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EXHIBIT 10.5
PAGES WHERE CONFIDENTIAL TREATMENT HAS BEEN GRANTED ARE STAMPED "CONFIDENTIAL
TREATMENT GRANTED," AND THE CONFIDENTIAL SECTION HAS BEEN MARKED IN THE MARGIN
WITH A STAR(*).
IMMUNITY AGREEMENT
THIS AGREEMENT is effective as of the 18th day of October, 1996, by and
between MOTOROLA, INC., a Delaware corporation having an office at 0000
Xxxxx 00xx Xxxxxx, Xxxxxxx, Xxxxxxx 00000. (hereinafter called
"MOTOROLA"), and ST ASSEMBLY TEST SERVICES PTE. LTD. having its principal
office at 00 Xxxxxxxxx Xxxxxxxxxx Xxxxxx Xxxx 0, #00-00, Xxxxxxxxx 000000,
(hereinafter called "ASSEMBLY HOUSE").
WHEREAS, MOTOROLA owns and has, or may have patents issued and applications
for patents pending in various countries of the world which relate to ball
grid array (BGA) PACKAGEs (as hereinafter defined), and
WHEREAS, ASSEMBLY HOUSE owns and has, or may have rights in various
patents issued and applications for patents pending in various countries of
the world which may relate to BGA PACKAGEs, and
WHEREAS, ASSEMBLY HOUSE and MOTOROLA are engaged in continuing research,
development and engineering in regard to BGA PACKAGES and have programs for
the patenting of inventions resulting therefrom; and
WHEREAS, MOTOROLA is interested in proliferating BGA PACKAGEs as a standard
in the semiconductor industry; and
WHEREAS, ASSEMBLY HOUSE is interested in providing the service of making
BGA PACKAGEs for semiconductor manufacturers including those who are
competitors of MOTOROLA;
NOW THEREFORE, in consideration of the mutual covenants and conditions
hereinafter setforth, it is agreed as follows:
Section 1 - DEFINITIONS
1.1 SUBSIDIARY(IES) means a corporation, company, or other entity 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 hereto, but such corporation,
company, or other entity shall be deemed to be a SUBSIDIARY only so
long as such ownership or control exists.
1.2 SEMICONDUCTIVE MATERIAL means 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 material shall include but not be
limited to refined products, reaction products, reduced products,
mixtures and compounds.
1.3 INTEGRATED CIRCUIT STRUCTURE means an integral unit consisting
primarily of a plurality of active and/or passive circuit elements
associated on, or in, a unitary body of SEMICONDUCTIVE MATERIAL for
performing electrical or electronic functions.
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1.4 BGA PACKAGE means a housing for an INTEGRATED CIRCUIT STRUCTURE or
STRUCTUREs in which the INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs are
mounted on one side of a substrate of printed circuit board material or
the like and are wire bonded to the substrate, plastic overlies the
INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs, and pads for receiving solder
balls or the like and providing electrical contacts to the integrated
circuit device are mounted on the substrate on the side opposite to that
on which the INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs are mounted. Some
BGA packages may have some pads which are not electrically connected to
the INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs.
1.5 MOTOROLA PATENTS means all classes or types of patents, utility models,
design patents and applications for the aforementioned of all countries of
the world relating to BGA PACKAGEs and enhancements thereto which, prior
to the date of expiration or termination of this Agreement, are:
(i) issued, published or filed and which arises out of inventions made
solely by one or more employees of MOTOROLA or a SUBSIDIARY thereof,
or
(ii) acquired by MOTOROLA or a SUBSIDIARY thereof.
and under which and to the extent to which and subject to the conditions
under which MOTOROLA or a SUBSIDIARY thereof may have, as of the EFFECTIVE
DATE of this Agreement, or may thereafter during the term of this
Agreement acquire, the right to grant licenses or rights of the scope
granted herein without the payment of royalties or other consideration to
third persons, except for payments to third persons (a) for inventions
made by said third persons while engaged by MOTOROLA or a SUBSIDIARY
thereof, and (b) as consideration for the acquisition of such patents,
utility models, design parents and applications.
1.6 ASSEMBLY HOUSE PATENTS means all classes or types of patents, utility
models, design patents and applications for the aforementioned of all
countries of the world relating to BGA PACKAGEs and enhancements thereto
which, prior to the date of expiration or termination of this Agreement,
are:
(i) issued, published or filed, and which arise out of inventions made
solely by one or more employees of ASSEMBLY HOUSE or a SUBSIDIARY
thereof, or
(ii) acquired by ASSEMBLY HOUSE or a SUBSIDIARY thereof,
and under which and to the extent to which and subject to the conditions
under which ASSEMBLY HOUSE or a SUBSIDIARY thereof may have, as of the
EFFECTIVE DATE of this Agreement, or may thereafter during the term of
this Agreement acquire, the right to grant licenses or rights of the scope
granted herein without the payment of royalties or other consideration to
third persons, except for payments to third persons (a) for inventions
made by said third persons while engaged by ASSEMBLY HOUSE or a SUBSIDIARY
thereof and (b) as consideration for the acquisition of such patents,
utility models, design patents and applications.
