Exhibit 10.17
License Reference Number L065013
MICREL/IBM PATENT LICENSE AGREEMENT
20060920 - EXECUTION COPY
LICENSE AGREEMENT ("Agreement") with an Effective Date as defined below
between International Business Machines Corporation, a New York corporation
("IBM"), and Micrel, Inc., a California corporation ("Micrel") (each a
"Party" and, collectively, the "Parties").
Each of the Parties (as "Grantee") desires to acquire a non-exclusive
license under patents of the other Party (as "Grantor"). In consideration of
the premises and mutual covenants herein contained, IBM and Micrel agree as
follows:
Section 1. Definitions
1.1 "Authorized Assembler" shall mean a third party that, pursuant to
a written contract with a Grantee, assembles Grantee's Licensed Products, in
accordance with written specifications provided by said Grantee, for sale
under Grantee's brand name.
1.2 "Authorized Copy (Copies)" shall mean a software program copied
from a Master Copy by a third party under written authorization to such third
party to make copies of such Master Copy for its own use or for further
distribution (by transmission or other distribution means).
1.3 "Distribute" shall mean lease, license (only for software
programs), sell, or otherwise transfer.
1.4 "Effective Date" shall mean the date upon which the last
signatory hereto signs and dates this Agreement.
1.5 "IBM Licensed Products" shall mean IHS Products.
1.6 "IHS Product" shall mean an Information Handling System or any
instrumentality or aggregate of instrumentalities (including, without
limitation, any component, subassembly, computer program or supply) designed
for incorporation in an Information Handling System. Any instrumentality or
aggregate of instrumentalities primarily designed for use in the fabrication
(including testing) of an IHS Product shall not be considered to be an IHS
Product.
1.7 "Information Handling System" shall mean any instrumentality or
aggregate of instrumentalities primarily designed to compute, classify,
process, transmit, receive, retrieve, originate, switch, store, display,
manifest, measure, detect, record, reproduce, handle or utilize any form of
information, intelligence or data for business, scientific, control or other
purposes.
1.8 "Integrated Circuit" shall mean an integral unit including a
plurality of active and/or passive circuit elements formed at least in part
of Semiconductor Material and associated on, or in, one substrate comprising
the first level of packaging for such elements; such unit forming or
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contributing to the formation of a circuit for performing electrical or
electronic functions.
1.9 "Licensed Patents" shall mean all patents, including utility
models and typeface design patents and registrations (but not including any
other design patents or registrations):
1.9.1 issued or issuing on patent applications entitled to an
effective filing date prior to January 1, 2012; and
1.9.2 under which patents or the applications therefor a Party or
any of its Subsidiaries has as of the Effective Date, or thereafter
obtains, the right to grant licenses to Grantee of or within the scope
granted herein without such grant or the exercise of rights thereunder
resulting in the payment of royalties or other consideration by Grantor
or its Subsidiaries to third parties (except for payments among Grantor
and its Subsidiaries, and payments to third parties for inventions made
by said third parties while employed by Grantor or any of its
Subsidiaries).
1.9.3 Licensed Patents shall include said patent applications,
continuations-in-part, divisionals, and continuations of said patent
applications, and all reissues, reexaminations, and extensions of any
of the aforesaid patents or issuing from the aforesaid patents.
1.10 "Licensed Products" shall mean either IBM Licensed Products or
Micrel Licensed Products as the context indicates.
1.11 "Master Copy" shall mean a software program Distributed by
Grantee to a third party with written authorization to such third party to
make copies of such software program for its own use or for further
distribution (by transmission or other distribution means).
1.12 "Micrel Licensed Products" shall mean any Semiconductor
Apparatus, but not including Emulator Products.
1.13 "Performance of Business Processes" shall mean advising,
servicing, or operating all or part of an enterprise or organization.
1.14 "Semiconductor Apparatus" shall mean any Semiconductor Material,
Semiconductor Device, Semiconductor Circuit, Semiconductor Wafer, and/or
Integrated Circuit.
1.15 "Semiconductor Circuit" shall mean a circuit in which one or more
Semiconductor Devices are interconnected in one or more paths (including
passive circuit elements, if any) for performing fundamental electrical or
electronic functions and methods and processes for fabrication thereof, and
if provided therewith, such circuit includes housing and/or supporting means
therefor.
1.16 "Semiconductor Device" shall mean a device and any material
therefor, comprising a body of one or more Semiconductor Materials and one or
more electrode associated therewith, and if provided therewith, housing
and/or other supporting means therefor.
