CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT 10.44
PATENT ASSIGNMENT AND CROSS-LICENSE AND
TRADEMARK LICENSE AGREEMENT
This Patent Assignment and Cross-License and Trademark License
Agreement ("Agreement") is entered into as of February 11, 2003 ("Effective
Date") by and between the Parties,
Entegris, Inc., a Minnesota corporation having corporate
offices at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Entegris"),
and
Entegris Cayman Ltd., a Cayman Island corporation and
wholly-owned subsidiary of Entegris, Inc. ("Entegris Cayman"), and
Asyst Technologies, Inc., a California corporation having a
principal place of business at ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ("Asyst").
WHEREAS, Asyst is the owner of patents relating to wafer and/or reticle
containers, including SMIF Pods and Front Opening Unified Pods ("FOUPs"), load
ports for interfacing with wafer and/or reticle containers ("Ports"), material
handling systems for transporting, storing, delivering and loading SMIF Pods,
FOUPs and individual wafers, and systems used to track, identify, manage,
control and route lots, carriers, wafers and/or reticles during the manufacture
of semiconductor devices ("Tracking Systems").
WHEREAS, Entegris and Entegris Cayman are the owners of patents
relating to wafer and/or reticle carriers and containers, Ports, and/or Tracking
Systems.
WHEREAS, Entegris, Entegris Cayman, and Asyst are parties to that
certain Asset Purchase Agreement, dated as of February 11, 2003 (the "Asset
Purchase Agreement") under which the Parties have agreed to transfer and to
license certain patents relating to wafer and/or reticle containers, Ports,
material handling systems and/or Tracking Systems.
In consideration of the above, Entegris, Entegris Cayman, and Asyst
agree as follows:
A R T I C L E 1
DEFINITIONS
1.1 "POD AND CARRIER PATENTS" means United States and foreign
patents issued on or before the [*] anniversary of the Effective Date having
claims directed to sealable, transportable containers, wafer and/or reticle
carriers and containers, or components of wafer and/or reticle carriers and
containers, including, but not limited to, the patents identified in Exhibit I
to this Agreement. By way of example, components of wafer and/or reticle
carriers and containers may include, without limitation, purging components,
valves, manifolds, filters, cartridges, sensors embedded in or residing in the
interior of wafer and/or reticle carriers and containers, and
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
page - 1 -
vapor drains. Pod and Carrier Patents do not include Combined Pod and Port
Patents, Environmental Control Patents, MHS Patents, or AutoID/Lot Tracking
Patents as defined below.
1.2 "COMBINED POD AND PORT PATENTS" means United States and
foreign patents issued on or before the [*] anniversary of the Effective Date
having claims directed to (a) the combined structure of a wafer or reticle
container and a Port or (b) the operation of a wafer or reticle container and a
Port, including, but not limited to, the patents identified in Exhibit II to
this Agreement.
1.3 "PORT PATENTS" means United States and foreign patents issued
on or before the [*] anniversary of the Effective Date having claims directed to
the structure and/or operation of a Port.
1.4 "MHS PATENTS" means United States and foreign patents issued
on or before the [*] anniversary of the Effective Date having claims directed to
the structure and/or operation of a material handling system for transporting,
storing, delivering and/or loading wafer and/or reticle containers or individual
wafers in the manufacture of semiconductor devices, or components of such a
system.
1.5 "ENVIRONMENTAL CONTROL PATENTS" means United States and
foreign patents issued on or before the [*] anniversary of the Effective Date
having claims directed to environmental control features of Ports for
controlling the environment inside of wafer and/or reticle containers, including
purging systems, including, but not limited to, the patents identified in
Exhibit III to this Agreement; provided, however, that Environmental Control
Patents do not include patents with claims principally directed to environmental
control features within wafer and/or reticle containers.
1.6 "AUTOID/LOT TRACKING PATENTS" means United States and foreign
patents issued on or before the [*] anniversary of the Effective Date having
claims principally directed to systems or components of systems used to track,
identify, manage, control and route lots, carriers, wafers and/or reticles
during the manufacture of semiconductors or semiconductor wafers, including, but
not limited to, the patents identified in Exhibit IV to this Agreement.
1.7 "LICENSED PATENTS" means Pod and Carrier Patents, Port
Patents, Combined Pod and Port Patents, MHS Patents, Environmental Control
Patents, and AutoID/Lot Tracking Patents.
1.8 "EXCLUSIVE RIGHTS PATENTS" means the Patents and Applications
identified in Schedules 1b and 1c of Exhibit I to this Agreement and all foreign
equivalents and counterparts, divisions, continuations, continuations-in-part,
reexaminations, and reissues of such Patents and Applications.
1.9 "ACQUIRED PRODUCTS" means sealable transportable containers
made primarily of plastic, wafer and/or reticle carriers and
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
page - 2 -
containers specifically adapted for use in the manufacture, storage, transport
of semiconductor wafers and plastic flat panel carriers and containers
specifically adapted for use in the manufacture, storage, and transport of flat
panel displays.
1.10 "RETICLE POD" means containers for holding reticles comprising
a base, a machine operable latch mechanism, a top cover, and a seal . Reticle
Pod does not include containers used solely for shipment of reticles between
facilities.
1.11 "NON-PLASTIC FLAT PANEL DISPLAY PRODUCTS" means non-plastic
carriers and containers specifically adapted for use in the manufacture, storage
and transport of flat panel displays.
