Exhibit 10.28
*** TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
Under 17 C.F.R. Sections 200.80(b)(4) and 240.24b-2
PATENT SUBLICENSE
AGREEMENT
THIS PATENT SUBLICENSE
AGREEMENT (“Sublicense Agreement”), made as of
this 7 day of Nov., 2003 (the “Effective Date”), by and
between SCIENCE RESEARCH LABORATORY, INC., a Massachusetts
corporation with principal offices at 15 Ward Street, Somerville,
Massachusetts 02143 (“SRL”) and CYMER, INC., a
Nevada corporation, with principal offices at 17075 Thornmint
Court, San Diego California 92127 (“Cymer”).
WHEREAS, Cymer has exclusively licensed by separate
agreement dated May 14, 2001 (the “Patent License
Agreement”) the rights to certain issued patents, patent
applications, trade secrets, confidential information and know-how
with respect to (i) […***…] power devices with
specialized circuits useful in powering certain lasers and
[…***…] (defined below), and (ii) […***…]
light sources useful in Lithography, Metrology and
[…***…] applications (defined below) which have been
exclusively licensed to Cymer; and
WHEREAS, Cymer sublicensed to SRL, by separate agreement
dated May 14, 2001 (the “2001 Patent Sublicense
Agreement”) certain rights held by Cymer under the Patent
License Agreement in order for SRL to develop certain technologies
in the Field of Use; and
WHEREAS, SRL-EUV, LLC (“EUV”) is the assignee
of SRL under the 2001 Patent Sublicense Agreement and holds all of
SRL’s rights under the 2001 Patent Sublicense Agreement;
and
WHEREAS, EUV sublicensed to Cymer, by separate
agreement dated Nov. 7, 2003 (the “2003 Patent Sublicense
Agreement”) all license rights held by EUV under the 2001
Patent Sublicense Agreement;
WHEREAS, Cymer is willing to grant to SRL a
sublicense to certain rights held by Cymer under the 2003 Patent
Sublicense Agreement pursuant to the terms and conditions set forth
below.
NOW, THEREFORE,
for and in consideration of the
premises, covenants, conditions, and undertakings hereinafter set
forth, the parties hereto agree as follows:
ARTICLE I
DEFINITIONS
1.1
[…***…]
1.2
DUV shall mean the deep ultraviolet region of the
electromagnetic spectrum with wavelengths, referenced to vacuum,
ranging from 150 nanometers (“nm”) up to but not
exceeding 250nm.
1.3
Extreme UV
shall mean the extreme ultraviolet
region of the electromagnetic spectrum with wavelengths, referenced
to vacuum, ranging from 10nm up to but not exceeding
50nm.
1.4
Field of Use
shall mean all applications of the
Sublicensed Technology, except applications for use as Light
Sources operating in the DUV, Extreme UV, VUV, and Soft X-ray
wavelengths of the spectrum for Lithography (defined
below), Metrology (defined below) and/or […***…]
applications (defined below).
1.5
[…***…]
1.6
Government Purpose
shall mean conducting research
activities for or under contract with the U.S. federal government
or any instrumentality thereof.
***CONFIDENTIAL TREATMENT REQUESTED
1.7
Light Source
shall mean any source of
electromagnetic radiation whether coherent or incoherent, whether a
laser or a lamp.
1.8
Lithography
shall mean the art of transferring a
spatial pattern from a reference mask to the surface of a wafer
and/or to the surface of membranes to be made into masks and
reticles.
1.9
Metrology shall mean the art of measuring distances or
surface topology.
1.10
Research shall mean any research and development in the
Field of Use.
1.11
Soft X-ray
shall mean that region of the
electromagnetic spectrum ranging from 0.5 nm up to but not
exceeding 3.0 nm.
1.12
Sublicensed Technology
shall mean all confidential
information, trade secrets, know-how, methods or processes and
other materials, tangible and non-tangible, including, but not
limited to: technical and non-technical data and information,
drawings, sketches, plans, diagrams, specifications and/or other
documents or materials containing said information and data
licensed by Cymer under the Patent License Agreement in the Field
of Use as well as any Cymer Invention (as defined in the Patent
License Agreement) or Cymer’s rights under any Joint
Invention (as defined in the Patent License Agreement); in each
case, which have been sublicensed by EUV to Cymer under the 2003
Patent Sublicense Agreement.
1.13
Sublicensed Patents
shall mean the patents or patent
applications (i) which have been sublicensed by EUV to Cymer
under the 2003 Patent Sublicense Agreement; and (ii) which, in
the absence of the rights being granted under the sublicense
granted by Cymer to SRL under this Sublicense Agreement, would be
infringed by SRL’s manufacture, sale or use of the
Research(s) (as defined herein) at any time during the Term of this
Sublicense Agreement.
1.14
VUV shall mean vacuum ultraviolet wavelengths in
the region of the electromagnetic spectrum ranging from 120nm up to
but not exceeding 150nm.
