1
EXHIBIT 10.9
[CONFORMED COPY]
LICENSE AGREEMENT FOR MICROELECTRONIC TECHNOLOGY
BETWEEN YIELDUP (LICENSOR) AND FSI (LICENSEE)
--------------------------------------------------------------------------------
This Agreement is between YIELDUP INTERNATIONAL CORPORATION, a Corporation
organized under the laws of Delaware and having an office and a place of
business at Mountain View, California (hereinafter referred to as "YIELDUP") and
FSI INTERNATIONAL, INC., a Corporation organized under the laws of Minnesota and
having an office and place of business at Chaska, Minnesota (hereinafter
referred to as "FSI").
WITNESSETH THAT:
WHEREAS, YIELDUP has developed and continues to develop certain
technology useful in the microelectronics industry. Representative embodiments
of industrial equipment incorporating such technology include the YIELDUP(TM)
Wafer Filtration System, YIELDUP 1000 SRD Replacement System, YIELDUP 2000,
YIELDUP 4000 HF Last, and the YIELDUP 6000 cleaning, rinsing, and drying systems
currently being manufactured, developed, and/or commercially marketed by
YIELDUP.
WHEREAS, YIELDUP owns and controls certain know-how as well as a
portfolio of international patent properties (including patent applications and
patents) that relate to the YIELDUP technology.
WHEREAS, FSI desires to obtain a nonexclusive, worldwide license from
YIELDUP to allow FSI to manufacture and/or market industrial equipment and/or
devices in the microelectronics industry wherein such equipment and/or devices
would embody technology protected by YIELDUP patent properties and/or protected
as part of YIELDUP know how.
WHEREAS, YIELDUP is willing to grant such a license to FSI.
NOW, THEREFORE, in consideration of the mutual covenants herein
contained, the parties hereto agree as follows:
ARTICLE I: DEFINITIONS
1.1 YIELDUP KNOW-HOW shall mean any technology disclosed by YIELDUP
to FSI on or before August 31, 1999, that relates to making, having made, making
for others, maintaining, operating, selling, offering to sell, leasing, or
otherwise distributing MICROELECTRONIC DEVICES and/or MICROELECTRONIC EQUIPMENT.
2
1.2 YIELDUP PATENT RIGHTS shall mean any and all provisional,
nonprovisional, utility, design, reissue, reexamination, divisional,
continuation, continuation-in-part, extension, utility model, or any other
counterpart US and non-US patent applications and patents owned and/or
controlled, solely or jointly, by YIELDUP that have a priority date, claim
priority from a date, or are entitled to claim priority from a date on or before
August 31, 1999.
1.3 CONFIDENTIAL INFORMATION shall mean any materials or equipment,
or any written or verbal or written business or technical information, that is
disclosed by one party (the Disclosing Party) to the other party (the Recipient)
prior to the expiration or termination of this Agreement that relates to the use
of wet cleaning or immersion techniques to make, have made, make for others,
use, service, offer for sale, sell, import, export, lease, or otherwise
distribute MICROELECTRONIC DEVICES and/or MICROELECTRONIC EQUIPMENT.
CONFIDENTIAL INFORMATION also shall include the existence and content of this
Agreement. In order to protect the value and proprietary nature of YIELDUP
KNOW-HOW, both parties shall treat any YIELDUP KNOW-HOW that is confidential and
proprietary to YIELDUP as of the EFFECTIVE DATE of this agreement as if such
YIELDUP KNOW-HOW were CONFIDENTIAL INFORMATION of the other party hereunder.
1.4 EFFECTIVE DATE shall mean January 22, 1999.
1.5 IMPROVEMENT PATENT RIGHTS shall mean any and all provisional,
nonprovisional, utility, design, reissue, reexamination, divisional,
continuation, continuation-in-part, extension, utility model, or any other
counterpart US and non-US patent applications and patents owned and/or
controlled by YIELDUP that have a priority date, claim priority from a date, or
are entitled to claim priority from a date after August 31, 1999, and that claim
one or more inventions that were first conceived prior to August 31, 1999.
1.6 LICENSED METHOD(S) shall mean any and all methods encompassed
within or by one or more claims of the LICENSED TECHNOLOGY RIGHTS.