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1.17 "Semiconductor Material" shall mean any material whose
conductivity is intermediate to that of metals and insulators at room
temperature and whose conductivity, over some temperature range, increases
with increases in temperature. Such materials shall include but not be
limited to refined products, reaction products, reduced products, mixtures
and compounds.
1.18 "Semiconductor Wafer" shall mean a unitary body of Semiconductor
Material whether or not said body consists of a single Semiconductor Material
or of a multiplicity of such materials, and whether or not said body includes
one or more layers or other regions (constituting substantially less than the
whole of said body) of a material or materials which are of a type other than
Semiconductor Material.
1.19 "Subsidiary" of a Party or of a third party shall mean a
corporation, company or other entity:
1.19.1 more than fifty percent (50%) of whose outstanding shares
or securities (representing the right to vote for the election of
directors or other managing authority) are, now or hereafter, owned or
controlled, directly or indirectly, by a Party or such third party, but
such corporation, company or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control exists; or
1.19.2 which does not have outstanding shares or securities, as
may be the case in a partnership, joint venture or unincorporated
association, but more than fifty percent (50%) of whose ownership
interest representing the right to make the decisions for such
corporation, company or other entity is now or hereafter, owned or
controlled, directly or indirectly, by a Party or such third party, but
such corporation, company or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control exists.
1.20 "Emulator Product" shall mean any IHS Product which a) includes
one or more components (including but not limited to hardware, software,
firmware, microcode or the like) primarily designed to execute or translate,
either alone or in combination with any other component, either in native
mode or through emulation, simulation, cloning or the like, all or any
portion of the ESA/390 or z/Architecture instruction set or any derivative,
follow-on, or extension thereof, or b) is capable of executing or
translating, either in native mode or through emulation, simulation, cloning
or the like, software written and/or compiled to execute in an ESA/390 or
z/Architecture platform environment.
Section 2. Grant of Rights
2.1 Upon receipt of both payments in Sections 4.1.1 and 4.1.2, IBM,
as Grantor, on behalf of itself and its Subsidiaries grants to Micrel, as
Grantee, a non-exclusive, and worldwide license under IBM's Licensed Patents:
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2.1.1 to make (including the right to use any apparatus and
practice any method in making), use, import, have imported, offer to
sell, lease, license (only for software programs), sell and/or
otherwise transfer Micrel Licensed Products; and
2.1.2 to have Micrel Licensed Products made by another
manufacturer for the use, importation, offer for sale, lease, sale
and/or other transfer by Micrel only when the conditions set forth in
Section 2.3 are met.
2.1.3 A particular Micrel Licensed Product shall be licensed
under only those of IBM's Licensed Patents that:
2.1.3.1 exist in the country where Micrel made, used,
imported, had imported, offered for sale, leased, licensed (only
for software programs), sold, and/or otherwise transferred such
Micrel Licensed Product and which, but for the license granted
herein, would have been infringed (including contributory
infringement) by the performance of such acts; and
2.1.3.2 exist in any country other than where Micrel made,
used, imported, had imported, offered for sale, leased, licensed
(only for software programs), sold, and/or otherwise transferred
such Micrel Licensed Product and which, but for the license
granted herein, would have been infringed (including contributory
infringement) if Micrel's performance of such acts had occurred
in the country where such Licensed Patents exist.
2.2 Micrel, as Grantor, on behalf of itself and its Subsidiaries
grants to IBM, as Grantee, a non-exclusive, worldwide, royalty-free and fully
paid-up license under Micrel's Licensed Patents:
2.2.1 to make (including the right to use any apparatus and
practice any method in making), use, import, have imported, offer to
sell, lease, license (only for software programs), sell and/or
otherwise transfer IBM Licensed Products;
2.2.2 to have IBM Licensed Products made by another manufacturer
for the use, importation, offer to sell, lease, sale and/or other
transfer by IBM only when the conditions set forth in Section 2.3 are
met; and
2.2.3 to use any apparatus and practice any method in connection
with the Performance of Business Processes for itself or third parties.
