Exhibit 10.19
TECHNOLOGY LICENSE AGREEMENT
This TECHNOLOGY LICENSE AGREEMENT (the "Agreement"), made this 5th
day
of May, 2006 (the "Effective Date"), is by and among MICRON
TECHNOLOGY, INC., a
Delaware corporation ("Micron"), PHOTRONICS, INC., a Connecticut
corporation
("Photronics") and MP MASK TECHNOLOGY CENTER, LLC, a Delaware
limited liability
company (the "Company").
RECITALS
WHEREAS, Micron and Photronics have formed the Company to develop
and
fabricate advanced Reticles primarily dedicated to supporting
Micron's prototype
and production Reticle requirements as directed by Micron and
pursuant to the
Limited Liability Company Operating Agreement of even date herewith
(the
"Operating Agreement") by and between Micron and Photronics;
WHEREAS, Micron and Photronics own certain technology assets that
each
will license pursuant to the terms and conditions of this Agreement
(i) to the
Company so that the Company may fulfill its Objectives (defined
below) and (ii)
to each other for the purposes set forth herein; and
WHEREAS, Micron, Photronics and the Company have entered into
separate
supply agreements under which Micron and Photronics will be able to
obtain the
Reticles developed and fabricated using the technology licensed
hereunder.
NOW, THEREFORE, in consideration of the promises contained, and of
the
obligations herein made and undertaken, the parties hereto do
hereby covenant
and agree follows:
1.
DEFINITIONS
For purposes of this Agreement, the definitions set forth in
this
Section 1 shall apply to the respective capitalized terms. All
capitalized terms
not defined in this Agreement shall have the meaning set forth in
the Operating
Agreement.
1.1 "Approved Technology" shall mean (i) all Technology and
Software
initially provided by Micron or Photronics to the Company hereunder
in
accordance with Section 3, and (ii) all other Technology and
Software that has
been approved by the Technology Steering Committee for use in the
Company.
1.2 "Company Improvements" shall mean (i) all Improvements made by
or
for the Company to any of the Micron Technology, Micron Software or
the
Photronics Technology; (ii) all documentation, works of authorship,
know-how,
data and data bases, formulae, algorithms, processes, inventions
and discoveries
(whether or not patentable), Software, ideas, concepts, techniques,
methods,
content, technical information; engineering, production and other
designs;
drawings, schematics, tooling requirements, and other information,
technology
and materials, tangible or intangible, conceived, created,
developed, first
fixed in a tangible medium or first
**** Material omitted pursuant to a request for confidential
treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately
with the
Securities and Exchange Commission.
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reduced to practice by, for or at the Company; and (iii) all
Intellectual
Property Rights in each of the foregoing.
1.3 "Competing Product" means [****].
1.4 "Copy Critical" shall refer to [****]
1.5 "Copy Exact" shall refer [****].
1.6 "Designated Facility" means [****]
1.7 "Improvements" shall mean all derivative works of,
improvements
upon and modifications to Technology.
1.8 "Intellectual Property Right" means any patents, patent
applications, including with respect to patents any patent rights
granted upon
any reissue, division, continuation or continuation-in-part
applications now or
hereafter filed, or utility models issued or pending, any
registered and
unregistered design rights, any copyrights (including the copyright
on
Software), trade secrets, know-how, or any other intellectual
property rights or
proprietary rights whether registered or unregistered, and whether
now known or
hereafter recognized in any jurisdiction, excluding trade names,
service names,
trademarks, service marks, and trade dress.
1.9 "Licensed Technology" shall mean the New Technology,
Standard
Technology and Unrestricted Technology, as applicable. All Company
Improvements
shall be considered Licensed Technology, subject to classification
thereof by
the Technology Steering Committee in accordance with Section
3.4.
1.10 "Micron Intellectual Property Rights" shall mean all
Intellectual
Property Rights (i) owned by Micron or sublicenseable by Micron on
the terms of
this Agreement without obligation to pay additional consideration
to a licensor;
and (ii) necessary or useful to fulfill the Objectives or to
design, develop or
manufacture Reticles, including any Intellectual Property Rights
assigned by the
Company to Micron in accordance with this Agreement.
