EXHIBIT 10.7.4
[CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT
HAVE BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.]
Technology License Agreement
Nortel Networks Limited
LogicVision, Inc.
Design For Testability (DFT)
Amendment #3
March 20, 2001
AMENDMENT TO THE AGREEMENT
THIS AGREEMENT is made and entered into as of the 20th day of March 2001 (the
"Amendment Date")
BY AND BETWEEN
Nortel Networks Limited, formerly Northern Telecom Limited ("Northern
Telecom"), a corporation organized and existing under the laws of Canada,
having its executive offices at 0000 Xxxxx Xxxx, Xxxxxxxx, Xxxxxxx, Xxxxxx
X0X 0X0, on behalf of itself and its Subsidiaries and on behalf of its
Affiliates (hereinafter collectively referred to as "Nortel Networks");
AND
LOGICVISION, INC., formerly LV SOFTWARE, INC., a corporation organized and
existing under the laws of Delaware, having its primary business office at
000 Xxxxx Xxxxx, Xxxxx Xxxxx, Xxx Xxxx, Xxxxxxxxxx 00000 (hereinafter
referred to as "Licensee").
WHEREAS the Parties entered into an Agreement with an Effective Date of the 14th
day of September 1992 concerning software known as the Design For Testability
tool suite (the "Agreement"); and
WHEREAS the Parties made and entered into an amendment to the Agreement on the
1st day of October 1993; and
WHEREAS the Parties made and entered into an amendment to the Agreement on the
11th day of January 1994; and;
WHEREAS the Parties wish to further amend the Agreement as provided herein:
NOW THEREFORE, in consideration of the mutual promises set forth herein, the
Parties agree as follows:
1.0 ARTICLE 1 "DEFINITIONS" is hereby deleted and replaced by the following:
As used herein, unless otherwise defined:
(a) "Affiliate" means a company which a Party hereto, or its parent,
effectively controls, directly or indirectly, other than a Subsidiary,
through the ownership or control of shares in the company;
(b) "Associated Utilities" means the software elements, cells, or models
described in Schedule C attached hereto and forming a part hereof;
(c) "Derivative Works" means any software produced by Licensee incorporating
all or a portion of the Licensed Product;
(d) "DFT License Revenues" means ***, after deducting any reasonable and
actually incurred transportation charges or allowances, transportation
insurance, value added taxes or other sales taxes and custom duties imposed
upon and paid by Licensee ***:
(i) ***, or
(ii) ***.
(e) "Documentation" means those documents and other written materials related
to the Licensed Products, Derivative Works, or Licensed IP that may be
delivered to End-Users, as described in and subject to certain conditions
outlined in Schedule B attached hereto and forming a part hereof;
(f) "Distributor" means any party to whom Licensee provides the Licensed
Products, Derivative Works, or Licensed IP for sub-licensing to End-Users;
(g) "Effective Date" means the 14th day of September, 1992;
(h) "End-Users" shall mean all persons or companies, other than Nortel
Networks, its Affiliates, Subsidiaries and Manufacturing Licensees, which
acquire directly from
*** CONFIDENTIAL MATERIAL REDACTED AND SEPARATELY FILED WITH THE COMMISSION.
Licensee or indirectly through a Distributor, the right to use a Licensed
Product, Derivative Works or Licensed IP as contemplated in this Agreement;
(i) "Licensed IP" means any intellectual property licensed, or to be licensed,
to an End-User whether software or otherwise which is derived from or
created by the use of the Licensed Product, Technology or Technology IP
licensed to Licensee under this Agreement. For greater clarity, Licensed
IP shall not include any intellectual property made, conceived, developed
or reduced to practice by the Licensee independently without reference to
any Technology, Technology IP, Technical Information, Associated Utilities,
Licensed Product or any other material or information provided by Nortel
Networks to Licensee.