2.2.4 A particular IBM Licensed Product, or use of any apparatus
or practice of any method in connection with the Performance of
Business Processes, shall be licensed under only those of Micrel's
Licensed Patents that:
2.2.4.1 exist in the country where IBM made, used, imported,
had imported, offered for sale, leased, licensed (only for
software programs), sold, and/or otherwise transferred such IBM
Licensed Product, or used any such apparatus or practiced any
such method in connection with the Performance of Business
Processes, and which, but for the license granted herein, would
have been infringed (including contributory infringement) by the
performance of such acts; and
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2.2.4.2 exist in any country other than where IBM made,
used, imported, had imported, offered for sale, leased, licensed
(only for software programs), sold, and/or otherwise transferred
such IBM Licensed Product, or used any such apparatus or
practiced any such method in connection with the Performance of
Business Processes, and which, but for the license granted
herein, would have been infringed (including contributory
infringement) if IBM's performance of such acts had occurred in
the country where such Licensed Patents exist.
2.3 The license granted in Sections 2.1.2 and 2.2.2 to Grantee to
have Grantee Licensed Products made by another manufacturer:
2.3.1 shall only apply to Grantee Licensed Products sold by said
other manufacturer to Grantee after the Effective Date;
2.3.2 shall only apply to Grantee Licensed Products and/or
portions thereof for which the specifications were created by Grantee
(either solely or jointly with one or more third parties) or for
Grantee;
2.3.3 shall only be under claims of Grantor's Licensed Patents,
the infringement of which would be necessitated by compliance with such
specifications; and
2.3.4 shall not apply to (i) any products in the form
manufactured or marketed by said other manufacturer prior to Grantee's
furnishing of said specifications, or (ii) any methods used by said
other manufacturer.
2.4 Unless Grantee informs Grantor to the contrary, Grantee shall be
deemed to have authorized said other manufacturer to make Grantee's Licensed
Products under the license granted to Grantee when the conditions specified
in Section 2.3 are fulfilled. In response to written notice by Grantor
identifying a product and a manufacturer, Grantee shall in a timely manner
inform Grantor of the quantity of such product, if any, manufactured by such
manufacturer pursuant to the license granted in Section 2.1.2 or 2.2.2.
2.5 Except as expressly provided herein, no license or immunity is
granted under this Agreement by either Party, either directly or by
implication, estoppel or otherwise, to any third parties acquiring items from
either Party for the combination of such acquired items with other items
(including items also acquired from either Party) or for the use of such
combination.
2.6 Subject to Section 2.7, the licenses granted herein include the
right of each Party to grant sublicenses to its Subsidiaries existing on or
after the Effective Date, which sublicenses may include the right for
sublicensed Subsidiaries to further sublicense to other Subsidiaries of said
Party. No sublicense shall be broader in any respect at any time during the
life of this Agreement than the license held at that time by the Party that
granted the sublicense.
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2.7 A sublicense granted to a Subsidiary shall terminate on the
earlier of:
2.7.1 the date such Subsidiary ceases to be a Subsidiary of a
Party; and
2.7.2 the date of termination or expiration of the license of the
Party or Subsidiary that granted the sublicense.
2.7.3 If a Subsidiary ceases to be a Subsidiary and holds any
patents under which a Party is licensed, such license shall continue
for the term defined herein.
2.8 In the event that neither a Party nor any of its Subsidiaries has
the right to grant a license of the scope set forth in Section 2 under any
particular Licensed Patent, then the license granted in Section 2 under said
Licensed Patent shall be of the broadest scope which said Party or any of its
Subsidiaries has the right to grant.
2.9 A product which, if assembled by Grantee, would be licensed to
Grantee hereunder shall also be licensed hereunder if assembled by an
Authorized Assembler, provided that:
2.9.1 the purchase price paid to Grantee and Grantee's designees
for items included in the product exceeds sixty percent (60%) of the
total cost of manufacturing and purchasing all of the items included in
the product; and
2.9.2 the product is sold under Grantee's brand name.
2.10 For purposes of this Agreement, an Authorized Copy shall be
deemed to have been Distributed by the Grantee that Distributed the Master
Copy from which the Authorized Copy was copied, provided such Authorized Copy
is used or Distributed under a brand name of Grantee.
2.11 Where a third party uses an apparatus or practices a method in
Performance of Business Process, and such third party is acting on behalf of
and as subcontractor to IBM, in connection with a contract that obligates IBM
to provide such Performance of a Business Process for an IBM customer, such
use or practice shall be deemed to have been performed by IBM.
Section 3. Mutual Releases
3.1 Each Party (as "Releasor") on behalf of itself and its
Subsidiaries as of the Effective Date, irrevocably releases the other Party,
its Subsidiaries which are its Subsidiaries on the Effective Date, and its
and their respective customers from any and all claims or liabilities for
acts of infringement of Releasor's Licensed Patents, which claims or
liabilities are based on acts prior to the Effective Date, which, had they
been performed after the Effective Date, would have been licensed under this
Agreement.
