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EXHIBIT 10.29
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TESSERA CONFIDENTIAL
TESSERA, INC.
LIMITED TCC(TM) LICENSE AGREEMENT
This Agreement is entered into as of this 22 day of July, 1996
("Effective Date"), between TESSERA INC., a corporation organized under the
laws of Delaware ("Tessera") and Mitsui High-tec, Inc., a corporation organized
under the laws of Japan ("Licensee") with reference to the following facts:
Recitals:
WHEREAS, Tessera owns certain semiconductor integrated circuit ("IC")
packaging technology it calls TCC technology and certain other IC tape mounting
technology it calls TCMT technology, where said technologies include
manufacturing processes, package device designs and specifications, including
design rules and certain other proprietary information and technology required
to manufacture TCCs and compliant uBGA CSPs, collectively, (the "Technology")
(each of the foregoing capitalized terms is more particularly described
herein); and
WHEREAS, Licensee desires to license the Technology including Tessera's
intellectual property rights to: purchase TCMT from Tessera TCMT licensees and
to use such TCMT to assemble ICs for its customers as TCCs and uBGA CSPs, and
to market and sell such TCCs, uBGAs on a world-wide basis. Supply of TCMT is
available from Tessera and Tessera authorized TCMT licensees; and,
WHEREAS, Tessera wishes for Licensee to use the Technology including
Tessera's intellectual property rights to: purchase TCMT materials from
licensed TCMT manufacturers and to use such TCMT to assemble ICs for its own
customers as TCCs and uBGAs, and to market and sell such TCCs, uBGAs, and
related packaged ICs, all in accordance with the terms hereof; and
WHEREAS, Tessera and Licensee wish to market, promote, and promulgate
TCMT, TCCs, uBGAs and systems made with same as standards with industry wide
acceptance, and to xxxxxx the rapid growth of an infrastructure of assemblers,
materials suppliers, and of assembly, burn-in, and test equipment manufacturers
all supporting TCC, uBGAs, and TCMT standards,
The Parties Hereto Agree:
I. DEFINITIONS:
As used herein, the following terms shall have the following meaning:
A. "Tessera Compliant Chip" or "TCC" means a type of integrated
circuit ("IC") package made under or using the Technology. Generally, a TCC
package has substantially coplanar bump or solder ball contacts disposed in a
grid array pattern and comprises a thin compliant multi-layer structure mounted
to at least one surface of an IC die, with permanent flexible electrical
connections between at least one of the contacts and a corresponding bond pad
on the IC die.
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TESSERA CONFIDENTIAL
B. "Tessera Compliant Mounting Tape" or "TCMT" means a single or
multi-layer flexible film made under or using the Technology. Generally, TCMT is
comprised of a first layer of flexible film with external coplanar electrical
contacts, each connected to one or more flexible leads for direct bonding to
bonding pads of an IC die, plus possible optional signal or ground plane wiring
layers. A compliant layer may optionally be attached to the first layer on the
side opposite the external electrical contacts ready for die attach.
C. "Technology" means Tessera Patents, copyrights, and know-how relating
to design, manufacture, and assembly of TCC and related IC packages (excluding
all portions of Batch Technology as defined herein) including know-how owned by
Tessera as of the Effective Date. Technology shall also include TCC derivatives,
modifications or enhanced specifications ("Improvements") made or acquired by
Tessera during the term of this Agreement.
D. "Technical Information" means Tessera technical information relating
to Technology know-how which may be proprietary and/or confidential in nature
and which may include, without limitation, material specifications, current best
method of manufacture and assembly, plating processes, tooling specifications,
design methods (rules, standards and software), techniques, know-how,
proprietary software, process data, yields, reliability data, and other Tessera
engineering data and test results reasonably needed by Licensee to exercise the
rights, licenses privileges of the licenses granted hereunder.
E. "Patent" means letters patents, utility models, allowances and
applications therefor in all countries of the world, including re-issues,
re-examinations, continuations, divisions, and all corresponding foreign
patents.
F. "Tessera Patent" means Patent(s) (i) entitled to a first effective
filing date in any country prior to expiration or termination of this Agreement,
and (ii) which arise out of inventions based on the Technology. The term Tessera
Patent shall further include any patent under which Tessera or any successor
thereof has as of the Effective Date or at any time during the term of this
Agreement, the right to grant licenses of the scope granted herein without the
payment of royalty or other consideration to third parties except for payment to
third parties for inventions made by said parties while employed by Tessera or
any successor thereof, including US patent and US patent applications set forth
in Attachment A attached, provided that Tessera shall sublicense patents to
Licensee that require such additional royalty or other consideration to the
extent they may be sublicensed by Tessera if Licensee elects to pay such
additional royalties or other consideration.
