Exhibit 10.28*
* Confidential treatment has been granted or requested with respect to
portions of this exhibit, and such confidential portions have been deleted and
separately filed with the Securities and Exchange Commission pursuant to Rule
24b-2 or Rule 406.
FRAM TECHNOLOGY LICENSE AGREEMENT
THIS FRAM TECHNOLOGY LICENSE AGREEMENT (the "Agreement"), effective as of the
15th day of November, 2001, is entered into by and between RAMTRON
INTERNATIONAL CORPORATION ("Ramtron"), a Delaware corporation having its
principal office at 0000 Xxxxxxx Xxxxx, Xxxxxxxx Xxxxxxx, Xxxxxxxx 00000,
XXX, and NEC CORPORATION, a Japanese corporation, having its principal office
at 5-Chome 0-0, Xxxxx, Xxxxxx-Xx, Xxxxx, 000-0000, Xxxxx ("NEC").
R E C I T A L S
A. Ramtron has developed and is developing a state-of-the-art ferroelectric
semiconductor technology.
B. NEC wishes to obtain from Ramtron, and Ramtron is willing to grant to NEC
a license to certain ferroelectric intellectual property rights (as
defined herein) for use in the design, development, manufacture and sale
of specified licensed products.
C. The parties desire to set forth the terms and conditions of the license
agreement.
NOW, THEREFORE, in consideration of the recitals and the mutual covenants
contained herein and for good and valuable consideration, the receipt and
adequacy of which are hereby acknowledged, Ramtron and NEC hereby agree as
follows:
ARTICLE 1 - DEFINITIONS
When used in this Agreement, the following terms have the following meanings:
1.1 "Affiliate" or "affiliate" means any enterprise, whether a corporation,
unincorporated association, joint venture, partnership or otherwise, in
which a person or corporation, or any holding company or subsidiary of
such corporation, or any holding company or subsidiary of such holding
company, participates directly or indirectly, and if in relation to such
enterprise, such person, corporation or any such holding company or
subsidiary has the power to appoint the management thereof, or control
the majority of votes at a general meeting.
1.2 "Dollars" or "$" means United States currency unless otherwise specified.
1.3 "Yen" means Japanese currency unless otherwise specified.
1.4 "Effective Date" means the date of this Agreement as set forth in the
introductory paragraph of this Agreement.
1.5 "FRAM Product" means any product using FRAM Technology and/or Ramtron's
Improvements in: (i) semiconductor devices that incorporate embedded
nonvolatile ferroelectric memory ("Embedded FRAM Products") and/or (ii)
semiconductor devices that combine ferroelectric memory with RF/ID analog
circuitry in a single chip ("Ferroelectric RF/ID Products"). In no case
will FRAM Product be deemed to include standard, nonvolatile
ferroelectric semiconductor memory devices.
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1.6 "FRAM Technology" means that certain thin-film ferroelectric technology
developed and/or owned by Ramtron or as to which Ramtron has the right to
grant a license to NEC without payment of any compensation to third
parties except Ramtron's employees or Subsidiaries, and which consists
of: (i) technology pertaining to the manufacture and production of
standard, nonvolatile, random access semiconductor memory devices that
utilize binary polarization states on the hysteresis curve of
ferroelectric material; and, (ii) technology pertaining to the material
and process for the formation of ferroelectric film, which may be
developed and/or owned by Ramtron, including all technology and
inventions claimed in Ramtron's patents.
1.7 "NEC's Improvements" means all improvements, enhancements and
developments to FRAM Technology and Ramtron IPR developed by NEC and/or
its Subsidiaries, independent of Ramtron and its Subsidiaries, during the
term of this Agreement.
1.8 "Net Sales" means the total of all gross amounts received by NEC, its
Subsidiaries and/or affiliates with regard to the sale or other transfer
of FRAM Products for value accounted for in accordance with generally
accepted accounting principles, less costs of packing, transportation,
shipping or insurance incident to such transportation and shipping
charges, excise or other taxes and customs duties and allowances for
actual returns, if any. Should NEC, its Subsidiaries and/or affiliates
sell FRAM Products in combination with other components or equipment,
then the calculation of Net Sales shall be based on the price normally
charged by such party for FRAM Products when separately invoiced or
priced or if no separately invoiced or priced sales of such FRAM Products
have been made, then the calculation of Net Sales shall be based on the
price such party would charge for such FRAM Products in an arm's-length
commercial sale transaction for cash. Net Sales shall include any amount
received by NEC with regard to the sale or other transfers of FRAM
Products to a Subsidiary or affiliate, or any amount received by a
Subsidiary or affiliate with regard to the sale or other transfer for
value of FRAM Products to NEC. Notwithstanding the foregoing, Net Sales
shall include amounts received by NEC or such Subsidiaries and/or
affiliates with respect to a subsequent sale, use or other transfer for
value to a third party by NEC, its Subsidiaries and/or affiliates.
