Exhibit 10.28


 


*** TEXT OMITTED AND FILED SEPARATELY

CONFIDENTIAL TREATMENT REQUESTED
Under 17 C.F.R. Sections 200.80(b)(4) and 240.24b-2


 


PATENT SUBLICENSE

AGREEMENT


 


THIS PATENT SUBLICENSE AGREEMENT
(“Sublicense Agreement”), made as of this 7 day of Nov., 2003 (the “Effective
Date”), by and between SCIENCE RESEARCH
LABORATORY, INC., a Massachusetts corporation with principal offices
at 15 Ward Street, Somerville, Massachusetts 02143 (“SRL”) and CYMER, INC., a Nevada corporation, with
principal offices at 17075 Thornmint Court, San Diego California 92127
(“Cymer”).


 


WHEREAS, Cymer has
exclusively licensed by separate agreement dated May 14, 2001 (the “Patent
License Agreement”) the rights to certain issued patents, patent applications,
trade secrets, confidential information and know-how with respect to (i)
[...***...] power devices with specialized circuits useful in powering certain
lasers and [...***...] (defined below), and (ii) [...***...] light sources useful in
Lithography, Metrology and [...***...] applications (defined below) which have been
exclusively licensed to Cymer; and


 


WHEREAS, Cymer
sublicensed to SRL, by separate agreement dated May 14, 2001 (the “2001 Patent
Sublicense Agreement”) certain rights held by Cymer under the Patent License
Agreement in order for SRL to develop certain technologies in the Field of Use;
and


 


WHEREAS, SRL-EUV,
LLC (“EUV”) is the assignee of SRL under the 2001 Patent Sublicense Agreement
and holds all of SRL’s rights under the 2001 Patent Sublicense Agreement; and


 


WHEREAS,  EUV sublicensed to Cymer, by separate
agreement dated Nov. 7, 2003 (the “2003 Patent Sublicense Agreement”) all
license rights held by EUV under the 2001 Patent Sublicense Agreement;


 


WHEREAS,  Cymer is willing to grant to SRL a sublicense
to certain rights held by Cymer under the 2003 Patent Sublicense Agreement
pursuant to the terms and conditions set forth below.


 


NOW, THEREFORE, for
and in consideration of the premises, covenants, conditions, and undertakings
hereinafter set forth, the parties hereto agree as follows:


 


ARTICLE I


 


DEFINITIONS


1.1                               [...***...]


 


1.2                               DUV shall mean the deep ultraviolet region
of the electromagnetic spectrum with wavelengths, referenced to vacuum, ranging
from 150 nanometers (“nm”) up to but not exceeding 250nm.


 


1.3                               Extreme UV shall mean the extreme
ultraviolet region of the electromagnetic spectrum with wavelengths, referenced
to vacuum, ranging from 10nm up to but not exceeding 50nm.


 


1.4                               Field of Use shall mean all applications of
the Sublicensed Technology, except applications for use as Light Sources
operating in the DUV, Extreme UV, VUV, and Soft X-ray wavelengths of the
spectrum for Lithography (defined below), 
Metrology (defined below) and/or [...***...] applications (defined below).


 


1.5                               [...***...]


 


1.6                               Government Purpose shall mean conducting
research activities for or under contract with the U.S. federal government or
any instrumentality thereof.


 


***CONFIDENTIAL TREATMENT REQUESTED


 

















 


1.7                               Light Source shall mean any source of
electromagnetic radiation whether coherent or incoherent, whether a laser or a
lamp.


 


1.8                               Lithography shall mean the art of
transferring a spatial pattern from a reference mask to the surface of a wafer
and/or to the surface of membranes to be made into masks and reticles.


 


1.9                               Metrology shall mean the art of measuring
distances or surface topology.


 


1.10                        Research shall mean any research and development in the Field
of Use.


 


1.11                        Soft X-ray shall mean that region of the electromagnetic
spectrum ranging from 0.5 nm up to but not exceeding 3.0 nm.