1.12 "LICENSED TRADEMARKS" means the marks ASYST(R), A S Y S T(R),
and A(R).
1.13 "SUBSIDIARIES" means any corporation, company or other legal
entity, in which more than fifty percent (50%) of the shares entitled to vote
for the election of directors or persons performing similar functions are, now
or hereafter, owned or controlled, directly or indirectly by a Party hereto, or
jointly by the Parties hereto; provided, however, that any corporation, company
or other legal entity shall be a Subsidiary only for as long as such ownership
or control exists.
1.14 "THIRD PARTY" means any person or entity other than Asyst,
Entegris, Entegris Cayman, Asyst's Subsidiaries, and Entegris' Subsidiaries.
Unless otherwise defined herein all capitalized terms shall have the
same meaning and effect as set forth in the Asset Purchase Agreement.
A R T I C L E 2
PATENT ASSIGNMENT AND LICENSE GRANTS
2.1 Asyst hereby sells, assigns, transfers and otherwise conveys
to Entegris Cayman the entire right, title and interest in and to the specific
Patents and Applications identified in Exhibit I and any foreign counterparts,
and all other patents or applications that now or in the future claim priority
to any Patent or Application identified in Exhibit I.
2.1.1 Asyst shall execute assignments in the form of
Exhibit V to this Agreement and Asyst shall execute any and all other
documents necessary and sufficient to permit Entegris Cayman to effect
the transfer of all right, title and interest in the Patents of Exhibit
I to Entegris Cayman and to record the assignment of the Patents or
Applications identified in Exhibit I to Entegris Cayman in the United
States Patent and Trademark Office and in the Patent Offices of other
relevant jurisdictions.
2.1.2 Notwithstanding the provisions of Articles 2.1 and
2.1.1, Asyst shall sell, assign, transfer and otherwise convey only
Asyst's undivided fifty percent ownership of the right, title and
interest in Application USSN 10/161,436 identified in Schedule 1c of
Exhibit I.
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 3 -
2.2 Entegris and Entegris Cayman grant to Asyst and Asyst's
Subsidiaries a [*] (except as provided in Article 7.2) license, including the
right to grant sublicenses, under all Exclusive Rights Patents owned or
licensable by Entegris Cayman or Entegris to make, have made, use, sell, offer
to sell, import, export, and otherwise dispose of, [*], all products except
Acquired Products.
2.2.1 Asyst, [*] for all products except Acquired Products,
shall have the power to institute and prosecute, at Asyst's own
expense, suits for infringement of the Exclusive Rights Patents by any
products except Acquired Products, and, if required by law, Entegris
Cayman and/or Entegris will join as party plaintiff in such suits.
2.2.2 All expenses in such suits, including Entegris
Cayman's and Entegris' attorneys' fees, will be paid entirely by Asyst.
2.2.3 Asyst shall have the [*] right to collect all
damages, profits and awards of any nature resulting from such suits.
2.2.4 Asyst is empowered to settle any claim or suit for
infringement of the Exclusive Rights Patents by any products except
Acquired Products by granting the infringing party a sublicense.
2.2.5 Asyst, Entegris Cayman and Entegris shall reasonably
assist and cooperate with one another with regard to litigation
procedures such as producing documents, making inventors available for
deposition, and providing information at the other's reasonable
request.
2.3 Asyst grants to Entegris Cayman a [*] (except as provided in
Article 7.2) license, including the right to grant sublicenses, under all
Combined Pod and Port Patents owned or licensable by Asyst to make, have made,
use, sell, offer to sell, import, export, and otherwise dispose of, [*],
Acquired Products.
2.3.1 Entegris Cayman, [*] for Acquired Products, shall
have the power to institute and prosecute, at Entegris Cayman's own
expense, suits for infringement of the Combined Pod and Port Patents by
Acquired Products, and, if required by law, Asyst will join as party
plaintiff in such suits.
2.3.2 All expenses in such suits, including Asyst's
attorneys' fees, will be paid entirely by Entegris Cayman.
2.3.3 Entegris Cayman shall have the [*] right to collect
all damages, profits and awards of any nature resulting from such
suits.
2.3.4 Entegris Cayman is empowered to settle any claim or
suit for infringement of the Combined Pod and Port Patents by Acquired
Products by granting the infringing party a sublicense.
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 4 -
2.3.5 Asyst, Entegris Cayman, and Entegris shall reasonably
assist and cooperate with one another with regard to litigation
procedures such as producing documents, making inventors available for
deposition, and providing information at the other's reasonable
request.
2.4 Entegris Cayman and Entegris grant to Asyst and Asyst's
Subsidiaries a [*] (except as provided in Article 7.2) license under Pod and
Carrier Patents owned or licensable by Entegris Cayman or Entegris to (a)
conduct development, research, testing, or demonstration of Acquired Products,
provided that Asyst does not transfer Acquired Products to third parties for
purposes other than development, research, testing, or demonstration, and (b) to
make, have made, use, sell, offer to sell, import, export, and otherwise dispose
of, [*], Non-Plastic Flat Panel Display Products.
2.5 Entegris Cayman and Entegris grant to Asyst and Asyst's
Subsidiaries a [*] (except as provided in Article 7.2) license under all Port
Patents, MHS Patents, Environmental Control Patents, and AutoID/Lot Tracking
Patents owned or licensable by Entegris Cayman or Entegris to make, have made,
use, sell, offer to sell, import, export, and otherwise dispose of, [*], all
products except Acquired Products.