1.7 LICENSED PRODUCT(S) shall mean any and all MICROELECTRONIC
DEVICES and MICROELECTRONIC EQUIPMENT, or components of any of the foregoing,
encompassed within or by one or more claims of the LICENSED TECHNOLOGY RIGHTS.
1.8 LICENSED TECHNOLOGY RIGHTS shall mean any and all YIELDUP PATENT
RIGHTS, any and all IMPROVEMENT PATENT RIGHTS, and any and all YIELDUP KNOW-HOW.
1.9 MICROELECTRONIC DEVICE(S) shall mean any and all semiconductor
wafers, flat panel displays, compact discs, optical lenses, microelectronic
masks, multi-chip
2
3
modules, magnetic memory heads, printed circuit boards, solid state devices,
hard disks, and any component or combination of the foregoing.
1.10 MICROELECTRONIC EQUIPMENT shall mean any and all equipment, or
component or combination thereof, which may operate to manufacture and/or use
any MICROELECTRONIC DEVICE.
1.11 SUBSIDIARY shall mean any corporation, firm, partnership,
proprietorship, or other form of organization as to which FSI has at least a 50%
ownership interest, or any corporation, firm, partnership, proprietorship, or
other form of business organization as to which FSI exercises control of such
business. For purposes of this Agreement, Metron Technology B.V., a corporation
organized and existing under the laws of The Netherlands and having an office
and place of business at Burlingame, California, U.S.A., and its subsidiaries
shall each be deemed to be a SUBSIDIARY of FSI.
1.12 NET SALES PRICE shall mean the actual selling price of a ROYALTY
PRODUCT less packaging, transportation and insurance charges; import, export,
excise and value added taxes; custom duties; installation and service charges;
commissions to non-employee distributors or representatives; and credits or
returns.
If the ROYALTY PRODUCT was not separately itemized and priced and
was incorporated into another product or is part of a system or integrated tool,
the NET SALES PRICE of the ROYALTY PRODUCT shall be deemed to mean the gross
selling price of the product, system, or integrated tool, multiplied by the
ratio of the cost to manufacture the ROYALTY PRODUCT to the total manufacturing
cost of the product, system, or tool incorporating the ROYALTY PRODUCT adjusted
for all the deductions as provided by the foregoing paragraph.
1.13 ROYALTY PRODUCT(S) shall mean that portion of a LICENSED PRODUCT
which (a) embodies or uses all the elements or steps recited in any, one claim
of an issued YIELDUP PATENT RIGHT or of an issued IMPROVEMENT PATENT RIGHT; or
(b) is manufactured by use of all steps recited in any one claim of an issued
YIELDUP PATENT RIGHT or of an issued IMPROVEMENT PATENT RIGHT.
ARTICLE II:
LICENSE GRANT FROM YIELDUP TO FSI
2.1 YIELDUP agrees to grant and does hereby grant to FSI a
nonexclusive, worldwide license under the LICENSED TECHNOLOGY RIGHTS to make,
have made, make for others, use, service, offer for sale, sell, import, export,
lease, or otherwise distribute LICENSED PRODUCTS.
3
4
2.2 YIELDUP agrees to grant and does hereby grant to FSI a
nonexclusive, worldwide license under the LICENSED TECHNOLOGY RIGHTS to practice
any and all LICENSED METHODS in order to make, have made, make for others, use,
service, offer for sale, sell, import, export, lease, or otherwise distribute
LICENSED PRODUCTS.
2.3 Except as provided in Article 6, FSI shall only have the right to
grant sublicenses under the license grants of this article to SUBSIDIARIES (the
"Buyback Option") of FSI.
2.4 YIELDUP shall not, in any transaction or combination of
transactions, transfer or offer to transfer any right, title, or interest in and
to any portion of the LICENSED TECHNOLOGY RIGHTS to any third party during the
period extending from the EFFECTIVE DATE through (i) the consummation of the
merger contemplated by the Agreement and Plan of Reorganization dated as of
January 21, 1999, among FSI and a wholly owned SUBSIDIARY of FSI and YIELDUP
("Reorganization Agreement"), (ii) the expiration of the option to purchase back
the licenses granted in this Agreement as provided in Article IX of this
Agreement (the "Buyback Option"), or (iii) the exercise of the Buyback Option.