 


1.12                        Sublicensed Technology shall mean all confidential
information, trade secrets, know-how, methods or processes and other materials,
tangible and non-tangible, including, but not limited to: technical and
non-technical data and information, drawings, sketches, plans, diagrams,
specifications and/or other documents or materials containing said information
and data licensed by Cymer under the Patent License Agreement in the Field of
Use as well as any Cymer Invention (as defined in the Patent License Agreement)
or Cymer’s rights under any Joint Invention (as defined in the Patent License
Agreement); in each case, which have been sublicensed by EUV to Cymer under the
2003 Patent Sublicense Agreement.


 


1.13                        Sublicensed Patents shall mean the patents or patent
applications (i) which have been sublicensed by EUV to Cymer under the
2003 Patent Sublicense Agreement; and (ii) which, in the absence of the
rights being granted under the sublicense granted by Cymer to SRL under this
Sublicense Agreement, would be infringed by SRL’s manufacture, sale or use of
the Research(s) (as defined herein) at any time during the Term of this
Sublicense Agreement.


 


1.14                        VUV shall mean vacuum ultraviolet wavelengths in the region of
the electromagnetic spectrum ranging from 120nm up to but not exceeding 150nm.


 


1.15                        Term shall have the meaning as set forth in Section 6 below.


 


ARTICLE II


 


GRANT OF SUBLICENSE


 


2.1                               Cymer hereby grants to
SRL an irrevocable exclusive, worldwide, royalty-free sublicense: (x) to
use the Sublicensed Technology for the purpose of making, or having made,
selling or having sold Research in the Field of Use for any Government Purpose;
and (y) under the Sublicensed Patents to make, have made, and use and sell
the Research in the Field of Use for any Government Purpose.


 


2.2                               SRL shall not obtain any
rights of any kind in the Sublicensed Patents or the Sublicensed Technology
except as specifically set forth in this Sublicense Agreement.


 


2.3                               In consideration of the
rights and licenses granted hereunder, SRL agrees to pay to Cymer a sublicense
fee in the amount of [...***...] due on January 5, 2004.


 


ARTICLE III


 


IMPROVEMENTS AND INVENTIONS


 


3.1                               The parties’ respective
rights of ownership with respect to improvements and inventions shall be as set
forth in Article III of the Patent License Agreement.


 


***CONFIDENTIAL TREATMENT REQUESTED


 


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ARTICLE IV


 


PATENT PROSECUTION AND INFRINGEMENT


 


4.1                               Cymer agrees that it
shall, at its own expense, prepare, file, prosecute and maintain the Sublicensed
Patents, in such countries as Cymer deems appropriate, and shall be responsible
for conducting any interferences, re-examinations, reissues, oppositions or
requests for patent term extensions relating to the Sublicensed Patents.  SRL shall cooperate fully in the
preparation, filing and prosecution of any Sublicensed Patents under this
Sublicense Agreement.  Notwithstanding
the foregoing, Cymer shall not take any such action that could adversely affect
a patent or application owned by SRL, unless such action is mutually agreed by
the parties.  Cymer shall provide SRL
with sufficient written notice of any decision not to prepare, file, prosecute
and maintain any Sublicensed Patent so that SRL may take such action on its
own.


 


4.2                               Each party will promptly
notify the other party of any written claim received by it alleging
infringement by Research of the proprietary rights or patents of a
third-party.  Cymer shall assume the
defense of any action relating to any such allegation of patent infringement.


 


4.3                               Each party will promptly
notify the other party hereto of the possible infringement by a third-party of
Research or any of the Sublicensed Technology or Sublicensed Patents comprising
Research.  Cymer shall have the sole
right to take any action it deems necessary, at its sole cost and expense, with
respect to any infringement of Research or the Sublicensed Patents.


 


4.4                               Within the Field of Use,
if Cymer fails to bring an infringement action as provided in Section 4.3
above within sixty (60) days after notice of alleged infringement, SRL shall be
permitted to take any action it deems necessary, at its sole cost and expense,
in order to protect its research, royalty and other payment interests.


