Exhibit 10.10
LICENSE AGREEMENT
This License Agreement is made this 15th day of March, 1995 by Xxxx-Xxxxx
Xxxxx, an individual with a place of business at Seoul National University,
Shinlim-dong, Gwanak-gu, Xxxxx 000-000, Xxxxx ("DK"), and Silicon Image, Inc., a
California corporation with a place of business at 0000 Xxxxxxx Xxxxxx, Xxxx
Xxxx, Xxxxxxxxxx 00000 ("SII"). This Agreement will become effective, if at
all, upon the later of (a) March 28, 1995, or (b) SII's closing of a sale of its
securities having a value of at least Two Million Dollars ($2,000,000).
RECITALS
A. SII has been formed to engage in the business of designing,
manufacturing, and marketing electronic components for transmitting video
information.
B. DK has developed certain "SERIAL LINK TECHNOLOGY" described on
EXHIBIT A hereto.
C. Prior to the date of this Agreement, DK granted limited rights in the
Serial Link Technology to [***] (collectively, the "PRIOR LICENSEES").
D. DK desires to license to SII, and SII desires to license from DK, the
Serial Link Technology for two fields of use: (a) transmitting video
information, and (b) [***].
NOW, THEREFORE, the parties agree as follows:
1. LICENSE.
1.1 GRANT OF RIGHTS. DK hereby grants to SII a perpetual,
irrevocable, worldwide license to use, make, have made, copy, publish, modify,
improve, prepare derivative works based on, market, distribute, lease, and sell
the Serial Link Technology, with full rights to sublicense others to do the
same, solely in two fields of use: (a) transmitting video information, and (b)
[***]. The foregoing license includes, but is not limited to, licenses under
any patents, copyrights, mask work rights, trade secret rights, and other
intellectual property rights (collectively, "INTELLECTUAL PROPERTY RIGHTS")
owned or licensed by DK in connection with the Serial Link Technology.
1.2 EXCLUSIVITY. DK agrees, however, that after the date of this
Agreement, DK will not grant to any other party rights to use the Serial Link
Technology in the field of use described in Section 1.1(a) above.
1.3 ENHANCEMENTS. SII and DK acknowledge that DK is a shareholder in
SII and that DK's shares in SII are subject to repurchase restrictions that
lapse over four (4) years, provided that DK continues to render substantial
services to SII. SII and DK agree that the services to be rendered to SII by DK
are likely to include maintaining, enhancing, and customizing the Serial Link
Technology for use by SII, and that all enhancements and
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission
customizations developed by DK for SII will be owned by SII. In addition,
subject to any limitations imposed by DK's existing agreements with the Prior
Licensees, DK agrees to disclose and license to SII at no additional charge
all enhancements and other modifications of the Serial Link Technology,
regardless of whether they are developed at SII's request, and the term
"Serial Link Technology" as used in this Agreement will be construed to
include all such enhancements and modifications developed by DK. However,
SII will have no obligation to incorporate any such enhancements or
modifications into the Serial Link Technology.
1.4 ADDITIONAL RIGHTS. In the event that DK owns (presently or in
the future) any patent rights that block or interfere with SII's license rights,
DK will grant to SII a non-exclusive license to use, make, have made, copy,
publish, modify, improve, prepare derivative works based on, market, distribute,
lease, and sell any products, software, or hardware covered by such patent
rights, with full rights to sublicense others to do the same, to the extent
necessary to enable SII to exercise its rights under this Agreement.
2. PAYMENT.
2.1 ROYALTY. During each of the years set forth below, SII will pay
to DK the percentage set forth opposite that year of the "Net Receipts" (as
defined below) actually received by SII with respect to all sales, licenses,
sublicenses, or other commercial exploitation of the Serial Link Technology or
any derivative work thereof.
Percentage of
Year Net Receipts
---- -------------
1995 4.2
1996 3.2
1997 1.8
1998 1.0
1999 0.8
2000 0.5
After 2000, no further royalties will be due to DK under this Agreement and
SII's license will be fully paid.
