EXHIBIT 2.5
MASTER PATENT GRANTBACK LICENSE AGREEMENT
(MMI to MIL)
This Master Patent Grantback License Agreement (the "Agreement') is
effective as of March 31, 2001 (the "Effective Date"), between Millipore
Corporation, a Massachusetts corporation, having an office at ▇▇ ▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ("MIL") and Millipore MicroElectronics, Inc., a
Delaware corporation ("MMI"), having an ▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
WHEREAS, the Board of Directors of MIL has determined that it is in the
best interest of MIL and its stockholders to separate Millipore's existing
businesses into two independent businesses;
WHEREAS, as part of the foregoing, MIL and MMI, have entered into a Master
Separation and Distribution Agreement (as defined below) which provides, among
other things, for the separation of certain MMI assets and MMI liabilities, the
initial public offering of MMI stock, the distribution of such stock and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing;
WHEREAS, each of the parties have in the past used the same patented
technology in each of their businesses relating to membrane manufacture, filter
manufacture, filter design and other such commonly used inventions ("Commonly
Used Inventions");
WHEREAS, the parties deem that it is necessary for the successful operation
of each entity after the separation for each party to have the right to practice
to the Commonly Used Inventions in certain fields of use; and
WHEREAS in order to accomplish this, MMI agrees to grant back a license to
MIL for the Licensed Patents (as defined below) to the Commonly Used Inventions
in certain fields of use after the separation of the MMI business.
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. " Master Separation and
Distribution Agreement" means the Master Separation and Distribution Agreement
between the parties.
1.2 MIL Field of Use " means BIOPHARM including
pharmaceutical/biotechnology and genetic engineering companies as well as
manufacturers of cosmetics, medical devices, diagnostic products and clinical
analytical products; LAB & LIFE SCIENCE RESEARCH including government,
university and private research and testing analytical laboratories for
protenomic, genomic, microbiological, enviromental and other such areas; and
FOOD & BEVERAGE including companies that manufacture or process foods and
beverages including dairy products, beer, wine, juice and soft drink
manufacturers and bottled water companies.
1.3 MMI FIELD OF USE. "MMI Field of Use" means IC MANUFACTURERS including
companies that manufacture integrated circuits, semiconductors, semiconductor
chips and other microelectronics components, flat panel displays, fiber optic
cables, optical coatings and solar cells; IC OEM EQUIP & MATERIALS MANUFACTURING
including companies that manufacture equipment for the fabrication and
processing of semiconductors and integrated circuits for sale to IC
Manufacturing Companies as well as companies that integrate a number of
components into subsystems sold to OEM Equipment manufacturers for incorporation
into semiconductor fabrication equipment as well as Companies that manufacture,
process and supply liquids, gases, conductive materials and other advanced
materials to IC Manufacturers for use in fabrication process and which provide
products and systems to purify, monitor and control atmospheric conditions in
clean room manufacturting enviroments of the IC Manufacturing Industry and IC
RESEARCH LABORATORIES including university, government and commercial
laboratories and research operations that research and/or develop innovations in
the structure and composition of integrated circuits, the processes and
materials used to manufacture integrated circuits and new forms of integrated
circuits.
1.4 MMI LICENSED PATENTS. "MMI Licensed Patents" means those Patents and
Applications set forth in the Exhibit A hereto, any patents that issue from any
of the Applications or claiming priority from the Applications, any related
applications, divisionals, continuations, continuation-in-part, reissues or
reexaminations of the Patents and/or Applications.
1.5 MMI OPTIONED PATENTS. "MMI Optioned Patents" means those Patents and
Applications set forth in the Exhibit B hereto, any patents that issue from any
of the Applications or claiming priority from the Applications, any related
applications, divisionals, continuations, continuation-in-part, reissues or
reexaminations of the Patents and/or Applications.
1.6 PERSON. "Person" means an individual, a partnership, a corporation, a
limited liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization, and a governmental entity or any
department, agency or political subdivision thereof.