G. "Batch Technology" as used in herein means Technology including: (i)
any method or result of U.S. Patent Number 5,518,964 (and related Patents) for
bonding or connecting one or more substantially planar electrically conducting
flexible elements to electrical contact(s) on a substantially planar electrical
element such as a semiconductor IC, undiced IC wafer, or interconnect substrate,
and then forming the flexible element(s) away from the plane of said contacts in
a predetermined fashion into the flexible electrical lead(s) of a TCC package;
(ii) any method or result of U.S. Patent 5,455,390 (and related Patents) for
making and forming one or more flexible conducting elements on a flexible
dielectric film and simultaneously joining the elements to electrical contacts
on a substantially planar electrical element such as a semiconductor
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TESSERA CONFIDENTIAL
IC, undiced IC wafer or interconnect substrate to produce flexible electrical
leads of a TCC package; and/or (iii) any method or result of further invention
or Patent made or acquired by Tessera during the term hereof covering any batch
processing method for forming or producing and/or connecting flexible
electrical leads of a TCC package. Notwithstanding, the parties expressly agree
that any TCC package made and/or connected individually on an IC wafer before
dicing by traditional wire bonding methods and/or tape automated bonding
("TAB") gang bonding methods, is NOT included in Batch Technology.
H. [*].
I. "Licensee's Improvements" means device design modifications,
derivatives, improvements, or enhanced specifications, relating to the TCC
package or related materials that may be made by Licensee or an Affiliate that
is developed using confidential Technology or Technical Information or is
incorporated in a TCC or related IC package by Licensee for sale or other
transfer to a third party during the term of this Agreement or extension hereof.
The parties agree that Licensee's inventions that are not developed by using or
incorporating Tessera's confidential information, Technology, or Technical
Information shall be excluded from the definition of Licensee's Improvements
unless such invention infringes a Tessera Patent. The parties further agree that
the term "Licensee's Improvements" applies only to structures and does not apply
to manufacturing processes.
J. "Standards" means those minimum standards set by Tessera from time to
time for quality, reliability, materials, external device properties and/or
measurements pursuant to which Licensee may sell any TCC package or related IC
package under a Tessera trademark.
K. "Affiliate" means any company, corporation or other legal entity in
which fifty percent or more of the voting stock is owned or otherwise
controlled by Licensee. A company shall be considered an Affiliate only so long
as such majority ownership or control exists.
II. LICENSEE RIGHTS:
A. Assembly, Sales & Purchase License Grant. Subject to the terms and
conditions hereinafter set forth, Licensee's agreement to the provisions hereof
including all attachments hereto, and Licensee's payment of the fees and
royalties stated herein in Paragraph III, Tessera hereby grants Licensee a
non-exclusive, non-transferable, non-sublicensable limited license to purchase
TCMT and related materials only from Tessera licensees, and to use the
Technology to package and assemble any ICs for its customers as TCCs and related
IC packages, all of the foregoing made or assembled according to the
Specifications, and to sell same on a world wide basis.
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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B. Batch Technology Excluded. Notwithstanding anything herein to the
contrary, Batch Technology is excluded from the scope of this Agreement, and
Licensee's rights herein expressly exclude any right to package and/or
assemble, or sell any TCC or related IC package made using Batch Technology.
C. TCMT Restrictions. Licensee may purchase TCMT only from Tessera, or
parties licensed by Tessera to sell TCMT and only for Licensee's IC assembly
purposes. Excess or salvage TCMT may not be sold or resold except to Tessera or
parties licensed by Tessera to make or sell TCMT. To ensure compliance with
this provision, Licensee shall obtain written consent of Tessera prior to
selling TCMT to such customer, but only as to the first sale of TCMT to such
customer.
D. TCMT License Option. After one year from the Effective Date or
alternately after Licensee is assembling at least [*]([*]) TCC or related IC
devices per month for at least [*] ([*]) consecutive months hereunder, Licensee
may pay Tessera [*] US DOLLARS ($[*]) (the "TCMT Transfer Fee") and thereby
upgrade this License to include royalty free rights to manufacture and sell TCMT
and other provisions substantially similar to such provisions in the Amkor
license, including Tessera provision of up to sixty (60) working man-days of
engineering support effort including joint activities at Tessera's San Xxxx
facilities and Licensee's facilities in Japan. Said TCMT Technology transfer
activities shall begin as soon as practicable after payment of the said TCMT
Transfer Fee, and shall include 2 complete copies of the updated documentation.
