Exhibit 10.1
LICENSE
AGREEMENT
This License Agreement (this “
Agreement ”) is made as of the 30th day of
March, 2009 (the “Effective Date”) by and between
Axcelis Technologies, Inc., a corporation incorporated under
the laws of Delaware (“ Axcelis ”), and SEN
Corporation, an SHI and Axcelis Company, a company organized as a
kabushiki kaisha under the laws of Japan (“ SEN
”). Axcelis and SEN are also referred to collectively
as the “ Parties ” and individually as a “
Party .” Unless otherwise defined herein, all
capitalized terms used in this Agreement shall have the meanings
ascribed to them in the Share Purchase Agreement by and among the
Parties and Sumitomo Heavy Industries, Ltd. (“SHI”),
dated as of February 26, 2009 (“ Purchase
Agreement ”). Reference is made to the following
facts and circumstances:
A.
Axcelis, SEN and SHI have entered into the Purchase
Agreement, pursuant to which SHI will purchase, subject to the
terms and conditions of the Purchase Agreement, Axcelis’
equity ownership in SEN, and pursuant to which SEN will make a
payment to Axcelis, subject to the terms and conditions of such
Purchase Agreement, in consideration for the obligations assumed by
Axcelis and the rights received by SEN under this
Agreement;
B.
In connection with the Purchase Agreement, Axcelis and SHI will
terminate their joint venture relationship with respect to SEN;
Axcelis, SEN and SHI will terminate the Terminated Agreements
pursuant to the Termination Agreement; and Axcelis, SEN and SHI
will enter into the Cross-Release, pursuant to which each of the
parties will fully and completely settle, waive, release and
relinquish any and all claims and rights that such party has or may
have had against another party in accordance with such
Cross-Release;
C.
Axcelis desires to grant, and SEN desires to receive, a license to
the Axcelis Licensed Intellectual Property (as defined below), in
accordance with the terms and conditions of this Agreement;
and
D.
SEN desires to grant, and Axcelis desires to receive, a license to
the SEN Licensed Intellectual Property (as defined below), in
accordance with the terms and conditions of this
Agreement.
NOW, THEREFORE, in consideration of
the foregoing and the covenants and promises set forth herein and
in the Purchase Agreement, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the Parties agree as follows:
1.
DEFINITIONS
.
1.1.
“ Affiliate ” has
the meaning set forth in the Purchase Agreement.
1.2.
“ Axcelis Licensed
Intellectual Property ” means all Intellectual Property
(as defined below) owned or controlled by Axcelis or its Affiliates
as of the Effective Date, provided that Axcelis Licensed
Intellectual Property shall not include those Axcelis Patents set
forth on Exhibit A hereto. Notwithstanding the
foregoing, to the extent that SEN or its permitted assignee can
show that SEN used or otherwise exploited any of the inventions
covered by any Patent listed on Exhibit A prior to the
Effective Date, such Patent shall be deemed to be included in the
Axcelis Licensed Intellectual Property to the extent of such use or
exploitation by SEN.
1.3.
“Axcelis
Products” means all
current and future Products (as defined below) of Axcelis or its
Subsidiaries that Axcelis or its Subsidiaries manufacture (or has
manufactured, in accordance herewith).
1.4.
“Change of
Control” means
(a) the consummation of a reorganization, merger or
consolidation, or sale or other disposition of all or substantially
all of the assets of a Party; or (b) the acquisition by any
individual, entity or group of ownership of more than fifty percent
(50%) of either (i) the then-outstanding shares of common
stock of a Party, or (ii) the combined voting power of the
then outstanding voting securities of a Party entitled to vote
generally in the election of directors.
1.5.
“ Intellectual Property
” means any and all proprietary rights recognized in any
jurisdiction throughout the world, in, to and under:
(a) Patents (as defined below); and (b) Technical
Information (as defined below). Notwithstanding the
foregoing, Intellectual Property does not include any Trademarks
(as defined below).
1.6.
“ Party ” and
“ Parties ” are defined in the preamble to this
Agreement.
1.7.