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1.7 SEPARATION DATE. "Separation Date" means March 31, 2001, or such other
date as may be fixed by the Board of Directors of Millipore Corporation.
1.8 SUBSIDIARY. "Subsidiary" of any Person means a corporation or other
organization whether incorporated or unincorporated of which at least a majority
of the securities or interests having by the terms thereof ordinary voting power
to elect at least a majority of the board of directors or others performing
similar functions with respect to such corporation or other organization is
directly or indirectly owned or controlled by such Person or by any one or more
of its Subsidiaries, or by such Person and one or more of its Subsidiaries;
provided, however, that no Person that is not directly or indirectly wholly-
owned by any other Person shall be a Subsidiary of such other Person unless such
other Person controls, or has the right, power or ability to control, that
Person. For purposes of this Agreement, MMI shall be deemed not to be a
subsidiary of MIL.
1.9 THIRD PARTY. "Third Party" means a Person other than MIL and its
Subsidiaries and MMI and its subsidiaries.
1.10 PRODUCTS "Products" shall mean any product made sold or otherwise
disposed of by MIL in the MIL Field of Use.
ARTICLE 2
LICENSES
2.1 EXCLUSIVE LICENSE GRANT. MMI grants to MIL a personal, irrevocable,
exclusive, worldwide, fully-paid, royalty-free and non-transferable (except as
set forth in Section 8.10) license to use the MMI Licensed Patents ( as set
forth in Exhibit A) to make, have made, use, sell or otherwise dispose of
Products in the MIL Field of Use.
2.2 OPTION TO LICENSE. MMI grants to MIL a personal, irrevocable, exclusive
option for a period of five (5) years from the date of this agreement to elect
to obtain a license under one or more of the MMI Optioned Patents(as set forth
in Exhibit B). It is contemplated that more than option election may be
exercised during this time period. If any such an option is exercised, the
license granted shall be personal, irrevocable, exclusive, worldwide, no upfront
fee, with a 5% royalty based on Net Sales and non-transferable (except as set
forth in Section 8.10) to use the MMI Optioned Patent(s) to make, have made,
use, sell or otherwise dispose of Products in the MIL Field of Use.
2.3 LICENSE RESTRICTIONS.
(a) MIL shall not use the MMI Licensed Patents in connection with any
products or services other than in the MIL Field of Use.
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(b) MIL shall not (i) misrepresent to any Person the scope of its
authority under this Agreement, (ii) incur or authorize any expenses or
liabilities chargeable to MMI, or (iii) take any actions that would impose upon
MMI any obligation or liability to a Third Party other than obligations under
this Agreement, or other obligations which MMI expressly approves in writing for
MIL to incur on its behalf.
2.4 RESERVATION OF RIGHTS. Except as otherwise expressly provided in this
Agreement, MMI shall retain all rights in and to the MMI Licensed Patents,
including without limitation:
(a) All rights of ownership in and to the MMI Licensed Patents;
(b) The right to use (including the right of MMI's Subsidiaries to
use) the MMI Licensed Patents, in all fields of use except for
the MIL Field of Use; and
(c) The right to license Third Parties to use the MMI Licensed
Patents except in the MIL Field of Use.
ARTICLE 3
PERMITTED SUBLICENSES BY MIL
3.1 SUBLICENSES TO SUBSIDIARIES. Subject to the terms and conditions of
this Agreement, MIL may grant sublicenses to its Subsidiaries to use the MMI
Licensed Patents in accordance with the license grants in Sections 2.1 and 2.2
above; provided that (i) MIL enters into a written sublicense agreement with
each such Subsidiary sublicensee, and (ii) such agreement does not include the
right to grant further sublicenses other than in the case of a sublicensed
Subsidiary of MIL, to another Subsidiary of MIL. MIL shall provide copies of
such written sublicense agreements to MIL upon request. If MIL grants any
sublicense rights pursuant to this Section 3.1 and any such sublicensed
Subsidiary ceases to be a Subsidiary, then the sublicense granted to such
Subsidiary pursuant to this Section 3.1 shall terminate 180 days from the date
of such cessation.
