CDP Agreement

Customer is engaged in, among other things, research, design, experimentation, development and commercialization of materials, manufacturing processes, and technologies in the Field as more fully defined in Section 2.14 below.

IMI is engaged in, among other things, research, design, experimentation, development and commercialization in the area of and using HPC Technology as more fully defined in Section 2.15 below.

IMI and Customer wish to enter into an agreement under which IMI will use HPC Technology for the benefit of Customer under the terms and conditions set forth in this Agreement.

List of CDP Activities

Form of Election

to have more than fifty percent (50%) of the voting rights or of the outstanding shares or securities representing the right to vote for either the election of the board of directors or a similar managing authority, or a supervisory board, or

if there do not exist outstanding shares or securities as may be the case in a partnership, joint venture or unincorporated association, to have more than fifty percent (50%) of the ownership interest representing the right to make decisions for such entity.

that is owned, acquired, or licensed by the party at any time during the term of this Agreement; and

that is not a result of CDP Activities.

[***]

An employee or contractor assigned to conduct CDP Activities based on approximately [***] hours per year.

Two (2) or more employees or contractors assigned to conduct CDP Activities based on an aggregate of approximately [***] hours per year.

[***]

U.S. and foreign patents and patent applications claiming any inventions or discoveries made, developed, conceived, or reduced to practice, including all divisions, substitutions, continuations, continuation-in-part applications, and reissues, re-examinations and extensions thereof,

U.S. and foreign copyrights,

U.S. and foreign trademarks, service marks, trade names, trade dress, domain names and similar rights,

U.S. and foreign mask work rights, and

Any other moral, intellectual or other proprietary rights of any kind now known or hereafter recognized in any jurisdiction in the world.

[***]

[***]

sale of the Product as a stand-alone product, or

sale of the Product where the Product is sold as a component or constituent of other products.

Application to or registration with a governmental entity; and

Approval of such application or registration by such entity.

[***]

On the Effective Date, IMI shall commence CDP Activities.

The duration of the CDP shall be for the Term.

Customer and IMI shall conduct CDP Activities in a collaborative effort pursuant to one or more written project statements (each, a "Project").

Each Project shall describe the activities to be conducted by each party.

Prior to the start of CDP Activities for each Project, the parties will categorize the Project as Project A or Project B.

In order for a Project to be categorized as Project [***],

the cumulative duration of the Project (as measured by its start date and end date) shall be no more than [***] (the [***] period need not be continuous), and

the Project consists of [***].

In order for a Project to be categorized as Project [***],

the duration of the Project (as measured by its start date and end date) shall be greater than [***], and

the Project consists of [***].

If the Project has not been categorized prior to its start date, such Project will be deemed to be Project [***] if the end date of the Project is greater than [***] after the start date, else such Project will be deemed to be Project [***].

Each Project shall have a start date and an end date.

The parties agree that at all times during the Term, at least [***] of FTEs provided by IMI in accordance with Section 3.4.1, shall be dedicated to projects categorized as Project [***].

Any revision to a Project shall be carried out pursuant to Sections 3.5, 3.6, 3.7, 3.8 and 3.9, and when agreed upon will be incorporated into this Agreement, superseding or supplementing the previous Project.

Each party will commit appropriate resources in equipment, facilities and personnel reasonably necessary to complete its respective tasks in accordance with each Project, including the resources listed in such Project.

Except as set forth in Section 7.2 or as stated in a Project, Customer and IMI will each bear their own respective costs associated with the CDP Activities. 

Subject to the payments in Section 7.1, IM shall provide [***] FTEs to conduct and support the CDP Activities.

Customer shall provide [***] FTEs to conduct its obligations and support the CDP Activities, which FTEs shall be primarily stationed at [***].

Neither party is required to perform activities other than in accordance with the Projects or utilize a total number of FTEs in excess of the number of FTEs described in such Projects. 

[***]

[***]

[***]

Project [***] Technology

to engage in CDP Activities with IMI, and

to use, make, have made, import/export, offer to sell and sell Products [***].

License of Project [***] Technology to IMI for Projects

Customer hereby grants IMI a worldwide, non-exclusive, non-transferable, royalty-free, license, without right of sublicense, to use the Project [***] Technology, licensed to Customer in Section 5.1, for Projects with Customer.