2.6 Asyst grants to Entegris Cayman a [*] (except as provided in
Article 7.2) license under Pod and Carrier Patents, MHS Patents, Environmental
Control Patents, and AutoID/Lot Tracking Patents owned or licensable by Asyst to
make, have made, use, sell, offer to sell, import, export, and otherwise dispose
of, [*], Acquired Products.
2.7 The licenses granted in this Article 2 shall extend for the
life of the Licensed Patents and the Exclusive Rights Patents.
2.8 The rights and licenses granted under Articles 2.4, 2.5, and
2.6 of this Agreement exclude the right to grant sublicenses.
2.9 No right or license is granted by Asyst to Entegris Cayman or
Entegris or by Entegris Cayman or Entegris to Asyst under this Agreement, by
implication or by estoppel, or otherwise to any patents, inventions, patent
application, know-how, technology, trademark, copyright, trade secret, or other
property right, other than the rights and licenses expressly granted in Article
2 of this Agreement.
A R T I C L E 3
WARRANTIES
3.1 Asyst represents and warrants that Asyst has the full right,
power, and authority to enter into and perform its obligations under this
Agreement and grant to Entegris Cayman and Entegris the licenses and other
rights as set forth herein, and there are no outstanding agreements, grants,
licenses, encumbrances, liens, or agreements, either written or implied,
inconsistent therewith or pursuant to which this Agreement or the parties'
performance hereunder would violate, breach, or cause a default.
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 5 -
3.2 The execution, delivery, and performance of this Agreement
have been duly authorized by all necessary corporate actions on the part of
Asyst.
3.3 Entegris Cayman represents and warrants that Entegris Cayman
has the full right, power, and authority to enter into and perform Entegris
Cayman's obligations under this Agreement, and there are no outstanding
agreements, grants, licenses, encumbrances, liens, or agreements, either written
or implied, inconsistent therewith or pursuant to which this Agreement or the
parties' performance hereunder would violate, breach, or cause a default.
3.4 The execution, delivery, and performance of this Agreement
have been duly authorized by all necessary corporate actions on the part of
Entegris Cayman.
3.5 Entegris represents and warrants that Entegris has the full
right, power, and authority to enter into and perform Entegris's obligations
under this Agreement, and there are no outstanding agreements, grants, licenses,
encumbrances, liens, or agreements, either written or implied, inconsistent
therewith or pursuant to which this Agreement or the parties' performance
hereunder would violate, breach, or cause a default.
3.6 The execution, delivery, and performance of this Agreement
have been duly authorized by all necessary corporate actions on the part of
Entegris.
3.7 DISCLAIMER OF WARRANTIES. Except as expressly set forth
herein, EACH PARTY EXPRESSLY DISCLAIMS, TO THE EXTENT ALLOWED BY APPLICABLE LAW,
ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE (EVEN IF INFORMED OF SUCH PURPOSE), NONINFRINGEMENT OF THE INTELLECTUAL
PROPERTY RIGHTS OF THIRD PARTIES, OR ARISING FROM A COURSE OF DEALING, USAGE OR
TRADE PRACTICES, IN ALL CASES WITH RESPECT THERETO.
3.8 Nothing in this Agreement shall be construed as:
3.8.1 a representation or warranty by Asyst or Entegris
Cayman or Entegris of the validity, enforceability or scope of any of
the Licensed Patents; or
3.8.2 a requirement that Asyst or Entegris Cayman or
Entegris shall file any patent application or secure any patent, except
that Asyst will maintain all applications being transferred to Entegris
Cayman until said files are physically transferred; or
3.8.3 a representation or warranty that any product made,
used, sold, or otherwise disposed of by Asyst or Entegris Cayman or
Entegris is free from infringement of patents of Third Parties.
3.9 Asyst agrees that if Asyst intends not to maintain any
Licensed Patents owned by Asyst, Asyst will provide Entegris Cayman reasonable
notice of at least 45 days of said intention not to pay said maintenance fees or
annuities and Asyst will [*].
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 6 -
3.10 Asyst will not in the future disparage the patents of Exhibit
I.
3.11 Entegris Cayman agrees that if Entegris Cayman intends not to
maintain any Combined Pod and Port Patents, Port Patents, Environmental Control
Patents, or Auto ID/Lot Tracking Patents owned by Entegris Cayman, Entegris
Cayman will provide Asyst reasonable notice of at least 45 days of said
intention not to pay said maintenance fees or annuities and Entegris Cayman [*].
3.12 Entegris agrees that if Entegris intends not to maintain any
Combined Pod and Port Patents, Port Patents, Environmental Control Patents, or
Auto ID/Lot Tracking Patents owned by Entegris, Entegris will provide Asyst
reasonable notice of at least 45 days of said intention not to pay said
maintenance fees or annuities and Entegris will [*].
3.13 Asyst warrants that Asyst has disclosed to Entegris all other
licenses and all pending litigation involving Pod and Carrier Patents, Combined
Pod and Port Patents, Environmental Control Patents, and Auto ID/Lot Tracking
Patents owned by Asyst.
3.14 Entegris warrants that Entegris has disclosed to Asyst all
other licenses and all pending litigation involving Pod and Carrier Patents,
Combined Pod and Port Patents, Environmental Control Patents, and Auto ID/Lot
Tracking Patents owned by Entegris.
A R T I C L E 4
ROYALTIES
4.1 See Exhibit VI.
4.2 Entegris hereby guarantees the payment of the royalties due by
Entegris Cayman under this agreement.