3.2 ENFORCEMENT OF SUBLICENSE AGREEMENTS. MIL shall take all appropriate
measures at MIL's expense promptly and diligently to enforce the terms of any
sublicense agreement or other agreement with any Subsidiary and shall restrain
any such Subsidiary from violating such terms, including without limitation (i)
monitoring the Subsidiaries' compliance with the terms and conditions of this
Agreement and causing any noncomplying Subsidiary promptly to remedy any
failure, (ii) terminating such agreement and/or (iii) commencing legal action,
in each case, using a standard of care consistent with MIL's practices as of the
Separation Date. In the event that MMI determines that MIL has failed promptly
and diligently to enforce the terms of any such agreement using such standard of
care, MMI reserves the right to enforce such terms, and MIL shall reimburse
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MMI for its fully allocated direct costs and expenses incurred in enforcing such
agreement, plus all out-of-pocket costs and expenses, plus five percent (5%).
ARTICLE 4
PROTECTION OF LICENSED PATENTS
4.1 OWNERSHIP AND RIGHTS. To the extent not contrary to applicable law, MIL
agrees not to challenge the ownership or validity of the MMI Licensed Patents or
MMI Optioned Patents. MIL shall not disparage or adversely affect the validity
of the MMI Licensed Patents or MMI Optioned Patents. MIL shall not acquire or
assert any ownership rights therein.
4.2 PROTECTION OF PATENTS. MIL shall assist MMI, at MMI's request and
expense, in the procurement and maintenance of MMI's intellectual property
rights in the Licensed Patents. MIL will not grant or attempt to grant a
security interest in the Licensed Patents, or to record any such security
interest in the United States Patent and Trademark Office or elsewhere, against
any MMI Licensed Patent. MMI makes no warranty or representation that the
Licensed Patents will be secured or maintained anywhere within the world.
4.3 INFRINGEMENT PROCEEDINGS. (a) In the event that the MIL Patent Counsel
learns of any infringement or threatened infringement of the Licensed Patents,
MIL shall notify MMI or its authorized representative in writing giving
particulars thereof ("Notice"), and MIL shall provide necessary information and
assistance to MMI or its authorized representatives at MIL's expense to assist
MMI or its authorized representatives in determining whether proceedings should
be commenced. Notwithstanding the foregoing, MMI is not obligated to monitor or
police use of the Licensed Patents by Third Parties.
(b) Within sixty (60) days of the Notice, MMI shall inform MIL in writing
of its decision whether to commence proceedings against the third party for
infringement of the Licensed Patent ("Decision"). If MMI elects to commence
proceedings, it shall do so with ninety (90) days of its Decision. In the event
that MMI commences proceedings, MMI shall have exclusive control of the decision
whether to bring, maintain or settle any such proceedings, said proceedings
shall be at the exclusive option and expense of MMI, and all recoveries shall
belong exclusively to MMI. MIL shall provide reasonable assistance to MMI in the
prosecution of the proceedings as may be requested by MMI or its authorized
representatives. MMI shall incur no liability to MIL or any other Person under
any legal theory by reason of MMI's failure or refusal to prosecute or by MMI's
refusal to permit MIL to prosecute, any alleged infringement by Third Parties,
nor by reason of any settlement to which MMI may agree.
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(c) In the event that MMI in its Decision elects not to commence
proceedings or fails to commence proceedings within the ninety (90) days of the
Decision, then MIL may at its election, elect to initiate proceedings against
the third party in its own name ("Election"). MIL shall provide MMI of written
notice of this Election at least thirty (30) days before commencing proceedings.