If the merger is not consummated and the Buyback Option is not exercised, and
subject to Paragraph 2.5, YIELDUP shall, subsequently thereto, have the right to
transfer any portion of its right, title, and interest in and to the LICENSED
TECHNOLOGY RIGHTS to any third party.
2.5 In no event shall YIELDUP enter into any transaction with a third
party that diminishes any rights granted to FSI under this Agreement.
ARTICLE III: REPRESENTATIONS AND WARRANTIES
3.1 To the extent that Silicon Valley Bank has any interest in and to
the LICENSED TECHNOLOGY RIGHTS that might conflict with the right granted to FSI
under this Agreement, Silicon Valley Bank has executed the consent agreement
attached hereto as Exhibit A.
3.2 Subject to Paragraph 3.1, YIELDUP represents and warrants that it
is the owner of the entire right, title, and interest of LICENSED TECHNOLOGY
RIGHTS and that it has full right and power to grant the rights set forth in
this Agreement.
3.3 Subject to Paragraph 3.1, YIELDUP represents and warrants that it
has no agreements with or obligations to third parties, or any other
commitments, obligations, or liens, mortgages or encumbrances of any kind or
nature whatsoever which may diminish or limit in any manner the rights granted
to FSI under this Agreement.
4
5
ARTICLE IV: COMPENSATION PAID BY FSI TO YIELDUP
In consideration for the license grants and rights granted by YIELDUP
to FSI under this Agreement, FSI shall pay YIELDUP a sum of [***CONFIDENTIAL
TREATMENT REQUESTED; PORTION OMITTED FILED SEPARATELY WITH THE SEC***] as
payment in full for such grants and rights. Such sum shall be paid by FSI to
YIELDUP as follows:
[***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED SEPARATELY
WITH THE SEC***]
Each such payment listed above shall be made by wire transfer of immediately
available funds in accordance with reasonable written instructions provided by
YIELDUP to FSI. No other payments shall be due or payable to YIELDUP hereunder
by FSI or any authorized assignee, sublicensee, or other transferee of FSI
except for royalty payments as provided for in Sections 9.5(b) and (c), 9.7(b),
and 9.8 of this Agreement.
ARTICLE V: PATENT COSTS AND MARCH IN RIGHTS
5.1 Subject to Paragraphs 5.2 and 5.3, the filing, prosecution, and
maintenance of YIELDUP PATENT RIGHTS and IMPROVEMENT PATENT RIGHTS and the costs
thereof shall be the responsibility of YIELDUP.
5.2 In the event that YIELDUP elects, during the term of this
Agreement, not to file, prosecute, or maintain any patent, patent application,
or counterpart thereof constituting YIELDUP PATENT RIGHTS or IMPROVEMENT PATENT
RIGHTS, YIELDUP shall provide at least twenty (20) days advance written notice
of such election to FSI before any lapse of such rights would occur in order to
provide FSI the opportunity to continue to file, prosecute, or maintain such
patent, patent application, or counterpart thereof. If FSI, in its sole
discretion, elects to continue to file, prosecute, or maintain such patent,
patent application, or counterpart thereof, YIELDUP agrees to assign all of its
interest in and to such patent, patent application, or counterpart thereof to
FSI.
5.3 In the event that YIELDUP assigns any interest in any patent
application, patent, or counterpart thereof to FSI pursuant to Paragraph 5.2,
YIELDUP shall, during the term of this Agreement and thereafter, at the request
and expense of FSI, review, execute, acknowledge, verify, and deliver any and
all papers and do all other rightful acts, including the giving of testimony in
proceedings in which such patent application, patent, or counterpart thereof may
be involved or concerned, that FSI may consider to be necessary or proper to
secure to FSI the fullest rights to such patent application, patent, or
counterpart thereof in the United States and/or any foreign country or territory
of the world.
