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