MMI agrees to be named as a necessary party if required by law and to provide
reasonable assistance to MIL in the prosecution of the proceedings as may be
requested by MIL or its authorized representatives. MIL shall have exclusive
control of the decision whether to bring, maintain or settle any such
proceedings, said proceedings shall be at the exclusive option and expense of
MIL, and all recoveries shall belong exclusively to MIL. Any settlement made by
MIL that would effect any right outside of the MIL Field of Use shall be
approved by MMI prior to the execution of such settlement with agreed upon
sharing of the settlement proceeds between MIL and MMI based on the fields of
use. MMI reserves the right to refuse to approve any settlement which involves
rights within the MMI Field of Use.
ARTICLE 5
TERMINATION
5.1 TERM. This Agreement shall remain in effect until the last of the
patents licensed hereunder shall expire or otherwise be terminated, unless this
Agreement is earlier terminated as provided below.
5.2 VOLUNTARY TERMINATION. By written notice to MMI, MIL may voluntarily
terminate all or a specified portion of the licenses and rights granted to it
hereunder by MMI. Such notice shall specify the effective date of such
termination and shall clearly specify any affected Licensed Patents.
5.3 SURVIVAL. Any termination of licenses and rights of MIL under Section
5.2 shall not affect MIL's licenses and rights with respect to any Products made
or sold prior to such termination.
5.4 OTHER TERMINATION. This Agreement, the Master Separation Agreement and
all other Ancillary Agreements may be terminated at any time prior to the IPO
Closing Date by and in the sole discretion of MIL without the approval of MMI.
This Agreement may be terminated at any time after the IPO Closing Date and
before the Distribution Date by mutual consent of MIL and MMI. In the event of
termination pursuant to this Section 5.4, no party shall have any liability of
any kind to the other party.
ARTICLE 6
DISPUTE RESOLUTION
6.1 USE AND INITIATION OF PROCEDURE. In the event of a dispute between the
parties arising out of or related to this Agreement (the "Dispute"), the parties
hereto agree to use the alternative dispute resolution procedures specified in
this section (the "Procedure") in good faith in order to resolve such dispute.
The Procedure may be modified by written agreement of the parties at the time
the Dispute arises. A party
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seeking to initiate the Procedure shall give written notice to the other party,
describing briefly the nature of the dispute and its claim and identifying an
individual with authority to settle the dispute on its behalf. The party
receiving such notice shall have five (5) days within which to designate, in a
written notice given to the initiating party, an individual with authority to
settle the dispute on its behalf. Neither of such authorized individuals shall
have had direct substantive involvement in the matters involved in the Dispute.
6.2 UNASSISTED SETTLEMENT. The authorized individuals shall make such
investigation as they deem appropriate and thereafter promptly (but in no event
later than thirty (30) days from the date of the initiating party's notice)
shall commence discussions concerning resolution of the Dispute. If the Dispute
has not been resolved within thirty (30) days from the commencement of
discussions, it shall be submitted to alternative dispute resolution ("ADR") in
accordance with the provisions of Sections 6.3 through 6.10 hereof.
6.3 SELECTION OF NEUTRAL. The parties shall have ten (10) days
following the submission of the Dispute to ADR in accordance with Section 6.2
above to agree upon a mutually-acceptable person not affiliated with either of
the parties (the "Neutral"). If no Neutral has been selected within such time,
the parties agree jointly to request the American Arbitration Association, the
Center for Public Resources, or another mutually agreed-upon provider of
neutral services to supply within ten (10) days a list of potential Neutrals
with qualifications as specified by the parties in the joint request. Within
five (5) days of receipt of the list, the parties shall independently rank the
proposed candidates, shall simultaneously exchange rankings, and shall select as
the Neutral the individual receiving the highest combined ranking who is
available to serve.
6.4 TIME AND PLACE FOR ADR. In consultation with the Neutral, the
parties shall promptly designate a mutually convenient time and place for the
ADR (and unless circumstances require otherwise, such time to be not later than
forty-five (45) days after selection of the Neutral).