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*CONFIDENTIAL TREATMENT GRANTED.
1.7 EFFECTIVE DATE means the date of the last signature hereto.
Section 2 - MUTUAL RELEASES
2.1 MOTOROLA hereby releases, acquits and forever discharges ASSEMBLY
HOUSE and its SUBSIDIARIES for any time prior to the EFFECTIVE DATE,
from any and all claims or liability for infringement or alleged
infringement of any MOTOROLA PATENTS for which immunity from suit is
herein granted by MOTOROLA.
2.2 ASSEMBLY HOUSE and its SUBSIDIARIES hereby releases, acquits and
forever discharges MOTOROLA and its SUBSIDIARIES for any time prior
to the EFFECTIVE DATE, from any and all claims or liability for
infringement or alleged infringement of any ASSEMBLY HOUSE PATENTS
for which immunity from suit is herein granted by ASSEMBLY HOUSE to
MOTOROLA.
Section 3 - IMMUNITY FROM SUIT
3.1 MOTOROLA hereby grants to ASSEMBLY HOUSE and its SUBSIDIARIES, for
the term of this Agreement, immunity from suit under MOTOROLA PATENTS
for making BGA PACKAGES, with or without solder balls or the like, for
another and for ASSEMBLY HOUSE internal use. In no event shall the
immunity from suit apply to MOTOROLA PATENTS which are infringed by
the INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs independent of being
packaged in BGA PACKAGES.
3.2 ASSEMBLY HOUSE and its SUBSIDIARIES hereby grant to MOTOROLA and its
SUBSIDIARIES, for the term of this Agreement, immunity from suit under
ASSEMBLY HOUSE PATENTS for making and/or having made BGA PACKAGES,
with or without solder balls or the like, and for the subsequent sale
and use thereof. In no event shall the immunity from suit apply to
ASSEMBLY HOUSE PATENTS which are infringed by the INTEGRATED CIRCUIT
STRUCTURE or STRUCTUREs independent of being packaged in BGA PACKAGEs.
3.3 No licenses under any copyrights or mask work rights of either
MOTOROLA or ASSEMBLY HOUSE or a SUBSIDIARY thereof, are granted under
this Agreement.
Section 4 - PAYMENTS
4.1 In partial consideration of the rights granted by MOTOROLA under
Section 3, for the period beginning on the EFFECTIVE DATE and
extending to December 31, 2002, ASSEMBLY HOUSE agrees to pay MOTOROLA
a royalty based on the total number of pads on BGA PACKAGEs made by
ASSEMBLY HOUSE and its SUBSIDIARIES, and shipped and invoiced to
customers of ASSEMBLY HOUSE or its SUBSIDIARIES, excluding those made
for MOTOROLA and excluding returns.
* 4.1.1 The royalty shall be *** per *** until a royalty of *** has
been accrued.
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*CONFIDENTIAL TREATMENT GRANTED.
* 4.12 After a royalty of *** has been accrued, the royalty shall be
*** per pad.
4.2 Royalty payments shall be determined by the total number of pads on
BGA PACKAGEs subject to the immunity from suit of section 3.1
shipped during a payment period to customers of ASSEMBLY HOUSE or
its SUBSIDIARIES excluding those shipped to MOTOROLA and excluding
returns.
4.3 Payment periods shall be on a quarterly basis. Within forty-five (45)
days after each calendar quarter ending March 31, June 30,
September 30, and December 31. ASSEMBLY HOUSE shall pay to MOTOROLA
the royalties payable hereunder for the respective calendar
quarter ending on such date as determined above.
4.4 Any payment hereunder which shall be delayed for more than thirty
(30) days beyond the due date shall be subject to an interest
charge of one (1) percent per month on the unpaid balance payable
in United States currency until paid. The foregoing payment of
interest shall not affect MOTOROLA's right to terminate in
accordance with Section 5.
4.5 ASSEMBLY HOUSE shall keep full, clear and accurate records with
respect to BGA PACKAGEs. MOTOROLA shall have the right through a
mutually agreed upon independent auditor to examine and audit no
more than once a year at a mutually agreeable time all such records
and such other records and accounts as may under recognized
accounting practices contain information bearing upon the amount
of royalty payable to MOTOROLA under this Agreement. Prompt
adjustment shall be made to compensate for any errors or omissions
disclosed by such examination or audit. Neither such right to
examine and audit nor the right to receive such adjustment shall
be affected by any statement to the contrary appearing on a check
or otherwise. MOTOROLA shall be responsible for the compensation
of the auditor.