1.9 "Ramtron Intellectual Property Rights" or "Ramtron IPR" means all patents
and patent applications, maskwork rights, copyrights, trade secrets,
know-how and other intellectual property rights in all countries of the
world relating to FRAM Technology, which are created or have filing dates
prior to the date of expiration or termination of this Agreement, and
which are owned and/or controlled by Ramtron and which Ramtron has the
right to grant a license to NEC hereunder without payment of any
compensation to third parties (except Ramtron's employees or
Subsidiaries) as of the Effective Date or thereafter during the term of
this Agreement.
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1.10 "Royalty Period" means the ** period beginning on the date in
which the first commercial sale occurs of any FRAM Product.
1.11 "Accounting Period" means the period of six (6) months ending on the
last day of March, and September of each year during the Royalty Period.
1.12 "Subsidiary" or "Subsidiaries" means any enterprise, whether a
corporation, unincorporated association, joint venture, partnership,
limited liability company, or otherwise, more than fifty percent (50%)
of whose voting stock or other similar interests are owned or controlled
by either party hereto, directly or indirectly, now or hereafter, but
such enterprise shall be deemed to be a Subsidiaries only so long as
such ownership or control exists.
1.13 "Technology License" has the meaning set forth in Section 2.1.
ARTICLE II - TECHNOLOGY LICENSE
2.1 Ramtron Grant. Upon receipt by Ramtron of the payment described in
Article 3.1.1 below, Ramtron grants to NEC a worldwide, perpetual,
nonexclusive, nontransferable, nonsublicensable right and license to use
Ramtron's IPR to design, develop, make, have made, sell, use, lease,
transfer and otherwise dispose of FRAM Products. The license rights
granted by Ramtron to NEC in this Section 2.1 shall be referred to herein
as the "Technology License." The Technology License may not be used by
NEC for any purpose other than those specifically stated in this Section
2.1.
2.1.1 Ramtron Proprietary Information. All proprietary information and
technology, including FRAM Technology and/or Ramtron IPR, provided
or disclosed by Ramtron to NEC hereunder, and all inventions or
technologies made or developed solely by Ramtron in the
performance of this Agreement, shall remain the property of
Ramtron.
2.2 NEC Grant. NEC grants to Ramtron a royalty-free, nonexclusive,
nontransferable, nonsublicensable, worldwide and perpetual license to use
NEC's Improvements to design, develop, manufacture, make, have made, use,
lease, sell, transfer and otherwise dispose of Ramtron FRAM Products.
2.2.1 NEC Proprietary Information. All proprietary information and
technology, including NEC's Improvements, provided or disclosed by
NEC to Ramtron hereunder, and all inventions or technologies made
or developed solely by NEC in the performance of this Agreement,
shall remain the property of NEC.
2.3 Subsidiaries. The licenses granted pursuant to Sections 2.1 and 2.2 are
hereby extended to Subsidiaries of each licensee and any technical
information provided to such party hereunder may be made available to its
Subsidiaries to the extent necessary.
Page-3
2.4 Option for FRAM Technology Transfer. With NEC's written request, Ramtron
shall agree to the transfer of technology relating to the FRAM
Technology. NEC and Ramtron shall mutually negotiate the terms and
conditions, methods, plan, and schedule for such technology transfer
prior to the beginning of such transfer of technology. However such
technology transfer fee shall not exceed **
** . In the event that Ramtron agrees to transfer its FRAM
Technology to NEC pursuant to this Article 2.4, the Parties shall enter
into a separate written agreement setting forth the scope and method of
the transfer. At a minimum, such separate written agreement shall
include covenants protecting Ramtron's trade secrets and other
intellectual property rights, and requiring that the Technology License
granted by Ramtron to NEC in Article 2.1 shall be limited such that NEC
may only have FRAM Products made by a third party licensee of Ramtron.