3.2 The release contained in this Section 3 shall not apply to any
person other than the persons named in this Section 3 and shall not apply to
the manufacture of any items by any person other than the Parties and their
Subsidiaries. The release granted by Micrel to IBM is effective as of the
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Effective Date. The release granted by IBM to Micrel shall become effective
as of the Effective Date upon receipt of the payment specified in Section
4.1.1.
Section 4. Payment
4.1 Micrel shall pay to IBM the total sum of Two Million and Fifty
Thousand US Dollars ($2,050,000.00), no portion of which shall be
refundable, on or before the Effective Date, apportioned as follows:
4.1.1 as consideration for the release granted by IBM to Micrel
under Section 3.1, Two Hundred and Fifty Thousand US dollars
($250,000.00); and
4.1.2 as consideration for the license and other rights granted by
IBM to Micrel herein, One Million and Eight Hundred Thousand US dollars
($1,800,000.00).
Section 5. Term of Agreement
5.1 The term of this Agreement shall be from the Effective Date until
December 31, 2011, unless earlier terminated under the provisions of this
Agreement.
Section 6. Transferability. This Agreement and the rights (other than the
rights to receive payments) and licenses granted under this Agreement are not
assignable or transferable and the duties and obligations to be performed
under this Agreement can not be delegated, whether in conjunction with a
change in ownership, merger, acquisition, sale or transfer of all, or
substantially all or any part of, the business, assets or shares of a Party,
or otherwise, either voluntarily, by operation of law, or otherwise. Any
purported assignment or other transfer of this Agreement or the licenses
granted by under this Agreement shall be null and void. As limited
exceptions to the provision of this Section 6:
6.1 If, after the Effective Date, a Party or any of its Subsidiaries
("Acquiring Party") either acquires an entity or acquires substantially all
of the assets from an entity, and said entity is, immediately prior to the
date of acquisition, licensed by the other Party ("Licensor") under one or
more Licensed Patents through an existing agreement pursuant to which
royalties or other payments are made by said entity to Licensor, then the
license and other rights granted herein to the Acquiring Party with respect
to said Licensed Patents shall apply to products manufactured by said
acquired entity or through the use of said assets, provided that such
royalties or other payments shall continue to be made to the Licensor by the
Acquiring Party or said entity with respect to such products notwithstanding
that the Acquiring Party may have been licensed for the same Licensed
Products before the acquisition.
6.2 If, after the Effective Date, a Party (the "Transferring Party")
either: (i) transfers a product or service line to a third party without
transferring a Subsidiary to said third party or (ii) spins off a Subsidiary
(either by disposing of it to a third party or in some other manner reducing
ownership or control so that the spun off entity is no longer a Subsidiary of
the Transferring Party), and if such transfer or spin off includes at least
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one marketable product or service in a product or service line and tangible
assets having a net value of at least twenty five million US dollars
($25,000,000.00), then, upon written request within sixty (60) days of the
transfer or spin off by the Transferring Party and either such third party
(in the case of a transfer) or such ex-Subsidiary (in the case of a spin off
of a Subsidiary), the other Party shall grant a royalty-free license (under
the same terms as the license granted to the Transferring Party herein) under
its Licensed Patents for the field of such product or service line to such
third party or such ex-Subsidiary (the "Recipient"), provided that:
6.2.1 such field shall not be defined more broadly than the scope
of the license granted herein to the Transferring Party, nor more
broadly than necessary to cover the particular product or service line
being transferred or spun off, including extensions thereto based on
the same technology; and
6.2.2 for the first twelve (12) months immediately following such
transfer or spin off the license granted to the third party shall be
limited to a volume of Licensed Products or services having an
aggregate selling price equal to no more than the aggregate selling
prices of such Licensed Products or services by said Transferring Party
in the twelve (12) months preceding such transfer or spin off plus
forty percent (40%), and
6.2.3 for each successive twelve-month period following such
transfer or spin off the license granted to the third party shall be
limited to a volume of Licensed Products or services having an
aggregate selling price equal to no more than the limit for the
immediately preceding twelve-month period plus forty percent (40%);
6.2.4 the Recipient shall grant to such other Party a royalty-
free license (under the same terms as the license granted to such other
Party herein) under all Recipient Patents (defined as follows) for all
products and services licensed herein to such other Party on the date
of the product or service line transfer or spin off. "Recipient
Patents" shall mean all patents throughout the world entitled to an
effective filing date prior to January 1, 2012, under which, at any
time commencing with the date of the product or service line transfer
or spin off, the Recipient or any of its Subsidiaries has the right to
grant such licenses;
6.2.5 this Section 6.2, Section 3, and Section 4 shall be omitted
from the license granted to the Recipient; and
6.2.6 the license granted to the Recipient shall terminate if the
license granted to the Transferring Party terminates or is terminated
for any reason.