 


4.5                               If either party brings
an infringement action under this Agreement, the other party shall cooperate
fully, including if required to bring such action, the furnishing of a power of
attorney.


 


ARTICLE V


 


REPRESENTATIONS AND WARRANTIES


 


5.1                               Cymer. 
Cymer represents and warrants that: 
(i) it has full power to enter into this Sublicense Agreement;
(ii) it has not previously granted and will not grant any rights in
conflict with the rights and licenses granted herein; (iii) it has obtained all
necessary corporate approvals to enter and execute into this Sublicense Agreement;
and (iv) it shall fully comply with the requirements of any and all applicable
federal, state, local and foreign laws, regulations, rules and orders of any
governmental body having jurisdiction over the activities contemplated by this
Sublicense Agreement.


 


5.2                               SRL. 
SRL represents and warrants that: 
(i) it has full power to enter into this Sublicense Agreement; (ii) it
has obtained all necessary corporate approvals to enter and execute into this
Sublicense Agreement; and (iii) it shall fully comply with the requirements of
any and all applicable federal, state, local and foreign laws, regulations,
rules and orders of any governmental body having jurisdiction over the
activities contemplated by this Sublicense Agreement.


 


5.3                               Disclaimer.  EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS SUBLICENSE
AGREEMENT, NEITHER PARTY MAKES ANY REPRESENTATION OR EXTENDS ANY WARRANTIES OF
ANY KIND EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTIES
OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, NON-INFRINGEMENT, OR
VALIDITY OF ANY PATENTS ISSUED OR PENDING.


 


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ARTICLE VI


 


TERM


 


6.1                               Term. This Sublicense Agreement shall
become effective as of the Effective Date and shall continue until it expires
(the “Term”) in its entirety upon the termination for any reason, or
expiration, of the Patent License Agreement with respect to all Research, in
all countries, worldwide.


 


6.2                               No Termination.  The parties agree that upon payment of the sublicense fee set
forth in Section 2.3 this Sublicense Agreement shall not be terminated.


 


6.3                               Continuing Obligations; Survival.  It is understood that expiration of this
Sublicense Agreement shall not relieve a party from any obligation or liability
which, at the time of such expiration, has already accrued to the other
party.  The provisions of
Sections 2.2, 6.3, and Articles 1, 4, 5, 7, 8, 10 and 11 shall
survive the expiration of this Sublicense Agreement.  Except as otherwise expressly provided in this Article 6, all other
rights and obligations of the parties shall terminate upon expiration of this
Sublicense Agreement.


 


ARTICLE VII


 


INDEMNIFICATION


 


7.1                               Indemnification by SRL.  SRL shall indemnify, defend and hold
harmless Cymer, its directors, officers, employees, agents, successors and
assigns from and against all liabilities, expenses or costs (including
reasonable attorneys’ fees and court costs) arising out of any claim,
complaint, suit, proceeding or cause of action against any of them by a
third-party alleging (i) the negligent or intentionally wrongful acts or
omissions of SRL; (ii) any breach by SRL of any of its representations or
warranties set forth in Article V of this Sublicense Agreement; or
(iii) breach of any warranty relating to the Research of SRL covered by
the sublicense granted in Section 2.1 including, but not limited to defects in
design, manufacturing or claims under any theory of product liability.


 


7.2                               Indemnification by Cymer.  Cymer shall indemnify, defend and hold
harmless SRL, its directors, officers, employees, agents, successors and
assigns from and against all liabilities, expenses, and costs (including
reasonable attorneys’ fees and court costs) arising out of any claim,
complaint, suit, proceeding or cause of action against any of them by a
third-party alleging (i) the negligent or intentionally wrongful acts or
omissions of Cymer; or (ii) any breach by Cymer of any of its
representations or warranties set forth in Article V of this Sublicense
Agreement.