5
6
ARTICLE VI: ASSIGNMENT
6.1 If the merger contemplated by the Reorganization Agreement is
consummated or it is not consummated and the Buyback Option has expired, then
FSI shall have the right to assign, sublicense, or otherwise transfer all or a
portion of its rights under this Agreement, in whole or in part, to any spin-off
entity, acquired entity, merged entity, divestiture entity, or other form of
business organization that is a successor of the portion of FSI's business to
which this Agreement relates or to any corporation, firm, partnership,
proprietorship, or other form of business organization that owns more than 50%
of the stock of FSI entitled to vote for directors of FSI. In the event of any
transfer of rights under this Paragraph, FSI may reserve for itself all or a
portion of its rights under this Agreement.
6.2 Except as authorized in Paragraphs 2.1, 2.2, 2.3, and 6.1,
neither FSI nor any SUBSIDIARY shall have no right to assign or otherwise
transfer any of its rights in and to the LICENSED TECHNOLOGY RIGHTS, in whole or
in part, to any third party without the written consent of YIELDUP.
ARTICLE VII: CONFIDENTIALITY
7.1 The Recipient shall maintain, and will cause its employees to
maintain, the confidentiality of all CONFIDENTIAL INFORMATION received from the
Disclosing Party under this Agreement using the same care and safeguards with
respect to such CONFIDENTIAL INFORMATION as is used to maintain the
confidentiality of its own information of like character, but in no event less
than reasonable care. This obligation of confidentiality shall extend for the
longest period of (i) ten (10) years from the effective date of this Agreement,
or (ii) three (3) years from the expiration of this Agreement, or (iii) three
(3) years from the termination of this Agreement. CONFIDENTIAL INFORMATION
received under this Agreement shall be disclosed by the Recipient only to its
employees to whom disclosure is necessary to facilitate the purposes of this
Agreement. The Recipient warrants that all of its employees, agents,
consultants, or representatives who shall have access to CONFIDENTIAL
INFORMATION shall have been advised of their obligations under this Agreement.
Further, the Recipient warrants that all of its employees, agents, consultants,
or representatives who shall have access to CONFIDENTIAL INFORMATION are bound
by written agreements to maintain such information in confidence and not to use
such information except as expressly permitted herein.
7.2 As to any material or equipment submitted to the Recipient by the
Disclosing Party that is identified as CONFIDENTIAL INFORMATION by the
Disclosing Party, the Recipient shall not analyze such sample chemically,
microscopically, or in any other way that might reveal information other than
that which is apparent from unaided visual examination or from tests relating to
its performance, unless such analysis is reasonably required by the Recipient to
carry out the conversion process.
6
7
7.3 The obligations of confidentiality under this Agreement shall not
apply to CONFIDENTIAL INFORMATION that (a) is in the public domain without fault
of the Recipient, or (b) was known to the Recipient before receipt from the
Disclosing Party as demonstrated by written business records, or (c) is
independently developed by the Recipient, or (d) is disclosed to the Recipient
by a third party without restriction, or (e) is inherently disclosed in
connection with the marketing, selling, leasing, distributing, using,
maintaining, or operating of LICENSED PRODUCTS or the practice of LICENSED
METHODS.
7.4 The title to all CONFIDENTIAL INFORMATION provided to the
Recipient by the Disclosing Party shall remain vested in the Disclosing Party.
If the Disclosing Party requests the return of any tangible CONFIDENTIAL
INFORMATION, the Recipient shall return all such CONFIDENTIAL INFORMATION to the
Disclosing Party within thirty (30) days following the Disclosing Party's
request. However, the Recipient may retain in the office of its legal counsel
one copy of written information for record purposes only.
7.5 The Recipient shall not be liable for disclosure of CONFIDENTIAL
INFORMATION in compliance with any governmental statute, regulation, order, or
decree of a court or other governmental body; provided, however, that the
Recipient shall give reasonable notice to the Disclosing Party before the
Recipient's compliance with such statute, regulation, order, or decree.
7.6 A Recipient shall adhere to the U.S. Export Administration Laws
and Regulations and shall not export or re-export any technical data or products
received from the Disclosing Party or the direct product of such technical data
to any proscribed country listed in the U.S. Export Administration Regulations
unless properly authorized by the U.S. Government.