III. FEE AND ROYALTY:
A. Technology Transfer Fee. As consideration for the licenses, rights and
privileges of section II.A., hereof, Licensee shall pay to Tessera a "Technology
Transfer Fee" equal to the sum of [*] US DOLLARS (US$[*]). The Technology
Transfer Fee shall be paid in two installments. Licensee shall pay to Tessera
[*] US DOLLARS (US$[*]; the "First Installment") within thirty (30) days of the
Effective Date. Licensee shall pay the remaining [*] US DOLLARS (US$[*]) of the
Technology Transfer Fee after sixty (60) working man-days of engineering
support.
B. Royalty. In addition to Technology Transfer Fee, Licensee shall pay
base running royalties equal to [*] PERCENT ([*]%) of [*] for the license of
applicable Technology, including Tessera Patents, twice annually to Tessera
during the term of this agreement.
C. Volume Adjustments. Royalty payments due Tessera hereunder shall be
adjusted by multiplying Licensee's total base royalty calculated under Paragraph
B. above, by a factor of [*] ([*]) until Licensee has paid Tessera [*] US
DOLLARS (US$[*]) in aggregate royalties, and then by a factor of [*] ([*]) until
Licensee has paid Tessera an additional [*] US DOLLARS (US$[*]) in aggregate
royalties. DISCOUNT FOR PREPAYMENT: At any time, Licensee may elect to pay
Tessera [*] US DOLLARS (US$[*]) in lieu of any such Volume Adjustments, in which
event said Licensee shall notify Tessera and tender such payment and henceforth
pay royalties at the [*]% level without any such Volume Adjustments.
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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D. Equitable License. Tessera, in good faith, intends that any agreement
with another similarly situated licensee whereby such licensee receives
identical rights, privileges, terms and conditions as contained in this
Agreement, shall be on financial terms (including running royalties and lump-sum
payments) no more favorable to such other licensee than the financial terms set
forth in this Agreement. Notwithstanding the foregoing, Licensee acknowledges
and agrees that is likely that all other license agreements will not contain the
same rights, privileges, terms or conditions as a result of different business
circumstances, and therefore will not be subject to this Paragraph. The
following shall not be deemed agreements subject to this Paragraph: (i)
agreements between Tessera and its Affiliates; (ii) cross-license or other
agreements under which a substantial portion of the consideration received by
Tessera consists of rights to patents and/or technology owned by the other party
to such agreement; (iii) agreements with governmental agencies; and (iv)
agreements in settlement of litigation. In the event that Tessera grants another
license subject to this Paragraph, then Tessera shall promptly notify Licensee
of the financial terms of such other license. Upon notice by Licensee, given
within 30 days after such notice by Tessera, this Agreement shall be amended to
substitute all of the financial terms of such other license for the financial
terms of this Agreement, provided that (a) Licensee must accept all of the
financial terms of such other license, and may not select particular terms; and
(b) such amendment shall not affect Tessera's rights with respect to royalties
or other moneys accrued and/or paid prior to such amendment.
IV. LICENSEE REPORTS AND PAYMENT:
Royalties shall be paid twice annually for the period beginning December
21 and ending June 20, and the period beginning June 21 and ending December 20
(each six month period hereinafter referred to as a "Payment Period"). Licensee
shall deliver to Tessera within forty-five (45) days after the end of each
Payment Period, beginning with the first Payment Period, a written report, for
the applicable Payment Period, describing: (a) the basis upon which royalties
have been calculated (including sales by product type) and (b) the total
royalty due Tessera including any adjustments as set forth in Paragraph III
above. Each report for a Payment Period shall be accompanied by full payment to
Tessera on the royalties payable hereunder for such payment Period. All
payments under this Paragraph shall be made in US Dollars by wire transfer to
such bank or account as Tessera may from time to time designate in writing.
Payments shall be considered to be made as of the day received in Tessera's
designated bank or account.
V. TECHNOLOGY TRANSFER:
A. In addition to granting of the aforesaid licenses under the
Technology, upon Effective Date of this Agreement and the payment of the entire
amount of the First Installment of the Technology Transfer Fee described in
Paragraph III above, Tessera will transfer to Licensee the specifications and
Technical Information for the applicable license rights granted herein.
B. Furthermore, Tessera will make available in a timely fashion (no less
than semi-annually), all Improvements including changes, and modifications in
specifications, methods and materials during the term of this Agreement.
Notwithstanding the foregoing, Tessera is under no obligation to transfer
and/or license any information whether confidential, proprietary or
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TESSERA CONFIDENTIAL
otherwise that it may be prohibited from transferring to Licensee by contract
with a third party or applicable law. Two copies of all documentation will be
furnished to Licensee.