Notwithstanding the foregoing, NEC may have a non-licensee continue to
manufacture FRAM Products for NEC only provided such non-licensee entered
into a written agreement with NEC prior to NEC and Ramtron executing the
separate written agreement referenced in this Article 2.4.
ARTICLE III - COMPENSATION
3.1 Fees. In consideration of the grants, rights, privileges, technical
assistance and materials provided and to be provided hereunder, NEC shall
pay to Ramtron the following lump-sum amounts:
3.1.1 Initial License Fee. Within thirty (30) days after the Effective
Date of this Agreement, NEC shall make a non-refundable payment to
Ramtron of ** .
3.1.2 Milestone Fees. Subject to subsection 7.5 of this Agreement, on
or before the dates set forth immediately below NEC shall make a
non-refundable payment to Ramtron in the referenced amounts:
Date Amount
----------------------------- ----------------
Twelve (12) Months After The
Effective Date: ** ; and
Twenty-four (24) Months After
The Effective Date: **
3.2 Royalty Payments. In addition to the payments under Section 3.1
immediately above, and notwithstanding a termination of this Agreement,
NEC shall pay Ramtron a royalty on all FRAM Products based upon or which
use the FRAM Technology and sold by NEC, its Subsidiaries and/or
affiliates upon the first sale by NEC, its Subsidiaries and/or affiliates
of FRAM Products, as follows:
Page-4
3.2.1 Embedded FRAM Products. NEC shall pay Ramtron a royalty on all
Net Sales of Embedded FRAM Products by NEC, its Subsidiaries
and/or any NEC affiliate, at the rate determined by **
multiplied by the base Embedded FRAM royalty rate for set forth
below. **
** . In no event shall the
royalty rate be less ** of the prevailing
rate set forth below.
Royalty Period Base Royalty Rate for Embedded FRAM Products
-------------- --------------------------------------------
First ** years ** of Net Sales
For the years **
through ** ** of Net Sales
For the years **
through ** ** of Net Sales
3.2.2 Royalty for RF/ID Products. NEC shall pay Ramtron a royalty on
all Ferroelectric RF/ID Products at the following stipulated rate
of the Net Sales of such products for the duration of the Royalty
Period.
3.2.2.1 ** Net Sales Amount of
RF/ID Products.
3.2.2.2 ** Net Sales
Amount of IF/ID Products.
3.2.3 Adjustment of Royalties: Notwithstanding any other provision of
this section 3.2, should a final, non-appealable decision be
entered by a judicial entity having jurisdiction to enter such
decision, that Ramtron's IPR is invalid or unenforceable, then
Ramtron and NEC shall discuss in good faith a reduction of royalty
rates required hereunder. Any reduction mutually agreed to will
be applicable only to FRAM Products sold by NEC on or after the
date of such final, non-appealable decision.
3.3 Payment and Certification of Royalties by NEC. All payments for each
Royalty Period under this Agreement shall be made by NEC in the United
States Dollars through wire transfer directly to Ramtron's bank account:
U.S. Bank Exchange, 1125 Garden of the Xxxx Xxxx, Xxxxxxxx Xxxxxxx,
Xxxxxxxx 00000, ** , Account Number-
** , Account Name-Ramtron International Corporation. NEC shall,
on or before May 15 and November 15 in each year, commencing with the
Accounting Period during which royalties are first payable under this
Agreement, furnish to Ramtron a statement, signed by NEC's department
Page-5
head charged therewith, concerning the Net Sales by or on behalf of NEC
of FRAM Products sold by or on behalf of NEC and/or its Subsidiaries
and/or affiliates during the preceding Royalty Period in sufficient
detail to permit the computation of the royalties due for such Royalty
Period. Each such report shall break the Net Sales of NEC, its
Subsidiaries and/or affiliates into the categories of non-RF/ID Embedded
FRAM Products and Ferroelectric RF/ID Products, to enable NEC and Ramtron
to calculate the royalties due pursuant to Section 3.2 above. NEC also
shall pay Ramtron the royalties payable for the Accounting Period within
June 15 and December 15 in each year. If any royalty payable pursuant to
Article 3.2 is computed in any currency other than Dollars, conversion to
Dollars shall be at the foreign exchange rate (telegraphic transfer
selling rate) specified by the Bank of Tokyo Mitsubishi Limited, Tokyo,
Japan on the last business day of the Accounting Period for which the
royalties are payable.