(j) "Licensed Product" means the Design for Testability (DFT) tool suite and
any portion or modification thereof, as described in and subject to certain
conditions identified in Schedule A attached hereto and forming a part
hereof;
(k) "Manufacturing Licensee" means a third party with whom Nortel Networks has
entered into an agreement permitting such third party to make and sell or
lease products based on products designed by or for and sold or leased by
Nortel Networks;
(l) "Party" means either Licensee or Nortel Networks;
(m) "Patent Rights" means any patent rights associated with the patents and
patent applications set forth in Schedule A together with any patents or
patent rights arising or issuing from said patent applications, provided,
however, that such patents and patent applications have an effective filing
date prior to or including the Amendment Date;
(n) "Subsidiary" means a company which Nortel Networks Limited or Licensee
hereto effectively owns or controls, and continues to own or control,
directly or indirectly, more than fifty percent (50%) of the voting stock
or shares;
(o) "Technical Information" means all technical or scientific documentation,
product drawings, bills of materials, component supplier lists, and other
information (in any form) that is related to the manufacture, use, support
or maintenance of Licensed Products or that is related to the Technology,
and that is provided by Nortel Networks to Licensee;
(p) "Technology" means the source code, object code utilities, libraries,
development utilities, circuit designs in HDL, algorithms, proof-of-
concepts described in Schedule A attached hereto and as provided by Nortel
Networks to Licensee, the associated utilities described in Schedule C
attached hereto and as provided by Nortel Networks to Licensee, and all
Technical Information as provided by Nortel Networks to Licensee;
(q) "Technology IP" means the copyrights and trade secrets owned by Nortel
Networks as of the Amendment Date directed to and covering the Technology,
and also includes the Patent Rights, but excludes all trademarks; and
(r) "Territory" means worldwide subject to applicable United States and
Canadian export restrictions.
2.0 ARTICLE 2 "LICENSE" is hereby deleted and replaced by the following:
Nortel Networks hereby, as of the Amendment Date, grants to Licensee subject to
the terms and conditions of this Agreement a personal, non-exclusive, non-
transferable, non-assignable, indivisible, worldwide right and license:
(i) to use, copy, translate, improve, enhance, and modify the Licensed
Product and Technology object code and source code, to merge or have
merged such translations, modifications, improvements or enhancements
into other programming material, to sub-license and distribute object
code versions of Licensed Product, Licensed IP and Derivative Works to
End-Users, to copy, translate and modify the Documentation and to use,
sell or distribute copies of such Documentation;
(ii) to appoint and to sub-license Distributors to sublicense for use and to
distribute to End-Users object code versions of Licensed Product,
Licensed IP and Derivative Works under terms and conditions no less
stringent than those set out in this Agreement;
(iii) to place Licensed Products, Licensed IP and Derivative Works source
code in escrow for the benefit of End-Users and Distributors and grant
source code licenses to such End-Users and Distributors pursuant to
which, in the event of a bankruptcy or similar proceeding against
Licensee or in the event of termination of this Agreement and the
refusal of Nortel Networks to assume Licensee's support obligations,
such End-User or Distributor would be granted a license to use such
source code solely to maintain and support the Licensed Product,
Licensed IP or Derivative Works;
(iv) to make, use, sell the subject matter claimed by the patents listed in
Schedule A and attached hereto and the trade secrets inherent in the
Technology to develop Licensed IP and Derivative Works and to market,
promote, distribute and license such Licensed IP and Derivative Works
to End-Users directly or through Distributors;
(v) to authorize, directly or through Distributors, End-Users to use and
incorporate any design objects or Licensed IP generated by the licensed
use of a Licensed Product or Derivative Work into such End-User's
integrated circuit designs, and to make or have made and sell or
otherwise distribute integrated circuits based on such designs; and
(vi) to use the Technical Information only as may be necessary to exercise
the rights granted in this Article 2.
Nortel Networks also grants to Licensee the right to use Associated Utilities
in the development and debugging of software produced by Licensee or for
demonstration purposes. Associated Utilities must not be delivered to End-
Users.
No provision or term or condition of this Agreement shall affect the rights of
Nortel Networks or any Manufacturing Licensee to use Licensed Product,
Derivative Works, Licensed IP or Associated Utilities in the normal course of
Nortel Networks' business.
