Exhibit 10.52.1


 


AMENDMENT
AGREEMENT


 


THIS AMENDMENT AGREEMENT made and entered
into this 28th day of December, 1990 by and among MITSUI TOATSU CHEMICALS,
INC., a corporation duly organized and existing under the laws of Japan, with
its principal office at 2-5 Kasumigaseki 3-chome, Chiyoda-ku, Tokyo, Japan
(hereinafter called “Mitsui”), MARUBENI CORPORATION, a corporation duly
organized and existing under the laws of Japan, with its principal office at
4-2, Ohtemachi 1-chome, Chiyoda-ku, Tokyo, Japan (hereinafter called
“Marubeni”), (collectively “Buyers”) and SOUTHWALL TECHNOLOGIES INC., a
corporation duly organized and existing under the laws of the State of
Delaware, with its principal office at 1029 Corporation Way, Palo Alto,
California 94303, U.S.A. (hereinafter called “Southwall”).


 


WITNESSETH:


 


WHEREAS, the parties hereto entered into a
certain MARKETING AND DISTRIBUTION AGREEMENT dated May 20, 1988 (hereinafter
called the “ORIGINAL AGREEMENT”) relating to the distribution by Mitsui and
Marubeni of the Southwall Products (as defined in the ORIGINAL AGREEMENT) in
the Territory (as defined in the ORIGINAL AGREEMENT);


 


WHEREAS, Mitsui and Southwall entered into a
license agreement dated December 28, 1990 (hereinafter called the “License
Agreement”) pursuant to which Southwall granted to Mitsui a license to produce
certain of the Southwall Products; and


 


WHEREAS, in connection with conclusion of the
License Agreement by Mitsui and Southwall, the parties hereto desire to amend
certain portions of the ORIGINAL AGREEMENT.


 


NOW, THEREFORE, in consideration of the
premises and mutual covenants contained herein, the parties hereto agree as
follows:


 


Article 1


 


Section 1.1 of the ORIGINAL AGREEMENT shall
be deleted in its entirety and replaced with the following:


 


“1.1.1 “Southwall
Products” shall refer to the standard products listed on Exhibit A-1.
Southwall’s Heat MirrorTM products, which are the subject of a pre-existing
agreement between Southwall and Mitsui) the “Hear Mirror Agreement”), shall
also be considered Southwall Products, and have been listed on Exhibit A-1. The
Heat Mirror Agreement shall remain in effect to the extent it is not


 


 

















 


contradicted by the terms
and conditions of this Agreement. Furthermore, Southwall and Mitsui hereby
agree that Marubeni shall become a party to the Heat Mirror Agreement, as of
the date hereof, having the same rights and obligations as Mitsui hereunder. To
the extent that the terms of this Agreement are in conflict with the terms of
the Heat Mirror Agreement, the terms of this Agreement shall govern.


 


1.1.2 “Licensed Products”
shall refer to the products listed on Exhibit A-2, which are produced by Mitsui
under a license from Southwall (the “Licensed Products”).


 


1.1.3 As and when any other
products manufactured and sold by Southwall which are not, currently, standard
products listed on Exhibit A-1 as Southwall Products become commercially
available to end-user customers, Southwall shall notify the Buyers of such fact
and provide necessary particulars and the Buyers shall have a right to request
that such products be characterized as Southwall Products.” Southwall shall
honor any such request by the Buyers unless Southwall has a reasonable basis
for not doing so. Southwall shall not be obligated under this Agreement to make
such characterization.


 


Article 2


 


Section 1.8 of the ORIGINAL AGREEMENT shall
be deleted in its entirety and replaced with the following:


 


“1.8 “Territory”
shall, subject to the provisions of Section 4.1, refer to Japan, Taiwan, South
Korea, Hong Kong, Thailand, Philippines, Malaysia, Singapore, Brunei and
Indonesia”.