3.4 Records. NEC shall keep true and accurate records, files and books of
accounts reasonably necessary in accordance with generally accepted
accounting principles to ascertain the amount of the royalties payable to
Ramtron under Section 3.2 above for three (3) years from the end of each
reporting Royalty Period.
3.5 Audit. Ramtron shall have the right, through a certified independent
public accountant of international reputation designated by Ramtron and
reasonably acceptable to NEC, to make an examination and audit, not more
frequently than once per year, during normal business hours acceptable to
NEC, of NEC's records, files and books of accounts as may contain
information bearing upon the amounts due to Ramtron under Section 3.2
above. Prompt adjustment shall be made between the parties for any
underpayments or overpayments disclosed by such audit. In the event that
any royalty report(s) understates in total the royalties due to Ramtron
for the relevant audited Royalty Period(s) by more than five percent
(5%), NEC shall pay any shortfall and reimburse Ramtron for the cost of
such audit. Such certified public accountant's report to Ramtron shall
provide only the amount of royalties actually payable to Ramtron and any
information in NEC's records, files and books of accounts shall be
treated as confidential by said certified public accountant and shall not
be disclosed to Ramtron or to any third party.
3.6 Withholding Taxes. NEC may deduct from the fees any the royalties to be
paid by NEC to Ramtron pursuant to Section 3.1 and Section 3.2 above the
amount of withholding taxes as imposed by the Japanese Government to the
extent that such taxes are allowable as a credit against taxes to be
levied on Ramtron by the tax authorities of the United States, or
permitted under the tax treaty between the United Sates and Japan. NEC
agrees to furnish Ramtron with official tax receipts certifying such tax
payment issued by the Japanese tax authorities as soon as practicable
after such payment is made, provided that Ramtron shall reasonably assist
NEC in its obtaining such official tax receipts.
Page-6
ARTICLE IV - CONFIDENTIALITY
4.1 Confidentiality. During the term of this Agreement and for a period of
five (5) years thereafter, the parties hereto agree that all data,
drawings, materials, prototypes, designs, processes, procedures,
formulae, improvements, financial data, marketing information, technical
information, engineering data, manufacturing specifications and other
trade secrets and confidential information disclosed by one party to the
other or any of its Subsidiaries, whether or not in written, graphic,
machine-readable or other tangible form, for the purpose of this
Agreement (hereinafter "Confidential Data"), shall be regarded and
treated by the parties in strictest confidence and shall not be disclosed
to any third party without the express written consent of the disclosing
party. The parties hereto further acknowledge and agree that all
information disclosed to the other party hereunder and all other
information to which the other party may have access by virtue of any
such disclosure shall be presumed by the parties to be Confidential Data,
unless the disclosing party shall advise the receiving party that any
such item or items need not be regarded or treated as Confidential Data.
However, the parties hereto confirm that Confidential Data may be used to
the extent necessary for implementing any of the receiving party's
activities to be contemplated under this Agreement.
4.2 Exclusions. Confidential Data shall not include: (i) information which
is in the possession of the recipient at the time it is received from the
disclosing party, where the possession of such information can be
established from documentation generated prior to the disclosure of such
information by the disclosing party (whether pursuant to this Agreement
or otherwise); (ii) information which is in the public domain through no
act or omission of the parties hereto or their respective
representatives; (iii) information lawfully received from others who are
not under restrictions similar to those identified in Section 4.1 hereof
or who are not in breach of any confidentiality agreement with Ramtron or
NEC; or (iv) information that is developed or derived by the recipient
independent of any disclosure hereunder. Also, the parties hereto may
disclose Confidential Data to (a) any government or judicial body having
jurisdiction to request and to review the same, and (b) legal counsel
representing the parties hereto, but only to the extent so ordered. Even
in the aforesaid case of (a), the disclosing party shall provide other
party with the reason and the contents to disclose by written notice
prior to such disclosure.
4.3 Marking of Documents and Materials. In furtherance, but not in
limitation, of the provisions of Section 4.1 each party shall use its
reasonable endeavors to cause all written materials and other physical
documents and materials of all types relating to or containing
Confidential Data to be plainly marked to indicate the secret,
proprietary and confidential nature thereof and to prevent the
unauthorized use or reproduction thereof, directly or indirectly.