2.2 NET RECEIPTS. As used herein, "NET RECEIPTS" means SII's gross
receipts (exclusive of taxes, interest, service or processing charges, finance
charges, currency exchange fees, insurance, and transportation costs) from all
sales, licenses, sublicenses, or other commercial exploitation of the Serial
Link Technology or any derivative work thereof, minus (1) any credits or refunds
for returns; (2) any rebates and promotional allowances to customers; and (3)
any sales commissions. If, in connection with any license of the Serial Link
Technology, SII receives refundable advances against future payment obligations,
such advances will be deemed received only as shipments are made against them.
2.3 PAYMENT DATES. Payments due to DK under Section 2.1 hereof will
be calculated and made quarterly based on actual receipts for the previous
calendar quarter.
2
Amounts received by SII in foreign currencies will be deemed converted into
United States Dollars at the average exchange rates used by SII in its
financial statements for the month of receipt. Within forty-five (45) days
after the close of each quarter ending March 31, June 30, September 30, and
December 31, SII will deliver to DK a report which will provide all
reasonably necessary information for computation of the payments, if any, due
to DK for such quarterly period, together with any payments due DK with
respect to such period.
2.4 AUDIT RIGHTS. An independent certified public accountant
selected by DK may, upon reasonable notice and during normal business hours, but
no more often than once each year, inspect the records of SII on which such
reports are based. SII's determination of the payments due DK under this
Agreement will be deemed conclusive unless, within eighteen (18) months from the
date of payment thereof, DK notifies SII in writing of any error in such
payments. Any inspection of SII's records pursuant to this Section 2.4 will be
conducted during SII's normal business hours, under SII's supervision, and in a
manner which does not interfere with SII's business operations. If, upon
performing an inspection of SII's records, it is determined that SII has
underpaid DK by an amount equal to or greater than ten percent (10%) of the
payments due DK in the particular period in question, SII shall bear all
reasonable expenses and costs of the audit.
3. MARKETING.
3.1 NO OBLIGATION TO MARKET. DK agrees that SII has no fiduciary
duty to DK, either express or implied, and may market, or not market at all, the
Serial Link Technology and its derivative works or any other technology licensed
to or developed by DK for SII hereunder. Nothing in this Agreement will prevent
SII from marketing any other technology, whether similar or dissimilar to the
Serial Link Technology.
3.2 METHODS OF MARKETING. All aspects of the distribution and
marketing of products containing the Serial Link Technology will be in SII's
sole control, including without limitation the methods of marketing, pricing,
naming, packaging, labeling and identification, protection, terms and conditions
of sale or license, and warranty, if any.
3.3 TRADEMARKS. SII and its licensees will sell or sublicense
products containing the Serial Link Technology or derivative works thereof under
a trademark or trademarks to be selected by SII or its licensees respectively.
Such trademarks will be the property of SII or its licensees respectively, and
DK will acquire no rights in any of them.
4. INTELLECTUAL PROPERTY RIGHTS.
4.1 DK'S REPRESENTATIONS AND WARRANTIES. DK represents and warrants
to SII that:
(a) The Serial Link Technology as delivered to SII will
substantially conform to the description in EXHIBIT A.
3
(b) DK has developed the Serial Link Technology independently
and has not knowingly infringed the Intellectual Property Rights of others;
PROVIDED THAT, with respect to patent rights, DK has performed no investigation
but nothing has come to his attention to indicate that the Serial Link
Technology infringes the patent rights of others.
(c) DK is the sole and exclusive owner of the Serial Link
Technology, subject to the rights of the Prior Licensees, and has full power and
right to enter into this Agreement without liability to others.
(d) DK has previously granted rights in the Serial Link
Technology only to the Prior Licensees. Those prior grants of rights are
consistent with the rights granted to SII herein. DK will not grant any rights
in the Serial Link Technology to any third party which are inconsistent with the
rights granted to SII herein.
(e) DK has full power to enter into this Agreement, to carry out
his obligations under this Agreement, and to grant the rights granted to SII
herein.
4.2 SII'S REPRESENTATIONS AND WARRANTIES. SII represents and
warrants to DK that:
(a) Any contributions by SII to derivative works of the Serial
Link Technology will not infringe upon any Intellectual Property Rights of any
third party.
(b) SII has full power to enter into this Agreement and to carry
out its obligations under this Agreement.