ARTICLE VIII: ENFORCEMENT
8.1 In the event that YIELDUP or FSI becomes aware of any
infringement or possible infringement of any LICENSED TECHNOLOGY RIGHTS in the
field of MICROELECTRONIC PRODUCTS and/or MICROELECTRONIC EQUIPMENT by an
unlicensed third party (the Infringing Party), YIELDUP or FSI, as the case may
be, shall promptly notify the other in writing regarding such infringement or
possible infringement. The notice shall include, if known, the name and address
of the Infringing Party, the alleged acts of infringement, and a summary of the
factual evidence supporting such claim of infringement, the names and phone
numbers of individuals possessing knowledge of the foregoing facts.
8.2 Within ninety (90) days of the date that a party provides notice
of infringing activity to the other party pursuant to Paragraph 8.1, YIELDUP
shall have the right in the first instance to initiate, prosecute, and control
any infringement litigation against an Infringing Party. YIELDUP shall notify
FSI in advance in writing of the intent of YIELDUP to bring or
7
8
not bring any such action. After such ninety (90) day period, or upon receipt of
notice that YIELDUP elects not to bring an action against the Infringing Party,
FSI shall have the right to initiate, prosecute, and control any infringement
action against an Infringing Party in the name of YIELDUP as desired by FSI
and/or as required by law. FSI shall notify YIELDUP in advance in writing of the
intent of FSI to bring or not bring any such action.
8.3 Subject to Paragraphs 8.4, 8.5, 8.6, and 8.7, any action brought
by one party (the "Acting Party") against an Infringing Party shall be at the
expense of the Acting Party, and any recoveries gained in such Action shall be
entirely that of the Acting Party. Further, the Acting Party may initiate any
such Action in its own name, in the name of the other party (the "Non-Acting
Party"), or in the name of both parties, as required by law.
8.4 Upon request of the Acting Party and at the expense of the Acting
Party, the Non-Acting Party shall participate in any such Action, including (if
necessary) joinder as a party. If not requested by the Acting Party, the
Non-Acting Party may elect to participate in any such Action at the Non-Acting
Party's own expense. Whether such participation occurs upon request of the
Acting Party, or upon election by the Non-Acting Party, the Non-Acting Party
shall have a duty to cooperate reasonably with the Acting Party. Such
cooperation shall include cooperation to maximize the maintenance of all
attorney-client, work product, and joint defense privileges , and the parties
shall each instruct their respective counsel accordingly. As a condition of any
participation, the Non-Acting Party shall agree to be signatory to and be bound
by any protective order that might be entered by a court or stipulated to
between the Acting Party and the other party or parties.
8.5 Notwithstanding the right or obligation of the Non-Acting Party
to participate in an Action, the Acting Party shall retain control of any such
Action, including therefore the sole right to select, retain, and direct
counsel, and to make any and all decisions with respect to claims, defenses,
counterclaims, settlement, and strategy. However, the Acting Party shall, as is
reasonable, provide the Non-Acting Party with the opportunity to comment and
offer suggestions during the course of any such Action and shall, as is
reasonable, keep the Non-Acting Party informed of all developments in the
Action.
8.6 For some actions, the Acting and/or Non-Acting Party may desire
to share the expenses, recoveries, and/or liabilities that may result from an
action against an Infringing Party. Accordingly, upon the request of either the
Acting or Non-Acting Party, the parties shall negotiate in good faith to
determine how and if such expenses, recoveries, and/or liabilities would be
shared. Under no circumstances, however, can the Non-Acting Party have any
obligation, without the express written consent of the Non-Acting Party, to
enter into an agreement to share such expenses, recoveries, and/or liabilities.
Pursuant to such negotiations, the parties may also mutually agree, each acting
in its own discretion, to jointly institute an action against an Infringing
Party. In such event, the parties shall bear all expenses on an agreed upon
basis and shall share all recoveries on an agreed upon basis.
8
9
8.7 Neither party shall settle any action against any Infringing
Party in any manner that diminishes the rights of the other party without the
prior, written consent of the other party.
8.8 Any information provided to one party by the other party that
relates to an action against an Infringing Party shall be treated by the one
party as CONFIDENTIAL INFORMATION of the other party.