Page-7
4.4 Return of Confidential Data. Within fourteen (14) days following a
request by the disclosing party, after the expiration or termination of
this Agreement, the receiving party shall return any Confidential Data
and any copies, recordings or transcriptions thereof, which are no longer
required to be used for purposes of this Agreement.
4.5 Indemnification. Without limiting any other right, remedy or benefit
occurring to either party under this Agreement or by law, but subject to
the limitations set forth in Article VI (Limitations on Liability) each
party shall indemnify the other party fully for all damages caused by any
unauthorized disclosure or use of any information intended to be kept
secret, confidential or proprietary in accordance with this Article IV,
by such other party or its representatives, employees, agents and
consultants.
ARTICLE V - COVENANTS, WARRANTY AND LIMITED INDEMNIFICATION
5.1 Covenants, Representations and Warranties of Ramtron. Ramtron hereby
represents and warrants that:
5.1.1 Ramtron's execution of this Agreement has been duly authorized by
all necessary corporate action, including, with limitation,
approval of Ramtron's board of directors, and constitutes a
legally binding and enforceable obligation of Ramtron;
5.1.2 It has all right, title and interest to the FRAM Technology and
Ramtron's Improvements to be licensed hereunder and/or Ramtron's
IPR to be licensed hereunder to NEC and/or its Subsidiaries and
that Ramtron has the right to grant to NEC and/or its Subsidiaries
the licenses to be granted herein;
5.1.3 Ramtron has taken and will take all reasonably necessary actions
in order to avoid any unauthorized use or infringement of a third
party's ferroelectric related intellectual properties (e.g.,
patent rights and trade secrets), and Ramtron, as of the Effective
Date of this Agreement and subject to Section 5.1.5 below, has no
actual knowledge of any claims against Ramtron in connection with
any third party's ferroelectric related intellectual properties;
5.1.4 As of the Effective Date of the Agreement and subject to Section
5.1.5 below, Ramtron has no actual knowledge of any dispute raised
by a third party against Ramtron in connection with a third
party's ferroelectric related intellectual properties, and has no
actual knowledge of any patent infringement or trade secret
violation proceeding pending against Ramtron;
5.1.5 As of the Effective Date of the Agreement, Ramtron has no actual
knowledge of any judicial or administrative proceeding where a
third party alleges invalidity or unenforceability of Ramtron IPR,
except the five interference proceedings pending before either the
U.S. District Court for the District of Columbia or the U.S.
Patent and Trademark Office concerning Ramtron's U.S. patent No.
4,873,664 (Case Nos, 102,723; 102,724; 102,725; 102,726; and
102,727); and
Page-8
5.2 Covenants, Representations and Warranties of NEC. NEC hereby represents
and warrants that:
5.2.1 NEC's execution of this Agreement has been duly authorized by all
necessary corporate action, including, with limitation, approval
of NEC's board of directors, and constitutes a legally binding and
enforceable obligation of NEC; and
5.2.2 It has all right, title and interest to NEC's Improvements to be
licensed hereunder to Ramtron and/or its Subsidiaries, and that
NEC has the right to grant to Ramtron and/or its Subsidiaries the
licenses to be granted herein.
5.3 Defense of IPR. Ramtron shall use its reasonable best efforts to defend
Ramtron IPR against claims asserted by a third party that Ramtron IPR is
invalid or unenforceable. NEC shall use its reasonable best efforts to
defend its patents on NEC's Improvements against claims asserted by a
third party that NEC's patents are invalid or unenforceable. NEC and
Ramtron shall consult with each other regarding these matters.
5.4 Notice of Infringement. Ramtron and NEC shall promptly advise the other
in writing of any claim, action, lawsuit, or proceeding threatened, made
or brought against them or either of them for infringement of a patent
issued to a third party, or for violation of a third party's patent,
trade secret or other intellectual property right based in any instance
upon (i) NEC's use of the FRAM Technology or NEC's sale, lease, use or
distribution of FRAM Products or (ii) Ramtron's use of NEC's Improvements
or Ramtron's sale, use or distribution of FRAM Products, which in any way
incorporate NEC's Improvements.