 


7.3                               Indemnification Procedure.  A party that intends to claim indemnification
(the “Indemnitee”) under this Article 7 shall promptly notify the indemnifying
party (the “Indemnitor”) in writing of any third party claim, suit or
proceeding or cause of action included within the indemnification described in
this Article 7, above (each a “Claim”) with respect to which the Indemnitee
intends to claim such indemnification, and the Indemnitor shall have sole
control of the defense and/or settlement thereof; provided that the Indemnitee
shall have the right to participate, at its own expense, with counsel of its
own choosing in the defense and/or settlement of such Claim.  The indemnification under this Article 7
shall not apply to amounts paid in settlement of any Claim if such settlement
is effected without the consent of the Indemnitor.  The Indemnitee under this Article 7, and its employees, at the
Indemnitor’s request and expense, provide full information and reasonable
assistance to Indemnitor and its legal representatives with respect to such
Claims.


 


ARTICLE VIII


 


CONFIDENTIALITY


 


8.1                               Confidential Information.  The parties may from time to time disclose
to each other Confidential Information in connection with this Agreement.  “Confidential Information” shall mean any
information disclosed by one party to the other party which information is not
generally known to the public and may include by way of


 


4

















 


example, but without limitation
(a) information concerning the disclosing party’s management, financial
condition, financial operations, purchasing activities, costs of products,
sales activities, marketing activities and business plans, (b) information
concerning or resulting from the disclosing party’s research and development
work, including, but not limited to, improvements, discoveries, inventions and
new product ideas, (c) information of the disclosing party concerning actual or
potential vendors or customers, (d) the disclosing party’s computer programs,
including source code, object code, algorithms, methods, structure and related
information including diagrams, flow charts, designs, specifications, manuals,
descriptions, instructions, explanations and improvements, and (e) information
concerning the disclosing party’s products, including plans, blueprints, parts
and assembly drawings, specifications, descriptions, designs, diagrams,
dimensions, tolerances, parts and components, in each case, whether delivered
orally, in writing, electronically or through any other media.  Notwithstanding the foregoing or anything
herein to the contrary, Confidential Information shall not include any
information that, in each case the receiving party can prove by written
documentation:  (i) was already known to
the receiving party, other than under an obligation of confidentiality, at the
time of disclosure; (ii) was generally available to the public or otherwise
part of the public domain at the time of its disclosure to the receiving party;
(iii) became generally available to the public or otherwise part of the public
domain after its disclosure and other than through any act or omission of the
receiving party in breach of this Sublicense Agreement; (iv) was subsequently
disclosed to the receiving party by a person other than the disclosing party
who was not bound by any confidentiality obligation; or (v) was developed
entirely independently by the receiving party without use of, reliance on, or
reference to the Confidential Information of the other party.


 


8.2                               Confidentiality.  Each party agrees to protect, hold and maintain in strict
confidence all Confidential Information of the other party for a period of ten
(10) years from the date of disclosure. 
Without limiting the foregoing, neither party shall use or disclose the
Confidential Information of the other party, except as otherwise permitted by
this Sublicense Agreement or as may be necessary or useful to exercise its
rights or perform its obligations under this Sublicense Agreement provided that
employees, agents, and representatives of the receiving party shall be given
access to Confidential Information only on a need-to-know basis and only if
they are bound by obligations of confidentiality comparable to those contained
herein.  Nothing contained in this
Article 8 shall prevent either party from disclosing any Confidential
Information of the other party to (a) accountants, lawyers or other
professional advisors or in connection with a merger, acquisition or securities
offering, subject in each case to the recipient entering into an agreement to
protect such Confidential Information from disclosure; or (b) is required by
law or regulation to be disclosed; provided, however, that the party subject to
such disclosure requirement has provided written notice to the other party
promptly upon receiving notice of such requirement in order to enable the other
party to seek a protective order or otherwise prevent disclosure of such
Confidential Information.