4.6 Within forty-five (45) days after each calendar quarter ending
March 31, June 30, September 30, December 31 and continuing
thereafter until all royalties payable hereunder shall have been
reported and paid, ASSEMBLY HOUSE shall furnish to MOTOROLA a
detailed and complete written statement, certified by a
responsible officer of ASSEMBLY HOUSE as showing all BGA PACKAGEs
which were either manufactured, sold, leased, put into use, or
otherwise disposed of during such periods, and the amount payable
thereon. If no such BGA PACKAGEs have been manufactured, sold,
leased, put into use, or otherwise disposed of, that fact shall
be shown on such statement.
4.7 Payments hereunder are to be made to MOTOROLA's New York City
account at CITIBANK 00000000, 1 Citicorp Center, 000 Xxxx Xxxxxx,
Xxx Xxxx, Xxx Xxxx 00000. Notice of payments shall be sent by
ASSEMBLY HOUSE to MOTOROLA's address in Section 6.9.
Section 5 - TERM AND TERMINATION AND ASSIGNABILITY
5.1 The term of this Agreement shall be from the EFFECTIVE DATE until
December 31, 2002 unless earlier terminated as elsewhere provided
in this Agreement.
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5.2 In the event of any breach of this Agreement by either party hereto
(including ASSEMBLY HOUSE's obligation to make payments under Section 4),
if such breach is not corrected within forty-five (45) days after written
notice describing such breach, this Agreement may be terminated forthwith
by further written notice to that effect from the party noticing the
breach.
5.3 Either party hereto shall also have the right to terminate this Agreement
forthwith by giving written notice of termination to the other party at
any time, upon or after:
5.3.1 the filing by such other party of a petition in bankruptcy or
insolvency; or
5.3.2 any adjudication that such other party is bankrupt or insolvent; or
5.3.3 the filing by such other party of any legal action or document
seeking reorganization, readjustment or arrangement of its business
under any law relating to bankruptcy or insolvency; or
5.3.4 the appointment of a receiver for all or substantially all of the
property of such other party; or
5.3.5 the making by such other party of any assignment for the benefit of
creditors; or
5.3.6 the institution of any proceedings for the liquidation or winding
up of such other party's business or for the termination of its
corporate charter.
5.4 In the event of termination of this Agreement by one party pursuant to
Section 5.2, the immunity and rights granted to or for the benefit of that
one party hereto and its SUBSIDIARIES under MOTOROLA PATENTS or ASSEMBLY
HOUSE PATENTS, as the case may be, depending upon who is the party doing
the terminating, shall survive such termination and shall extend for the
full term of this Agreement, but the immunity and rights granted to or for
the benefit of the other party shall terminate as of the date termination
takes effect.
5.5 At such time as is mutually agreeable, at the written request of either
party hereto to the other party hereto, but in no event less than six (6)
months prior to the expiration of this Agreement, the parties hereto shall
discuss the possible extension of or the renewal of the term of this
Agreement, including the possible amendment of the provisions thereof.
5.6 The rights or privileges provided for in this Agreement may be assigned or
transferred by either party only with the prior written consent of the
other party and with the authorization or approval of any governmental
authority as then may be required, except to a successor in ownership of
all or substantially all of the assets of the assigning party. Such
successor, before such assignment or transfer is effective, shall
expressly assume in writing to the other party the performance of all of
the terms and conditions of this Agreement to be performed by the
assigning party.
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Section 6 - MISCELLANEOUS PROVISIONS
6.1 Each of the parties hereto represents and warrants that it has
the right to grant to or for the benefit of the other the
immunity and rights granted hereunder in Sections 2 and 3.