6.2.7 Notwithstanding the foregoing provisions of this Section
6.2, the transfer by one Party of substantially all of its assets to
any third party shall not be considered to be a transfer of a product
or service line or spin off of a Subsidiary under this Section 6.2, and
the other Party shall have no obligation to grant a license under its
Licensed Patents to such third party as a result of such transfer.
6.3 If one Party (the "Acquired Party") is acquired by a third party,
becoming a Subsidiary of such third party:
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6.3.1 the Acquired Party shall promptly give notice of such
acquisition to the other Party; and
6.3.2 the license granted to the Acquired Party and all
sublicenses (if any) granted to the Acquired Party's remaining
Subsidiaries shall automatically become limited to only products and/or
services substantially similar to the products designed by and
manufactured by or for the Acquired Party and/or services marketed by
the Acquired Party (or, in the case of a Subsidiary of the Acquired
Party, by such Subsidiary) within the licenses granted in this
Agreement (or in such sublicense) prior to such acquisition; provided,
however, that:
6.3.2.1 for the first twelve (12) months immediately
following such acquisition, the license granted to the Acquired
Party shall be limited to a volume of Licensed Products or
services having an aggregate selling price equal to no more than
the aggregate selling prices of such Licensed Products or
services by said Acquired Party in the twelve (12) months
preceding such acquisition plus forty percent (40%), and
6.3.2.2 for each successive twelve-month period following
such acquisition the license granted to the Acquired Party shall
be limited to a volume of Licensed Products or services having an
aggregate selling price equal to no more than the limit for the
immediately preceding twelve-month period plus forty percent
(40%).
6.4 If one Party (the "Acquired Party") is acquired by a third party
such that it is no longer a separate legal entity, the license granted to the
Acquired Party shall terminate as of the date of acquisition. Provided,
however, that:
6.4.1 if the third party is licensed under one or more of the
other Party's Licensed Patents in a field within the scope of the field
of the Acquired Party's Licensed Products (and/or licensed services, as
applicable), then to the extent that the license agreement between the
third party and the other Party requires that all remaining payments
due under this Agreement, if any, shall be payable by the third party,
then the payment obligations in this Agreement shall continue to
survive; or
6.4.2 if the third party is not licensed under the other Party's
Licensed Patents, the other Party agrees to enter into a licensing
agreement with the third party with the same terms, scope, and product
or service field as this Agreement, including a license grant from the
third party under the third party's Licensed Patents for all the
Licensed Products of the other Party, under the following terms and
conditions:
6.4.2.1 the license shall be limited to only products
and/or services substantially similar to the products designed by
and manufactured by or for the Acquired Party and/or services
marketed by the Acquired Party (or, in the case of a Subsidiary
of the Acquired Party, by such Subsidiary) within the licenses
granted in this Agreement (or in such sublicense) prior to such
acquisition; and
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6.4.2.2 the third party is not involved in or is not
threatening litigation against other Party, the other Party's
Subsidiaries, or customers of the other Party or the other
Party's Subsidiaries with respect to a product or service of the
other Party; and
6.4.2.3 the third party agrees to and executes such
agreement with the other Party with this Section 6.4 being
omitted from such agreement; and
6.4.2.4 if the third party sues the other Party or
Subsidiaries of the other Party for patent infringement, the
license granted to the third party from the other Party is
suspended but the license granted from the third party to the
other Party remains in force; and
6.4.2.5 for the first twelve (12) months immediately
following such acquisition, the license granted to the third
party shall be limited to a volume of Licensed Products or
services having an aggregate selling price equal to no more than
the aggregate selling prices of such Licensed Products or
services by said Acquired Party in the twelve (12) months
preceding such acquisition plus forty percent (40%), and
6.4.2.6 for each successive twelve-month period following
such acquisition the license granted to the third party shall be
limited to a volume of Licensed Products or services having an
aggregate selling price equal to no more than the limit for the
immediately preceding twelve-month period plus forty percent
(40%).