Such Background Technology is necessary for Customer to carry out its obligations under the CDP Activities,

Such Background Technology is necessary to exercise any licenses granted by IMI to Customer under the CDP Technology,

IMI has the right to grant such a License, and

Granting such a License will not result in [***].

Customer may sublicense to Customer’s Affiliate.

Customer may sublicense to Third Parties that Customer may hire to have Products manufactured for it under the licenses granted under Section 5.1.2 provided the sublicense is no greater in scope than the license granted to Customer by IMI. Furthermore, (i) such have made rights shall apply only when the designs, specifications and working drawings for the manufacture of such Products to be manufactured by such Third Party are furnished to the Third Party manufacturer by the Customer; (ii) such have-made rights shall not extend to standard, off-the-shelf products of such Third Party manufacturer, nor to products originally designed by such Third Party manufacturer to which only minor revisions are made to conform to the specifications of the Customer; and (iii) upon manufacture, such Products shall be offered for sale, sold, leased, or otherwise transferred by the Customer as Customer’s own product and not on behalf of another.

Customer may license to Third Parties other than the Third Parties mentioned in item 2 above, in accordance with Section 5.7 and Section 7.6.

Such Background Technology is necessary for IMI to carry out its obligations under the CDP Activities for the sole benefit of Customer,

Customer has the right to grant such licenses, and

Granting such a license will not result in [***].

Reservation of Rights

[***] in Project [***] Technology

[***] upon receiving payment and license back

INTELLECTUAL PROPERTY PROTECTION 

[***] controls prosecution

[***] shall have the sole right, but not the obligation, to apply for, seek issuance of, and maintain in the United States and in foreign countries during the Term the patent rights associated with the [***] Technology that is solely owned by [***] or jointly owned by IMI and Customer.

All costs associated with such activity shall be split equally between the parties, unless otherwise agreed to in writing.

The prosecution, filing and maintenance of all patent rights and applications are the within the sole discretion and responsibility of [***]. All decisions with respect to prosecution of the above patent rights are reserved to [***].

The parties agree to mutually develop a process for assisting each other in such activities.

[***] shall have the first right to prepare, file, prosecute and maintain, at its own expense and in consultation with [***], patent applications and patents claiming [***], and to conduct any interferences, re-examinations, reissues, oppositions or requests for patent term extension or governmental equivalents thereto, but without affecting the ownership and license provisions set forth in Sections 4 and 5.

In the event that [***] does not file, prosecute or maintain any such patent or patent application (including the failure to do so in [***]), or undertake such other activities described above, then [***] shall have the right to assume such activities at its own expense but without affecting the ownership and license provisions set forth in Sections 4 and 5. 

Each party agrees to execute all papers, including patent applications and invention assignments, and otherwise agrees to assist the other party, as reasonably required and at the other party’s reasonable expense, to perfect the rights, title and other interests in CDP Technology.

IMI and Customer shall both use reasonable efforts to keep the other fully informed as to the status of patent matters with respect to CDP Technology, including by providing the other the opportunity to review and comment on complete copies of any documents a reasonable time in advance of applicable filing dates, and upon request, providing to the other party copies of any substantive documents that a party receives from the United States Patent and Trademark Office and any foreign patent offices, within a reasonable time period after receipt, including notice of all official actions, interferences, reissues, re-examinations, oppositions, or requests for patent term extensions.

IMI and Customer shall each reasonably cooperate with and assist the other at its own expense in connection with such activities, at the other party's request. The Project Managers will (a) facilitate communication between the parties regarding patents and patent applications with respect to CDP Technology, (b) discuss and provide input on patent strategy with respect to CDP Technology, and (c) review applications and other substantive papers with respect to CDP Technology prior to filing with the patent office. 

As consideration for conducting and supporting the CDP Activities in accordance with Section 3 Customer shall, during the Term, make monthly payments to IMI (“CDP Fees”) as follows:

Customer shall pay IMI $[***] ([***] U.S. dollars) for [***].

Customer shall pay IMI $[***] ([***] U.S. dollars) for [***].

For the months starting [***] until the end of the Term, Customer shall pay IMI $[***] ([***] U.S. dollars) each.