A R T I C L E 5
TRADEMARK LICENSE AGREEMENT
5.1 Asyst grants Entegris Cayman a [*] (except as provided in
Article 7.2) license under the Licensed Trademarks to use the Licensed
Trademarks in conjunction with marketing and selling Acquired Products.
5.1.1 Use of the Licensed Trademarks by Entegris Cayman
shall inure to the benefit of Asyst.
5.1.2 Entegris Cayman shall use the Licensed Trademarks in
a form which is in accordance with sound trademark practice so as not
to weaken the value of the Licensed Trademarks.
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 7 -
5.1.3 Entegris Cayman shall not engage in any act or
omission which may diminish or impair the goodwill or reputation
associated with the Licensed Trademarks.
5.2 TRADEMARK QUALITY CONTROL.
5.2.1 In order to promote the goodwill symbolized by each
of the Licensed Trademarks, Entegris Cayman will insure that the goods
with which the Licensed Trademarks are associated are continuously of
the same high quality as the goods marketed under the Licensed
Trademarks by Asyst.
5.2.2 All uses of the Licensed Trademarks on Acquired
Products and packaging for Acquired Products shall be approved by Asyst
prior to use; provided, however, that such approval shall not be
unreasonably withheld.
5.2.3 Upon reasonable notice from Asyst that the standards
specified in Article 5.1 are not satisfied or discovery by Entegris
Cayman or Entegris that the standards specified in Article 5.1 are not
satisfied, Asyst shall have the right to inspect the Acquired Products
manufactured by Entegris Cayman or Entegris, and the methods of
manufacture of the Acquired Products on the premises of Entegris Cayman
or Entegris, on the premises of third-party manufacturers, and
elsewhere, as part of appropriate quality control.
5.2.4 Entegris Cayman shall, when requested by Asyst, make
available to Asyst, at a time and place mutually agreed upon by
Entegris Cayman and Asyst, a sample of each Acquired Product marketed
by Entegris Cayman in association with the Licensed Trademarks at the
time of such a request for the purpose of inspecting the Acquired
Products.
5.2.5 Upon notice from Asyst or discovery by Entegris
Cayman that the standards specified in Article 5.1 are not satisfied,
Entegris Cayman shall, at Entegris Caymans' expense, promptly take any
corrective action or destroy any Acquired Product or the packaging for
any Acquired Product that does not satisfy the standards of Article
5.1.
5.2.6 In order to promote the goodwill symbolized by each
of the Licensed Trademarks, Entegris will insure that the goods with
which the Licensed Trademarks are associated are continuously of the
same high quality as the goods marketed under the Licensed Trademarks
by Asyst.
5.2.7 Entegris shall, when requested by Asyst, make
available to Asyst, at a time and place mutually agreed upon by
Entegris and Asyst, a sample of each Acquired Product marketed by
Entegris in association with the Licensed Trademarks at the time of
such a request for the purpose of inspecting the Acquired Products.
5.2.8 Upon notice from Asyst or discovery by Entegris that
the standards specified in Article 5.1 are not satisfied, Entegris
shall, at Entegris' expense, promptly
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 8 -
take any corrective action or destroy any Acquired Product or the
packaging for any Acquired Product that does not satisfy the standards
of Article 5.1.
A R T I C L E 6
ENTIRE AGREEMENT
6.1 This Agreement along with the Exhibits to this Agreement and
the Asset Purchase Agreement constitute the entire agreement and understanding
of Asyst, Entegris Cayman, and Entegris and supersedes all prior understandings
and representations (oral or written) between the parties with respect to the
subject matter hereof. Neither this Agreement nor any subsequent agreement
amending, supplementing, or terminating this Agreement shall be binding on the
parties unless and until it has been signed by duly authorized representatives
of the Parties.
A R T I C L E 7
MISCELLANEOUS
7.1 DISPUTE RESOLUTION. The dispute resolution procedures of the
Asset Purchase Agreement are applicable to all disputes arising under this
Assignment.
7.2 TRANSFERABILITY.
7.2.1 Entegris shall not transfer this Agreement or the
licenses and rights granted to Entegris under this Agreement to any
third party, by agreement, assignment, merger, asset sale,
consolidation, operation of law, or otherwise, without the prior
written consent of Asyst; provided, however, that Entegris may transfer
this Agreement to a successor in ownership of all or substantially all
of the assets of Entegris, if the successor expressly assumes in
writing Entegris' obligations under this Agreement.
7.2.2 Entegris Cayman shall not transfer (a) any of the
patents and applications assigned from Asyst to Entegris Cayman, or (b)
this Agreement, or (c) any licenses or rights granted to Entegris
Cayman under this Agreement to any Third Party, by agreement,
assignment, merger, asset sale, consolidation, operation of law, or
otherwise, without the prior written consent of Asyst; provided,
however, that Entegris Cayman may transfer (a) the patents and
applications assigned from Asyst to Entegris Cayman, or (b) this
Agreement, or (c) any licenses or rights granted to Entegris Cayman
under this Agreement to Entegris or a Subsidiary of Entegris, if
Entegris or the Subsidiary expressly assumes in writing Entegris
Cayman's obligations under this Agreement.