4.3 INFRINGEMENT BY OTHERS. Each party will notify the other of any
infringement of rights in the Serial Link Technology that come to such party's
attention. In the event of any infringement of any rights granted to SII
hereunder, SII will have the first option to bring any action for such
infringement on behalf of itself and DK, and DK will cooperate fully with SII in
such action; and in such event SII will bear the expenses of the action and will
recover its expenses from any sums recovered in the action. The balance of the
proceeds of such action will be deemed to be Net Receipts and will be divided
between SII and DK according to the percentages specified in Section 2.1. If
SII declines in writing to bring any such action, DK may proceed to bring the
action, will bear all expenses of the action, and will be entitled to any sums
recovered in the action.
4.4 INDEPENDENT DEVELOPMENT. Nothing in this Agreement will impair
SII's right to acquire, license, develop for itself, or have others develop for
it, modifications or enhancements to the Serial Link Technology or derivative
works thereof, or replacements for the Serial Link Technology or derivative
works thereof.
5. CONFIDENTIAL INFORMATION.
5.1 NONDISCLOSURE. SII and DK agree that the terms and conditions of
this Agreement, the trade secrets and technology embodied in the Serial Link
Technology, the
4
concepts, know how, techniques and algorithms known or developed by DK at the
time of entering into this Agreement, any information disclosed by SII to DK
or his accountant under Section 2.4, any information concerning the other
party's marketing plans, existing or future products, and any other
confidential business or technical information disclosed to the other party
in the furtherance of this Agreement will be deemed confidential and held in
strict confidence and will not be disseminated or disclosed without the
express written consent of the other party.
5.2 EXCLUSIONS. Notwithstanding the above, the following materials
will not be deemed confidential:
(a) Information that is or becomes known to the general public
without breach of the nondisclosure obligations of this Agreement;
(b) Information that is customarily disclosed to others without
restriction on disclosure;
(c) Information that is obtained from a third party or
independently developed without breach of a nondisclosure obligation and without
restriction on disclosure; and
(d) Information that is required to be disclosed in connection
with any suit, action, or other dispute related to this Agreement.
6. TERM AND TERMINATION.
6.1 TERM. This Agreement will commence on the date first written
above and will continue until terminated by mutual consent of the parties or as
provided in this Section 6.
6.2 TERMINATION.
(a) If either party becomes the subject of a voluntary or
involuntary petition in bankruptcy or any proceeding relating to insolvency,
receivership, liquidation, or composition for the benefit of creditors, if that
petition or proceeding is not resolved in its favor within sixty (60) days after
filing, the other party may terminate this Agreement on thirty (30) days' prior
written notice.
(b) If either party materially breaches any term or condition of
this Agreement and fails to cure that breach within thirty (30) days after
receiving written notice of the breach, the other party shall have the right to
terminate this Agreement any time after the end of such thirty (30) day period.
(c) If SII fails to commercialize the Silicon Link Technology by
within three (3) years of the date when this Agreement becomes effective, then
DK may terminate this Agreement on thirty (30) days' prior written notice to
SII. As used herein, "commercialize"
5
means incorporate in a product that is readily available and offered for sale
to third parties in commercially reasonable quantities.
6.3 EFFECTS OF TERMINATION.
(a) Each party shall return or destroy all copies of the
confidential information of the other party within thirty (30) days after the
effective date of the termination. At the request of either party, an officer
of the other party will certify in writing that such other party has complied
with this obligation.
(b) All sums owed to SII by DK, or to DK by SII, will become
immediately due and payable upon the effective date of termination.
(c) SII and its licensees will have the right to ship to
customers all products remaining in inventory that contain the Serial Link
Technology or any derivative work thereof.
(d) Neither party will be liable for damages of any kind as a
result of exercising its right to terminate this Agreement according to its
terms, and termination will not affect any other right or remedy at law or in
equity of either party.
(e) All rights and licenses granted by SII (or by SII's
sublicensees) to third parties in good faith will continue in full force and
effect. In addition, the obligations of the parties under Sections 4
(Intellectual Property Rights), 5 (Confidential Information), 7 (Limitation of
Liability), and 8 (Miscellaneous) will survive the termination of this
Agreement.