Nothing contained herein shall transfer, or be deemed to transfer, or
contemplate the transfer of, any rights in or to the Technology or Technology
IP other than those rights specifically granted herein, and in particular but
without restricting the generality of the foregoing, Nortel
Networks does not in any way transfer any right, title, or interest in or to
the Technology or Technology IP, or any element constituting a portion thereof
to Licensee or Distributors or End-Users, other than the limited right granted
herein.
3.0 ARTICLE 3 "GRANTBACK" is hereby deleted and replaced by the following:
Licensee hereby grants to Nortel Networks and Manufacturing Licensees, a non-
exclusive, perpetual, irrevocable, transferable, assignable, worldwide paid-up
right to use Derivative Works and Licensed IP for use in the normal course of
Nortel Networks' business. Such right includes the right to modify the
Derivative Works and Licensed IP and to incorporate them into software or
product for use in the normal course of Nortel Networks' business. For greater
clarity, Nortel Networks shall have no right to sub-license, transfer, assign
Innovations (defined below) for the purpose of creating competing products with
Derivative Works. Ownership in and to the Derivative Works (exclusive of any
Technology or Technology IP) and in and to any and all ideas, inventions,
discoveries, creations, processes, techniques, designs, methods, improvements or
know-how that Licensee may make, conceive, develop or reduce to practice
(collectively, "Innovations"), regardless of whether such Innovations are
developed as a result of Licensee's access to the Technology or Technology IP,
shall remain with and be vested in Licensee. Subject to the provisions of
Article 2.0(iii), Licensee shall not be obligated to provide the source code
form of the Derivative Works to Nortel Networks.
In partial consideration of the License granted herein by Nortel Networks,
Licensee hereby grants to Nortel Networks, to the full extent of its legal right
to do so, an irrevocable, perpetual, non-exclusive, non-transferable, non-
sublicenseable, fully-paid up, royalty-free, worldwide license under any patents
or patent applications that Licensee owns or acquires that are embodied in the
Derivative Works or Licensed IP or were acquired as a result of access to the
Technology or Technology IP or rights granted under this Agreement.
This Article 3 Grantback shall not be construed ***, nor shall it be construed
***.
4.0 ARTICLE 5 "ROYALTY" is hereby deleted and replaced by the following:
In partial consideration of the rights granted hereunder, including the
additional Technology and Technology IP, Licensee shall make the following
royalty payments (hereinafter "Royalties") to Nortel Networks:
(i) In addition to any royalty payments made prior to December 31st, 2000,
an additional one million, one hundred and twenty-five thousand
dollars ($1,125,000 US) will be paid immediately upon execution of
this Amendment in lieu of Royalties due up to and including December
31st, 2000; and
(ii) ***, paid within thirty (30) days
*** CONFIDENTIAL MATERIAL REDACTED AND SEPARATELY FILED WITH THE COMMISSION.
following the end of each quarterly period ending on March 31, June
30, September 30, and December 31; and
(iii) Eight hundred and fifty thousand dollars ($850,000 US) paid in seven
(7) consecutive quarterly payments of one hundred and twenty-one
thousand, four hundred and twenty-nine dollars ($121,429 US)
beginning March 31, 2001.
Nortel Networks acknowledges that the payments under this amended Article 5
(i) *** and except as expressly provided in this Article 5 (ii) and (iii),
Licensee shall possess a fully paid-up license upon completion of these
payment obligations.
For further clarification, final payment obligations shall include payments
under Article 5 (ii) and (iii) up to and including September 30, 2002.
5.0 ARTICLE 8 "RECORDS AND REMITTANCES" is hereby amended by deleting the
following text:
"Payments related to Licensee's licensing activities in the USA shall be made
to:
Northern Telecom Inc.
000 Xxxxxx Xxx,
Xxxxxxxxx, Xxxxxxxxx,
X.X.X. 00000
Attention: Xxx Xxxx, Dept. 8452."
and adding the following text:
"Payments related to Licensee's licensing activities shall be made to
Nortel Networks Limited
0000 Xxxxx Xxxx, Xxxxx 000 MS:036NO154
Xxxxxxxx, Xxxxxxx
X0X 0X0 Xxxxxx
Attention: Director, Technology Licensing Programs
FAX: 000-000-0000
6.0 ARTICLE 14 "DURATION AND CONTINUING RIGHTS" is hereby deleted and replaced
by the following:
*** CONFIDENTIAL MATERIAL REDACTED AND SEPARATELY FILED WITH THE COMMISSION.
This Agreement shall continue until the earlier of September 30, 2002 and the
full and final payment of all sums due Nortel Networks hereunder or until
terminated pursuant to Article 15 hereof.
