKS. Trikon represents and warrants that it is the true,
lawful owner or authorized licensee of the Trademarks, and has the right to
permit Lam to use such Trademarks as contemplated by this Agreement, in each
case, free of infringement of or unfair competition with any trademark or
service mark rights of any other person, and free of any other claims, liens or
encumbrances.
7.7 WARRANTY. Except as expressly and unequivocally set forth in
this Section 7, Trikon makes no warranties, express or implied, regarding the
Licensed Technology, the Proprietary Rights, the Purchased Unit or the
Trademarks their performance, or the results which can be achieved with them.
EXCEPT AS EXPRESSLY AND UNEQUIVOCALLY SET FORTH IN THIS SECTION 7, THE LICENSED
TECHNOLOGY, THE PROPRIETARY RIGHTS, THE PURCHASED UNIT AND THE TRADEMARKS ARE
LICENSED OR PROVIDED TO LAM, AS THE CASE MAY BE, ON AN "AS IS" BASIS AND TRIKON
HEREBY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES, INCLUDING WITHOUT LIMITATION,
ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND
NONINFRINGEMENT.
8. LAM REPRESENTATIONS AND WARRANTIES
Lam represents and warrants to Trikon and its Affiliates as
follows:
8.1 ORGANIZATION. Lam: (a) is a corporation duly organized, validly
existing and in good standing under the laws of the state of Delaware; and (b)
has all necessary corporate power to enter into and deliver this Agreement, the
Technology Transfer Agreement and the Purchase Order, and to consummate the
transactions contemplated by each of them.
8.2 AUTHORITY. The execution and delivery of this Agreement, the
Technology Transfer Agreement and the Purchase Order, and the performance by Lam
and its Affiliates of each of them, have been duly authorized by all necessary
corporate action on the part of Lam and its Affiliates. Each of this Agreement,
the Technology Transfer Agreement and the Purchase Order constitutes a legal,
valid and binding obligation of Lam and its Affiliates, enforceable against Lam
and each of its Affiliates in accordance with its terms, subject as to
enforcement: (a) to bankruptcy, insolvency, reorganization, arrangement,
moratorium and other laws of general applicability relating to or affecting
creditors' rights; and (b) to general principles of equity, whether such
enforcement is considered in a proceeding in equity or at law.
8.3 NO CONFLICTS. Neither the execution and delivery of this
Agreement, the Technology Transfer Agreement or the Purchase Order, nor
performance of any of them by Lam, will: (a) conflict with or result in any
breach or violation of the terms of any decree, judgment, order, law or
regulation of any court or other governmental body now in effect applicable to
Lam or any of its Affiliates; or (b) violate or conflict with any provision of
Lam's charter documents or of any agreement or instrument to which Lam or any of
its Affiliates is a party.
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8.4 CONSENTS. No consent, approval or waiver from any third party,
and no consent, approval or authorization of, or declaration, filing or
registration with, any government or regulatory authority, is required to be
made or obtained by Lam or any of its Affiliates in order to permit the
execution, delivery or performance of this Agreement by Lam, or the consummation
of the transactions contemplated by this Agreement.
9. COVENANTS OF TRIKON
Trikon covenants and agrees with Lam as follows:
9.1 NOTICE OF INFRINGEMENT. If, during the term of this Agreement,
Trikon receives written notice expressly stating that a third party (a
"Potential Infringer") has directly or contributorily infringed, has induced
another to infringe, or has engaged in unfair competition with respect to, any
of the Licensed Technology, Trikon shall promptly identify the affected
aspect(s) or item(s) of the Licensed Technology and the Potential Infringer in a
written notice to Lam. Trikon shall have the exclusive right to proceed with any
action associated with such infringement or unfair competition.
9.2 PATENT PROSECUTION AND MAINTENANCE FEES. To the extent it has
not done so, Trikon through patent attorneys of its choosing and at its own
expense and cost shall cause to be filed and/or prosecuted the patent
applications listed in Exhibit 1.7, and all patent application(s), if any,
relating to Improvements included in the Licensed Technology. Trikon shall
exercise, in its sole discretion, all commercially reasonable efforts to cause
all patent applications to be prosecuted. Trikon shall have no liability to Lam
respecting the results of such prosecution. Trikon agrees, from time to time and
on a reasonable and prompt basis, to inform Lam about the status of the
prosecution of said patent applications. During the life of any patents, Trikon
shall timely pay all applicable fees, including but not limited to issue and
maintenance fees related to Patent Rights included in the Licensed Technology at
the appropriate entity status rates.
