Exhibit 10.27
*** 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 SRL-EUV, LLC, a Massachusetts limited liability
company with principal offices at 15 Ward Street, Somerville,
Massachusetts 02143 (“EUV”) 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 Science Research
Laboratory, Inc., a Massachusetts corporation with principal
offices at 15 Ward Street, Somerville, Massachusetts 02143
(“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, 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 a copy of which is annexed hereto
as Exhibit “A”; and
WHEREAS, EUV is willing to grant to Cymer a
sublicense to all rights held by EUV under the 2001 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
Further Sublicensee shall mean any unrelated third-party to
whom Cymer grants or has granted, directly or indirectly, a right
to manufacture, have manufactured, use and/or market, distribute or
sell the Product(s).
1.7
Light Source shall mean any source of electromagnetic
radiation whether coherent or incoherent, whether a laser or a
lamp.
***CONFIDENTIAL TREATMENT REQUESTED
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
Product(s) shall mean any product 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 Cymer to EUV as assignee of
SRL under the 2001 Patent Sublicense Agreement.
1.13
Sublicensed Patents shall mean the patents or patent
applications (i) which have been licensed to Cymer under the
Patent License Agreement and which have been sublicensed by Cymer
to EUV as assignee of SRL under the 2001 Patent Sublicense
Agreement; and (ii) which, in the absence of the rights being
granted under the sublicense granted by EUV to Cymer under this
Sublicense Agreement, would be infringed by Cymer’s
manufacture, sale or use of the Product(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 6.1
below.
ARTICLE II
GRANT OF
SUBLICENSE
2.1
EUV hereby grants to Cymer an irrevocable exclusive,
worldwide, royalty-free sublicense, with right to further
sublicense pursuant to Section 2.3: (x) to use the
Sublicensed Technology for the purpose of making, having made,
selling or having sold Products in the Field of Use; and
(y) under the Sublicensed Patents to make, have made, use and
sell the Product(s) in the Field of Use.
2.2
Cymer 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
Cymer shall have the right to further sublicense the Sublicensed
Technology and Sublicensed Patents. Cymer shall provide EUV
with a significantly completed draft of each further sublicense
agreement just prior to its execution; provided, however, that EUV
shall have no right to object to any term or condition of such
sublicense. Cymer agrees to require its Further Sublicensees
to maintain the same confidentiality obligations as required of
Cymer pursuant to Article 8, below.
2.4
In consideration of the rights and licenses granted hereunder,
Cymer agrees to pay to EUV a sublicense fee in the amount of
[…***…] due January 5, 2004.
***CONFIDENTIAL TREATMENT
REQUESTED
2
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.
3.2
The parties’ acknowledge and agree that Section 3.2 of the
2001 Patent Sublicense Agreement shall no longer be of any force or
effect.
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. EUV 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 EUV, unless such action is mutually agreed by
the parties. Cymer shall provide EUV with sufficient written
notice of any decision not to prepare, file, prosecute and maintain
any Sublicensed Patent so that EUV 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 a Product 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 a Product or any of the
Sublicensed Technology or Sublicensed Patents comprising a
Product. 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 a Product 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, EUV 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
EUV . EUV 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
Cymer . Cymer 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.
3
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.
ARTICLE VI
TERM
6.1
Term . This Sublicense Agreement shall become effective as
of the Effective Date and shall continue until it expires as
follows (the “Term”):
6.1.1
Products . As to each Product, in each country,
worldwide, unless earlier terminated in accordance with this
Article 6, on the date that neither the manufacture, sale nor use
of such Product would be covered by a Sublicensed Patent in such
country.
6.1.2 Entire
Agreement .&nb