7.2.3 Entegris shall not permit any Entegris Subsidiary to
transfer (a) any of the patents and applications assigned from Asyst to
Entegris Cayman, or (b) this Agreement, or (c) any licenses or rights
granted to Entegris Cayman under this Agreement to any Third Party, by
agreement, assignment, merger, asset sale, consolidation, operation of
law, or otherwise, without the prior written consent of Asyst;
provided, however, that
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 9 -
Entegris Subsidiaries may transfer (a) the patents and applications
assigned from Asyst to Entegris Cayman, or (b) this Agreement, or (c)
any licenses or rights granted to under this Agreement to Entegris or a
Subsidiary of Entegris, if Entegris or the Subsidiary expressly assumes
in writing the obligations under this Agreement.
7.2.4 Asyst shall not transfer this Agreement or the
licenses and rights granted to Asyst under this Agreement to any third
party, by agreement, assignment, merger, asset sale, consolidation,
operation of law, or otherwise, without the prior written consent of
Entegris; provided, however, that Asyst may transfer this Agreement to
a successor in ownership of all or substantially all of the assets of
Asyst, if the successor expressly assumes in writing Asyst's
obligations under this Agreement.
7.3 GUARANTEE. Entegris guarantees the performance and obligations
of Entegris Cayman under this agreement.
7.4 CONFIDENTIALITY. The terms of this Agreement are deemed
confidential and shall not be disclosed to third parties or publicly unless
authorized in writing by all parties; except upon written agreement of the
parties or by operation of law or as required by SEC regulations. Any
information disclosed to one of the parties during the transfer and licensing of
the patents identified herein may be designated in writing by any party to be
confidential and where there is such designation said information will not be
publicly disclosed or disclosed to third parties except upon written agreement
of the parties or by operation of law or as required by SEC regulations.
7.5 NO STRICT CONSTRUCTION. The normal rule of construction to the
effect that any ambiguities are to be resolved against the drafting Party shall
not be employed in the interpretation of this Agreement. Unless the context
clearly requires a different interpretation, words denoting the singular will
include the plural and vice versa; words denoting any gender will include all
genders; words denoting persons will include corporations, partnerships, joint
ventures, proprietorships and other business entities.
7.6 CHOICE OF LAW. This Agreement shall be construed under, and
interpreted in accordance with, the laws of the State of Minnesota.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 10 -
7.7 EXECUTION. This Agreement may be executed in counterparts by
the Parties, each of which shall be deemed an original, and which together shall
constitute one and the same instrument, having the same force and effect as if a
single original had been executed by all the Parties.
IN WITNESS THEREOF, each of the Parties has caused this Agreement to be executed
by its duly authorized representative.
Dated: February 11, 2003 Asyst Technologies, Inc.
By: /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
--------------------
Name: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Title: Senior Vice President and
Chief Financial Officer
Dated: February 11, 2003 Entegris Cayman Ltd.
By: /s/ ▇▇▇▇ ▇. Villas
--------------------
Name: ▇▇▇▇ ▇. Villas
Title: Director
Dated: February 11, 2003 Entegris, Inc.
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
--------------------
Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Title: Chief Operating Officer
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 11 -
EXHIBIT I
SCHEDULE Ia
---------------------------------------------------------------------------------------------------
PATENT
NUMBERS TITLE ISSUE DATE/FILING DATE
---------------------------------------------------------------------------------------------------
4,739,882 Container Having Disposable Liner April 26, 1988
---------------------------------------------------------------------------------------------------
4,815,912 Box Door Actuated Retainer March 28, 1989
- Corresponding Patents in EP, DE, JP
---------------------------------------------------------------------------------------------------
4,995,430 Sealable Transportable Container Latch Mechanism February 26, 1991
- Corresponding Patents in EP, DE, JP, SG, TW
---------------------------------------------------------------------------------------------------
5,469,963 Sealable Transportable Container Improved Liner November 28, 1995
- Corresponding Patent in TW
---------------------------------------------------------------------------------------------------
5,611,452 Sealable Transportable Container Improved Liner March 18, 1997
---------------------------------------------------------------------------------------------------
6,042,651 Molecular Contamination Control System March 28, 2000
---------------------------------------------------------------------------------------------------
6,216,873 SMIF Container Including a Reticle Support Structure April 17, 2001
- Foreign application pending in TW
---------------------------------------------------------------------------------------------------
6,221,163 Molecular Contamination Control System April 24, 2001
---------------------------------------------------------------------------------------------------
6,223,396 Pivoting Side Handles May 1, 2001
---------------------------------------------------------------------------------------------------
6,319,297 Modular SMIF Pod Breather, Adsorbent, and Purge Cartridges November 20, 2001
---------------------------------------------------------------------------------------------------
6,368,411 Molecular Contamination Control System April 9, 2002
---------------------------------------------------------------------------------------------------
6,398,032 SMIF Pod Including Independently Support Wafer Cassette June 4, 2002
- Foreign applications pending in EP, HK, JP, KR
---------------------------------------------------------------------------------------------------
SMIF Container Including an Electrostatic Dissipative Reticle
6,513,654 Support Structure February 4, 2003
- Corresponding PCT Application pending
---------------------------------------------------------------------------------------------------
[*] [*] [*]
---------------------------------------------------------------------------------------------------