1.11 "Micron Software" shall mean the Software owned by Micron
that
Micron provides to either the Company or to Photronics in
accordance with this
Agreement.
1.12 "Micron Technology" shall mean all Technology (i) owned by
Micron
or sublicenseable by Micron to the Company or to Photronics on the
terms of this
Agreement without obligation to pay additional consideration to a
licensor; and
(ii) necessary or useful to fulfill the Objectives or to design,
develop or
manufacture Reticles, including any Company Improvements owned by
Micron
pursuant to this Agreement.
1.13 "New Photronics Facility" means the new Photronics Facility to
be
built pursuant to the Transaction Documents in Boise, Idaho.
1.14 "New Technology" shall mean [****].
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**** Material omitted pursuant to a request for confidential
treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately
with the
Securities and Exchange Commission.
<PAGE>
1.15 "Objectives" shall mean the following business purposes for
which
the Company has been created and for which the Company is licensed
hereunder:
(i) to develop and produce prototypes for advanced,
next-generation, high-end
Reticles that meet Micron's specifications as provided to the
Company from time
to time; (ii) to achieve sustainable, leading edge production
capabilities using
only Approved Technology; (iii) to manufacture in production
volumes approved
Reticles for Micron that meet Micron's specifications and fulfill
Micron's
Reticle requirements; and (iv) to the extent the Company has excess
capacity
after fulfilling all of Micron's Reticle requirements as set forth
above, and as
permitted herein and pursuant to the Supply Agreement between the
Company and
Photronics, manufacture prototype and production Unrestricted
Reticles for
Photronics customers using only Approved Technology. These
Objectives may be
changed in accordance with the procedures set forth in the
Operating Agreement.
1.16 "Photronics Controlled Subsidiary" means a subsidiary of
Photronics that is primarily in the business of developing and
fabricating
Reticles and that is directly, or indirectly through one or more
intermediaries,
[****], and that is controlled by Photronics.
1.17 "Photronics Facility" shall mean [****].
1.18 "Photronics Improvements" means Improvements made by
Photronics to
Micron Technology, but not including Improvements made by
Photronics employees
or subcontractors while providing services to the Company.
1.19 "Photronics Intellectual Property Rights" shall mean all
Intellectual Property Rights (i) owned by Photronics or
sublicenseable by
Photronics on the terms of this Agreement without obligation to pay
additional
consideration to a licensor; and (ii) necessary or useful to
fulfill the
Objectives or to design, develop or manufacture Reticles.
1.20 "Photronics Technology" shall mean all Technology (i) owned
by
Photronics or sublicenseable by Photronics to the Company or to
Micron on the
terms of this Agreement without obligation to pay additional
consideration to a
licensor, and (ii) necessary or useful to fulfill the Objectives or
to design,
develop or manufacture Reticles.
1.21 "Process Node" means a specific geometry loosely based on
a
minimum line width at which semiconductor integrated circuit
devices, and the
Reticles used in the manufacture of those devices, are
manufactured; e.g.,
[****].
1.22 "Qualified" shall mean [****].
1.23 "Reticle" means a photomask, template or reticle that can be
used
to transfer an image to a wafer or workpiece.
1.24 "Software" shall mean computer program instruction code,
whether
in human-readable source code form, machine-executable binary form,
firmware,
scripts, interpretive text, or otherwise, necessary or useful to
design, develop
or manufacture Reticles, including related documentation.
"Software" does not
include databases and other information
3
**** Material omitted pursuant to a request for confidential
treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately
with the
Securities and Exchange Commission.
<PAGE>
stored in electronic form, other than executable instruction codes
or source
code that is intended to be compiled into executable instruction
codes.
1.25 "Specifications" shall have the meaning given thereto in
the
Photronics to Micron Supply Agreement of even date herewith.
1.26
"Standard Technology" shall mean [****]. A list of Standard
Technology, if any, as of the Effective Date is set forth in
Exhibit A hereto.