(f) If DK terminates this Agreement pursuant to Section 6.2(a)
or 6.2(c), all of the rights granted by DK to SII under Section 1 will
immediately terminate and expire (subject to the provisions of paragraph (e)
above concerning the survival of the rights and licenses of third parties).
7. LIMITATION OF LIABILITY.
SII AND DK WILL NOT BE LIABLE FOR ANY LOST PROFITS OR ANY SPECIAL,
INCIDENTAL, OR CONSEQUENTIAL DAMAGES, EVEN IF INFORMED OF THE POSSIBILITY
THEREOF IN ADVANCE AND EVEN IF A REMEDY SET FORTH HEREIN FAILS OF ITS ESSENTIAL
PURPOSE. THIS LIMITATION APPLIES TO ALL CAUSES OF ACTION UNDER ANY THEORY OF
LIABILITY, INCLUDING WITHOUT LIMITATION BREACH OF CONTRACT, BREACH OF WARRANTY,
NEGLIGENCE, STRICT LIABILITY, AND OTHER TORTS.
8. MISCELLANEOUS.
8.1 GOVERNING LAW; FORUM. This Agreement will be deemed entered into
in Santa Xxxxx County, California and will be governed by and interpreted in
accordance with the substantive laws of the State of California, excluding the
Convention on Contracts for the Sale
6
of International Goods. The parties agree that any dispute arising out of or
related to this Agreement will be finally settled under the Rules of
Conciliation and Arbitration of the International Chamber of Commerce by a
single arbitrator appointed in accordance with those Rules. The place of
arbitration will be Santa Xxxxx County, California, but the parties hereby
agree to exclude any right of application or appeal to the courts in
connection with any questions of law arising in the course of the reference
or out of the award. The language to be used in the arbitral proceedings
will be English. The applicable procedural law will be the law of the place
of arbitration. Judgment upon the award may be entered in any court having
jurisdiction.
8.2 ASSIGNMENT. Except upon a merger, reorganization, or sale of all
or substantially all the assets of the assigning party, neither party may assign
this Agreement without the prior written consent of the other. Any assignment
permitted hereunder will be subject to the written consent of the assignee to
all the terms and provisions of this Agreement.
8.3 MODIFICATION. No modification to this Agreement, nor any waiver
of any rights, will be effective unless assented to in writing by the party to
be charged, and the waiver of any breach or default shall not constitute a
waiver of any other right hereunder or any subsequent breach or default.
8.4 NOTICES. Any required or permitted notices hereunder must be
given in writing at the address of each party sent forth above, or to such other
address as either party may substitute by written notice to the other in the
manner contemplated herein, by one of the following methods: hand delivery;
registered, express, or certified mail, return receipt requested, postage
prepaid; nationally-recognized private express courier; or facsimile. Notices
will be deemed given on the date when hand delivered or transmitted by
facsimile, one (1) day after being sent by express mail or nationally-recognized
private express courier, and five (5) days after being sent by registered or
certified mail.
8.5 COUNTERPARTS. This Agreement may be executed in multiple
counterparts, each of which will be deemed an original, but all of which
together will constitute one and the same instrument.
8.6 INDEPENDENT CONTRACTORS. In performing their respective duties
under this Agreement, each of the parties will be operating as an independent
contractor. Nothing contained herein will in any way constitute any
association, partnership, or joint venture between the parties hereto, or be
construed to evidence the intention of the parties to establish any such
relationship.
8.7 SEVERABILITY. In the event that it is determined by a court of
competent jurisdiction that any provision of this Agreement is invalid, illegal,
or otherwise unenforceable, such provision will be enforced as nearly as
possible in accordance with the stated intention of the parties, while the
remainder of this Agreement will remain in full force and effect and bind the
parties according to its terms. To the extent any provision cannot be enforced
in
7
accordance with the stated intentions of the parties, such provisions will be
deemed not to be a part of this Agreement.
8.8 EQUITABLE RELIEF. DK acknowledges that the rights and licenses
granted to SII hereunder are of a unique, unusual, extraordinary, and
intellectual character that gives them a special value, the loss of which cannot
be reasonably or adequately compensated in damages in an action at law, that a
material breach by DK of this Agreement will cause SII great and irreparable
injury and damage and, therefore, that SII will be entitled to injunctive relief
to prevent such injury or damage.