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 12 -
EXHIBIT I, CONTINUED
SCHEDULE Ib
------------------------------------------------------------------------------------------------
5,740,845 Sealable Transportable Container Having Breather Assembly April 2, 1998
------------------------------------------------------------------------------------------------
5,785,186 Substrate Housing and Docketing System July 28, 1998
- Corresponding Patents in EP, CN, AU, JP
------------------------------------------------------------------------------------------------
5,810,062 Two Stage Valve for Charging and/or Vacuum Relief of Pods September 22, 1998
------------------------------------------------------------------------------------------------
5,823,361 Substrate Support Apparatus for a Substrate Housing October 20, 1998
------------------------------------------------------------------------------------------------
5,853,214 Aligner for a Substrate Carrier December 29, 1998
- Corresponding Patents in JP, DE, CN, AU
------------------------------------------------------------------------------------------------
5,984,116 Substrate Support Apparatus for a Substrate Housing November 16, 1999
- Corresponding Patents in AU, CN, JP, DE
------------------------------------------------------------------------------------------------
6,187,182 Filter Cartridge Assembly for a Gas Purging System February 13, 2001
(Joint Ownership with Entegris)
- Corresponding Patent in TW
- Foreign applications pending in CA, CN, EP, JP, KR
------------------------------------------------------------------------------------------------
SCHEDULE Ic
------------------------------------------------------------------------------------------------
USSN SMIF Container with Latch Lock Mechanism July 10, 2001
09/902,195 - Corresponding PCT Application pending
------------------------------------------------------------------------------------------------
[*] [*] [*]
------------------------------------------------------------------------------------------------
[*] [*] [*]
------------------------------------------------------------------------------------------------
[*] [*] [*]
------------------------------------------------------------------------------------------------
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 13 -
EXHIBIT II
-------------------------------------------------------------------------------------------------
PATENT
NUMBERS TITLE ISSUE DATE
-------------------------------------------------------------------------------------------------
4,674,939 Sealed Standard Interface Apparatus June 23, 1987
- Corresponding patents in EP, DE, JP, KR
-------------------------------------------------------------------------------------------------
5,169,272 Method and Apparatus for Transferring Articles Between Two December 8, 1992
Controlled Environments
- Corresponding patents in EP, JP
-------------------------------------------------------------------------------------------------
5,370,491 Method and Apparatus for Transferring Articles Between Two December 6, 1994
Controlled Environments
-------------------------------------------------------------------------------------------------
5,547,328 Method and Apparatus for Transferring Articles Between Two August 20, 1996
Controlled Environments
-------------------------------------------------------------------------------------------------
5,834,915 Substrate Housing and Docking System November 10, 1998
-------------------------------------------------------------------------------------------------
5,895,191 Sealable, Transportable Container Adapted for Horizontal April 20, 1999
Loading and Unloading
-------------------------------------------------------------------------------------------------
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 14 -
EXHIBIT III
------------------------------------------------------------------------------------------------
PATENT
NUMBERS TITLE ISSUE DATE
------------------------------------------------------------------------------------------------
4,724,874 Sealable Transportable Container Having a Particle Filtering February 16, 1988
System
o Corresponding Patents in EP, DE, JP, SG
------------------------------------------------------------------------------------------------
5,848,933 Docking and Environmental Purging System for Integrated Circuit December 15, 1998
Wafer Transport Assemblies
------------------------------------------------------------------------------------------------
5,879,458 Molecular Contamination Control System March 9, 1999
o Corresponding Patent in SG
o Foreign applications pending in EP, JP, KR
------------------------------------------------------------------------------------------------
5,988,233 Evacuation-Driven SMIF Pod Purge System November 23, 1999
o Corresponding patents in EP, HK, JP, KR
------------------------------------------------------------------------------------------------
6,056,026 Passively Activated Valve for Carrier Purging May 2, 2002
o Corresponding Patent in TW
o Foreign applications pending in CN, EP, JP, KR
------------------------------------------------------------------------------------------------
6,120,371 Docking and Environmental Purging System for Integrated Circuit September 19, 2000
Wafer Transport Assemblies
------------------------------------------------------------------------------------------------
6,164,664 Kinematic Coupling Compatible Passive Interface Seal December 26, 2000
------------------------------------------------------------------------------------------------
6,368,411 Molecular Contamination Control System April 9, 2002
------------------------------------------------------------------------------------------------
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 15 -
EXHIBIT IV
-------------------------------------------------------------------------------------------------------
PATENT
NUMBERS TITLE ISSUE DATE
-------------------------------------------------------------------------------------------------------
4,827,110 Method and Apparatus for Monitoring the Location of Wafer Disks May 2, 1989
-------------------------------------------------------------------------------------------------------
4,833,306 Bar Code Remote Recognition System for Process Carriers of May 23, 1989
Wafer Disks
- Corresponding Patents in CA, EP, DE, KR, TW
-------------------------------------------------------------------------------------------------------
4,888,473 Wafer Disk Location Monitoring System and Tagged Process December 19, 1989
Carriers for Use Therewith
-------------------------------------------------------------------------------------------------------