ARTICLE IX: TERM AND TERMINATION
9.1 Unless otherwise terminated by one or both parties as expressly
authorized in this Agreement, the term of this Agreement with respect to YIELDUP
PATENT RIGHTS and IMPROVEMENT PATENT RIGHTS shall expire at the end of the
enforceable term of the last to expire of licensed YIELDUP PATENT RIGHTS and
IMPROVEMENT PATENT RIGHTS. The term of this Agreement with respect to YIELDUP
KNOW-HOW shall continue in full force and effect unless earlier terminated as
expressly authorized in this Agreement. If the merger contemplated by the
Reorganization Agreement is consummated, then the licenses granted in this
Agreement shall become fully paid-up as of the date of consummation of the
merger.
9.2 YIELDUP shall have the right to terminate this Agreement in its
entirety in the event of a material breach by FSI of this Agreement, provided,
however, that YIELDUP must first provide FSI with sixty (60) days written notice
of such intent to terminate that clearly identifies the alleged breach at issue.
If FSI cures the breach, or can reasonably demonstrate that no breach has
occurred within such sixty (60) day period, then this Agreement shall remain in
full force and effect as if no such notice and/or breach had occurred. Any
sublicense granted under Paragraph 2.3 or any transfer made under Paragraph 6.1
shall also be terminated in the event that YIELDUP cancels this Agreement under
this Paragraph.
9.3 FSI shall have the right to terminate this Agreement in its
entirety, with or without cause, upon sixty (60) days written notice to YIELDUP.
9.4 Any obligation that accrued prior to any termination or
expiration of this Agreement shall survive such termination or expiration in
accordance with the terms of this Agreement applicable to such obligation.
9.5 (a) If the Reorganization Agreement is terminated by YIELDUP in
accordance with Section 8.01 of the Reorganization Agreement as a result of a
material breach by FSI, then YIELDUP shall have the right to terminate and
repurchase this License Agreement in its entirety as follows:
9
10
(i) YIELDUP shall provide FSI with written notice of the
termination and repurchase of the License Agreement within ninety (90) days of
the notice of termination of the Reorganization Agreement has been provided to
FSI.
(ii) Subject to Paragraph 9.6 of this Agreement, the notice
of termination of this Agreement must be accompanied by a termination fee equal
to the dollar amount previously paid by FSI pursuant to Article IV of this
Agreement, tendered in immediately available funds in the form of a cashier's
check or a wire transfer.
(b) If YIELDUP does not exercise its right to terminate and
repurchase the License pursuant to Section 9.5(a), then FSI shall pay YIELDUP a
royalty of [***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED
SEPARATELY WITH THE SEC***] of the NET SALES PRICE of ROYALTY PRODUCTS sold
during each "Calendar Quarter" (January 1, April 1, July 1, and October 1),
within forty-five (45) days after the end of such quarter commencing with the
first full calendar quarter occurring after such termination of the
Reorganization Agreement. This License shall be fully paid up once FSI has paid
YIELDUP [***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED SEPARATELY
WITH THE SEC***].
(c) If the Reorganization Agreement is terminated by FSI in
accordance with Section 8.01 of the Reorganization Agreement as a result of a
material breach by YIELDUP thereunder, then YIELDUP shall not have the option to
purchase back the licenses granted in this Agreement and FSI shall pay YIELDUP a
royalty of [***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED
SEPARATELY WITH THE SEC***] of the NET SALES PRICE for ROYALTY PRODUCTS sold
during each "Calendar Quarter" (January 1, April 1, July 1, and October 1),
within forty-five (45) days after the end of such quarter commencing with the
first full calendar quarter occurring after such termination of the
Reorganization Agreement. If the event described in this Section 9.5(c) occurs,
then this license shall be fully paid up once FSI has paid YIELDUP
[***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED SEPARATELY WITH THE
SEC***].
9.6 YIELDUP shall have the right to offset any damages payment
required of FSI under Section 8.02(b) of the Reorganization Agreement, if
applicable, against the termination fee of Paragraph 9.5(a)(ii) such that
YIELDUP would only be required to tender a net termination fee to FSI of the
amount paid by FSI under Article IV of this Agreement less the amount of the
damages payment under Section 8.02(b) of the Reorganization Agreement. If
YIELDUP elects to make such an offset, YIELDUP shall expressly indicate such
election in the notice of termination provided to FSI under Paragraph 9.5(a).