8.9 HEADINGS. The headings of the Sections and subsections of this
Agreement are for convenience only and will not be of any effect in construing
the meanings of the Sections and subsections.
8.10 ENTIRE AGREEMENT. This Agreement and the exhibits attached
hereto constitute the entire and exclusive agreement between the parties hereto
with respect to the subject matter hereof.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first set forth above.
Silicon Image, Inc.
By: /s/ Xxxxxxxx Xxxxxxxxxxxxx 3/15/95 /s/ Xxxx-Xxxxx Xxxxx 3/15/95
--------------------------------------- --------------------------------
Xxxxxxxx Xxxxxxxxxxxxx, Vice President Xxxx-Xxxxx Xxxxx
8
EXHIBIT A
SERIAL LINK TECHNOLOGY SPECIFICATION
The serial link is a point-to-point, differential, communication
interconnect technology, implementable in low-cost, scaleable CMOS process
technologies. The media is a DC-balanced, transformer coupled, 50ohm
twisted-pair cable or 100ohm twinax cable. The transmission cable carries a
low voltage swing (less than 500mV peak-to-peak) differential signals.
Transmission rate can be as high as 1.5 giga bits per second with bit error
rate of 10E-9 or better, in a typical 0.6um CMOS implementations. Silicon
area required to implement serial link cells on an integrated circuits (ICs)
and power consumption are small enough to integrate multiple serial link
channels on an IC.
The serial link cell includes a novel serializer that converts parallel
data at lower clock rate to high speed serialized bit stream, a phase locked
loop generating multiphase clock signals, and digital phase locked loop that
recovers data (serial to parallel) and clock from serial bit stream being
received.
The circuit works in a completely synchronous manner. It requires a single
central clock for both transmit and receive. Unlike conventional receiver which
generates both recovered clock and recovered data in sync with the clock,
recovered data is sent out with a central clock. In the case of the data rate
mismatch, word skipping and doubling capability make synchronous transfer
possible. Transmission rate is 10 times the system clock and such multiplicity
is done by an on-chip phase locked loop (PLL). One PLL can be sued for multiple
(up to 8) serial link channels.
9
AMENDMENT NO. 1
TO
LICENSE AGREEMENT
BETWEEN XXXX-XXXXX XXXXX AND SILICON IMAGE, INC.
This Amendment No. 1 shall serve to amend the License Agreement (hereinafter
referred to as "The License Agreement") between Xxxx-Xxxxx Xxxxx ("DK") and
Silicon Image, Inc. ("SII") dated March 15, 1995. The License Agreement sets
forth terms and conditions of licensing Serial Link Technology developed by DK
to SII in the use of (a) transmitting video information, and (b) [***], as
defined in the section 1.1 of the License Agreement.
The License Agreement is hereby amended as follows:
In the first paragraph of the License Agreement, delete the following sentence;
"THIS AGREEMENT WILL BECOME EFFECTIVE, IF AT ALL, UPON THE LATER OF (A)
MARCH 28, 1995, OR (B) SII'S CLOSING OF A SALE OF ITS SECURITIES HAVING A
VALUE OF AT LEAST TWO MILLION DOLLARS ($2,000,000)."
And replace with;
"THIS AGREEMENT WILL BECOME EFFECTIVE AS OF MAY1, 1995."
Other than the addition of the foregoing, the License Agreement remains
unmodified and in full force and effect.
The Effective Date of this Amendment No. 1 is May 1, 1995.
Silicon Image, Inc.
By: /s/ Xxxxxxxx Xxxxxxxxxxxxx 5/1/95 /s/ Xxxx-Xxxxx Xxxxx 5/1/95
--------------------------------------- -------------------------------
Xxxxxxxx Xxxxxxxxxxxxx, Vice President Xxxx-Xxxxx Xxxxx
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission
AMENDMENT NO. 2
TO
LICENSE AGREEMENT
BETWEEN XXXX-XXXXX XXXXX AND SILICON IMAGE, INC.
This Amendment No. 2, dated November 30, 1995, amends a certain License
Agreement dated March 15, 1995 by and between Xxxx-Xxxxx Xxxxx ("DK") and
Silicon Image, Inc. ("SII"), as amended by Amendment No. 1 thereto dated May 1,
1995 (the "License Agreement").