6.2 Nothing contained in this Agreement shall be construed as:
6.2.1 restricting the right of MOTOROLA or any of its
SUBSIDIARIES to make, use, sell, lease or otherwise
dispose of any particular product or products not
herein licensed;
6.2.2 restricting the right of ASSEMBLY HOUSE or any of its
SUBSIDIARIES to make, use, sell, lease or otherwise
dispose of any particular product or products not
herein licensed;
6.2.3 an admission by ASSEMBLY HOUSE of, or a warranty or
representation by MOTOROLA as to, the validity and/or
scope of the MOTOROLA PATENTS, or a limitation on
ASSEMBLY HOUSE to contest, in any proceeding, the
validity and/or scope thereof;
6.2.4 an admission by MOTOROLA of, or a warranty or
representation by ASSEMBLY HOUSE as to, the validity
and/or scope of the ASSEMBLY HOUSE PATENTS, or a
limitation on MOTOROLA to contest, in any proceeding,
the validity and/or scope thereof;
6.2.5 conferring any license or other right, by implication,
estoppel or otherwise, under any patent application,
patent or patent right, except as herein expressly
granted under the MOTOROLA PATENTS and the ASSEMBLY
HOUSE PATENTS;
6.2.6 conferring any license or right with respect to any
trademark, trade or brand name, a corporate name of
either party or any of their respective SUBSIDIARIES, or
any other name or xxxx or contraction, abbreviation or
simulation thereof;
6.2.7 imposing on MOTOROLA any obligation to institute any
suit or action for infringement of any MOTOROLA PATENTS,
or to defend any suit or action brought by a third party
which challenges or concerns the validity of any
MOTOROLA PATENTS;
6.2.8 imposing upon ASSEMBLY HOUSE any obligation to institute
any suit or action for infringement of any ASSEMBLY HOUSE
PATENTS, or to defend any suit or action brought by a third
party which challenges or concerns the validity of any
ASSEMBLY HOUSE PATENTS;
6.2.9 imposing on either party any obligation to file any patent
application or to secure any patent or maintain any patent
in force; or
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6.2.10 an obligation on either party to furnish any manufacturing
or technical information under this Agreement except as the
same is specifically provided for herein.
6.3 No express or implied waiver by either of the parties to this Agree-
ment of any breach of any term, condition or obligation of this
Agreement by the other party shall be construed as a waiver of any
subsequent breach of that term, condition or obligation or of any
other term, condition or obligation of this Agreement of the same or
of a different nature.
6.4 Anything contained in this Agreement to the contrary notwithstanding,
the obligations of the parties hereto shall be subject to all laws,
both present and future, of any Government having jurisdiction over
either party hereto, and to orders or regulations of any such
Government, or any department, agency, or court thereof, and acts of
war, acts of public enemies, strikes, or other labor disturbances,
fires, floods, acts of God, or any causes of like or different kind
beyond the control of the parties, and the parties hereto shall be
excused from any failure to perform any obligation hereunder to the
extent such failure is caused by any such law, order, regulation, or
contingency but only so long as said law, order, regulation or contin-
gency continues.
6.5 The captions used in this Agreement are for convenience only and are
not to be used in interpreting the obligations of the parties under
this Agreement.
6.6 This Agreement and the performance of the parties hereunder shall be
construed in accordance with and governed by the laws of the State of
Illinois.
6.7 If any term, clause, or provision of this Agreement shall be judged
to be invalid, the validity of any other term, clause, or provision
shall not be affected; and such invalid term, clause, or provision
shall be deemed deleted from this Agreement.
6.8 This Agreement sets forth the entire Agreement and understanding
between the parties as to the subject matter hereof and merges all
prior discussions between them, and neither of the parties shall be
bound by any conditions, definitions, warranties, understandings or
representations with respect to such subject matter other than as
expressly provided herein or as duly set forth on or subsequent to
the date hereof in writing and signed by a proper and duly authorized
officer or representative of the party to be bound thereby.
6.9 All notices required or permitted to be given hereunder shall be in
writing and shall be valid and sufficient if dispatched by registered
airmail, postage prepaid, in any post office in the United States,
addressed as follows:
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6.9.1 If to MOTOROLA:
Motorola Inc.
0000 Xxxx Xxxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Vice President for Patents, Trademarks &
Licensing
6.9.2 If to ASSEMBLY HOUSE:
ST Assembly Test Services Pte. Ltd.
00 Xxxxxxxxx Xxxxxxxxxx Xxxxxx Xxxx 0
#00-00
Xxxxxxxxx 000000
Attention: Xx. Xxx Xxxx Xxxxx, General Manager
6.9.3 The date of receipt of such a notice shall be the date for
the commencement of the running of the period provided for
in such notice, or the date at which such notice takes
effect as the case may be.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
in duplicate.
MOTOROLA INC. ST ASSEMBLY TEST SERVICES PTE. LTD.
/s/ XXXXXX XXXXXX /s/ XXX XXXX XXXXX
---------------------- ------------------------------
Xxxxxx Xxxxxx Xx. Xxx Xxxx Xxxxx
Vice President & General Manager General Manager
Logic and Analog Technologies Group ST Assembly Test Services Pte. Ltd.
Semiconductor Products Sector
Motorola, Inc.
Date: 9/30/96 Date: 9/11/96
------- -------
/s/ XXXXX X. XXXXXXX /s/ TAN XXXX XXXX
---------------------- ------------------------------
Xxxxx X. Xxxxxxx Xx. Xxx Xxxx Xxxx
Corporate Vice President, Patents Board Director
Trademarks, and Licensing ST Assembly Test Services Pte. Ltd.
Motorola, Inc.
Date: 10/18/96 Date: 9/11/96
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