9.3 PROTECTION OF TRADEMARKS. Trikon shall take all reasonable
steps to maintain, and shall take no steps that derogate from, the force or
validity of, the Trademarks; shall pay such fees in a timely manner as are
necessary to maintain the registrations of the Trademarks in all countries of
such registration that Trikon deems, in its sole discretion, to be commercially
reasonable; and shall have the exclusive right to institute and prosecute in its
sole discretion with all reasonable effort actions against any suspected
infringers or misusers of the Trademarks.
9.4 REGISTERED USER AGREEMENTS. Trikon, at its sole election, may
undertake recordation of a registered user agreement or trademark license with
respect to Lam in any country where Lam uses the Trademarks and where such
recordation is required or permitted.
10. COVENANTS OF LAM
Lam covenants and agrees with Trikon as follows:
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10.1 TECHNOLOGY. Lam understands and agrees that, with the exception
of the rights expressly licensed or otherwise granted under this Agreement, Lam
shall not acquire any right, title, or interest in the Licensed Technology or
the Trademarks, which right, title and interest is and shall remain with Trikon.
10.2 TRADEMARKS. Lam is familiar with the quality standards of
Trikon. If Lam uses any Trademarks, Lam shall use the Trademarks only in
accordance with those same reasonable standards of quality currently used by
Lam, which standards shall at least be equal to, but which shall not be required
to exceed, the standards of quality currently used by Trikon. Trikon shall have
the right once per year, upon reasonable advance written notice (at least 10
business days in advance), to receive from Lam a reasonably representative
selection of specimens of Lam's use of the Trademarks, as may be reasonably
necessary in order to confirm that such quality control standards are being
observed. Lam hereby consents to being named as a registered user of the
Trademarks where the recordation of a registered user agreement or trademark
license is required or permitted, and Lam agrees to execute any documents
reasonably necessary or desirable to enable and assist Trikon in the exclusive
registration and protection of the Trademarks, all at no expense to Lam.
10.3 PROPRIETARY NOTICES. Lam agrees to use reasonable efforts to
ensure that each Lam Licensed Product, and all packaging and documentation used
for or with their distribution, shall include reproductions of the patent and
copyright notices and other proprietary legends of Trikon as Trikon may
reasonably designates. Lam shall not remove, efface or obscure any patent or
copyright notices or other proprietary notices or legends from any Trikon
materials provided herein.
10.4 CONFIDENTIALITY.
a. Lam and its Affiliates acknowledge and agree that the Licensed
Technology and the Technical Information and any other proprietary technical,
business or financial information (where such other information is marked as
"proprietary" or "confidential") provided to Lam or any of its Affiliates by
Trikon in connection with this Agreement (the "Confidential Information")
constitutes the confidential and proprietary information of Trikon and that Lam
and its Affiliates shall retain in strict confidence and shall only disclose
same to parties who have a need to know or otherwise is necessary to carry out
the purposes of this Agreement (as expressly and unequivocally authorized by
this Agreement) without Trikon's express written consent. Lam agrees that prior
to disclosing any Confidential Information to any of its Affiliates, Lam shall
obtain from such Affiliate a signed confidentiality agreement containing
provisions substantially similar to those contained in this Section 10.4.
b. Notwithstanding the foregoing, Lam's and any of its
Affiliates' confidentiality obligations hereunder shall not apply to information
which:
(i) is already rightfully known to the receiving party; or
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(ii) becomes publicly available without fault of the receiving
party
(iii) is rightfully obtained by the receiving party from a third
party without restriction as to disclosure, or is approved for release by
written authorization of the disclosing party; or
(iv) is shown by written record to be developed independently by
the receiving party without use of the other party's Confidential Information;
(v) is rightfully known or available to the receiving party
without restriction as to disclosure at the time of the receiving party's
receipt of such information or;
(vi) is required to be disclosed by law.
c. Lam and its Affiliates acknowledge that any breach of any of the
obligations with respect to confidentiality or use of Confidential Information
hereunder is likely to cause or threaten irreparable harm to Trikon. The parties
therefore agree that in the event of any such breach, Trikon shall be entitled
to seek equitable relief to protect its interests, including but not limited to
preliminary and permanent injunctive relief, as well as money damages.
d. The obligations of confidentiality and limitation on use set forth
herein shall terminate three (3) years after disclosure of the relevant
Confidential Information to Lam or its Affiliates.