5.5 Infringement Assistance Provided to NEC. In the event any claim or
action is brought by a third party against NEC based on alleged
infringement by licensed FRAM Products designed by NEC or its practice of
FRAM Technology, Ramtron Intellectual Property Rights, provided and/or
licensed to NEC hereunder, of any patent or other intellectual property
rights owned by any third party, then Ramtron shall use its reasonable
best efforts to provide NEC with (i) reasonable non-monetary assistance
in connection with the defense and settlement of such claim or action,
including all the necessary information related to the infringing
technology, and (ii) reasonable consultation for NEC's achievement of a
viable alternative solution to avoid such infringement issue.
5.6 Infringement Assistance provided to Ramtron. In the event any claim or
action is brought by a third party against Ramtron based on alleged
infringement by FRAM Products manufactured by Ramtron or a Ramtron
licensee using NEC's Improvements provided to Ramtron hereunder or
practice of NEC's Improvements, of any patent or other intellectual
property rights owned by any third party, then NEC shall use its
reasonable best efforts to provide Ramtron with (i) reasonable assistance
in connection with the defense and settlement of such claim or action,
including all the necessary information related to the infringing
technology, and (ii) reasonable consultation for Ramtron's achievement of
a viable alternative solution to avoid such infringement issue.
Page-9
5.7 Limitation of Warranty. THIS ARTICLE V STATES RAMTRON'S AND NEC'S TOTAL
LIABILITY AND RESPONSIBILITY TO EACH OTHER AND THE SUBSIDIARIES OF EACH,
AND NEC'S AND RAMTRON'S AND THEIR RESPECTIVE SUBSIDIARIES' SOLE REMEDY
FOR ANY ACTUAL OR ALLEGED INFRINGEMENT OF ANY PATENT, TRADEMARK,
COPYRIGHT OR OTHER INTELLECTUAL PROPERTY RIGHT BY THE FRAM TECHNOLOGY,
RAMTRON'S IMPROVEMENTS OR NEC'S IMPROVEMENTS LICENSED HEREUNDER, THE FRAM
PRODUCTS, OR ANY PART THEREOF. THIS ARTICLE V IS IN LIEU OF AND REPLACES
ANY OTHER EXPRESSED, IMPLIED OR STATUTORY WARRANTY AGAINST INFRINGEMENT.
ARTICLE VI - LIMITATIONS ON LIABILITY
6.1 IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER OR TO ANY OTHER
PARTY FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT OR INCIDENTAL DAMAGES,
HOWEVER CAUSED, ON ANY THEORY OF LIABILITY AND WHETHER OR NOT SUCH PARTY
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, ARISING IN ANY WAY
OUT OF THIS AGREEMENT OR THE TECHNOLOGY OR PRODUCTS LICENSED, PATENTS,
TRADE SECRETS, COPYRIGHTS OR MASKWORK RIGHTS OF ANY TYPE WHATSOEVER, OR
OTHERWISE PROVIDED PURSUANT TO THIS AGREEMENT.
ARTICLE VII - TERM AND TERMINATION
7.1 Term. This Agreement shall become effective on the Effective Date and
shall remain in full force until the ** anniversary of the
Effective Date, unless earlier terminated in accordance with the
provisions of this Article VII or unless extended by the mutual agreement
of the parties.
7.2 Termination Upon Insolvency or Merger. Subject to Section 7.4 herein,
each party may terminate this Agreement by giving written notice to the
other party upon or after:
7.2.1 The filing by the other party of a voluntary petition in
bankruptcy or insolvency;
7.2.2 Any adjudication that the other party is bankrupt or insolvent;
7.2.3 The appointment of a receiver or trustee for all or substantially
all of the property of the other party;
7.2.4 Any assignment or attempted assignment by the other party for the
benefit of creditors;
7.2.5 The institution of any proceedings for the liquidation or winding
up of the other party's business or for the termination of its
corporate charter; or
7.2.6 The merger or acquisition of the other party into or by, or the
sale of all or substantially all of the other party's assets to a
third party corporation or other entity, unless such merging or
acquiring corporation or entity expressly assumes the merged or
acquired party's obligations under this Agreement.
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7.3 Termination by Default. If either party defaults in the performance of
any material obligations hereunder, and if any such default is not
corrected within sixty (60) days after the defaulting party receives
written notice of such default from the non-defaulting party, then the
non-defaulting party may, at its option, and in addition to any other
remedies it may have, terminate this Agreement subject to the terms set
forth in Section 7.4 immediately below upon written notice to the
defaulting party.