6.5 EXCHANGE OF INFORMATION. In the event either of the parties has
substantial need for information in the possession of the other party in order
to prepare for the ADR, the parties shall attempt in good faith to agree on
Procedures for the expeditious exchange of such information, with the help of
the Neutral if required.
6.6 SUMMARY OF VIEWS. One week prior to the first scheduled session
of the ADR, each party shall deliver to the Neutral and to the other party a
concise written summary of its views on the matter in Dispute.
6.7 STAFFING THE ADR. In the ADR, each party shall be represented by
the authorized individual and by counsel. In addition, each party may bring
such additional persons as needed to respond to questions, contribute
information and participate in the negotiations, the number of such additional
persons to be agreed upon by the parties in advance, with the assistance of the
Neutral, if necessary.
6.8 CONDUCT OF ADR. The parties, in consultation with the Neutral,
will agree upon a format for the meetings, designed to assure that both the
Neutral and the authorized
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individuals have an opportunity to hear an oral presentation of each party's
views on the matter in Dispute, and that the authorized parties attempt to
negotiate a resolution of the matter in Dispute, with or without the assistance
of counsel or others, but with the assistance of the Neutral. To this end, the
Neutral is authorized to conduct both joint meetings and separate private
caucuses with the parties. The Neutral will keep confidential all information
learned in private caucus with either party unless specifically authorized by
such party to make disclosure of the information to the other party.
6.9 THE NEUTRAL'S VIEWS. The Neutral (I) shall, unless requested not
to do so by both parties, provide his opinion to both parties on the probable
outcome should the matter be litigated, and (II) shall make one or more
recommendations as to the terms of a possible settlement, upon any conditions
imposed by the parties (including, but not limited to, a minimum and maximum
amount). The Neutral shall base his opinions and recommendations on information
available to both parties, excluding such information as may be disclosed to him
by the parties in confidence. The opinions and recommendations of the Neutral
shall not be binding on the parties.
6.10 TERMINATION OF PROCEDURE. The parties agree to participate in the
ADR in good faith to its conclusion (as designated by the Neutral) and not to
terminate negotiations concerning resolution of the matters in Dispute until at
least ten (10) days thereafter. Each party agrees not to commence any other
proceeding or to seek other remedies prior to the conclusion of the ten-day
post-ADR negotiation period; PROVIDED, HOWEVER, that either party may commence
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litigation within five (5) days prior to the date after which the commencement
of litigation could be barred by an applicable statute of limitations or in
order to request an injunction to prevent irreparable harm, in which event, the
parties agree (except as prohibited by court order) to nevertheless continue to
participate in the ADR to its conclusion.
6.11 FEES OF NEUTRAL; DISQUALIFICATION. The fees of the Neutral
shall be shared equally by the parties. The Neutral shall be disqualified as a
witness, consultant, expert or counsel for either party with respect to the
matters in Dispute and any related matters in any subsequent litigation or other
proceeding with respect to the Dispute.
6.12 CONFIDENTIALITY. The parties agree that the Procedure and the
ADR are compromise negotiations for purposes of the Federal Rules of Evidence
and the Rules of Evidence of any state of competent jurisdiction. The entire of
the Procedure and the ADR are confidential, and no stenographic, visual or audio
record shall be made. All conduct, statements, promises, offers, views and
opinions, whether oral or written, made in the course of the Procedure or the
ADR by either of the parties, their agents, employees, representatives, or other
invitees and by the Neutral (who will be the parties' joint agent for purposes
of these compromise negotiations) are confidential and shall, in addition and
where appropriate, be deemed to be work product and privileged. Such conduct,
statements, promises, offers, views and opinions shall not be discoverable or
admissible for any purposes, including impeachment, in any litigation or other
proceeding involving the parties, and shall not be disclosed to anyone not an
agent, employee, expert, witness, or representative of either of the parties;
provided, however, that evidence otherwise
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discoverable or admissible is not excluded from discovery or admission as a
result of its use in the ADR.