Provided this Agreement is not terminated prior to September 30, 2002, Licensee
shall on October 1, 2002 posses a fully paid up license to exercise the rights
granted in Article 2 (including patent rights granted in Article 2) without
having the obligation of making payments and providing statements as prescribed
in Articles 5 and 8 hereof.
7.0 ARTICLE 15 "TERMINATION" is hereby amended by adding the following as the
last two paragraphs:
Notwithstanding anything else contained herein, in the event Licensee brings
patent infringement proceedings against Nortel Networks at any future date,
under any patent that is embodied in the Derivative Works or Licensed IP or that
was acquired as a result of access to the Technology or Technology IP or rights
granted under this Agreement, Nortel Networks shall have the right to
immediately terminate this Agreement and all continuing rights contemplated
under ARTICLE 14 hereof.
During the term of this Agreement, Licensee shall have the right to terminate
the Agreement with or without cause upon thirty (30) days written notice to
Nortel Networks subject to the termination prior to expiration obligations
above. Termination initiated by Licensee as provided in this ARTICLE 15 shall
also result in immediate termination of all continuing rights contemplated under
ARTICLE 14 hereof.
8.0 ARTICLE 16 "NOTICES" is hereby deleted and replaced by the following:
Any and all notices or other information to be given by one Party to the other
shall be in writing and sent by certified or registered mail, return receipt
requested, or by hand delivery to the other Party at the following address or
fax number:
(a) if to Licensee:
LOGICVISION, INC.
000 Xxxxx Xxxxx, Xxxxx Xxxxx,
Xxx Xxxx, Xxxxxxxxxx 00000
XXX
Attention: Xx. X.X. Xxxxxxx, Chief Executive Officer
FAX: 000-000-0000
(b) if to Nortel Networks:
Nortel Networks Limited
0000 Xxxxx Xxxx, Xxxxx 000 MS:036NO154
Xxxxxxxx, Xxxxxxx
X0X 0X0 Xxxxxx
Attention: Director, Technology Licensing Programs
FAX: 000-000-0000
Such notices shall be deemed to have been received five (5) business days after
mailing if forwarded by mail or on the day of receipt if delivered by hand or
fax. The address of either Party may be changed by giving notice to the other
Party in accordance with the foregoing.
9.0 ARTICLE 18 "GENERAL PROVISIONS" is hereby amended by replacing the first
paragraph with the following paragraph:
"This Agreement shall not be assigned or transferred by either Party except with
the written consent of the other such consent not to be unreasonably refused.
Notwithstanding the foregoing, this Agreement may be assigned by Nortel Networks
to any of its Subsidiaries or Affiliates upon notification to Licensee.
And is further amended by replacing the paragraph;
"This Agreement sets forth the entire agreement and understanding between the
Parties with respect to the licensing of Licensed Products and Associated
Utilities and supersedes and cancels all previous negotiations, agreements,
commitments and writings in respect of the subject matter hereof, and no Party
hereto shall be bound by any term, clause, provision, or condition save as
expressly provided in this Agreement or as duly set forth on or subsequent to
the date hereof in writing, signed by duly authorized officers of the Parties.
The Parties may, however, modify Schedules A, B, and C hereto, from time to time
by written instrument signed by representatives of both Parties, provided any
such modification does not materially change the scope and substance of this
Agreement."
with the following paragraph;
"This Agreement sets forth the entire agreement and understanding between the
Parties with respect to the licensing of Technology and Technology IP and
supersedes and cancels all previous negotiations, agreements, commitments and
writings in respect of the subject matter hereof, and no Party hereto shall be
bound by any term, clause, provision, or condition save as expressly provided in
this Agreement or as duly set forth on or subsequent to the Amendment Date
hereof in writing, signed by duly authorized officers of the Parties, which for
Nortel Networks Limited shall include the Vice President, Intellectual Property
Law. The Parties may, however, modify Schedules A, B, and C hereto, from time
to time by written instrument signed
by representatives of both Parties, provided any such modification does not
materially change the scope and substance of this Agreement."