9.7 (a) If the Reorganization Agreement is terminated by either FSI
or YIELDUP in accordance with Section 8.01 of the Reorganization Agreement,
other than as a result of a material breach thereunder by either party or
pursuant to Section 8.01(d) or (e) of the Reorganization Agreement YIELDUP shall
have the right to terminate and repurchase this
10
11
License Agreement in its entirety by providing FSI with written notice of such
termination within ninety (90) days after the termination of the Reorganization
Agreement, and the notice of termination must be accompanied by a termination
fee of the sum of [***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED
SEPARATELY WITH THE SEC***] plus all amounts paid by FSI under Article IV of
this Agreement, tendered in immediately available funds in the form of a
cashiers check or a wire transfer.
(b) If YIELDUP fails to exercise its Buyback Option, then FSI
shall pay YIELDUP a royalty of [***CONFIDENTIAL TREATMENT REQUESTED; PORTION
OMITTED FILED SEPARATELY WITH THE SEC***] of the NET SALES PRICE of ROYALTY
PRODUCTS sold during each Calendar Quarter, within forty-five (45) days after
such Calendar Quarter, commencing with the first full calendar quarter after
such termination of the Reorganization Agreement. This license shall be fully
paid up once FSI has paid YIELDUP [***CONFIDENTIAL TREATMENT REQUESTED; PORTIOn
OMITTED FILED SEPARATELY WITH THE SEC***].
9.8 If the Reorganization Agreement is terminated in accordance with
Section 8.01(d) or 8.01(e) of the Reorganization Agreement (and provided that
YIELDUP shall not have materially breached the Reorganization Agreement), then
YIELDUP shall not have the option to terminate and repurchase this License
Agreement and FSI shall pay YIELDUP a royalty under this Section 9.8. The
royalties due YIELDUP by FSI for each Calendar Quarter shall be due within
forty-five (45) days after each Calendar Quarter commencing with the first full
calendar quarter after such termination of the Reorganization Agreement
according to the following schedule:
(a) FSI shall pay YIELDUP [***CONFIDENTIAL TREATMENT REQUESTED;
PORTION OMITTED FILED SEPARATELY WITH THE SEC***] of the NET SALES PRICE of
ROYALTY PRODUCTS until net sales of ROYALTY PRODUCTS in aggregate total
[***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED SEPARATELY WITH THE
SEC***];
(b) FSI shall pay YIELDUP [***CONFIDENTIAL TREATMENT REQUESTED;
PORTION OMITTED FILED SEPARATELY WITH THE SEC***] of the NET SALES PRICE of
ROYALTY PRODUCTS for the net aggregate sales of ROYALTY PRODUCTS greater than
[***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED SEPARATELY WITH THE
SEC***];
(c) FSI shall pay YIELDUP [***CONFIDENTIAL TREATMENT REQUESTED;
PORTION OMITTED FILED SEPARATELY WITH THE SEC***] of the NET SALES PRICE of
ROYALTY PRODUCTS for the net aggregate sale of ROYALTY PRODUCTS greater than
[***CONFIDENTIAL TREATMENT REQUESTED; PORTION OMITTED FILED SEPARATELY WITH THE
SEC***]. This license shall be fully paid up under this Section 9.8 once FSI has
paid
11
12
YIELDUP [***CONFIDENTIAL TREATMENT REQUESTED; PORTIOn OMITTED FILED SEPARATELY
WITH THE SEC***].
ARTICLE X: MISCELLANEOUS PROVISIONS
10.1 NOTICES. Except for the cancellation notice and payment of the
cancellation fee by YIELDUP pursuant to Paragraph 9.2, any notices or
communications under this Agreement shall be in writing and shall be deemed to
have been duly given by either party to the other on the date hand-delivered,
sent by telex, facsimile, or mailed first class, postage prepaid, and sent to
the address or place of business of the other party as shown below.
TO YIELDUP:
President and CEO
YIELDUP INTERNATIONAL CORPORATION
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
TO FSI:
General Counsel
FSI INTERNATIONAL, INC.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
The parties shall promptly provide written notice of any change of address to
the other party.