6.13 ARBITRATION. Any Dispute which the parties cannot resolve
through mediation within ninety (90) days following the commencement of the
Procedure, unless otherwise mutually agreed, shall be submitted to final and
binding arbitration under the then current Commercial Arbitration Rules of he
American Arbitration Association ("AAA"), by three (3) arbitrators in Boston,
Massachusetts. Such arbitrators shall be selected by the mutual agreement of
the parties or, failing such agreement, shall be selected according to the
aforesaid AAA rules. The arbitrators will be instructed to prepare and deliver
a written, reasoned opinion stating their decision within thirty (30) days of
the completion of the arbitration. The prevailing party in such arbitration
shall be entitled to expenses, including costs and reasonable attorneys' and
other professional fees, incurred in connection with the arbitration (but
excluding any costs and fees associated with prior ADR, negotiation or
mediation). The decision of the arbitrator shall be final and non-appealable
and may be enforced in any court of competent jurisdiction. The use of any ADR
procedures will not be construed under the doctrine of laches, waiver or
estoppel to adversely affect the rights of either party.
6.14 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed
in writing, the parties will continue to provide service and honor all other
commitments under this Agreement and each Ancillary Agreement during the course
of dispute resolution pursuant to the provisions of this Article IX with respect
to all matters not subject to such dispute, controversy or claim.
ARTICLE 7
LIMITAITON OF LIABILITY
IN NO EVENT SHALL MMI OR ITS SUBSIDIARIES BE LIABLE TO MIL OR ITS
SUBSIDIARIES FOR ANY SPECIAL, CONSIDQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE
DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, HOWEVER CAUSED AND ON ANY THEORY
OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT,
WHETHER OR NOT MMI HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES;
PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH PARTY'S
OBLIGATIONS EXPRESSLY ASSUMED IN THE SEPARATION AND DISTRIBUTION AGREEMENT;
PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY IN ANY
EVENT.
ARTICLE 8
MISCELLANEOUS PROVISIONS
8.1 DISCLAIMER. MIL ACKNOWLEDGES AND AGREES THAT ALL LICENSED PATENTS ARE
LICENSED OR PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER MMI NOR ANY OF ITS
SUBSIDIARIES MAKE ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER,
EXPRESS, IMPLIED OR STATUTORY, WITH
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RESPECT THERETO INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of the
foregoing, MMI makes no any warranty or representation as to the validity of any
Licensed Patent licensed by it to MIL or any warranty or representation that any
use of any Licensed Patent with respect to any product or service will be free
from infringement of any rights of any Third Party.
8.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the MMI Licensed Patents and MMI Optioned Patents.
MMI is not required hereunder to furnish or disclose to MIL any information
(including copies of the Patents), except as specifically provided herein.
8.3 INFRINGEMENT SUITS. MMI shall have no obligations hereunder to
institute any action or suit against Third Parties for infringement of any of
its Licensed Patents or to defend any action or suit brought by a Third Party
which challenges or concerns the validity of any of its Licensed Patents.
8.4 PATENT MARKING Neither party is obligated to ▇▇▇▇ any of its Products
made under one or more of the Licensed Patents with the appropriate U S Patent
Number nor is either party obligated to acknowledge that the Products are made
under licenses provided by the other party.
8.5 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither MMI, nor
any of its Subsidiaries is obligated to (i) file any application for patent of
any invention not currently the subject of a patent application, or to secure
any rights in any Patents, (ii) to maintain any Licensed Patent, or (iii)
provide any assistance, except for the obligations expressly assumed in this
Agreement.
8.6 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements (as defined in the
Master Separation and Distribution Agreement) and the Exhibits and Schedules
referenced or attached hereto and thereto constitute the entire agreement
between the parties with respect to the subject matter hereof and thereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof and
thereof. To the extent there is a conflict between this Agreement and the
General Assignment and Assumption Agreement between the parties, the terms of
this Agreement shall govern.