6.5 If one Party undergoes a change of Control, but remains the same
legal entity with and using substantially the same assets, any license or
sublicense granted hereunder to such Party shall continue in full force and
effect. "Control" means the possession, directly or indirectly, of the power
to direct or cause the direction of the management or policies of a person or
entity, whether through the ownership of voting securities, by contract or
otherwise.
6.6 If a Party undergoes reorganization, but remains a separate legal
entity, such Party may assign its rights and licenses and delegate its duties
and obligations under this Agreement to its legal successor, provided that
after the reorganization, the successor and its Subsidiaries will have
essentially the same assets as such Party and its Subsidiaries had prior to
the reorganization.
Section 7. Means of Payment and Communication
7.1 Payment shall be made by electronic funds transfer. Payments
shall be deemed to be made on the date credited to the following account:
Director of Licensing
International Business Machines Corporation
PNC Bank
000 Xxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Bank Account Number: 1017306369
ABA Routing Number: 000000000
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7.2 Notices and other communications shall be sent by facsimile,
registered or certified mail, or by reputable express courier to the
following addresses and shall be effective upon mailing:
For IBM: For Micrel:
Director of Licensing General Counsel
IBM Corporation Micrel, Inc.
Xxxxx Xxxxxx Xxxxx, XX-XX000 0000 Xxxxxxx Xxxxx
Xxxxxx, Xxx Xxxx 00000-0000 Xxx Xxxx, Xxxxxxxxxx 00000
Facsimile: (000) 000-0000 Facsimile: (000) 000-0000
7.3 A License Reference Number has been assigned to this Agreement.
This number should be included in all communications including wire transfer
payments, tax credit certificates, letters, faxes and e-mail messages.
Section 8. Other License Rights
8.1 The Parties recognize that the Parties or their respective
Subsidiaries may now have, or hereafter obtain, the right to grant licenses
under one or more patents of any country, including utility models and
including type font design patents and registrations (but not including any
other design patents or registrations), issuing on patent applications
entitled to an effective filing date prior to January 1, 2012, and under the
patent applications therefore, but that such grant or the exercise of rights
thereunder shall result in payment of royalties or other consideration by
Grantor or its Subsidiaries to third parties. Each Party (as Grantor) agrees
that, upon written request, it shall grant to the Grantee, to the extent and
subject to the terms and conditions under which it then has the right to do
so, a license of the broadest scope which Grantor has the right to grant at
any time but of no greater scope than the scope of the licenses granted
herein with respect to any such patent or patent application. Such license
shall be granted under a separate agreement, upon payment of the same royalty
or other consideration as that which Grantor or any of its Subsidiaries is
obligated to pay to a third party because of the grant of such license or the
exercise of rights thereunder.
8.2 Upon written request by one Party, the other Party shall inform
the requesting Party of those patents or patent applications coming within
the scope of Section 8.l at the time of such request.
Section 9. Miscellaneous
9.1 Neither Party shall assign or grant any right under any of its
Licensed Patents unless such assignment or grant is made subject to the terms
of this Agreement.
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9.2 Neither Party shall use or refer to this Agreement or any of its
provisions in any promotional activity.
9.3 Each Party represents and warrants that it has the full right and
power to grant the license and release set forth in Sections 2 and 3. Each
Party (as a Grantor) further represents and warrants that prior to the
Effective Date, it has informed the other Party of any patent originating
from inventions made by employees of Grantor or its Subsidiaries, which
patent is or was owned by Grantor or its Subsidiaries as of the Effective
Date, and which patent, owing to prior arrangements with third parties, does
not qualify as a Licensed Patent of Grantor under the licenses granted in
Section 2. A listing of such patents owned by IBM is attached as Attachment
A. Neither Party makes any other representation or warranty, express or
implied, nor shall either Party have any liability in respect of any
infringement of patents or other rights of third parties due to the other
Party's operation under the license herein granted.
9.4 Nothing contained in this Agreement shall be construed as
conferring any rights by implication, estoppel or otherwise, under any
patent, patent application, or any non-patent intellectual property right of
the Parties other than the Licensed Patents. Neither Party is required
hereunder to furnish or disclose to the other Party any technical,
confidential, or other information (including copies of Licensed Patents)
except as specifically provided herein.
9.5 Neither Party shall have any obligation hereunder to institute
any action or suit against third parties for infringement of any of its
Licensed Patents or to defend any action or suit brought by a third party
which challenges or concerns the validity of any of its Licensed Patents.