1.15
Term shall have the meaning as set forth in Section
6 below.
ARTICLE II
GRANT OF
SUBLICENSE
2.1
Cymer hereby grants to SRL an
irrevocable exclusive, worldwide, royalty-free sublicense:
(x) to use the Sublicensed Technology for the purpose of
making, or having made, selling or having sold Research in the
Field of Use for any Government Purpose; and (y) under the
Sublicensed Patents to make, have made, and use and sell the
Research in the Field of Use for any Government Purpose.
2.2
SRL shall not obtain any rights of
any kind in the Sublicensed Patents or the Sublicensed Technology
except as specifically set forth in this Sublicense
Agreement.
2.3
In consideration of the rights and
licenses granted hereunder, SRL agrees to pay to Cymer a sublicense
fee in the amount of […***…] due on January 5,
2004.
ARTICLE III
IMPROVEMENTS AND
INVENTIONS
3.1
The parties’ respective rights
of ownership with respect to improvements and inventions shall be
as set forth in Article III of the Patent License
Agreement.
***CONFIDENTIAL TREATMENT REQUESTED
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ARTICLE IV
PATENT PROSECUTION AND
INFRINGEMENT
4.1
Cymer agrees that it shall, at its
own expense, prepare, file, prosecute and maintain the Sublicensed
Patents, in such countries as Cymer deems appropriate, and shall be
responsible for conducting any interferences, re-examinations,
reissues, oppositions or requests for patent term extensions
relating to the Sublicensed Patents. SRL shall cooperate
fully in the preparation, filing and prosecution of any Sublicensed
Patents under this Sublicense Agreement. Notwithstanding the
foregoing, Cymer shall not take any such action that could
adversely affect a patent or application owned by SRL, unless such
action is mutually agreed by the parties. Cymer shall provide
SRL with sufficient written notice of any decision not to prepare,
file, prosecute and maintain any Sublicensed Patent so that SRL may
take such action on its own.
4.2
Each party will promptly notify the
other party of any written claim received by it alleging
infringement by Research of the proprietary rights or patents of a
third-party. Cymer shall assume the defense of any action
relating to any such allegation of patent infringement.
4.3
Each party will promptly notify the
other party hereto of the possible infringement by a third-party of
Research or any of the Sublicensed Technology or Sublicensed
Patents comprising Research. Cymer shall have the sole right
to take any action it deems necessary, at its sole cost and
expense, with respect to any infringement of Research or the
Sublicensed Patents.
4.4
Within the Field of Use, if Cymer
fails to bring an infringement action as provided in
Section 4.3 above within sixty (60) days after notice of
alleged infringement, SRL shall be permitted to take any action it
deems necessary, at its sole cost and expense, in order to protect
its research, royalty and other payment interests.
4.5
If either party brings an
infringement action under this Agreement, the other party shall
cooperate fully, including if required to bring such action, the
furnishing of a power of attorney.
ARTICLE V
REPRESENTATIONS AND
WARRANTIES
5.1
Cymer . Cymer represents and warrants
that: (i) it has full power to enter into this Sublicense
Agreement; (ii) it has not previously granted and will not
grant any rights in conflict with the rights and licenses granted
herein; (iii) it has obtained all necessary corporate approvals to
enter and execute into this Sublicense Agreement; and (iv) it shall
fully comply with the requirements of any and all applicable
federal, state, local and foreign laws, regulations, rules and
orders of any governmental body having jurisdiction over the
activities contemplated by this Sublicense Agreement.
5.2
SRL . SRL represents and warrants that:
(i) it has full power to enter into this Sublicense Agreement; (ii)
it has obtained all necessary corporate approvals to enter and
execute into this Sublicense Agreement; and (iii) it shall fully
comply with the requirements of any and all applicable federal,
state, local and foreign laws, regulations, rules and orders of any
governmental body having jurisdiction over the activities
contemplated by this Sublicense Agreement.
5.3
Disclaimer
. EXCEPT AS OTHERWISE
EXPRESSLY SET FORTH IN THIS SUBLICENSE AGREEMENT, NEITHER PARTY
MAKES ANY REPRESENTATION OR EXTENDS ANY WARRANTIES OF ANY KIND
EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO,
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NON-INFRINGEMENT, OR VALIDITY OF ANY PATENTS ISSUED OR
PENDING.
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ARTICLE VI
TERM
6.1
Term . This Sublicense Agreement shall become
effective as of the Effective Date and shall continue until it
expires (the “Term”) in its entirety upon the
termination for any reason, or expiration, of the Patent License
Agreement with respect to all Research, in all countries,
worldwide.
6.2
No Termination.
The parties agree that upon
payment of the sublicense fee set forth in Section 2.3 this
Sublicense Agreement shall not be terminated.
6.3
Continuing Obligations;
Survival. It is
understood that expiration of this Sublicense Agreement shall not
relieve a party from any obl