C. For a period of up to twelve (12) months commencing with the
Effective Date of this Agreement, and according to a mutually agreeable time
schedule and manpower assignment schedule, Tessera will make certain of its
engineering staff available at its San Xxxx facilities for transfer activities,
including joint activities with Licensee's engineers in both San Xxxx and
Japan, as may be necessary in accordance with mutual agreement to successfully
complete the transfer; provided, however, Tessera shall not be obligated to
provide more than Sixty (60) working man-days of engineering support during
first twelve month period.
D. Additional engineering support (not to exceed sixty (60) working
man-days) beyond the initial twelve month period for an additional twelve (12)
month period may be made available, according to a mutually agreeable time
schedule and manpower assignment schedule, at a per diem rate of US$[*] per
support engineer, plus reasonable air travel and hotel charges. Any support or
other services required thereafter may be provided upon terms mutually
agreeable to the parties.
VI. IMPROVEMENT GRANTBACK:
A. Licensee hereby grants to Tessera a (a) fully-paid,
non-sub-licensable, non-transferable, perpetual, right to use Licensee's
Improvements and Licensee's Patent covering any inventions contained in such
Licensee's Improvements to manufacture, have manufactured for Tessera, use or
sell products.
B. Tessera agrees that Licensee may use any Licensee's Improvements to
which Licensee has granted to Tessera the rights and licenses described in this
Paragraph VI, and Licensee agrees that it shall not use Licensee's Improvements
that has not been licensed in accordance with this Paragraph VI.
C. Licensee agrees to grant to the other licensees of Tessera a
non-exclusive, non-transferable, non-sub-licensable license under Licensee's
Patents covering any inventions contained in such Licensee's Improvements made
during the term of this Agreement or extension hereof, on commercially
reasonable terms and conditions, unless such other licensees refuse to grant to
Licensee similar licenses under any of such other licensees' patents relating
to any improvements developed by such other licensee on similar commercially
reasonable terms and conditions. In no event shall Licensee be under any
obligation to grant such licenses to other licensees of Tessera, unless
Licensee's Improvements are used in ICs, packaged hereunder and which are sold
externally to non-affiliates or proposed for incorporation into the
specifications.
D. Any improvement that is made through the joint efforts of Tessera
and Licensee shall be deemed a "Joint Improvement" hereunder and shall be
jointly owned by Tessera and Licensee, and both Tessera and Licensee shall have
a fully-paid, non-assessable, transferable, perpetual, sub-licensable right to
use such Joint Improvements, but such right and license shall not include any
right of license by implication with respect to any part of the Technology or
Technical Information. Licensee and Tessera shall reasonably consult with one
another with respect to applying for and maintaining jointly owned patents with
respect to such Joint Improvements at
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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shared expense. In the event that one party hereto (the "Notifying Party")
notifies the other party that the Notifying Party wishes to apply for or
maintain a patent in any country for any such Joint Improvement and the other
party hereto does not confirm to the Notifying Party, within thirty (30) days
thereafter, that such other party will join in such patent application and share
the cost thereof, the Notifying Party shall have a right, at its own expense, to
apply for or maintain such patent in its own name, in which case such patent
shall be the sole property of the Notifying Party, and the Joint Invention in
the country covered by such patent shall be treated as an improvement made
solely by the Notifying party, and shall be subject to the provisions of this
Agreement covering such party improvements. The parties hereto shall execute
such documents and render such assistance as may be appropriate to enable the
party properly having title to such Improvements to maintain or obtain patents
for the same.
E. Licensee agrees to provide semiannually to Tessera on or about the
dates set forth in Paragraph IV (Licensee Reports and Payments) all Licensee
Improvements including changes and modifications in Standards, methods (not
including process of manufacturing methods), materials, specifications and
issued patents (relevant to the subject matter of this Agreement) through
written reports.
VII. STANDARDS COMMITTEE:
Tessera agrees to establish (and Licensee agrees to participate thereon) a
Standards Committee composed of Tessera, Licensee, other Tessera licensees and
customers. Said Standards Committee is intended to establish and promulgate
TCMT, TCC, and (u)BGA Standards for use by all Suppliers and licensees of
Tessera and customers throughout the industry.