1. Recital D of the License Agreement is amended to read in full as
follows: "DK desires to license to SII, and SII desires to license from DK, the
Serial Link Technology for all fields of use except those that are exclusively
reserved to the Prior Licensees under the terms of their existing agreements
with DK."
2. Section 1.1 of the License Agreement is amended to read in full
as follows: "DK hereby grants to SII a perpetual, irrevocable, worldwide
license to use, make, have made, copy, publish, modify, improve, prepare
derivative works based on, market, distribute, lease, and sell the Serial Link
Technology; with rights to sublicense others to do the same, in all fields of
use except those that are exclusively reserved to the Prior Licensees under the
terms of their existing agreements with DK. The foregoing license includes, but
is not limited to, licenses under any patents, copyrights, mask work rights,
trade secret rights, and other intellectual property rights (collectively,
"INTELLECTUAL PROPERTY RIGHTS") owned or licensed by DK in connection with the
Serial Link Technology."
3. Section 1.2 is amended to read in full as follows: "DK agrees
that after the date of this Agreement, DK will not grant to any other party
rights to use the Serial Link Technology."
4. Except as modified by this Amendment, the terms of the License
Agreement remain in full force and effect.
IN WITNESS WHEREOF, the parties have executed this Amendment No. 2 as of
the date set forth above.
Silicon Image, Inc.
By: /s/ Xxxxx X. Xxx /s/ Xxxx-Xxxxx Xxxxx
--------------------------- -------------------------
Xxxxx X. Xxx, President Xxxx-Xxxxx Xxxxx
AMENDMENT NO. 3
TO
LICENSE AGREEMENT
BETWEEN XXXX-XXXXX XXXXX AND SILICON IMAGE, INC.
This Amendment No. 3, dated 6/18, 1997, amends a certain License Agreement
dated March 15, 1995 by and between Xxxx-Xxxxx Xxxxx ("DK") and Silicon Image,
Inc. ("SII"), as amended by Amendment No. 1 thereto dated May 1, 1995 and
Amendment No. 2 thereto dated November 30, 1995 (the "LICENSE AGREEMENT").
1. Recital C of the License Agreement is amended to read in full as follows:
"Prior to the date of this Agreement, DK granted limited rights in the
Serial Link Technology to [***] (collectively, the "PRIOR LICENSEES").
2. A new subsection 4.1(f) is added to the License Agreement to read in full
as follows: "In addition to (and in no way limiting) the foregoing, DK
warrants and represents that pursuant to a prior agreement with Sun, DK and
Sun are co-owners o the patents and patent applications listed in Rider A
to Amendment No. 3 of the License Agreement, and that DK has the right to
grant the licenses granted herein to the inventions covered by such patents
and patent applications."
3. A new subsection 4.1(g) is added to the License Agreement to read in full
as follows: "In addition to (and in no way limiting) the foregoing, DK
warrants and represents that pursuant to a prior agreement with [***], (i)
DK licensed some of the Serial Link Technology exclusively to [***], but
the exclusivity period has expired and this prior agreement will not
interfere with the rights granted hereunder in that technology, and (ii) DK
agreed to give [***] first refusal to the rights in certain Serial Link
Technology developed during a two-year period identified in the prior
agreement, but that period has expired and none of the technology licensed
hereunder is or was subject to, and the license granted herein does not
conflict with, that first refusal right."
4. Except as modified by this Amendment, the terms of the License Agreement
remain in full force and effect.
IN WITNESS WHEREOF, the parties have executed this Amendment No. 3 as of
the date set forth above.
Silicon Image, Inc.
By: /s/ Xxxxx X. Xxx /s/ Xxxx-Xxxxx Xxxxx
------------------------------ ------------------------
Xxxxx X. Xxx, President Xxxx-Xxxxx Xxxxx
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission
Rider A
To
Amendment No. 3
to
License Agreement
Patents and Patent Applications
Filed with
Sun Microsystems
as
Co-Inventor
Invention Patent/ Filing/
Description/Title Application No. Country Issue Date
----------------- --------------- ------- -----------
High speed Serial Link
for fully duplexed data 5,587,709 U.S.A. Dec/24/1996
Communication