 


Article 3


 


Section 4.1 of the ORIGINAL AGREEMENT shall
be amended by replacing the period after “Korea” in line six thereof with a
comma and adding the words “Hong Kong, Thailand, Philippines, Malaysia,
Singapore, Brunei and Indonesia” thereafter.


 


Article 4


 


The first paragraph of Section 4.3 of the
ORIGINAL AGREEMENT shall be amended by inserting the word “exclusive” between
the words “its” and “distributors” in line six thereof. The second paragraph of
Section 4.3 shall be deleted in its entirety and replaced with the following:


 


“In addition, except for
Southwall’s current customers in Korea and Thailand, Southwall will not sign up
any other customers in the Territory without first giving Buyers 30 days notice
of such intention. Southwall and Buyers

















 


shall then meet and
Southwall shall give due consideration to any business plan the Buyers may
present to Southwall for that country for the purpose of appointing the Buyers
as exclusive distributor in said country. Southwall shall honor Buyers’
requests unless it has a reasonable basis for not doing so.”


 


Article 5


 


Section 4.5 of the ORIGINAL AGREEMENT shall
be amended by inserting the words “and Licensed Products” between the words
“Products” and “it” in line three thereof.


 


Article 6


 


A new Section 4.10 shall be added to the
ORIGINAL AGREEMENT  as follows:


 


“4.10 Purchase of
Licensed Products. If, for any reason, Mitsui is not able to produce the
Licensed Products at all, or in sufficient quantity to meet the demand
therefore in the Territory, the buyers shall have the rights to purchase from
Southwall, subject to availability, such further quantity of the Licensed
Products as will be necessary to make up said shortage of the Licensed
Products. Southwall will give due consideration to the Buyers’ request
consistent with Southwall’s other obligations and customer requirements or
commitments. However, Southwall has no obligation to supply products that it
does not make generally available to others or to provide special priority to
Buyer’s orders. Section 7.5 will apply to any such purchases.”


 


Article 7


 


The table in Section 5.2 of the ORIGINAL
AGREEMENT shall be amended to reflect Buyers current minimum forecast of sales,
as follows:


 


	
   

  	
   

  	
  ANNUAL
  MINIMUM PURCHASE

  	
   

  
	
   

  	
   

  	
  QUANTITY IN U.S. DOLLARS

  	
   

  
	
  CALENDAR
  YEAR

  	
   

  	
  FOR
  CALENDAR YEAR

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  1991

  	
   

  	
  $234,000

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  1992

  	
   

  	
  $335,000

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  1993

  	
   

  	
  $435,000

  	
   

  



 


Article
8


 


Section
5.3 of the ORIGINAL AGREEMENT shall be deleted in its entirety and replaced
with the following:


 

















 


“5.3
Loss of Exclusivity. If on December 31, 1993 the Buyers have failed to
purchase the cumulative annual minimum purchase quantities for the three years
commencing January 1, 1991, then the parties shall meet to review the market
situation as of that time. If, after such meeting, Southwall so elects,
Southwall may, by providing written notice thereof, cause the rights of the
Buyers under this Agreement to become non-exclusive in the Territory.”


 


Article 9


 


Section 6.1 of the ORIGINAL AGREEMENT shall
be amended by deleting the words “at or around the Three-Year Checkpoint” in
lines seven and eight thereof and inserting a period after the words “Joint
Venture” in line seven.


 


Article 10


 


Section 8.1 of the ORIGINAL AGREEMENT shall
be amended by inserting the words “and Licensed Products” after the word
“Products” in lines two, seven, eleven and fourteen thereof.


 


Article 11


 


Section 10.1 of the ORIGINAL AGREEMENT shall
be amended by inserting a comma and the words “Hong Kong, Thailand,
Philippines, Malaysia, Singapore, Brunei and Indonesia” after the word “Korea”
in line seven thereof.


 


Article 12


 


The words “after the Three-Year Checkpoint,”
in lines one and two and “thereafter” in line three of Section 10.3 of the
ORIGINAL AGREEMENT shall be deleted.