Neither Party shall have any right to institute any action or suit against
third parties for infringement of any of the other Party's Licensed Patents.
Neither Party, nor any of its Subsidiaries, is required to file any patent
application, or to secure any patent or patent rights, or to maintain any
patent in force.
9.6 Each Party shall, upon a request from the other Party identifying
any patent or patent application, inform the other Party as to the extent to
which said patent or patent application is subject to the licenses and other
rights granted hereunder. If such licenses or other rights under the
identified patent or patent application are restricted in scope, copies of
all pertinent provisions of any contract or other arrangement creating such
restrictions shall, upon request, be furnished to the Party making such
request, unless such disclosure is prevented by such contract or arrangement,
and in such event, a statement of the nature of such restriction shall be
provided.
9.7 If a third party has the right to grant licenses under a patent
to a Party (as a "Licensee") with the consent of the other Party, said other
Party shall provide said third party with any consent required to enable said
third party to license the patent to Licensee on whatever terms said third
party may deem appropriate. Each Party hereby waives any right it may have
to receive royalties or other consideration from said third party as a result
of said third party's licensing the patent to Licensee within the scope of
the licenses granted under Section 2 of this Agreement.
9.8 The Parties recognize that a Party hereto (the "Benefiting
Party"), or its respective Subsidiaries, may desire to obtain a patent
license from a third party (the "Third Party"), wherein the Third Party is
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owned or controlled, directly or indirectly, in part by the other Party
hereto (the "Assisting Party"), or its respective Subsidiaries. In such
event, and provided the conditions set forth in Section 9.8.1 are met, the
Assisting Party shall use reasonable efforts (to the extent legally
permissible) to exert its interest in the Third Party for the purpose of
assisting the Benefiting Party in becoming licensed under any patents
licensable by the Third Party under the same terms and conditions as this
Agreement and at no cost to the Benefiting Party. In no event shall the
Assisting Party exert its interest in opposition to such license.
9.8.1 The assistance set forth in Section 9.8 shall be provided
only if:
9.8.1.1 the Benefiting Party requests in writing that the
Assisting Party furnishes its assistance in obtaining the license
referenced in Section 9.8;
9.8.1.2 at the time of the request, the Assisting Party (or
any of its Subsidiaries) shall own or control, directly or
indirectly, greater than twenty five percent (25%) of: (i) the
outstanding shares or securities (representing the right to vote
for the election of directors or other managing authority) of the
Third Party, or (ii) the right to make the decisions for the
Third Party, in the event the Third Party does not have any
outstanding shares or securities (as may be the case in a
partnership, joint venture or unincorporated association);
9.8.1.3 the licensable patents of the Third Party would
qualify as Licensed Patents if the licensable patents were wholly
owned by the Assisting Party; and
9.8.1.4 during the year preceding the date of the request,
the Third Party derived more than fifty percent (50%) of its
annual income from licensing (or otherwise enforcing) its
patents.
9.8.2 If the Benefiting Party requests assistance from the
Assisting Party (in accordance with the foregoing provisions) and if
(in spite of efforts to secure a no cost license) the Benefiting Party
does enter into a license with the Third Party under which the
Benefiting Party thereby assumes an obligation to make payments to the
Third Party, then the Assisting Party shall be required to make
payment(s) to the Benefiting Party. The exact amount of such
payment(s) shall be computed as the product of: (i) the percentage of
the Assisting Party's ownership in or control of the Third Party, and
(ii) the amount of each payment(s) owed by the Benefiting Party to the
Third Party under such license. The Assisting Party shall make all
such payments to the Benefiting Party within ninety (90) days of the
Assisting Party receiving written notice from the Benefiting Party
indicating that the Benefiting Party has made a payment (including a
statement of the amount) to the Third Party under such license.
9.8.3 In response to a written request by one Party, the other
Party shall promptly specify the extent of its ownership or controlling
interest in an identified third party, provided however, that such
obligation to specify such interest shall only apply if (i) such third
party meets the criteria established in Section 9.8.1.2, or (ii) such
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third party had previously notified such requesting Party that the
requesting Party might need a license under such third party's patents.
9.9 This Agreement shall not be binding upon the Parties until it has
been signed by or on behalf of each Party. No amendment or modification of
this Agreement shall be valid or binding upon the Parties unless made in
writing and signed by or on behalf of each Party, except that IBM may amend
Section 7.1 and that either Party may amend its address in Section 7.2 solely
by written notice to the other Party.