8.7 GOVERNING LAW. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the Commonwealth of
Massachusetts as applied to transactions taking place wholly within
Massachusetts
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between Massachusetts residents. The Superior Court of Middlesex County and/or
the United States District Court for the District of Massachusetts shall have
jurisdiction and venue over all Disputes between the parties that are permitted
to be brought in a court of law pursuant to Article 7 above.
8.8 DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in any
Exhibit or Schedule hereto and in the table of contents to this Agreement are
for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. Any capitalized term used in any Exhibit or
Schedule but not otherwise defined therein, shall have the meaning assigned to
such term in this Agreement. When a reference is made in this Agreement to an
Article or a Section, Exhibit or Schedule, such reference shall be to an Article
or Section of, or an Exhibit or Schedule to, this Agreement unless otherwise
indicated.
8.9 NOTICES. Notices, offers, requests or other communications required or
permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
if to MIL:
MiIlipore Corporation
▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
With a copy to:
General Counsel
MiIlipore Corporation
▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
if to MMI:
MiIlipore MicroElectronics Inc.
Patriots Park
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices shall be
deemed to have been given and received on the earlier of actual delivery or
three (3) days from the date of postmark.
8.10 NONASSIGNABILITY. MIL shall not, directly or indirectly, in whole or
in part, whether by operation of law or otherwise, assign or transfer this
Agreement, without MMI's prior written consent, and any attempted assignment,
transfer or delegation without such prior written consent shall be voidable at
the sole option of MMI; provided however, that
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MIL may assign all of its rights and obligations under this agreement to its
wholly owned subsidiary, Millipore Investment Holdings Limited without the prior
written permission of MMI. Notwithstanding the foregoing, MIL (or its permitted
successive assignees or transferees hereunder) may assign or transfer this
Agreement as a whole without consent to a Person that succeeds to all or
substantially all of the business or assets of such party as long as such Person
agrees to accept all the terms and conditions set forth herein. Without limiting
the foregoing, this Agreement will be binding upon and inure to the benefit of
the parties and their permitted successors and assigns.
8.11 SEVERABILITY. If any term or other provision of this Agreement is
determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule or law or public policy, all
other conditions and provisions of this Agreement shall nevertheless remain in
full force and effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
8.12 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or
delay on the part of either party hereto in the exercise of any right hereunder
shall impair such right or be construed to be a waiver of, or acquiescence in,
any breach of any representation, warranty or agreement herein, nor shall any
single or partial exercise of any such right preclude other or further exercise
thereof or of any other right. All rights and remedies existing under this
Agreement are cumulative to, and not exclusive of, any rights or remedies
otherwise available.
8.13 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such Agreement.
8.14 COUNTERPARTS. This Agreement, including the Ancillary Agreements and
the Exhibits and Schedules hereto and thereto and the other documents referred
to herein or therein, may be executed in counterparts, each of which shall be
deemed to be an original but all of which shall constitute one and the same
agreement.
8.15 AUTHORITY. Each of the parties hereto represents to the other that (a)
it has the corporate or other requisite power and authority to execute, deliver
and perform this Agreement, (b) the execution, delivery and performance of this
Agreement by it have been duly authorized by all necessary corporate or other
actions, (c) it has duly and validly executed and delivered this Agreement, and
(d) this Agreement is a legal, valid and binding obligation, enforceable against
it in accordance with its terms subject to applicable bankruptcy, insolvency,
reorganization, moratorium or other similar laws affecting creditors' rights
generally and general equity principles.
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WHEREFORE, the parties have signed this Master Patent License Agreement
effective as of the date first set forth above.
Millipore MicroElectronics, Inc. Millipore Corporation
By:_____________________ By:____________________
Name:___________________ Name:__________________
Title:____________________ Title:___________________
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EXHBIIT A
TO MASTER PATENT GRANTBACK LICENSE AGREEMENT
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