IMI shall invoice Customer in one-month intervals.

The aforementioned monthly payments shall reflect the minimum fees for services performed in the prior month. No payment will be treated as a deposit for future services and will be fully earned upon invoice date.

consumables, such as substrates, mask sets, materials, and targets,

outsourced metrology and characterization not supported internally by IMI,

reasonable travel and lodging expenses for IMI personnel performing activities at Customer's facilities, and

any other out-of-pocket costs to support the CDP Activities.

Fees for [***]

[***]

[***]

The [***] and the [***] shall be in the form as attached in Exhibit 1.2.

IMI shall invoice Customer following each [***] or [***], as applicable, and Customer shall remit payment within [***] days following receipt of each invoice.

The aforementioned payments shall reflect the fees for [***]. No payment will be treated as a deposit for future services and will be fully earned upon invoice date.

Royalty payments for use of [***]

Customer agrees that it shall pay IMI upon the Sale of Products starting in the [***]. The payments shall be based on [***].

Royalty [***]

Royalty during [***]

Customer shall make all Royalty payments within [***] days after the date of such report.

[***] License Fees for [***] use of [***]

During the Term, Customer shall not owe any [***] to [***] the [***] the [***] to [***] under Section 5.1. In order to [***] such license beyond the Term, Customer shall make [***] payments to IMI of $ [***] ([***] U.S. dollars) each in accordance with Sections 7.5.2 and 7.5.3. IMI will invoice Customer for each such [***] payment at the start of such [***].

Customer shall make such [***] payments for a period of [***] starting on the first day of every [***] starting with the first [***] after the end of the Term.

After the end of the aforementioned [***] period, for each [***] of the next [***], Customer shall make payments to IMI of an amount per [***] which amount [***] per [***] (U.S. Dollars) at the end of the [***] period.

The payments owed per [***] in this Section 7.5 shall be [***] owed by Customer to IMI pursuant to the Project [***] Technology license (as described in Section 7.4). [***]

If Customer does not [***] in accordance with Section 7.5.1 then the [***] under [***]. 

Notwithstanding the foregoing, in the event that Customer does not [***] for a [***] Customer may [***] by making a payment equal to [***] in the following [***]. Provided that Customer may exercise such right to [***] times during the Term.

[***] percent ([***]%) of payments received by Customer from Third Party or

Amount equal to [***] applied to the Third Party

Payment Method

All payments hereunder shall be made in U.S. dollars by Customer or one of its U.S. Affiliates.

All payments due to IMI under this Agreement shall be made by bank wire transfer as follows:

Late payments

Customer shall keep complete, true and accurate books of account and records on its own behalf for the purpose of determining the amounts payable under this Agreement. Such books and records shall be kept at Customer for at least [***] following the end of the [***] to which they pertain.

Such records will be open for inspection during such [***] period by an independent auditor reasonably acceptable to Customer, solely for the purpose of verifying amounts payable to IMI hereunder. Such inspections may be made no more than once each calendar year, at reasonable times and on reasonable notice.

Inspections conducted under this Section 7.10 shall be at the expense of IMI, unless a variation or error producing an increase exceeding [***] percent ([***]%) of the amounts payable for any period covered by the inspection is established and confirmed in the course of any such inspection, whereupon all reasonable costs relating to the inspection for such period and any unpaid amounts that are discovered will be paid promptly by Customer. Each party agrees to hold in confidence pursuant to Section 8 all information concerning payments and reports, and all information learned in the course of any audit or inspection, except to the extent necessary for that party to reveal such information in order to enforce its rights under this Agreement or if disclosure is required by law.

The parties acknowledge that they may receive information from the other party which may be considered confidential and proprietary. The receiving party agrees to avoid any un-authorized disclosure, dissemination, or use of such information that, if disclosed in writing, is identified and marked as confidential (or with words of similar meaning) at the time of its disclosure (or that, if disclosed verbally, is designated as confidential at the time of disclosure and is summarized and identified as confidential in a writing delivered to the receiving party within [***] days after the disclosure) or that are observed during a visit of the manufacturing facilities of one of the parties and such information would appear to a reasonable person as confidential information ("Confidential Information"). Both parties agree that this Agreement is the Confidential Information of both parties.