VIII. SUPPLIER:
Licensee, at its sole option, may enter agreements ("Subcontract") with
suppliers ("Supplier") to manufacture TCCs or related IC packages or components,
materials or services thereof which are licensed hereunder for Licensee only and
not for Supplier's use or sale to anyone other than Licensee, provided that: (a)
prior to any disclosure of Tessera confidential information, Licensee and
Supplier shall execute a Non-Disclosure Agreement having substantially similar
terms as Paragraph XIII herein (Non-Disclosure); and (b) Licensee shall ensure
that Supplier receives no property rights to the Technology transferred under
Subcontract and that the rights to any improvements to the Technology made by
Supplier shall be Licensee Improvements as set forth in this Agreement; and (c)
prior to transfer of any Technology or Technical Information to each Supplier,
Licensee shall deliver to Tessera the name of each Supplier and copies of the
related NDA and Subcontract provisions reflecting compliance with the
immediately preceding subsections (a) and (b). In the event Licensee or Supplier
breaches any of the foregoing obligations, they shall immediately take all
reasonable steps to mitigate any damages, costs, or expenses arising therefrom
and Tessera shall have the right to terminate further confidential disclosures
pursuant to paragraph XIII.B. of this Agreement.
IX. TERM AND TERMINATION:
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A. Term: This Agreement shall become effective on Effective Date and,
unless earlier terminated as provided for elsewhere in this Agreement, shall
remain in full force until it automatically expires on the [*] ([*]TH)
anniversary of the Effective Date provided that:
1. On or before six months prior to the expiration date hereof,
Licensee must elect one of the following options and notify Tessera in writing
of its election, for the period beginning upon the expiration of this Agreement:
a. Licensee may elect to extend the term of this Agreement for
five years, which includes (i) continuing, for the said five year period, the
payment of full royalties hereunder, and (ii) continuing during such five year
period, all of the obligations, privileges, rights and licenses granted to the
parties hereunder including Tessera Patent and Licensee's right to receive from
Tessera the Technical Information relating to the Improvements to be made by
Tessera up to the expiration of such five year period; or
b. If Licensee wishes to use further any applicable Tessera
Patent granted prior to the expiration of this Agreement, Licensee may elect to
enter into a patent license agreement with Tessera for any such issued Tessera
Patents and shall pay one-half (1/2) of royalties hereunder for the lesser of
five (5) additional years or the life of the last expiring Tessera Patent so
licensed by Licensee; or
c. Licensee may elect to permit the Agreement to expire in
accordance with its terms (including termination of any payments of royalties
to Tessera and termination of any rights of Licensee to use further any Tessera
Patent licensed hereunder). Notwithstanding, Licensee may provide replacement
parts for any customer returns of TCC and related IC packages sold by Licensee
to a customer prior to the expiration of the Agreement.
2. Licensee shall give Tessera written notice of its elected option
by the above said notice date. In the event Licensee elects option (a) or (b)
above, the parties agree to meet at a mutually agreed time and place during the
year before the year of expiration of any extension of (a) or (b) above to
discuss and negotiate in good faith the reasonable terms and conditions for a
patent cross license agreement between the parties concerning any valid patents
owned by either party relating to the Technology, Licensee's Improvement, or
any packaging related improvements thereto, not otherwise covered in the
provisions of Subparagraph B. below, or Paragraph VI hereof.
B. Paid-up license: Upon expiration of any extension hereof under option
(a) above or expiration of any one-half royalty patent license under (b) above,
Licensee shall have a fully paid-up and perpetual license on the terms set
forth herein to use Technology to the same extent as Licensee has been licensed
to use Technology immediately prior to such expiration. Said paid-up license
shall be as follows:
1. In the event that Licensee elects option (a) above, such license
shall be for applicable Tessera Patent granted for twenty (20) years from the
Effective Date; or
2. In the event that Licensee elects option (b) above, such license
shall be for applicable Tessera Patent granted for fifteen (15) years from the
Effective Date.
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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C. Termination for Breach: Either party may terminate this Agreement due
to the other party's breach of this Agreement, such as failure to perform its
duties, obligations, or responsibilities herein (including without limitation,
Licensee's failure to pay royalties). The parties agree that such breach will
cause substantial damages to the party not in breach. Therefore, the
non-breaching party may terminate this Agreement if such breach is not cured
within sixty (60) days of notice thereof, and upon termination, the
non-breaching party shall have an option to terminate the obligations of both
the parties to transfer or license Technology, Technical Information, Tessera
Patent or Licensee's Improvement, that is filed after the date of termination
for breach, with the parties retaining all rights to use any Technical
Information and Technology transferred prior to such termination for breach
and/or Tessera Patent and Patent covering any inventions in Licensee's
Improvements, to the extent licensed hereunder, just prior to such termination
for breach, all such rights remaining in full force and good standing, subject
to continuation of the royalty payments as stipulated in Paragraph III hereof.