“ Patents ” means
any and all patents that issue from any and all applications for
patents and any and all patents (including all provisionals,
divisionals, continuations, continuations-in-part, extensions,
renewals, reissues and reexaminations of such patents or patents
that issue from such applications, and including all corresponding
foreign patents) that are entitled to an effective filing date
prior to the Effective Date, provided that such patents relate or
are relevant to ion implantation systems and/or flat panel systems,
their use or manufacture, and including any software, source code,
components, modules or parts for such systems.
1.8.
“ Products ”
means any and all systems and other products, including, without
limitation, ion implant systems and flat panel systems, and
including any and all software, source code, components, modules
and parts for such systems or other products.
1.9.
“ SEN Licensed Intellectual
Property ” means all Intellectual Property owned by SEN
as of the Effective Date, provided that SEN Licensed Intellectual
Property shall not include the following SEN Patent: Japan
Patent Number P4046748. Notwithstanding the foregoing, to the
extent that Axcelis or its permitted assignee can show that Axcelis
used or otherwise exploited any of the inventions covered by such
excluded SEN Patent prior to the Effective Date, such Patent shall
be deemed to be included in the SEN Licensed Intellectual Property,
to the extent permitted by applicable law and to the extent of such
use or exploitation by Axcelis.
1.10.
“ SEN Products ”
means all current and future Products of SEN or its Subsidiaries
that SEN or its Subsidiaries manufactures (or has manufactured, in
accordance herewith).
1.11.
“ Subsidiary ” of
any Party means any entity that is a majority-owned subsidiary of
such Party, for so long as such entity remains a majority-owned
subsidiary of such Party.
1.12.
“ SVB Loan Documents” means the Loan and
Security Agreement, dated as of April 23, 2008, by and between
Silicon Valley Bank, Axcelis and certain subsidiaries or
2
affiliates of Axcelis (the
“SVB Loan Agreement”) and any Loan Documents (as
defined in the SVB Loan Agreement), and as amended from time to
time.
1.13.
“Technical
Information” means
any trade secrets, confidential and/or proprietary information,
works of authorship and other copyrightable subject matter,
technical information, know-how, engineering drawings, data,
processes, bills of materials, detailed drawings and
specifications, descriptions of assembly and manufacturing
procedures, computerized production control systems, software and
related source code, quality and inspection standards, drawings of
jigs and fixtures, sales literature and reports related to the
design, assembly and manufacture of any Products, solely where such
items have been provided or disclosed by one Party to the other
Party prior to the Effective Date. Notwithstanding the
foregoing or anything in this Agreement to the contrary, Technical
Information shall not include, and no license or other right is
granted hereunder to, any trade secrets, information, copyrightable
subject matter, documents, software, source code or other materials
of any kind or nature (a) provided by a Party solely pursuant
to or in connection with the arbitration between Axcelis and SEN
before the Japanese Commercial Arbitration Association, Case
No. 06-07, Tokyo and subject to the Confidentiality and
Nondisclosure Agreement between Axcelis and SEN dated as of
July 2, 2007 (“2007 NDA”), or (b) provided by
Axcelis to SHI solely pursuant to the non-disclosure and standstill
agreement among Axcelis, SHI and TPG Capital L.P. dated
June 5, 2008 (“2008 NDA”); for purpose of
clarification, the exclusions from the definition of
“Technical Information” set forth in
Section 1.13(a) and (b) above do not apply to the
extent that any such trade secrets, information, copyrightable
subject matter, documents, software, source code or other materials
were also provided by a Party to the other Party outside of or
apart from such arbitration and 2007 NDA or from such 2008
NDA.
1.14.
“Territory” means
worldwide.
1.15.
“Trademarks” means any
rights or titles in trade names, domain names, trademarks and
service marks (including any applications or registrations related
thereto and the goodwill associated therewith).
2.
LICENSE GRANTS
.
2.1.
Licenses.
2.1.1.