10.5 NOTICE OF INFRINGEMENT. If, during the term of this Agreement,
Lam becomes reasonably aware of the fact that a "Potential Infringer" has
directly or contributorily infringed, has induced another to infringe, or has
engaged in unfair competition with respect to, any of the Licensed Technology,
Lam shall promptly identify the affected aspect(s) or item(s) of the Licensed
Technology, as the case may be, and the Potential Infringer in a written notice
to Trikon.
11. LIMITATIONS OF LIABILITY; CERTAIN DISCLAIMERS
11.1 IN NO EVENT SHALL TRIKON'S LIABILITY ARISING OUT OF THIS AGREEMENT
EXCEED THE AMOUNTS PAID TO TRIKON BY LAM PURSUANT TO THIS AGREEMENT. IN NO EVENT
SHALL TRIKON HAVE ANY LIABILITY TO LAM OR ITS AFFILIATES FOR ANY INDIRECT,
INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES, HOWEVER CAUSED AND ON ANY THEORY
OF LIABILITY, ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO LOSS
OF ANTICIPATED PROFITS, EVEN IF TRIKON HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES. THESE LIMITATIONS SHALL APPLY NOTWITHSTANDING ANY FAILURE
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OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY.
11.2 CERTAIN DISCLAIMERS. Nothing in this Agreement shall (a) obligate
Lam to use the Licensed Technology, or (b) to restrict or prohibit Lam from
developing, making, using, marketing or otherwise distributing or promoting
products and/or processes using, embodying, or competing with the Licensed
Technology, provided that any use of the Licensed Technology by Lam, its
Affiliates or its authorized sublicensees shall be subject to all terms and
conditions of this Agreement. No rights are granted to Trikon by this Agreement
in any Lam technology or in any Lam tangible, intangible or intellectual
property, whether now in existence or hereafter conceived, developed, reduced to
practice, discovered, owned, licensed, leased, sold and/or acquired by or for
Lam relative to any products or property of Lam, regardless of nature or
technical subject.
12. BANKRUPTCY
All rights and licenses granted under or pursuant to this Agreement by
each party are, and shall otherwise be deemed to be, for purposes of Section
365(n) of Title 11, U.S. Code (the "Bankruptcy Code"), licenses of rights to
"intellectual property" as defined under Section 101(35A) of the Bankruptcy
Code. The parties agree that Lam shall retain and may fully exercise all of its
rights and elections under the Bankruptcy Code. Trikon agrees, during the term
of this Agreement, to create and maintain current copies or, if not amenable to
copying, detailed descriptions or other appropriate embodiments, of all such
intellectual property, all to ISO 9000 et seq. and other applicable standards.
Trikon further agrees that in the event of the commencement of a bankruptcy
proceeding by or against it under the Bankruptcy Code, Lam shall be entitled to
a complete duplicate of or complete, non-exclusive access to, as appropriate
solely for the purposes contemplated by this Agreement and the Technology
Transfer Agreement, any such intellectual property and all embodiments of such
intellectual property, and same, if not already in its possession, shall be
promptly delivered to Lam or made available to Lam for reproduction (i) upon
such commencement of a bankruptcy proceeding upon written request therefor by
Lam, unless Trikon elects to continue to perform all of its obligations under
this Agreement or (ii) if not delivered under (i) above, upon the rejection of
this Agreement by or on behalf of Trikon upon written request therefor by Lam.
13. TERMINATION;RELEASE
13.1 Lam may at its option terminate this Agreement at any time upon
providing Trikon with thirty (30) days' prior written notice thereof, in which
case the portion or portions, as the case may be, of the License Fee set forth
in Section 3.1 that is not yet due for payment to Trikon as of the termination
date shall not be payable to Trikon.
13.2 Upon expiration or termination of this Agreement for any reason,
Lam shall, within thirty (30) days of such termination, return to Trikon all
information associated with the Licensed Technology (other than the 300 mm Alpha
Process Module) and all Technical Information in its possession or in the
possession of any of its Affiliates, and all copies of
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associated technical materials and marketing materials and the like.
13.3 The provisions of Sections 1, 6, 10.1, 10.4, 11, 12, 13.2, 13.3,
14 and 15 shall survive the termination or expiration of this Agreement for any
reason.
14. NO PUBLICITY
Except as required by court order, each party agrees not to disclose
the existence or terms of this Agreement without the prior written consent of
the other party, which consent shall not be unreasonably withheld. The non-
disclosing party agrees to review any disclosure proposed by the disclosing
party on a prompt basis, provided the non-disclosing party is given at least two
business days' advance written notice.