 


ARTICLE IX


 


NON-SOLICITATION


 


9.1                               During the Term of this
Sublicense Agreement, neither party shall contact, divert, or influence, or
attempt to divert or influence any personnel of the other for purposes of
providing employment to such personnel without the prior written consent of the
current employer.  In the event that
either party breaches this non-solicitation covenant and hires (the “New
Employer”) an employee or consultant who, within the six (6) months immediately
preceding the date of hire by the New Employer, was employed by the other party
(the “Prior Employer”), the New Employer shall pay to the Prior Employer as
compensation for the loss of the employee/consultant, three (3) times the first
year’s total compensation being paid by the New Employer to the
employee/consultant.


 


9.2                               All payments due
hereunder shall be made, in-full, within thirty (30) days of the first day the
employee/consultant provides services to the New Employer.


 


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ARTICLE X


 


LIMITATION OF LIABILITY


 


EXCEPT FOR
BREACH OF SECTION 8, NEITHER PARTY, TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE
LAW, SHALL HAVE ANY LIABILITY TO THE OTHER PARTY FROM ANY CAUSE WHATSOEVER, AND
REGARDLESS OF THE FORM OF ACTION, WHETHER IN CONTRACT OR IN TORT (INCLUDING
NEGLIGENCE), FOR ANY INDIRECT, CONSEQUENTIAL, INCIDENTAL, SPECIAL OR EXEMPLARY
DAMAGES (INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF PROFITS, REVENUES,
SAVINGS, BUSINESS INTERRUPTION AND THE LIKE) UNDER OR RELATING TO THIS
AGREEMENT, EVEN IF SUCH OTHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.


 


ARTICLE XI


 


MISCELLANEOUS


 


11.1                        Notices.  All notices
required or permitted hereunder shall 
be given in writing and sent by facsimile transmission (with
confirmation of receipt), or mailed postage prepaid, certified or registered
mail, return receipt requested, or sent by a nationally recognized express
courier service, or hand-delivered at the following address:


 


	
  To SRL:

  	
   

  	
  Science
  Research Laboratory, Inc.

  15 Ward Street

  Somerville, Massachusetts 02143

  Attn.: Jonah Jacob

  Facsimile: (617) 441-3984

  
	
   

  	
   

  	
   

  
	
  To Cymer:

  	
   

  	
  Cymer, Inc.

  17075 Thornmint Court

  San Diego, California 92127

  Attn.: Dr. Robert P. Akins, CEO

  Facsimile: (858) 385 6222

  



 


All notices shall be deemed
made upon receipt by the addressee as evidenced by the applicable written
receipt or, in the case of a facsimile, as evidenced by the confirmation of
transmission.


 


11.2                        Public Announcements.


 


11.2.1              Subject to Section 11.2.2, all publicity,
press releases and other announcements relating to this Sublicense Agreement or
the transaction contemplated hereby shall be reviewed in advance by, and be
subject to the approval of, both parties; provided, however, that either party
may, without the consent of the other, (i) disclose the existence and general
subject matter of this Sublicense Agreement without the other party’s approval
and (ii) subject to Article 8 disclose the terms of this Sublicense Agreement
as required to comply with applicable securities laws.  Any party that determines applicable
securities laws require it to file this Sublicense Agreement shall first
provide the other party a copy of the redacted version it intends to file and
shall provide the other party the opportunity to comment thereon.  Notwithstanding the foregoing, the filing
party will make the final decisions regarding the version hereof to file.


 


11.2.2              Subject to Article 8, any party that
determines applicable securities laws require it to disclose publicly (i)
non-financial information with respect to its relationship to the other party
or (ii) any aspect of the other party’s business, shall first provide the other
party a copy of the disclosure it intends to disclose and shall provide the
other party the opportunity to comment thereon.  Notwithstanding the foregoing, the disclosing party will have
final decision-making authority with respect to its disclosures.


 


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11.3                        Captions and Section References.  The titles, headings or captions in this Sublicense Agreement do
not define, limit, extend, explain or describe the scope or extent of this
Sublicense Agreement or any of its terms or conditions and therefore shall not
be considered in the interpretations, construction or application of this
Sublicense Agreement.