License Grant to SEN. Subject
to the terms and conditions of this Agreement (including
SEN’s compliance therewith), Axcelis hereby grants to SEN a
non-exclusive, irrevocable, perpetual, royalty-free, worldwide,
non-sublicensable, non-transferable (except as expressly set forth
in Section 5.2) license under the Axcelis Licensed
Intellectual Property to reproduce, distribute, derive, perform,
display, make, have made (but only on behalf of, and pursuant to
designs and specifications that are furnished by and originate
with, and only for transfer or sale by such “have made”
contractor back to, SEN, its Subsidiaries and/or SHI), use, import,
export, lease, offer to sell, sell and otherwise dispose of SEN
Products, and to reproduce, distribute, derive, perform, display
and use the Technical Information in connection therewith, anywhere
in the Territory; provided, however, that, for a period of four
(4) years from the Effective Date, such license shall be a
sole exclusive license in Japan with respect to ion implant systems
and flat panel systems, meaning that Axcelis, its Subsidiaries or
its permitted assignee
3
(pursuant and subject to
Section 5.2 below) may make and have made (but only on behalf
of, and pursuant to designs and specifications that are
furnished by and originate with, and only for transfer or sale by
such “have made” contractor back to, Axcelis and its
Subsidiaries, or a permitted assignee) Axcelis Products in Japan,
and may, directly or through third parties, reproduce, distribute,
derive, perform, display, use, import, export, lease, offer to
sell, sell and dispose of Axcelis Products in Japan, but Axcelis or
its permitted assignee pursuant to Section 5.2 below may not
authorize any third party to do any of the foregoing in Japan with
respect to ion implant systems and flat panel systems other than
Axcelis Products or on behalf of an entity other than Axcelis or
its permitted assignee. Notwithstanding the foregoing grant
by Axcelis of a sole exclusive license in Japan, in the event that
a claim of infringement of one or more Japanese patents is made by
a third party against Axcelis or its permitted assignee in
connection with one or more Axcelis Products, Axcelis or its
permitted assignee (as applicable) shall be entitled to grant a
non-exclusive, non-sublicensable, non-transferable license to a
limited number of Axcelis’ Japanese patents included within
the Axcelis Licensed Intellectual Property to such third party in
connection with such third party’s Products, solely as
necessary to settle such third party’s patent infringement
claim against Axcelis or its permitted assignee, and provided that
Axcelis or its permitted assignee provides prior written notice to
SEN of such license grant. Axcelis shall not exercise its
rights, including any moral rights, in contravention of the license
and related immunities granted herein.
2.1.2.
License Grant to Axcelis.
Subject to the terms and conditions of this Agreement (including
Axcelis’ compliance therewith), SEN hereby grants to Axcelis
a non-exclusive, irrevocable, perpetual, royalty-free, worldwide,
non-sublicensable, non-transferable (except as expressly set forth
in Section 5.2) license under the SEN Licensed Intellectual
Property to reproduce, distribute, derive, perform, display, make,
have made (but only on behalf of, and pursuant to designs and
specifications that are furnished by and originate with, and only
for transfer or sale by such “have made” contractor
back to, Axcelis and its Subsidiaries), use, import, export, lease,
offer to sell, sell and otherwise dispose of Axcelis Products, and
to reproduce, distribute, derive, perform, display and use the
Technical Information in connection therewith, anywhere in the
Territory; provided, however, that, for a period of four
(4) years from the Effective Date, such license shall be a
sole exclusive license in the United States with respect to ion
implant systems and flat panel systems, meaning that SEN, its
Subsidiaries or its permitted assignee (pursuant and subject to
Section 5.2 below) may make and have made (but only on behalf
of, and pursuant to designs and specifications that are furnished
by and originate with, and only for transfer or sale by such
“have made” contractor back to, SEN, its Subsidiaries
and/or SHI, or a permitted assignee) SEN Products in the United
States, and may, directly or through third parties, reproduce,
distribute, derive, perform, display, use, import, export, lease,
offer to sell, sell and dispose of SEN Products in the United
States, but SEN or its permitted assignee pursuant to
Section 5.2 below may not authorize any third party to do any
of the foregoing in the United States with respect to ion implant
systems and flat panel systems other than SEN Products or on behalf
of an entity other than SEN or its permitted assignee.