10.0 SCHEDULE A "LICENSED PRODUCT" is hereby deleted and replaced by the amended
SCHEDULE A "LICENSED PRODUCT AND PATENTS" attached hereto.
11.0 SCHEDULE B "DOCUMENTATION" is hereby deleted and replaced by the amended
SCHEDULE B "DOCUMENTATION" attached hereto.
12.0 SCHEDULE C "ASSOCIATED UTILITIES" is hereby deleted and replaced by the
amended SCHEDULE C "ASSOCIATED UTILITIES" attached hereto.
13.0 This Amendment shall be effective on the date first mentioned above.
IT IS FURTHER AGREED that this Amendment be and is hereby made a part of and
attached to the Agreement and that the Agreement, shall remain in full force and
effect, according to the terms, conditions and covenants therein, except as
herein amended.
IN WITNESS WHEREOF, the Parties hereto have duly executed this amending
agreement.
Nortel Networks Limited LOGICVISION, INC.
/s/ Xxxxxx Xxxxxx /s/ X.X. Xxxxxxx 03/20/2001
------------------------------------------------------- -------------------------------------------------------
Authorized Signature and Date Authorized Signature and Date
Xxxxxx Xxxxxx, VP Intellectual Property Law Xx. X.X. Xxxxxxx, Chief Executive Officer
------------------------------------------------------- -------------------------------------------------------
Printed Name and Title Printed Name and Title
/s/ Xxxxx X. Xxxxxxxx
-------------------------------------------------------
Authorized Signature
Xxxxx X. Xxxxxxxx, Assistant Secretary
-------------------------------------------------------
Printed Name and Title
SCHEDULE A
LICENSED PRODUCT AND PATENTS
Patents
-------
4969148 Serial Testing Technique For Embedded Memories
5349587 Multiple Clock Rate Test Apparatus For Testing Digital Systems
Source Code
-----------
The Design For Testability (DFT) Technology consists of the tool suite and
database provided to Licensee in source code form as described herein:
(i) SCANCHEK, Version 5 Release 3 (5.03) *See Note 2
This tool compiles a circuit description from Verilog
structural netlists and checks the logic for compliance to
a set of scan rules. It also extracts the combinational
logic driven by the scan chain as well as a description of
the scan chain connections and pin types.
(ii) ATPG, Version 5 Release 3 (5.03) *See Note 2
Automatic Test Pattern Generator (ATPG) generates and/or
evaluates a set of test vectors for the faults in the
combinational part of the logic of a circuit. ATPG applies
random patterns to detect most faults and switches to
deterministic algorithms to find the remaining one.
Optionally, a Linear-Feedback-Shift-Register (LFSR) can
generate the random patterns and the expected responses
for the circuit are compressed and expressed in terms of a
32-bit signature.
(iii) SEQUENCE, Version 5 Release 3 (5.03) *See Note 2
SEQUENCE populates a test pattern database with the test
patterns generated by ATPG for the combinational portion
of the circuit. SEQUENCE automatically adds generic test
patterns for the scan chain itself and asynchronous set /
reset pins, if applicable.
(iv) TPI, Version 5 Release 2 Maintenance Release 1 (5.02.01)
Test Point Insertion (TPI) tool.
(v) RamBist, Version 5 Release 2 (5.02)
A tool that generates a memory built-in self test
controller, a verification test bench, and test pattern.
(vi) ScanBist, Version 5 (5.00)
A tool that generate a scan built-in self test (a.k.a.
logicbist) controller, a verification test bench, and test
pattern.
(vii) IATPG, Version 5 (5.00)
A tool to perform Interconnect Automatic Test Pattern
Generator (IATPG)
(viii) dh2wgl
A tool to extract test patterns from datahub native format
and translated to Fluence (former TSSI) WGL format.
(ix) datahub
A proprietary database and the associated schema for
integrating DFT software tools via the storage and
exchange of data.