 


11.4                        Severability.  Whenever
possible, each clause, subclause, provision or condition of this Sublicense
Agreement shall be interpreted in such manner as to be effective and valid
under applicable law, but if any clause, subclause, provision or condition of
this Sublicense Agreement should be prohibited or invalid under applicable law,
such clause, subclause, provision or condition shall be considered separate and
severable from this Sublicense Agreement to the extent of such prohibition or
invalidity without invalidating the remaining clauses, subclauses, provisions
and conditions of this Sublicense Agreement, so long as the remaining
Sublicense Agreement reflects the economic intentions of the parties as
evidenced by this Sublicense Agreement as a whole.


 


11.5                        Entire Agreement. 
Except for the Solid State Modulator License and Manufacturing Agreement
dated as of January 26, 1995, the Patent License Agreement, the 2001 Patent
Sublicense Agreement and/or the 2003 Patent Sublicense Agreement, this
Sublicense Agreement embodies the entire agreement and understanding of the
parties hereto in relation to the subject matter hereof and supersedes any and
all prior understandings and agreements, whether written or oral in regard to
such matters. For the avoidance of doubt, unless otherwise specifically
amended, all provisions, including amounts payable by Cymer, under the Solid
State Modulator License and Manufacturing Agreement dated as of January 26,
1995, the Patent License Agreement, and the 2001 Patent Sublicense Agreement
shall remain in full force and effect.


 


11.6                        Amendment.  No
amendment, change or modification of any of the terms, provisions or conditions
of this Sublicense Agreement shall be effective unless made in writing and
signed on behalf of the parties hereto by their duly authorized
representatives.


 


11.7                        Counterparts.  This
Sublicense Agreement may be executed in one or more counterparts, by facsimile,
or both, each of which shall be deemed to be an original document, but all such
separate counterparts shall constitute only one and the same Sublicense
Agreement.


 


11.8                        Waiver.  No waiver of
any term, provision or condition of this Sublicense Agreement, whether by
conduct or otherwise, in any one or more instances, shall be deemed to be or
construed as a further or continuing waiver of any such or other term,
provision or condition of this Sublicense Agreement.


 


11.9                        Binding Agreement; Succession. This Sublicense Agreement shall
be binding upon and shall inure to the benefit of the parties and their
respective successors and permitted assigns. 
Neither party may assign this Sublicense Agreement without the prior
written approval of the other party which approval shall not be unreasonably
withheld or delayed; provided, however, that either party may assign this
Sublicense Agreement without the prior written approval of the other party in
connection with the acquisition of such party by, or merger of such party with
or into, a third party or the sale of substantially all of such party’s assets;
provided, further, however that should SRL wish to assign this Sublicense
Agreement to any third-party listed on Exhibit 11.9 attached hereto and made a
party hereof, such written approval of Cymer shall be required.


 


11.10                 Independent
Contractors.  The
relationship of Cymer and SRL established by this Sublicense Agreement is that
of independent contractors.  Nothing in
this Sublicense Agreement shall be construed to create any other relationship
between Cymer and SRL.  Neither party
shall have any right, power or authority to assume, create or incur any
expense, liability or obligation, express or implied, on behalf of the other.


 


11.11                 Governing
Law.  This Sublicense
Agreement shall be interpreted under and enforced in accordance with the laws
of the State of Massachusetts.


 


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IN WITNESS WHEREOF,
the parties have caused this Sublicense Agreement to be executed as of the day
and year first above written.


 


	
  SCIENCE RESEARCH LABORATORY, INC.

  	
  CYMER, INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
  By:

  	
  /s/ JONAH
  JACOB

  	
   

  	
  By:

  	
  /s/ ROBERT
  P. AKINS

  
	
   

  	
  Jonah Jacob

  	
   

  	
  Robert P. Akins, Ph.D., CEO

  
					



 


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EXHIBIT 11.9


 


[...***...]


 


 


9