15. MISCELLANEOUS
15.1 GOVERNING LAW; VENUE; DISPUTE RESOLUTION. This Agreement shall
be governed by the laws of the State of California and of the United States of
America without reference to principles of conflicts of laws thereof and without
regard to the UN Convention on the International Sale of Goods. For the purpose
of any suit, action, proceeding, or judgment relating to or arising out of this
Agreement and the transactions contemplated herein, each of the parties hereby
agree to jurisdiction and venue in the Superior Court of Santa Clara County,
California, or the District Court for the Northern District of California, as
the case may be. In any action or proceeding to enforce rights under this
Agreement, the prevailing party will be entitled to recover costs and reasonable
attorneys' fees.
15.2 COUNTERPARTS. This Agreement may be executed in counterparts,
each of which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
15.3 HEADINGS. The headings of the Sections of this Agreement are
for convenience and shall not by themselves determine the interpretation of this
Agreement.
15.4 NOTICES. All notices and other communications hereunder shall
be in writing and shall be delivered personally by overnight courier or similar
means or sent by facsimile with written confirmation of receipt, to the parties
at the addresses specified below (or at such other address for a party as shall
be specified by like notice). Any such notice shall be effective upon receipt,
if personally delivered, or on the next business day following transmittal if
sent by facsimile. Notices shall be delivered as follows:
To Lam: Lam Research Corporation
4650 Cushing Parkway
Fremont, California 94538
Attention: Vice President, Etch Products Group
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with a copy to:
Lam Research Corporation
4650 Cushing Parkway
Fremont, California 94538
Attention: Office of the General Counsel
To Trikon:
Trikon Technologies, Inc.
Ringland Way
Newport, Gwent NP6 2TA
United Kingdom
Attention: Nigel Wheeler
with a copy to:
Brobeck, Phleger & Harrison LLP
One Market
Spear Street Tower
San Francisco, CA 94105
Attention: Michael J. Kennedy, Esq.
15.5 AMENDMENT OF AGREEMENT. Any provision of this Agreement may be
amended only by a written instrument signed by Trikon and Lam.
15.6 SEVERABILITY. In case any one or more of the provisions
contained in this Agreement should be finally determined to be invalid, illegal
or unenforceable in any respect against either party hereto, it shall be
adjusted if possible to effect the intent of the parties. In any event, the
validity, legality and enforceability of the remaining provisions contained
herein shall not in any way be affected or impaired thereby, and such
invalidity, illegality or unenforceability shall only apply as to such party in
the specific jurisdiction where such final determination shall have been made.
15.7 ENTIRE AGREEMENT. This Agreement, together with its Exhibits,
constitute the entire agreement between Trikon and Lam regarding the subject
matter hereof, and supersedes any and all prior negotiations, correspondence,
understandings and agreements regarding such subject matter.
15.8 IMPORT/EXPORT. Each party shall comply with all applicable
import and export control laws and regulations.
15.9 TAXES. Lam will not withhold taxes for the transactions
contemplated hereunder except as required by law.
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15.10 FORCE MAJEURE. Either party to this Agreement shall be excused
from any delay or failure in performance hereunder, except the payment amounts
due hereunder, caused by reason of occurrence or contingency beyond its
reasonable control, including without limitation acts of God, earthquake, labor
disputes and strikes, riots, war or governmental requirements.
15.11 FURTHER ASSURANCES. Each party agrees to cooperate with the
other in executing, delivering, and filing such further documentation and taking
any such other further actions as may be necessary or appropriate to effectuate
the transfer of rights granted in this Agreement, or to evidence the
satisfaction or accuracy of any condition, representation or warranty of this
Agreement.
15.12 INDEPENDENT CONTRACTORS. The parties to this Agreement are and
shall remain independent contractors, and nothing herein shall be construed to
create a partnership or joint venture between Trikon and Lam. Each party shall
be responsible for wages, hours, and condition of employment of its personnel
during the term of and under this Agreement. Nothing herein shall be construed
as implying that employees of either party are employees of the other
party.
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IN WITNESS WHEREOF, the parties, by their duly authorized officers,
have executed this Agreement as of the Effective Date.
Lam Research Corporation Trikon Technologies, Inc.
By: By:
--------------------------- --------------------------
Name: James Bagley Name: Nigel Wheeler
Title: Chief Executive Officer Title: Chief Operating Officer
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