D. Termination for Assignment: In the event that (i) a party either sells
or assigns substantially all of its assets or business to a third party or (ii)
a third party acquires more than fifty percent (50%) of the capital stock
entitled to vote for directors of such party ("Selling Party"), the Selling
Party shall notify the other party of such sale or assignment of assets or the
third party's acquisition. In any case of sale, assignment or acquisition, the
Selling Party shall provide to the other party a written confirmation from such
third party stating that such third party shall expressly undertake all the
terms and conditions of this Agreement to be performed by Selling Party. In the
event that such assignee/transferee does not fulfill obligations under this
Agreement, the other party shall reserve a right to terminate this Agreement.
E. Termination for Bankruptcy: In the event that one party becomes
bankrupt, permanently ceases doing business, makes an assignment for the benefit
of its creditors, commits an act of bankruptcy, commences any bankruptcy
proceedings or other proceedings in the nature of bankruptcy proceedings, or has
commenced against it any bankruptcy proceedings or other proceedings in the
nature of bankruptcy proceedings that are not dismissed within sixty (60) days,
then the other party shall have the right to terminate this Agreement
immediately upon its notice, and upon such termination. The non-bankrupt party
shall have an option to terminate the obligations of both the parties to
transfer or license Technology, Technical Information, Tessera Patent, or
Licensee's Improvement that is filed after the date of termination for
bankruptcy, with the parties retaining all rights to use any Technical
Information and Technology transferred prior to such termination and/or Tessera
Patent and Patent covering any inventions in Licensee's Improvements, to the
extent licensed hereunder, just prior to such termination for bankruptcy, all
such rights remaining in full force and good standing, subject to continuation
of the royalty payments as stipulated in Paragraph III hereof.
F. Any termination of this Agreement pursuant to this paragraph IX, except
as provided in Subparagraph B. above shall be deemed a termination of this
Agreement in accordance with its terms (including termination of any payments of
royalties to Tessera and any rights of Licensee to use any Technology or Tessera
Patent licensed hereunder).
G. Survival Clause: Unless otherwise provided elsewhere in this
Agreement, the following provisions shall survive the termination or expiration
of this Agreement:
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1. Licensee's obligation to make payment to Tessera accrued under
this Agreement on or prior to expiration or termination.
2. Licensee's obligation to submit written report stipulated in
Paragraph IV, Licensee Reports and Payment, and to permit the inspection and
audit of its account record stipulated in Paragraph XII, Reasonable Audit.
3. The rights and licenses of Tessera and its other licensees to
use all improvements that may be granted during the term of this Agreement and
any extension hereof, and licenses to any inventions contained in Licensee's
Improvements granted under Paragraph VI hereof.
4. Obligation of both parties stipulated in Paragraph XIII,
Non-Disclosure.
5. Paragraph IX, Term and Termination.
6. Paragraph XI, No Warranties
7. Paragraph XII, Limitation on Damages
8. Paragraph XIV, Indemnity
9. Paragraph XVI, Miscellaneous
X. REASONABLE AUDIT:
Upon reasonable written prior notice, Tessera shall have the right to
examine and audit, through an independent third party CPA firm (mutually
acceptable by the parties hereto) using the generally accepted accounting and
auditing procedures, at its expense and not more frequently than once per year,
all records of Licensee that may contain information bearing upon the amount of
fees payable under this Agreement; provided, however, that the said auditor
shall have agreed in advance in writing to maintain in confidence and not to
disclose to Tessera or any third party any proprietary information obtained
during the course of such audit. The results of any such audit shall be in
written form. Tessera and Licensee shall consult with each other concerning the
auditor's findings within thirty (30) days after the auditor's report has been
issued and unless mutually agreed otherwise, any amount found to be due and
payable shall be made by the owing party.
XI. REPRESENTATIONS & WARRANTIES:
A. Representations. To the best of Tessera's knowledge and belief as of
the Effective Date of this Agreement, Tessera hereby represents that: (i)
Tessera is the owner of Tessera Patents licensed hereunder and that Tessera has
the right to grant the scope of the license contemplated within this Agreement;
(ii) Tessera is not aware of any express challenge to the Technology or
Technical Information; (iii) Tessera has not granted any rights in the
Technology and Technical Information to any third party that are inconsistent
with the rights and licenses
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granted herein; (iv) if a challenge is made to a Tessera patent, Tessera will
use its best efforts to resolve such challenge.
B. Warranties. Except as provided in Paragraph XI.A. above, Licensee
acknowledges and agrees that the rights and licenses, Technology and Technical
Information granted or otherwise provided hereunder are provided to Licensee
"AS IS", with no warranty of any kind. TESSERA MAKES NO WARRANTY, EXPRESS,
IMPLIED, STATUTORY OR OTHERWISE, CONCERNING THE SUBJECT MATTER OF THIS
AGREEMENT, INCLUDING WITHOUT LIMITATION, WARRANTIES OR FITNESS FOR A PARTICULAR
PURPOSE, QUALITY, USEFULNESS OR NONINFRINGEMENT. Tessera makes no warranty that
the Technology or Specifications will be sufficient or yield any particular
result.