9.10 If any term, clause or provision of this Agreement is found by
competent authority to be invalid, illegal or unenforceable in any respect
for any reason, the validity, legality and enforceability of any other term,
clause or provision shall not be affected; and such invalid, illegal or
unenforceable term, clause or provision shall be replaced, if possible, by a
valid term that reflects the intent of the Parties or if such is not
possible, shall be deleted from this Agreement. However, if the intent of
the Parties cannot be preserved, this Agreement shall be either renegotiated
or terminated.
9.11 This Agreement and the legal relations between the Parties hereto
shall be construed in accordance with and governed by the laws of the State
of New York, United States of America, without giving effect to its conflicts
of laws rules.
9.12 The headings of sections in this Agreement are for convenience
only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
9.13 Neither Party shall be considered the author of this Agreement
for the purpose of interpreting any provision herein.
9.14 Until December 31, 2011, each Party, on behalf of itself and its
Subsidiaries, agrees not to disclose any term or condition of this Agreement
to any third party without the prior written consent of the other Party.
This obligation is subject to the following exceptions:
9.14.1 disclosure is permissible if required by government or
court order, provided the Party required to disclose first gives the
other Party prior written notice to enable it to seek a protective
order;
9.14.2 disclosure is permissible if otherwise required by law;
9.14.3 disclosure is permissible if required to enforce rights
under this Agreement;
9.14.4 each Party may use similar terms and conditions in other
agreements;
9.14.5 each Party may disclose only the scope of the licenses and
immunities granted hereunder (but not any financial terms) to the
extent reasonably necessary, on a confidential basis, to its customers,
potential customers, and other third parties with which it has a
current or potential commercial relationship; and
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9.14.6 each Party may disclose the terms and conditions of this
Agreement to the extent reasonably necessary, on a confidential basis,
to its accountants, attorneys, financial advisors, its present or
future providers of venture capital, and its potential investors in or
acquirers of such Party or the product or service lines referred to in
Section 6.2.
9.15 This Agreement may be executed by the Parties in one or more
counterparts, each of which shall be an original and all of which shall
together constitute one and the same instrument. In no event shall either
Party be liable to the other Party by reason of this Agreement or any breach
or termination of this Agreement for any loss of prospective profits or
incidental, special or consequential damages. This Agreement and its
attachments embody the entire understanding of the Parties with respect to
the Licensed Patents, and replaces any prior oral or written communications
between them.
Agreed to: Agreed to:
Micrel, Inc. International Business Machines
Corporation
By: /s/ Xxxxxxx Xxxx By: /s/ Xxxx Xxxxxxxx
------------------------------------- -------------------------------------
Xxxxxxx Xxxx Xxxx Xxxxxxxx,
President and C.E.O. Director of Finance,
Technology and Intellectual
Property
Date: September 20, 2006 Date: September 20, 2006
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ATTACHMENT A
Non-Licensed Patents
PATENTS OWNED BY IBM WHICH ARE NOT LICENSED PATENTS
PATENT NUMBER TITLE
--------------- -----
U.S. 5,086,401 Image-Directed Robotic System for Precise Robotic Surgery
Including Redundant Consistency Checking
5,279,309 Signalling Device and Method for Monitoring Positions in a
Surgical Operation
5,299,288 Image-Directed Robotic System for Precise Robotic Surgery
Including Redundant Consistency Checking
5,343,385 Interference-Free Insertion of a Solid Body Into a Cavity
5,397,323 Remote Center-of-Motion Robot for Surgery
5,402,801 System and Method for Augmentation of Surgery
5,408,409 Image-Directed Robotic System for Precise Robotic Surgery
Including Redundant Consistency Checking
5,417,210 System and Method for Augmentation of Endoscopic Surgery
5,445,166 System for Advising a Surgeon
5,487,120 Optical wavelength division multiplexer for high speed,
protocol-independent serial data sources
5,572,999 Robotic System for Positioning a Surgical Instrument
Relative to a Patient's Body
5,630,431 System and Method for Augmentation of surgery
5,695,500 System for Manipulating Movement of a Surgical Instrument
with Computer Controlled Brake
5,825,949 Optical wavelength division multiplexer for coupling to
data sources and sinks, wherein at least two data sources
and sinks operate with different communication protocols
and all continuations (including continuations-in-part), divisions, reissues
and foreign counterparts thereof.
END ATTACHMENT A
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