 


Article 13


 


Section 10.4 of the ORIGINAL AGREEMENT shall
be amended by replacing the period after the last sentence thereof with a
semicolon and adding the words “provided, however, that if this Agreement is
terminated by Southwall for a reason not attributable to the Buyers, this
Section shall not apply to the extent necessary for the Buyers to exercise
their rights under Section 16.2 (b).


 


Article 14


 


Section 11.1 of the ORIGINAL AGREEMENT shall
be deleted in its entirety and replaced with the following:


 


“11.1 Southwall
Developments.” Any developments (whether or not patentable or
copyrightable) that are developed independently by Southwall, by Southwall
jointly with a


 

















 


third party or by a third
party licensee or distributor of Southwall (the “Southwall Developments”)
shall, for purposes of this Agreement, be deemed to be owned solely by Southwall.
Subject to the payment of the consideration set forth in Section 3.1 and, where
applicable, to any agreement between Southwall and a given third party,
Southwall hereby grants to the Buyers an exclusive, non transferable right and
license under the Southwall Development to the same extent as the right and
license granted pursuant to ARTICLE X. Southwall shall promptly disclose in
writing to the Buyers any Southwall Developments which Southwall is not
prohibited from disclosing pursuant to any agreement with a third party.”


 


Article 15


 


The Buyers have expressed their desire to
distribute Southwall’s Heat Mirror XIR products in the Territories. All parties
recognize that Southwall has an agreement with Monsanto Company (“Monsanto”)
that provides Monsanto with non-exclusive distribution rights for Heat Mirror
XIR in the Territories. From the date of this amendment, Southwall grants to
the Buyer:


 


A)                                  Non exclusive
distribution rights for Heat Mirror XIR solely for use in architectural window
applications in the Territory, including:


 


-                                            laminated
safety glass


-                                            factory applied
films


-                                            retrofit
applied films


 


B)                                    The
nonexclusive right in the Territory to continue their efforts with Honda for
the purpose of obtaining Honda as a customer/user of Heat Mirror XIR in
automobile window applications. In addition, Southwall and Buyers shall meet
from time to time to review progress in the marketing of Heat Mirror XIR
products in the Territory. Based on such progress, the parties shall discuss
the possible expansion of Buyers’ marketing right to include other Japanese car
manufacturers. Southwall shall give due consideration to any such expansion,
but shall have no obligation to make any such expansion.


 


C)                                    Solely to
support their rights under A and B above and consistent with Southwall’s
obligations to others, the Buyers may purchase Heat Mirror XIR from Southwall
and the relationship of the parties with respect to Heat Mirror XIR shall be
governed by the terms of the Original Agreement as if Heat Mirror XIR was a Southwall
Product thereunder, except that (1) Buyers will not have any of exclusivity
with respect to Heat Mirror XIR; (2) purchases of Heat Mirror XIR will not
apply to minimums under the Original Agreement, as amended; (3) the price


 

















 


and specifications of Heat
Mirror XIR shall be the same as for Monsanto; and (4) Southwall makes no
representation as to sufficiency of its capacity to make Heat Mirror XIR.


 


On or before June 30, 1992, the parties will
meet to review and discuss the Buyers’ progress in marketing and selling Heat
Mirror XIR in the Territory. At such time, Southwall and Buyers shall discuss
the expansion of Buyers’ marketing rights and Southwall shall consider various
further commitments regarding Heat Mirror XIR, including maintaining status quo,
expansion of non-exclusive rights or exclusivity within the Territory.


 


Article 16


 


EXHIBIT A to the ORIGINAL AGREEMENT shall be
replaced with two new EXHIBITS, namely EXHIBIT A-1 and EXHIBIT A-2, in the
forms attached hereto as Appendix 1.


 


Article 17


 


All other terms and conditions of the
ORIGINAL AGREEMENT shall remain unchanged and continue in full force and
effect.


 


IN WITNESS WHEREOF, the parties hereto have
caused this AMENDMENT AGREEMENT to be executed by their respective, duly
authorized representatives on the day and year first above written.