XII. LIMITATION ON DAMAGES:
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR ANY OTHER
PERSON OR ENTITY (UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER
THEORY) FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR
RELATED TO THE SUBJECT MATTER OF THIS AGREEMENT, EVEN IF THE PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR LOSSES.
XIII. NON-DISCLOSURE:
The parties agree that each item of confidential information disclosed
either orally or in writing by one party to the other pursuant to this
Agreement shall, for a period of five (5) years from the date of first receipt
of this information, not be used except in accordance with the rights and
licenses granted pursuant to this Agreement and shall be maintained in
confidence by the receiving party, provided, however, that such information is
designated and marked as being confidential in nature by the disclosing party
at the time of disclosure to the receiving party and provided further that such
information, if disclosed orally, is reduced to writing, marked as being
confidential, and delivered to the receiving party within thirty (30) days
after such disclosure ("Confidential Information"). Such Confidential
Information may be disclosed only to employees of the receiving party who have
a specific need to know such information for the purposes of this Agreement.
Notwithstanding the foregoing provisions of this Paragraph:
1. The receiving party's obligation with respect to
keeping information confidential shall terminate with respect to any part of
such information which appears in issued patents or printed publications or
which ceases to be confidential or enters the public domain through no fault of
the receiving party;
2. The receiving party shall not be precluded from
disclosing or making any use whatsoever of any information which it can show
was in its possession prior to the disclosure made by the furnishing party or
which subsequently lawfully came into the receiving party's possession through
channels independent of the furnishing party or which was developed by the
receiving party completely independent of information provided to receiving
party hereunder;
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3. For the purpose of keeping Confidential Information
confidential the receiving party shall use efforts commensurate with those which
it employs for the protection of corresponding information of its own, but not
less than a reasonable degree of care to prevent unauthorized used, disclosure,
dissemination, or publication of information transferred hereunder;
4. The receiving party shall not be liable for any disclosure
of Confidential Information resulting from the sale of any product or component;
and
5. The receiving party may disclose Confidential Information of
the party to the receiving party's customers, Suppliers or vendors where
necessary for the manufacture, use or sale of products by the receiving party,
as provided for in Paragraph VIII.
6. The receiving party may disclose Confidential Information of
the other party if required by an order of a court or by governmental laws;
provided, however, the receiving party will contact the disclosing party prior
to any such disclosure and will allow the other party to defend the
confidentiality of its information or to mitigate the effects of any such
disclosure.
7. The parties hereto shall consult with each other from time
to time and mutually approve promotional materials, including samples, technical
data, or otherwise containing any proprietary and/or Confidential Information of
parties, for disclosure to customers by either party or jointly under a mutually
agreeable and reciprocal non-disclosure agreement.
8. This Paragraph XIII supersedes any previous agreements
between the parties relating to the transfer or management of Confidential
Information.
XIV. INDEMNITY:
A. Licensee agrees to defend, indemnify and hold Tessera harmless from
and against any and all damages, liabilities, costs and expenses (including
reasonable attorney's fees and expenses) arising out of or related to Licensee's
use of the Technology. Notwithstanding, Licensee shall not be required to defend
or help defend the validity of any Tessera Patent.
B. Tessera agrees to defend, indemnify and hold Licensee harmless from
and against any and all damages, liabilities, costs and expenses (including
reasonable attorney's fees and expenses) arising out of or related to Tessera's
use of Licensee Improvements. Notwithstanding, Tessera shall not be required to
defend or help defend the validity of any Licensee Patent.
XV. TRADEMARKS:
A. Ownership. Licensee acknowledges the ownership of Tessera's
trademarks including but not limited to, TESSERA, TESSERA BLOCK LOGO, TCMT, TCC,
COMPLIANT CHIP AND (mu)BGA (hereinafter "Marks"), and agrees that it will do
nothing inconsistent with such ownership and that all use of the marks by
Licensee shall inure to the benefit of and be on behalf of Tessera. Tessera
grants to Licensee the right to use the Marks in
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connection with the distribution, promotion, manufacture, use and sale of TCC
and related IC packages according to the Standards.
B. Form of Use. Licensee agrees to use the Marks only in the form
and manner with appropriate legends as prescribed from time to time by Tessera,
and not use any other trademark or service xxxx in combination with any of the
Marks without prior written approval of Tessera.