Notwithstanding the foregoing grant by SEN of a sole
exclusive license in the United States, in the event that a claim
of infringement of one or more U.S. patents is made by a third
party against SEN or its permitted assignee in connection with one
or more SEN Products, SEN or its
4
permitted assignee (as applicable)
shall be entitled to grant a non-exclusive, non-sublicensable,
non-transferable license to a limited number of SEN’s U.S.
patents included within the SEN Licensed Intellectual Property to
such third party in connection with such third party’s
Products, solely as necessary to settle such third party’s
patent infringement claim against SEN or its permitted assignee and
provided that SEN or its permitted assignee provides prior written
notice to Axcelis of such license grant. SEN shall not
exercise its rights, including any moral rights, in contravention
of the license and related immunities granted herein.
2.2.
No Other Rights
Granted . Apart
from the license rights expressly set forth in this Agreement,
(a) Axcelis (i) does not grant and SEN does not receive
any right, title or interest, or any security interest or ownership
interest, in the Axcelis Licensed Intellectual Property,
(ii) disclaims any implied licenses hereunder and
(iii) reserves all rights not expressly provided for herein;
and (b) SEN (i) does not grant and Axcelis does not
receive any right, title or interest, or any security interest or
ownership interest, in the SEN Licensed Intellectual Property,
(ii) disclaims any implied licenses hereunder and
(iii) reserves all rights not expressly provided for
herein. Notwithstanding anything in this Agreement to the
contrary, no patent, trade secret or other intellectual property
rights of SHI or its Affiliates (other than SEN) are licensed or
otherwise transferred hereunder, nor shall any subsequent merger or
other corporate reorganization involving SHI (including its
Affiliates) and SEN result in any intellectual property owned or
controlled by SHI or its Affiliates (other than SEN) becoming
subject to this Agreement.
2.3.
Application of
Immunity . The
license by each Party (as licensor Party) to the other Party (as
licensee Party) as set forth in Sections 2.1.1 (License Grant to
SEN) and 2.1.2 (License Grant to Axcelis) shall constitute a grant
of immunity against any claim or action for infringement (whether
direct or contributory infringement, inducement to infringe, or
otherwise) of the Axcelis Licensed Intellectual Property (in the
case of Axcelis as the licensor Party) or the SEN Licensed
Intellectual Property (in the case of SEN as the licensor Party)
against the licensee Party, its Subsidiaries and, with respect to
SEN as a licensee Party, SHI, and their distributors, resellers,
subcontractors, customers and users relating to their use,
importation, exportation, lease, offering to sell, sale or
disposition of such licensee Party’s Products (i.e., SEN
Products, where SEN is the licensee Party; and Axcelis Products,
where Axcelis is the licensee Party) made or sold in accordance
with this Agreement (which immunity shall also apply to the
licensee Party’s Subsdiaries’ manufacture of such
licensee Party’s Products; and which immunity shall further
apply to any “have made” contractor’s manufacture
of the licensee Party’s Products in accordance with
Section 2.1.1 or 2.1.2, as applicable), and regardless of the
country in which the use, importation, exportation, lease, offering
to sell, sale or disposition occurs. Such immunity shall
apply (a) to such licensee Party’s Products, and
(b) to combinations of such Products with other elements and
the use of such Products in performing a method, but only to the
extent that the licensee Party’s Product itself (and not such
combination or method) embodies the essential features of the
licensor Party’s patented invention at issue. The
immunities set forth in this Section 2.3 are irrevocable,
perpetual, royalty-free and worldwide.
2.4.
Intellectual Property
Transfer . Should
Axcelis seek to assign, sell, exclusively license or otherwise
transfer any interest in or to any of the rights in the Axcelis
Licensed Intellectual Property to a third party, any such interest
shall be subject to the terms and conditions of this Agreement,
including the license granted to SEN in Section 2.1.1 (and
related limitations thereon) and the related immunities (and
related limitations thereon)
5
granted in Section 2.3.
Likewise, should SEN seek to assign, sell, exclusively license or
otherwise transfer any interest in or to any of the rights in the
SEN Licensed Intellectual Property to a third party, any such
interest shall be subject to the terms and conditions of this
Agreement, including the license granted to Axcelis in
Section 2.1.2 (and related limitations thereon) and the
related immunities (and related limitations thereon)
grant