7.4 Survival. Articles II (Technology License), III (Compensation), IV
(Confidentiality), VI (Limitations on Liability), and VIII (General Terms
and Conditions) shall survive the expiration of this Agreement. Upon
termination of this Agreement pursuant to Sections 7.2 or 7.3 immediately
above, all rights, privileges and obligations hereunder shall cease,
provided, however that:
7.4.1 In the event that this Agreement is terminated under Section 7.2
above, any and all licenses previously granted hereunder to the
terminating party shall survive such termination and continue,
provided the terminating party tenders on a timely basis any and
all payments referenced in Article III, and further subject to
compliance with the provisions of Articles IV, VI, and VIII. Any
and all licenses previously granted hereunder to the other party
(i.e., the bankrupt and/or insolvent party) which are in force on
the termination date shall terminate immediately upon the
termination date.
7.4.2 In the event this Agreement is terminated under Section 7.3 as a
result of a Ramtron default which is not corrected within the
sixty (60) day period provided in Section 7.3 above, any and all
licenses previously granted to NEC hereunder shall survive and
continue after such termination, provided NEC tenders on a timely
basis any and all payments referenced in Article III, and further
subject to NEC's compliance with the provisions of Articles II
(Technology License), IV (Confidentiality), VI (Limitations on
Liability), and VIII (General Terms and Conditions).
7.4.3 In the event that this Agreement is terminated under Section 7.3
as a result of an NEC default which is not corrected by NEC within
the sixty (60) day period provided in Section 7.3 above, (i) all
license rights previously granted to NEC hereunder shall
automatically terminate on the date of such termination, and NEC
shall return to Ramtron all technical documents and data furnished
by Ramtron to NEC under this Agreement and (ii) all license rights
granted to Ramtron hereunder shall survive and continue after such
termination, subject to the provisions of Articles IV, VI, and
VIII.
Page-11
7.5 NEC Discretionary Termination. Notwithstanding anything in this
Agreement to the contrary, after payment of the Initial License Fee
referenced in subsection 3.1.1 herein, NEC may terminate this Agreement
upon thirty (30) days prior written notice to Ramtron should NEC conclude
further development of FRAM Technology is not in its best interests. In
the event of such discretionary termination by NEC:
7.5.1 NEC shall be relieved of paying Ramtron any remaining Milestone
Fees referenced in subsection 3.1.2;
7.5.2 the Technology License, shall be terminated and of no further
force or effect; and,
7.5.3 any payments previously tendered by NEC to Ramtron shall be deemed
non-refundable.
ARTICLE IX- GENERAL TERMS AND CONDITIONS
8.1 Notices. All notices and requests required or authorized hereunder,
shall be given in writing by registered or certified mail, postage
prepaid, addressed as follows unless one party notifies the other in
writing of any changes in such address:
If to NEC: NEC Corporation
NEC Electron Devices
Intellectual Property Division
1753, Xxxxxxxxxxx, Xxxxxxxx-Xx, Xxxxxxxx,
Xxxxxxxx, 000-0000, Xxxxx
Attn: Licensing Manager
If to Ramtron: Ramtron International Corporation
0000 Xxxxxxx Xxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxxx 00000
Attention: President
With a copy to: The Xxxxxxx Professional Corporation - Attorneys
0000 Xxxxxxx Xxxxxx - Xxxxx 0000
Xxxxxx, Xxxxxxxx 00000
Attn: Xxxx X. Xxxxxxx
8.2 Arbitration. All disputes, controversies or differences which may arise
between the parties in relation to or in connection with this Agreement
shall be settled by amicable negotiation by both parties. If both
parties are unable to settle such disputes within a reasonable period,
then such disputes shall be referred to and finally settled by
arbitration in accordance with the then existing rule of International
Chamber of Commerce. Arbitration shall take place in Denver, Colorado,
the United States in case Ramtron is the defending party and in Tokyo,
Japan in case NEC is the defending party, and one (1) arbitrator shall be
appointed in accordance with the rule of International Chamber of
Commerce.The arbitration shall be conducted in English. The award of
arbitration shall be final and binding upon both parties.
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8.3 Export Control. The parties agree that no technical information,
including software, furnished hereunder or any direct products thereof is
intended to or will be exported or re-exported, directly or indirectly,
to any destination restricted or prohibited by export control regulations
of the USA and/or Japan, including the US Export Administration
Regulations, without the prior written authorization from the appropriate
governmental authorities.