XVI. MISCELLANEOUS:
The following additional terms shall apply to this Agreement:
A. Governing Law. This Agreement shall be governed, interpreted and
construed in accordance with the laws of the States of California as if without
regard to its provisions with respect to conflicts of Laws. Both parties shall
use their best efforts to resolve by mutual agreement any disputes,
controversies, claims or difference which may arise from, under, out of or in
connection with this Agreement. If such disputes, controversies, claims or
differences cannot be settled between the parties, any litigation between the
parties relating to this Agreement shall take place in California. The parties
hereby consent to personal jurisdiction and venue in the state and federal
courts of California.
B. No Waiver: No failure or delay on either party in the exercise of any
right or privilege hereunder shall operate as waiver thereof, nor shall any
single or partial exercise of such right or privilege preclude other or further
exercise thereof or any other right or privilege.
C. Notices: All notices, required documentation, and correspondence in
connection herewith shall be in the English language, shall be provided in
writing and shall be given by facsimile transmission or by registered or
certified letter to Tessera and Licensee at the addresses and facsimile numbers
set forth below:
Tessera: Tessera, Inc.
0000 Xxxxxxx Xx.
Xxx Xxxx, Xxxxxxxxxx 00000
Facsimile No.: 000-000-0000
Attn.: Chief Executive Officer
Licensee: Mitsui High-tec, Inc.
New Product Engineering Division
00-0, Xxxxxx 0 Xxxxx, Xxxxxxxxxxx-xx
Xxxxxxxxxx, 000 Xxxxx
Facsimile: (093) 614-1103
Attn: Xx. X. Xxxxxxxxx
Either Party may change its address and/or facsimile number by giving the
other party notice of such new address and/or facsimile number. All notices if
given or made by registered or certified letter shall be deemed to have been
received on the earlier of the date actually received and the date three days
after the same was posted and if given or made by facsimile transmission
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shall be deemed to have been received at the time of dispatch, unless such date
of deemed receipt is not a business day, in which case the date of deemed
receipt shall be the next succeeding business day.
D. Documentation Managers. Both Licensee and Tessera shall designate a
Documentation Manager to perform the task of logging and tracking the
confidential documents transferred between the companies. If possible, each
transfer of confidential information should be first transferred between the
respective Documentation Managers before disclosure in a meeting or via
mail/fax. If the information is first disclosed between representatives of the
parties, an effort should be made to send a copy of the disclosed information
to the receiving party's Documentation Manager along with the date of the
disclosure. Tessera's Documentation Manager is Xxxxxxxxxxx X. Xxxxxxx, In-House
Patent Counsel and may be reached at the Tessera fax and street address.
Licensee's Documentation Manager is Xx. X. Xxxxxxxxx, Manager New Product
Engineering Division and may be reached at the Licensee fax and street address.
E. Entire Understanding. This Agreement embodies the entire
understanding between the parties relating to the subject matter hereof,
whether written or oral, and there are no prior representations, warranties or
agreements between the parties not contained in this Agreement. Any amendment
or modification of any provision of this Agreement must be in writing, dated
and signed by both parties hereto.
F. Invalidity. If any provision of this Agreement is declared invalid or
unenforceable by a court having competent jurisdiction, it is mutually agreed
that this Agreement shall endure except for the part declared invalid or
unenforceable by order of such court. The parties shall consult and use their
best efforts to agree upon a valid and enforceable provision which shall be a
reasonable substitute for such invalid or unenforceable provision in light of
the intent of this Agreement.
G. Assignment. Neither party may assign this Agreement or any of its
rights or obligations hereunder without the prior written consent of the other
party.
H. Export Regulations. Both parties shall comply with the laws and
regulations of the government of the United States and Japan, and of any other
country as applicable relating to the export of commodities and technical data,
any direct product of such data, or any product received the other, to any
proscribed country listed in such laws and regulations unless properly
authorized by the appropriate government, and not knowingly export, or allow
the export or re-export of any Technology or Proprietary Information, or any
system, component, item, material or package made under or using the foregoing,
in violation of any restrictions, laws or regulations, or without all required
licenses and authorizations, to Afghanistan, the People's Republic of China or
any Group Q, S, W, Y or Z country specified in the then current Supplement No.
1 to Section 770 of the US Export Administration Regulations (or any successor
supplement or regulations).
I. Section Headings. The headings and captions used herein shall not be
used to interpret or construe this Agreement.
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IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the date first above written.
For TESSERA: For MITUIS HIGH-TEC, INC.:
/s/ XXXX X. XXXXX 7-10-96 /s/ X. XXXXXXXXX
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Name Date Name Date
President Managing Director 7-22-96
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Title Title
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