The receiving party will use the Confidential Information solely for the purpose of performing its rights and obligations under the Agreement.

The receiving party will not disclose Confidential Information to a Third Party without the prior written consent of the disclosing party or in connection with a license under Section 5.6. The receiving party will protect such information from un-authorized disclosure, use or dissemination with at least the same degree of care as the receiving party exercises to protect its own information of similar type and importance, but in no event less than reasonable care.

The obligations of confidentiality and protection required by this Section will survive the expiration, termination, or cancellation of this Agreement for a period of five years thereafter.

The obligation of confidentiality will not apply, or will cease to apply, to any information that: (a) was known to the receiving party prior to its receipt of Confidential Information under this Agreement; (b) is or becomes publicly available without breach of this Agreement by the receiving party; (c) is received from a third party without an obligation of confidentiality to the disclosing party or (d) is developed independently by employees of the receiving party not having access to such information.

Notwithstanding anything to the contrary in this Section 8, each party shall be permitted to lawfully disclose Confidential Information of the other party to any governmental agency to the extent such disclosure is required by law (including but not limited to the SEC, USPTO and pursuant to a subpoena) ; provided, however that before making such disclosure, the party about to make such disclosure shall seek the highest level of protection available and give the other party an adequate opportunity to interpose an objection or take action to assure confidential handling of such information.

It has the right and authority to enter into this Agreement, and to fully perform its obligations hereunder; and

This Agreement is a legal and valid obligation binding upon it and enforceable in accordance with its terms.

It has the right and authority to enter into this Agreement, and to fully perform its obligations hereunder; and

This Agreement is a legal and valid obligation binding upon it and enforceable in accordance with its terms.

TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW, AND EXCEPT FOR ANY BREACH OF ANY CONFIDENTIALITY OBLIGATION UNDER THIS AGREEMENT, IN NO EVENT SHALL EITHER PARTY OR ITS AFFILIATES BE LIABLE TO THE OTHER PARTY, ITS AFFILIATES OR TO ANYTHIRD PARTY CLAIMING THROUGH OR UNDER THE OTHER PARTY HERETO, FOR ANY LOST PROFITS, LOSS OF DATA, EQUIPMEN'T DOWNTIME OR FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT OR INCIDENTAL DAMAGES, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

EXCEPT FOR BREACHES OF ANY CONFIDENTIALITY AND CDP TECHNOLOGY INDEMNITY OBLIGATIONS OF SECTION 11, IN NO EVENT WILL EITHER PARTY’S LIABILITY TO THE OTHER UNDER THIS AGREEMENT EXCEED THE AMOUNTS PAID OR PAYABLE BY SUCH PARTY TO THE OTHER PARTY IN THE [***] PRECEDING THE CLAIM.

IN ADDITION, BOTH PARTIES ACKNOWLEDGE AND AGREE THAT AS BETWEEN THE PARTIES, NEITHER PARTY SHALL BE LIABLE FOR ANY PRODUCT LIABILITY CLAIMS RESULTING FROM THE MANUFACTURE, SALE OR USE OF ANY PRODUCTS DEVELOPED AS A RESULT OF CDP ACTIVITIES THAT EITHER PARTY USES, MAKES OR SELLS.

The parties acknowledge and agree that the foregoing limitations of liability are an essential element of this agreement and that in their absence the terms of this agreement would be substantially different. 

IMI will defend, indemnify and hold Customer harmless from and against all claims, damages, losses, liabilities and expenses, including reasonable fees and expenses of attorneys and other professionals, arising out of or resulting from the following: (i) any action by a third party against Customer that is based upon any claim that any services performed under this Agreement by IMI or deliverables hereunder (including, without limitation, the Know-How resulting from CDP Activities), infringe a patent, copyright or other proprietary right or violate a trade secret (“Infringement Claim”); (ii) any action by a third party that is based upon any negligent act or omission or willful misconduct of IMI, and (iii) any action based upon any act or omission arising out of IMI being on Customer premises.