10.2 FORCE MAJEURE. Neither of the parties hereto shall be liable to
the other party or be deemed to be in default under this Agreement if its
performance is prevented in whole or in part by a Force Majeure, including but
not limited to, strikes, accidents, rebellions, blockades, riots, storms, fires,
explosions, acts of God, war, sabotage, any law or administrative ruling of any
government or political subdivision thereof having jurisdiction over such part,
or any other cause similar thereto which is beyond the reasonable control of the
party whose performance is prevented in whole or in part; provided, however,
that if the failure or delay in performance by a party persists continuously for
a period of six (6) months or more, the other party may cancel or terminate this
Agreement, in its entirety, by giving thirty (30) days written notice to the
non-performing party.
10.3 GOVERNING LAW. This Agreement shall be construed in accordance
with the laws of the State of Minnesota, without regard to application of the
principles of conflicts of law.
10.4 ENTIRE AGREEMENT. This Agreement contains the complete and entire
agreement between the parties hereto relating to the subject matter hereof, and
supersedes any previous communications, representations, or agreements, whether
verbal or written.
12
13
10.5 AMENDMENT. No change, addition, waiver, amendment, or
modification of any of the terms of conditions hereof shall be valid or binding
on either party unless in writing and signed by an officer of an authorized
representative of both parties.
10.6 SEVERABILITY. The provisions of this Agreement shall be deemed
separable. Additionally, the parties hereto expressly agree that it is not the
intent of either party to violate any of the state or federal public policies,
statutes, or common laws of the United States. It is the intent of both parties
to make this Agreement binding only to the extent that it may lawfully be done
under existing state and federal laws of the United States, whichever may be
applicable. Therefore, if any part of this Agreement is rendered void, invalid,
or unenforceable, or is judged to be in violation of any state or federal law of
the United States, such rendering or judgment shall not affect the validity or
enforceability of the remainder of this Agreement; provided that if the part or
parts which are void, invalid, or unenforceable as aforesaid shall substantially
impair the value of this whole Agreement to either party, that party may cancel
and terminate this Agreement, in its entirety, by giving thirty (30) days
written notice to the other party.
10.7 WAIVER. A failure of either party to enforce any of the
provisions of this Agreement of any rights with respect thereto or to exercise
any election provided for herein, shall in no way be considered a waiver of such
provisions, rights, or elections or in any way to influence the validity of this
Agreement. No term or provisions hereof shall be deemed waived and no breach
excused or consented to, unless such waiver or consent shall be in writing and
signed by the party claimed to have waived or consented. The failure by a party
hereto to enforce any of said provisions, rights, or elections shall not
preclude or prejudice that party from alter enforcing or exercising the same or
in any other provisions, rights, or elections which it may have under this
Agreement. Any consent by any party to, or waiver of, a breach by the other,
whether express or implied, shall not constitute a consent or waiver of, or
excuse for any other different or subsequent breach. All remedies herein
conferred upon any party shall be cumulative and no one shall be exclusive of
any other remedy conferred by law or equity.
10.8 TIME OF THE ESSENCE. Time is of the essence in the performance of
each and every obligation and covenant imposed by this Agreement.
10.9 THIRD PARTY BENEFICIARIES. No third party, including any employee
of either party of this Agreement, shall have or acquire any rights as a third
party beneficiary by reason of this Agreement.
10.10 NO AGENCY OR PARTNERSHIP. Nothing contained in this Agreement
shall give either party the right to bind the other, or be deemed to constitute
the parties as agents for the other or as partners with each other or any third
party.
13
14
10.11 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, all of which shall be considered one and the same agreement and
shall become effective when two or more counterparts have all been signed by
each of the parties and delivered to the other parties, it being understood that
all parties need not sign the same counterpart. Facsimile signatures shall be
deemed original signatures.
YIELDUP INTERNATIONAL FSI INTERNATIONAL, INC.
CORPORATION
By: /s/ ▇▇▇ ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
------------------------------------------- ------------------------------------------
Printed Name: ▇▇▇ ▇▇▇▇▇▇▇▇ Printed Name: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
--------------------------------- --------------------------------
Title: President and Chief Executive Officer Title: Chief Financial Officer and Corporate
---------------------------------------- ---------------------------------------
Controller
-----------
Date: January 21, 1999 Date: January 21, 1999
---------------------------------------- ---------------------------------------
14