1.27 "Technology" shall mean all documentation, works of
authorship,
know-how, data and data bases, formulae, algorithms, processes,
inventions and
discoveries (whether or not patentable), ideas, concepts,
techniques, methods,
content, technical information, engineering, production and other
designs,
drawings, schematics, tooling requirements, and other information,
technology
and materials, tangible or intangible, and necessary or useful to
fulfill the
Objectives or to design, develop or manufacture Reticles.
"Technology" shall not
include (i) Software, or (ii) customer data or information related
to the
design, development or manufacture of Reticles for either Micron or
Photronics
customers.
1.28 "Technology Transfer Protocol" shall mean the preferred
methodology and protocols for Micron to provide Technology
implementation
training to Photronics hereunder and for implementing that
Technology at the
Designated Facility. The initial Technology Transfer Protocol is
attached hereto
as Exhibit B, but may be modified from time to time by the
Technology Steering
Committee.
1.29 "Unrestricted Reticles" shall mean Reticles designed for use
in
the manufacture of products other than Competing Products.
1.30 "Unrestricted Technology" shall mean [****].
2.
LICENSES
2.1 License Grant by Micron to Company. Subject to the terms
and
conditions of this Agreement, Micron grants to the Company a
royalty-free,
non-exclusive, non-transferable license, without right of
sublicense, under the
Micron Intellectual Property Rights and to the Micron Technology
(excluding
Software), to develop, make, use, offer to sell and sell Reticles,
and to create
Improvements to the Micron Technology, solely in accordance with
the Objectives.
2.2 License Grant by Micron to Photronics. Subject to the terms
and
conditions of this Agreement, including the classification
procedures, use
restrictions, and conditions set forth in Section 3, Micron grants
to Photronics
and to each Photronics Controlled Subsidiary a non-exclusive,
worldwide,
non-transferable (except as provided in Section 9.4), fully paid-up
(subject to
Section 9.4) license, [****] under the Micron Intellectual Property
Rights and
to the Licensed Technology, to develop, use, make at Photronics
Facilities, have
Unrestricted Reticles made by the Company, import, offer to sell
and sell
Reticles, and to create Improvements to the Micron Technology.
4
**** Material omitted pursuant to a request for confidential
treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately
with the
Securities and Exchange Commission.
<PAGE>
2.3 License Grant by Photronics to the Company. Subject to the
terms
and conditions of this Agreement, Photronics grants to Company a
royalty-free,
non-exclusive, non-transferable, fully paid-up license, without
right of
sublicense, under the Photronics Intellectual Property Rights and
to the
Photronics Technology and Photronics Improvements, to develop,
make, use,
import, offer to sell and sell Reticles, and to create Improvements
to the
Micron Technology, solely in accordance with the Objectives.
2.4 License Grant by Photronics to Micron. Subject to the terms
and
conditions of this Agreement, Photronics grants to Micron a
royalty-free,
non-exclusive, non-transferable, fully paid-up license, with right
of sublicense
only to Photronics Improvements, under the Photronics Intellectual
Property
Rights and to the Photronics Technology and Photronics
Improvements, to develop,
make, have made, use, import, offer to sell and sell Reticles, and
to create
Improvements to the Micron Technology.
2.5 Software Licenses from Micron to the Company. Micron grants to
the
Company, subject to the terms and conditions of this Agreement, a
royalty free,
nonexclusive, limited license to reproduce, install and execute the
Micron
Software that Micron provides to the Company under Section 3 solely
for the
Company's internal use and only to fulfill the Objectives. The
Company may make
one copy of the Micron Software in machine-readable form for
backup, disaster
recovery or archival purposes only, and may make additional working
copies
beyond the copies provided by Micron as are reasonably necessary
for the
Company's internal use only. All such copies of Micron Software
shall include
all of the copyright and other proprietary notices of Micron
contained on the
original copy. The Company shall not assign, sublicense, transfer,
pledge,
lease, loan, rent to or share the Micron Software with any third
party (except
for Photronics personnel performing services for the Company at the
Company's
facilities). The Company shall not modify, decompile, reverse
engineer,
disassemble, or otherwise translate the Micron Software without the
prior
written consent of Micron in each case. Micron may from time to
time provide the
Company with human-readable source code for specified Micron
Software. In such
event, Micron will grant to the Company, subject to the terms and
conditions of
this Agreement, a royalty free, nonexclusive, limited license to
reproduce, make
derivative works of, install and execute such specified Micron
Software.