8.4 Governing Law. This Agreement and the performance of the parties
hereunder shall be construed in accordance with and governed by the laws
of the State of Colorado, without giving effect to the principles of
conflicts of laws.
8.5 Severability. In the event that one or more provision(s) of this
Agreement is or becomes or is deemed invalid, illegal or unenforceable in
any respect, such invalidity, illegality or unenforceability shall not
effect any other provision of this Agreement, and this Agreement shall be
construed as if such invalid, illegal or unenforceable provision(s) had
not been contained herein.
8.6 Waiver. The delay or failure of a party to exercise any right or option
hereunder or failure to enforce any provision herein shall not impair any
such right or option nor shall it constitute a waiver thereof or
acquiescence thereto unless explicit written notice is provided.
8.7 Assignment. Neither this Agreement nor any right or obligation hereunder
may be assigned to any third party by either party hereto, nor shall the
same inure to the benefit of any trustee in bankruptcy, receiver or other
successor of either party, without the prior written consent of the other
party. The provisions of this Agreement will be binding upon and inure
to the benefit of the parties, their successors and permitted assigns.
8.8 Remedies Cumulative. Except as explicitly excluded or limited, all
remedies, either under this Agreement or by law or otherwise afforded to
any party, shall be cumulative and not exclusive or alternative and shall
be in addition to all remedies given hereunder or now or hereafter
existing, at law or in equity, by statute or otherwise. The election of
any one or more remedies by any party shall not constitute a waiver of
the right to pursue other available remedies.
8.9 Force Majeure. Neither party to this Agreement shall be responsible for
delay or failure in performance caused by any governmental act, law,
regulation, order or decree, by communication line or power failures
beyond its reasonable control, or by fire, flood or other natural
disasters, nor shall any such delay or failure be considered to be a
breach of this Agreement; provided that the provisions of this Section
8.9 shall not apply to any payment obligation of either party hereto. In
any such event, performance shall take place thereafter as soon as is
reasonably feasible.
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8.10 Publicity. The parties hereto agree that the terms and conditions of
this Agreement shall be confidential to any third party and that if
necessary, all notices to third parties and all publicity concerning the
terms and conditions of this Agreement shall be jointly planned and
coordinated by and between the parties. Neither of the parties shall
act unilaterally in this regard without the prior written approval of
the other party. The parties shall mutually agree upon a press release
and its contents, which shall be issued within ten (10) days following
execution of this Agreement.
8.11 Independent Contractor. The parties are independent contractors.
Nothing contained herein or done pursuant to this Agreement shall
constitute the parties as entering into a joint venture or partnership,
or shall constitute either party as the agent of the other party for any
purpose or in any sense whatsoever.
8.12 Headings. The section headings appearing in this Agreement are inserted
only as a matter of convenience and in no way define, limit, construe or
describe the scope or intent of such section, or in any way affect this
Agreement.
8.13 Entire Agreement. This Agreement sets forth the entire agreement and
understanding between the parties as to the subject matter hereof and
supersedes all prior agreements, negotiations or understandings with
respect thereto. This Agreement may not be changed, altered or amended
in any manner, orally or otherwise, except in writing signed by duly
authorized officers or representatives of both parties hereto.
8.14 Most Favored Nations. If after the Effective Date Ramtron grants to any
other semiconductor manufacturer a license to FRAM Technology of an
equivalent scope to the license granted in Section 2.1 hereof resulting
in more favorable terms and conditions, taken in the entirety
(including, but not limited to, license fees, payment terms, royalty
rates, manufacturing rights, termination rights, etc.) than the license
granted to NEC hereunder, then Ramtron shall notify NEC and the Parties
shall adjust the royalties payable by NEC to Ramtron hereunder in order
to reach an equitable balance between NEC and such other semiconductor
manufacturer.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed in
duplicate by their duly authorized representatives.
NEC CORPORATION
By: /S/ Xxxxx Xxxxxx
----------------
Xxxxx Xxxxxx
Title: General Manager, Microcomputer Division
Date: November 15, 2001
RAMTRON INTERNATIONAL CORPORATION
By: /S/Xxxx X. Xxxxx
----------------
Xxxx X. Xxxxx
Title: President, Technology Group
Date: October 30, 2001
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