 


	
   

  	
  MITSUI TOATSU CHEMICAL,
  INC.

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
  /s/ Yoshihiro Nabeta

  
	
   

  	
   

  	
  Yoshihiro Nabeta

  
	
   

  	
   

  	
  Director of Performance
  Polymers

  
	
   

  	
   

  	
   

  
	
   

  	
  MARUBENI CORPORATION

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
  /s/ Kazuyoshi Orihashi

  
	
   

  	
   

  	
  Kazuyoshi Orihashi

  
	
   

  	
   

  	
  General Manager of
  Chemicals

  
	
   

  	
   

  	
  Project Department

  
	
   

  	
   

  	
   

  
	
   

  	
  SOUTHWALL TECHNOLOGIES
  INC.

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
  /s/ Bruce J. Alexander

  
	
   

  	
   

  	
  Bruce J. Alexander

  
	
   

  	
   

  	
  President & Chief
  Executive Officer

  
	
   

  	
   

  	
   

  



 

















 


APPENDIX 1


 


EXHIBIT
A-1


 


SOUTHWALL PRODUCTS


 


STANDARD PRODUCTS


 


Applied Films for Retrofit Architectural
Applications


 


Heat Mirror 88 on 1mil PET
(no topcoat, no adhesive)


Heat Mirror 77 on 1mil PET
(no topcoat, no adhesive)


Heat Mirror 66 on 1mil PET
(no topcoat, no adhesive)


Heat Mirror 55 on 1mil PET
(no topcoat, no adhesive)


Heat Mirror 44 on 1mil PET
(no topcoat, no adhesive)


Heat Mirror 33 on 1mil PET
(no topcoat, no adhesive)


Heat Mirror 22 on 1mil PET
(no topcoat, no adhesive)


BRG on 1mil PET (no topcoat,
no adhesive)


 


Suspended Films for Architectural
Applications


 


Heat Mirror 88 on 2mil
High-shrink PET


Heat Mirror 77 on 2mil
High-shrink PET


Heat Mirror 66 on 2mil
High-shrink PET


Heat Mirror 55 on 2mil
High-shrink PET


Heat Mirror 44 on 2mil
High-shrink PET


Heat Mirror 33 on 2mil
High-shrink PET


Heat Mirror 22 on 2mil
High-shrink PET


Heat Mirror XUV 88 on 3mil
High-shrink PET


Heat Mirror XUV 77 on 3mil
High-shrink PET


Heat Mirror XUV 66 on 3mil
High-shrink PET


Heat Mirror XUV 55 on 3mil
High-shrink PET


Heat Mirror XUV 44 on 3mil
High-shrink PET


Heat Mirror XUV 33 on 3mil
High-shrink PET


Heat Mirror XUV 22 on 3mil
High-shrink PET


 


Silver Reflector Films


 


dBar 40 Architectural EMI/RFI Shielding
Windows


dBar 60 Architectural EMI/RFI Shielding
Windows


 


DEVELOPMENT PRODUCTS


 


Heat Mirror on PMMA


Silver Reflector Film on
PMMA


Tempest Filters


Titanium on PET - STI UT18
(copy belts)


 


 

















 


EXHIBIT
A-2


 


LICENSED PRODUCTS


 


ALTAIR-O films


ALTAIR-M films


ETCH-A-FLEX on Polyimide films


ETCH-A-FLEX-C on Polyimide films


 


DEVELOPMENT PRODUCTS


 


ALTAIR-O on PES


ALTAIR-O on PEEK


ALTAIR-O on PTFE


ALTAIR-O on PMMA


ALTAIR-M on PES


ALTAIR-M on PEEK


ALTAIR-M on PMMA


ETCH-A-FLEX on PES


ETCH-A-FLEX on PEEK


ETCH-A-FLEX-C on PES


ETCH-A-FLEX-C on PEEK


ETCH-A-FLEX on Plating Stock on 1 mil
Polyimide


AuNi Transparent Conductor Films