2.6 Software License from Micron to Photronics. Upon the Lease
Commencement Date (as defined in the Build to Suit Lease between
Micron and
Photronics of even date herewith), [****] and for use only at the
New Photronics
Facility, Micron grants to Photronics, subject to the terms and
conditions of
this Agreement, a royalty free, non-exclusive, limited license to
reproduce,
install, and execute the Micron Software provided to Photronics
pursuant to
Section 3 below.
(a) Photronics may make one copy of the Micron Software in
machine-readable form for backup, disaster recovery or archival
purposes only,
and may make additional working copies beyond the copies provided
by Micron as
are reasonably necessary for Photronics' internal use only at the
New Photronics
Facility. All such copies of Micron Software shall include all of
the copyright
and other proprietary notices of Micron contained on the original
copy. [****]
Photronics shall not assign, sublicense, transfer, pledge, lease,
loan, rent to
or share the Micron Software with any third party, or use the
Micron Software to
perform
5
**** Material omitted pursuant to a request for confidential
treatment under
Rule 24b-2 of the Exchange Act of 1934. Material filed separately
with the
Securities and Exchange Commission.
<PAGE>
services for any third party (excluding manufacture of Reticles by
Photronics
for third parties as expressly permitted under this Agreement).
Photronics shall
not modify, have modified, decompile, reverse engineer,
disassemble, or
otherwise translate the Micron Software without the prior written
consent of
Micron in each case.
(b) Micron may from time to time, upon the request of
Photronics
and in Micron's sole discretion, provide Photronics with
human-readable source
code for Micron Software. In such event, Micron will grant to
Photronics, a
nonexclusive, limited license to reproduce, make derivative works
of, install
and execute such Micron Software only at the New Photronics
Facility and on the
terms and conditions agreed to by the parties.
(c) Photronics acknowledges that some of the Software [****] may
be
third party Software that Micron does not have the right to
sublicense. Micron
will identify applicable third party Software during the process of
establishing
the New Photronics Facility. Photronics shall be responsible at its
own expense
to independently license such third party Software. If such third
party Software
is not available to be licensed, Micron and Photronics shall
consult in good
faith about alternatives to such unavailable third party Software
[****].
3.
DELIVERABLES
3.1 Initial Delivery to the Company. Micron will provide to the
Company
immediately after the Effective Date all Technology retained by
Micron [****].
In addition, Micron will license and deliver to the Company the
Software
retained by Micron [****]. Photronics will provide to the Company
promptly after
the Effective Date the Approved Technology listed on Exhibit D
hereto. The
parties acknowledge that the ability to provide certain Technology
and Software
to the Company will be subject to the right to sublicense third
party Technology
and Software pursuant to existing license agreements. [****].
3.2 Initial Delivery to Photronics. Within thirty (30) days
following
the Effective Date, Micron will deliver to Photronics or make
available to
Photronics the Licensed Technology retained by Micron [****]. In
addition,
Micron will provide Photronics certain Micron Software for
implementation and
use at the New Photronics Facility in accordance with the license
grant set
forth in Section 2.6 above. A list of such Micron Software will be
determined by
Micron prior to the Lease Commencement Date and will be provided to
Photronics;
the list will include the Micron Software reasonably necessary to
assist
Photronics [****]. The Licensed Technology and Micron Software will
be made
available for electronic transfer in accordance with means to be
mutually agreed
by Micron and Photronics, but where necessary, physical transfers
may be
conducted.
3.3 Determination of Approved Technology. The Technology
Steering
Committee, pursuant to the Technology Steering Committee charter
attached hereto
as Exhibit E, will create general guidelines setting forth the
process for
determining whether Technology, regardless of source, will be
Approved
Technology for use by the Company and will make such determinations
in
accordance with the charter and the guidelines. The Technology
Steering
Committee may amend these guidelines from time to time. A negative
determination
will not
6
**** Material omitted pursuant to a request for confidential
treatment