4,974,166 Processing Systems with Intelligent Article Tracking November 27, 1990
- Corresponding Patents in EP, DE, JP, KR, TW
-------------------------------------------------------------------------------------------------------
5,097,421* Intelligent Wafer Carrier March 17, 1992
- Corresponding Patents in EP, DE, JP, SG
-------------------------------------------------------------------------------------------------------
5,166,884 Intelligent System for Processing and Storing Articles November 24, 1992
- Corresponding Patents in JP
-------------------------------------------------------------------------------------------------------
5,339,074 Very Low Frequency Tracing System August 16, 1994
- Corresponding Patents in FR, DE, IT, JP, KR
-------------------------------------------------------------------------------------------------------
5,831,738 Apparatus and Methods for Viewing Identification Marks on November 3, 1998
Semiconductor Wafers
- Corresponding Patents in KR
- Foreign application pending in JP
-------------------------------------------------------------------------------------------------------
6,473,668 Intelligent Minienvironment October 29, 2002
-------------------------------------------------------------------------------------------------------
* Currently in litigation with Jenoptik
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 16 -
EXHIBIT V
ASSIGNMENT
WHEREAS, Asyst Technologies, Inc., has rights and interest to
a certain patents and patent applications described as follows:
Patent Number/
Serial Number Title Issue Date/Filing Date
------------- ------------------------------------------------------------------ ----------------------
4,739,882 Container Having Disposable Liner April 26, 1988
4,815,912 Box Door Actuated Retainer March 28, 1989
4,995,430 Sealable Transportable Container Latch Mechanism February 26, 1991
5,469,963 Sealable Transportable Container Improved Liner November 28, 1995
5,611,452 Sealable Transportable Container Improved Liner March 18, 1997
6,042,651 Molecular Contamination Control System March 28, 2000
6,216,873 SMIF Container Including a Reticle Support Structure April 17, 2001
6,221,163 Molecular Contamination Control System April 24, 2001
6,223,396 Pivoting Side Handles May 1, 2001
6,319,297 Modular SMIF Pod Breather, Adsorbent, and Purge Cartridges November 20, 2001
6,368,411 Modular Contamination Control System April 9, 2002
6,398,032 SMIF Pod Including Independently Support Wafer Cassette June 4, 2002
6,513,654 SMIF Container Including an Electrostatic Dissipative Reticle February 4, 2003
Support Structure
USSN System for Preventing Improper Insertion of FOUP Door Into FOUP December 13, 2001
10/020,761
5,740,845 Sealable Transportable Container Having Breather Assembly April 2, 1998
5,785,186 Substrate Housing and Docketing System July 28, 1998
5,810,062 Two Stage Valve for Charging and/or Vacuum Relief of Pods September 22, 1998
5,823,361 Substrate Support Apparatus for a Substrate Housing October 20, 1998
5,853,214 Aligner for a Substrate Carrier December 29, 1998
5,984,116 Substrate Support Apparatus for a Substrate Housing November 16, 1999
6,187,182 Filter Cartridge Assembly for a Gas Purging System (Joint Ownership February 13, 2001
with Entegris)
USSN SMIF Container with Latch Lock Mechanism July 10, 2001
09/902,195
USSN Laterally Floating Latch Hub Assembly December 13, 2001
10/022,309
USSN Transportable Container Including Internal Environment Monitor January 24, 2002
10/042,849
An undivided fifty percent ownership interest in Application USSN 10/161,436 titled "System for Providing Electrical Ground Path
Through a Port Door" filed on June 3, 2002.
WHEREAS, ENTEGRIS CAYMAN LTD. is desirous of acquiring any and
all such interest in and to said patents and applications.
NOW, THEREFORE, Be It Known, that for good and valuable
consideration, the receipt of which is hereby acknowledged by the undersigned,
the entire rights, title and interest of said above identified patents and
applications, the inventions disclosed and claimed therein, and any renewals,
continuations, divisionals, continuation-in-parts, reissues, extensions,
substitutions, foreign or domestic counterparts thereof, including any and all
rights to apply for and obtain patents therefore in all foreign countries, is
hereby sold, assigned and transferred to ENTEGRIS CAYMAN LTD.
The undersigned agrees to sign such papers, testify orally and
do other things at the expense of ENTEGRIS CAYMAN LTD. or its successors or
assigns, as may be reasonably necessary for the purpose of obtaining and
enforcing the patents.
Signed at this 11th day of February, 2003.
ASYST TECHNOLOGIES, INC.
By: /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
------------------
Printed Name: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Its: Senior Vice President and Chief Financial
Officer
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 17 -
EXHIBIT VI
ROYALTIES
Asyst shall be entitled to receive certain royalties on the Net Revenues (as
defined below) as set forth below:
VI.2(a) The sum equal to [*]% of all Net Revenues generated in the
semiconductor industry by Entegris, Entegris Cayman or
Entegris' Subsidiaries during each year with respect to (i)
[*] (iii) spare and replacement parts in respect of the
products described in (i) and (ii) of this subsection VI.2(a),
for a period of five (5) years after the Closing Date stated
in the Asset Purchase Agreement; and
VI.2(b) a portion of all Net Revenues generated in the semiconductor
industry by Entegris or Entegris' Subsidiaries during each
year with respect to (i) 300mm FOUPs or wafer carriers or
containers having substantially the same structure as a 300mm
FOUP and used in production of semiconductors or wafers, (ii)
the 300mm FOUPS purchased by Entegris from Asyst in the
semiconductor industry; and (iii) spare and replacement parts
in respect of the products described in (i) and (ii) of this
subsection VI.2(b) for a period of five (5) years after the
Closing Date as set forth below:
(i) The sum equal to [*]% of such Net Revenues up to $[*]
million per annum;
(ii) [*]% of such Net Revenues between $[*] million and $[*]
million per annum; and
(iii) [*]% of such Net Revenues over $[*] million per annum.
For purposes hereof, the 300mm FOUPS and wafer carriers or containers
having substantially the same structure as a 300mm FOUP and used in production
of semiconductors or wafers for which Asyst is entitled to the above royalties
shall not include any of Entegris' current products or containers which are used
to ship wafers between facilities. [*].
Notwithstanding the above, [*].