IMI shall have no liability under this Section with respect to an Infringement Claim but solely to the extent that the Infringement Claim arises from (i) the combination of the Project IP with any equipment or device that is not supplied by IMI, (ii) the specifications for the Project IP that are provided by Customer, in writing, and there are no commercially reasonable alternatives, (iii) the combination of the Project IP with any Customer Background Intellectual Property , or (iv) or any modification to the Project IP, unless IMI approved or directed such modification in writing.

IMI shall have sole control of the defense of such Claim, however, Customer may participate in such defense at its own expense. IMI shall not settle or compromise any such Claim without obtaining the prior written consent of Customer in any manner which binds Customer or accepts liability by or on behalf of Customer or affects Customer’s use of the Project IP. In the case of an Infringement Claim, IMI can: (1) procure for Customer the right to continue using the Project IP; or (2) replace or modify the Project IP with non-infringing Project IP, provided that it does not adversely affect the functionality, form, fit, or use of the Project IP, and such replacement or modification meets or exceeds the specifications for the Project IP.

IMI’s obligation to indemnify and hold Customer harmless shall, with respect to all total, cumulative liabilities or obligations incurred by Customer, whether or not payable to a Third Party, be limited to no more than a sum of $ [***] ([***] U.S. Dollars). All claims will be aggregated to determine satisfaction of this limit and the existence of multiple claims will not enlarge this limit. In no event will IMI be liable for any lost profits or consequential, incidental, special, punitive, or indirect damages that Customer may suffer or incur as a result of any action.  .

The term of this Agreement shall come into full force and effect on the Effective Date, and, unless terminated earlier as provided in this Section 12.2, shall continue for a period [***] (the "Term"). 

Notwithstanding the foregoing section, Customer shall have the unilateral right to terminate the Agreement by notifying IMI at any time during the [***] period starting [***] after the Effective Date (i.e. during the [***] month of the Term). The date when such notice is provided shall be hereinafter referred to as the Notice Date. Any termination pursuant to this Section 12.1.2 shall be effective [***] after the Notice Date.

Effect of Termination

Accrued Rights and Obligations

Termination of Projects

Neither party shall assign or transfer this Agreement either voluntarily or by operation of law, in whole or in part, without the prior written consent of the other party, such consent not to be un-reasonably withheld.

Any attempt to assign without such consent shall be void and of no effect.

Notwithstanding 13.3.1 and 13.3.2, this Agreement shall be binding upon and shall inure to the benefit of any successor corporation of IMI resulting from a sale or other transfer of its entire assets to such successor or from a consolidation with such successor corporation, provided the successor corporation and the Affiliates of the successor corporation are not engaged in the business of manufacturing photo-voltaic solar modules.

Notwithstanding 13.3.1 and 13.3.2, this Agreement shall be binding upon and shall inure to the benefit of any successor corporation of Customer resulting from a sale or other transfer of its entire assets to such successor or from a consolidation with such successor corporation.

Enforcement rights concerning Project [***] Technology

If either party learns of any infringement by a third party of the CDP Technology, the party learning of the infringement will give written notice of such infringement to the other party.

The parties will have [***] days from the written notice of infringement (“[***]”) to elect to participate in the prosecution of such infringement.

In the event a party declines or fails to [***], the other party shall [***]. Except in the case of the CDP Technology expressly licensed under this Agreement, [***] in such infringement.

In the event that [***], the parties shall use commercially reasonable efforts to [***].

In the event that the parties [***] within [***] days after expiration of [***]:

[***]

[***]

When a Party [***], then:

The [***] Party shall give the [***] days prior written notice, including [***];

The [***] Party [***]; and

The [***] Party may [***], without approval of the [***] Party provided that [***]). If such [***], which approval shall not be unreasonably withheld, delayed or conditioned.

Unless agreed to in writing in accordance with Section 13.7.4, any [***].

Independent Contractors

Unless otherwise agreed to by the parties, the communications required or permitted to be given or made under this Agreement shall be made in writing, via personal delivery, registered mail, facsimile transmission (with written confirmation copy by registered first-class mail), addressed to the appropriate party at the address indicated below and a copy to the receiving party’s legal department.

All communications made pursuant to this section shall be deemed made or given on the date of such personal delivery, mailing or transmission.