Notes:
-----
1. All Licensed Products and Derivative Works delivered to End-Users must be in
object code form.
2. The following software elements or modules must be modified by Licensee and
Nortel Networks must approve such modifications before Licensee delivers
Licensed Products or Derivative Works to any End-User.
(i) SCANCHEK: Cadence menus, ScanBist support, Nortel Networks
specific options.
(ii) ATPG: Cadence menus, ScanBist support, Nortel Networks
specific options.
(iii) SEQUENCE: Cadence menus, "Fast simulation", Nortel
Networks specific options.
Object Code Utility
-------------------
The Design For Testability (DFT) Technology includes the following utility
provided to Licensee in object code form. This utility may be included in
Licensed Products or Derivative Works provided however delivery to End-Users
must only be in object code form:
(i) dh2tif, Version 5 Release 2 (5.02) A utility to extract
test patterns from a DATAHUB file and convert into a TIF
(Tool Interchange Format).
Libraries
---------
The Design For Testability (DFT) Technology includes the following libraries
provided to Licensee. These utilities may be included in Licensed Products or
Derivative Works provided however delivery to End-Users must only be in object
code form:
(i) spdata, (sp.a)
a collection of functions for read/write to/from the
simulation event file.
(ii) anvil, (anvil.a)
a collection of functions for specifying design
verification event or test patterns.
(iii) Message, (MSg.a)
a collection of functions for messaging errors or
information messages.
(iv) Pattern, (PP.a)
a collection of functions for extracting patterns stored
in datahub.
(v) Read Scaninfo, (readscan.a)
a collection of functions for parsing the scaninfo
information into datahub.
(vi) Datahub, (datahub.a)
a collection of functions that includes the basic
read/write of the datahub database and the interface
functions.
(vii) scan PLI,
a collection of PLI functions for Verilog to read and
write spdata file.
Circuit Designs in HDL
----------------------
The Design For Testability (DFT) Technology includes the following circuit
designs in HDL.
(i) TAP
A circuit design that implements an interpretation of the
IEEE 1149.1 Standard Test Access Port (TAP).
(ii) Boundary Scan Cells
A collection of circuit designs that implement an
interpretation of the IEEE 1149.1 standard boundary scan
cells.
(iii) Rambist Controller
A circuit design that implements the built-in self-test
controller for memory testing which employs the technique
specified in patent 4969148.
(iv) Logicbist Controller
A circuit design that implements the built-in self-test
controller for scan based logic testing which employs the
technique specified in patent 5349587.
[End of Schedule A]
SCHEDULE B
DOCUMENTATION
The Documentation associated with licensed Technology that, once modified, can
be delivered with Licensed Products, Derivative Works, and/or Licensed IP to
End-Users consists of the following:
1. Scan Reference Guide, Version 5 Release 3 (5.03) CCP 143.1
2. DFT Application Notes, Version 5 Release 2 (5.02) CCP 146.1
3. DFT Guidelines, Version 5 Release 1 (5.01) CCP 146.2
4. Memory BIST Guidelines, Version 5 (5.00)
5. Scanbist Documentation, Version 5 (5.00)
6. TIF Format Description, Version 5 (5.00)
Note: Licensee must modify The Documentation and Nortel Networks must
approve such modifications before Licensee delivers any Documentation to
End-Users. All other Technical Information is considered Confidential
Information.
[End of Schedule B]
SCHEDULE C
ASSOCIATED UTILITIES
Associated Utilities include the following software elements, cells, or models
that can be used by Licensee for developing and debugging new software or for
demonstration purposes but must not be delivered to End-Users.
(i) cells,
a subset of simple BATMOS gates including Verilog nominal and
SCAN models.
(ii) memory macros,
(iii) mx,
a macro preprocessing utility.
(iv) syntran,
a translation utility for translating FML2 format into Verilog
HDL format.
(v) dh2tif, Version 5 Release 2 (5.02)
A utility to extract test patterns from a DATAHUB file and
convert into a TIF (Tool Interchange Format).
(vi) Synful and Synopsys Technology Library Translator to Synful
format.
[End of Schedule C]