VI.2(c) The term "Net Revenues" shall mean the total sales price of
the particular product(s) for which customers are billed or
otherwise charged (including the lease or consignment of
product) for by Entegris in the usual course of business
during each fiscal year of Entegris, excluding: (i) revenues
received from services related to the particular product(s)
(including without limitation cleaning services); (ii) sales
taxes, excise taxes and other taxes levied in respect of such
sales; (iii) return sales; (iv) transportation and insurance
costs incurred by Entegris with respect to such product(s).
Royalties on products
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 18 -
discounted below [*]% of the average selling price of a
product on a quarterly basis will be based upon [*]% of the
average selling price of that product on a quarterly basis.
Any out-of-payment-period credit adjustments for return sales
or other bona fide price adjustments which exceed royalties
payable for any period will be accrued and offset against
royalties which accrue to Asyst in subsequent payment periods.
With respect to product(s) leased or consigned by Entegris, or
if the pricing of a royalty-bearing product hereunder is
otherwise commingled with the pricing of other products and
services of Entegris or a wholly-owned subsidiary of Entegris,
then the price of the royalty-bearing products for the
purposes of calculating royalties shall be equal to the
average net sales price of all equivalent products sold by the
Entegris for the fiscal quarter in question, without giving
effect in the calculation of such average to any products
given away or commingled with other goods and services;
provided, however, that the bundling of multiple
royalty-bearing products together without the commingling of
non-royalty-bearing products or services is treated as a
single aggregate sale and royalty is calculated based upon the
aggregate sale price for such products (i.e. not the average
net sales price of equivalent products).
VI.2(d) Entegris shall keep records, with respect to the sale of all
the products subject to royalties under this Section V.2 and
the selling prices thereof. Asyst shall at its own expense
have a right, through an independent certified public
accountant selected by Asyst, to examine and audit, not more
than once each fiscal year, and during normal business hours
and upon prior reasonable notice, all such records and
accounts as may, under recognized accounting practices,
contain information bearing upon the amount of royalty payment
due to Asyst from Entegris under this Agreement.
If Asyst's calculation of royalties differs from Entegris'
calculation, Asyst may, at its option, deliver a notice to
Entegris disputing Entegris' calculation (a "Challenge
Notice") at any time, but in no event more than ninety (90)
days after the close of a calendar year with respect to
royalties accrued during that calendar year. If a Challenge
Notice is delivered to Entegris pursuant to the preceding
sentence, Asyst and Entegris shall, during the thirty (30)
days following such delivery, use all commercially reasonable
efforts to reach agreement. If during such period Asyst and
Entegris are unable to agree regarding the disputed
calculation, Asyst and Entegris shall promptly thereafter
select an Accounting Referee (as hereinafter defined) and
cause such Accounting Referee to promptly review this
Agreement, any related agreements, all such records and
accounts as may, under recognized accounting practices,
contain information bearing upon the amount of royalty payment
due to Asyst from Entegris under this Agreement and the
respective parties' disputed calculations. The Accounting
Referee shall deliver to Asyst and Entegris as promptly as
practicable a report setting forth the Accounting Referee's
calculation. Such report shall be final and binding upon Asyst
and
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 19 -
Entegris. The cost of such report shall be borne by (i) Asyst
if the Accounting Referee's calculation changes royalties by
less than [*] percent ([*]%) of the royalties stated in the
disputed Royalty Statement(s); or (ii) the Entegris if the
Accounting Referee's calculation changes royalties by greater
than [*] percent ([*]%) of the royalties stated in the
disputed Royalty Statement(s). The "Accounting Referee" shall
mean a reputable firm of independent auditors of national
standing other than the auditors of the Entegris, at or prior
to the Closing Date. In any event, adjustment shall be made to
compensate for any errors or omission disclosed by Accounting
Referee's report.
VI.2(e) The thresholds for determining the amount of royalties to be
paid hereunder shall be based on a calendar year. Royalties
hereunder shall be remitted to Asyst quarterly for royalties
accrued during each preceding quarter, based on Net Revenues
to date for the current calendar year. The Net Revenue
thresholds in Section VI.2(b) shall be prorated for partial
years at the beginning and end of the royalty term.
VI.2(f) Within forty-five (45) days after the end of each fiscal
quarter of Entegris, commencing upon the close of the first
fiscal quarter after the Closing Date and continuing
thereafter until all of the royalties payable hereunder shall
have been reported and paid, Entegris shall furnish Asyst a
statement signed by a duly authorized officer of Entegris
showing all products subject to royalties which were sold
during such quarter and the prices at which they were sold,
and the amount of the royalty payable thereon (the "Royalty
Statement"). If no products subject to royalty have been sold,
that fact shall be set forth in such a statement. The
royalties stated to be payable to Asyst in the Royalty
Statement shall be paid within forty-five (45) days after the
end of that quarter in which they accrue.
VI.2(g) A bonus royalty of [*] percent ([*]%) on revenues generated by
Entegris and Entegris' Subsidiaries in excess of [*] from
Entegris' current and future SMIF Pods and all royalty bearing
products for combined calendar years 2003, 2004 and 2005. The
maximum payment under this section shall not exceed [*]. For
purposes hereof, Asyst shall be entitled to credit for Asyst
and Entegris' respective sales for 2003 prior to the Effective
Date for the products identified in Sections VI.2(a) and
VI.2(b).
PATENT ASSIGNMENT AND CROSS-LICENSE AND TRADEMARK LICENSE AGREEMENT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
Page - 20 -