If to Customer:

With a copy to:

If to IMI:

The Parties may change the name and address to which communications should be sent under this section by providing prior written notice to the other party.

to the extent required by law, to governmental entities, or

to such party's attorneys, accountants, advisors, investors and financing sources and their advisors and others on a need to know basis under circumstances that reasonably ensure the confidentiality thereof, or

in connection with the enforcement of this Agreement or rights under this Agreement, or

in connection with a merger, acquisition, financing transaction or proposed merger, acquisition or financing transaction.

Insurance.

Statutory Workers’ Compensation Insurance covering all persons employed by IMI engaged in the CDP Project, including employers liability coverage, with minimum limits of at least one million dollars ($1,000,000) per accident and one million dollars ($1,000,000) per disease or whatever limit is required by law, whichever is higher.

Commercial General liability (CGL) coverage with minimum limits of at least two million dollars ($2,000,000) per occurrence, CGL for bodily injury, personal injury, property damage and products and completed operation liability.

Excess liability limits of two million dollars ($2,000,000) per occurrence, excess of underlying general liability and Workers’ compensation.

All policies listed herein 13.22(with the exception of those pertaining to employers liability coverage are required to be on a per occurrence policy limit.

All policies must be issued by an insurer with an A.M. Best rating of at least “A-.”

Within thirty (30) days of the Effective Date, IMI shall provide to Company a certificate of insurance for all insurance required in this subsection. Each such certificate shall contain a provision for thirty (30) days’ advance notice of all policy changes, including without limitation, cancellation. If a policy is changed or canceled, IMI shall deliver to Company renewal or replacement certificates within thirty (30) days prior to expiration or change of any such insurance. Any coverage provided under these policies to Company would be primary to any other coverage available to Company. Notwithstanding, the failure to provide certificates in accordance with this Section shall not release IMI in any manner of any liability established under this Agreement.

Compliance with Laws.

Compliance with Securities Laws. IMI agrees that certain of the information provided by Company to IMI hereunder may be “material, nonpublic information” for purposes of federal or state securities laws, the awareness of which prohibits IMI and its employees, contractors, representatives and agents from (i) buying or selling Company’s securities (stock, options, etc.) (i.e., “insider trading”) and (ii) passing information to anyone who may buy or sell Company’s securities (i.e., “tipping”), until after the information has been disclosed to the public and absorbed by the market. Without limiting any of IMI’s other obligations under this Agreement, IMI will comply with all federal and state securities laws prohibiting insider trading and tipping, and shall immediately notify Company in the event of any insider trading or tipping by IMI or its employees, contractors, representatives or agents of which it becomes aware.

In accordance with the requirements of the Foreign Corrupt Practices Act of the United States (15 U.S.C. § 78dd-1 and 2) (“FCPA”), IMI agrees and warrants that it shall not make, offer, promise or authorize any payment, loan, gift, donation or other giving of money or things of value, directly or indirectly, whether through IMI, its affiliates, partners, officers, employees, agents or representatives, whether in cash or kind, and whether pursuant to a written agreement, to or for the use of any government official, any political party or official thereof or any candidate for political office, for the purpose of influencing or inducing any official act or decision in order to further the activities contemplated by this Agreement, including obtaining or retaining any government approval or funding related to such activities. IMI acknowledges that in entering into this Agreement, Company has relied upon IMI’s representation and warranty that it will strictly comply with the FCPA, and IMI agrees that if it violates the FCPA in the course of performing the activities enumerated in this Agreement, Company may immediately upon notice to IMI terminate this Agreement.

EICC Compliance. IMI hereby (a) acknowledges and understands that Company requires its suppliers and consultants to adopt the Electronic Industry Code of Conduct (the “EICC”), as promulgated by the Electronic Industry Citizenship Coalition, and (b) agrees to implement and ascribe to the EICC during the term of this Agreement. The EICC may be viewed at .

Public Disclosure

Neither party shall without the prior written consent of the other party, issue press releases, marketing literature, public statements, or in any way engage in any other form of public disclosure relating to this Agreement or CDP Activities or Projects, except to the extent required by law, to governmental entities; provided, however that before making such disclosure, the party about to make such disclosure shall seek the highest level of protection available and give the other party an adequate opportunity to interpose an objection or take action to assure appropriate handling of such information.