Qimonda AG Confidential Materials Omitted and Filed Separately with the Securities and Exchange Commission. Confidential Portions denoted by [***]. TESSERA, INC. Qimonda TCC ® License Agreement
Exhibit 10(i)(R)
Qimonda AG
Confidential Materials Omitted and Filed Separately with the
Securities and Exchange Commission.
Confidential Portions denoted by [***].
Confidential Materials Omitted and Filed Separately with the
Securities and Exchange Commission.
Confidential Portions denoted by [***].
TESSERA, INC.
Qimonda TCC ® License Agreement
Qimonda TCC ® License Agreement
This Agreement is entered into as of this First day of July, 2006 (“Effective Date”), between
TESSERA INC., a corporation organized under the laws of Delaware, having a principal place of
business at 0000 Xxxxxxx Xxxxx, Xxx Xxxx, XX, 00000, XXX and the Tessera Affiliates (collectively
“Tessera”) and Qimonda AG, a corporation organized under the laws of Germany having a principal
place of business at Munich, Germany (or any successors or assigns of Qimonda AG due to any
entities resulting from the initial public offering of Qimonda AG), and the Licensee Affiliates
(collectively “Licensee”) with reference to the following facts:
Recitals
WHEREAS, Tessera owns certain patents related to semiconductor integrated circuit (“IC”) packaging
technology, and
WHEREAS, Licensee wishes to license the Tessera patents for certain semiconductor products in
accordance with the terms hereof.
The Parties Hereto Agree:
I. Definitions. As used herein, the following terms shall have the following meaning:
A. The term “Licensed Product” includes IC packages using (a) polyimide or glass-epoxy or
glass-laminate substrate; (b) one or more solder balls under the IC; (c) die attach adhesive
attaching the IC to the polyimide or glass-epoxy or glass-laminate substrate; and (d) solder ball
pitch less than or equal to 1.0mm. By way of clarification and not limitation, Licensed Products
include DRAM Licensed Products, Non-DRAM Licensed Products and Multiple Substrate Licensed
Products.
B. The term “DRAM Device” means a Dynamic Random Access Memory (DRAM) IC device comprised
solely of an array of DRAM cells and the associated control and I/O circuitry that are necessary to
allow data to be written to, stored by, and read from the DRAM cells.
C. The term “DRAM Licensed Product” means a Licensed Product that contains at least one IC
that is a DRAM Device and does not contain an IC that is not a DRAM Device.
D. The term “Non-DRAM Licensed Product” means a Licensed Product that contains at least one IC
that is not a DRAM Device. If a Licensed Product contains both a DRAM Device and
an IC that is not
a DRAM Device, the Licensed Product shall be considered a Non-DRAM
Licensed Product.
E. The term “Multiple Substrate Licensed Product” means a “Package Stack Unit” and a “Package
Stack,” defined respectively as follows:
i. The term “Package Stack Unit” means a package substrate having electrically conductive
terminals and at least one IC device on the package substrate and electrically connected to at
least some of the terminals, and
ii. The term “Package Stack” means an IC package including two or more Package Stack Units,
wherein said units are stacked one above the other so that at least some of the terminals on
mutually adjacent units in the stack are aligned with one another, mutually adjacent units being
electrically interconnected to one another by joining connectors formed at least in part from
material bonded to the aligned terminals of such units.
F. The term “Batch Technology” as used herein means any method, process, technique or Tessera
Patent that covers any structures or processing methods for simultaneously forming, producing
and/or connecting a plurality of electrical connections between contacts on an IC device and
substrate terminals of the IC package, including: (i) any method or result of U.S. Patent Number
5,518,964 (and related Patents) for making flexible electrically conducting element(s), joining
said elements to electrical contact(s) on a substantially planar electrical element such as a
semiconductor integrated circuit, undiced IC wafer, or interconnect substrate, and forming said
element(s) away from the plane of said contacts in a predetermined fashion into the flexible
electrical lead(s) of an IC package; (ii) any method or result of U.S. Patent 5,455,390 (and
related Patents) for making and forming flexible conducting element(s) on a dielectric film and
then simultaneously joining said elements to electrical contacts on a substantially planar
electrical element such as a semiconductor integrated circuit, undiced IC wafer or interconnect
substrate to produce the flexible electrical leads of an IC 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 simultaneously forming, producing and/or connecting a plurality of
flexible electrical leads of an IC package. Notwithstanding, the parties expressly agree that any
IC package made and/or connected individually on a semiconductor integrated circuit or undiced
wafer by traditional wire bonding methods and/or tape automated
bonding (“TAB”) gang bonding
methods, is not included in Batch Technology.
G. The term “Patent” means letters patent, utility models, allowances and applications
therefor in all countries of the world, including re-issues, re-examinations, continuations,
continuations-in-part, divisionals, and all corresponding foreign patents.
H. The term “Tessera Patent” means Patent(s) or claims within such Patent(s) for the design,
manufacture, and/or assembly of Licensed Products (excluding Batch Technology as defined herein)
owned by Tessera prior to expiration or termination of this Agreement. The term Tessera
Patent shall further include any third party patent for the design, manufacture, and/or
assembly of Licensed Products (excluding Batch Technology as defined herein) under which Tessera or
any successor thereof has the right to grant licenses of the scope granted herein, as of the
2
Effective Date or at any time during the term of this Agreement, without the payment of royalty or
other consideration to such third parties except for payment to third parties for inventions made
by said parties while employed by Tessera or any successor thereof. Tessera Patents, as defined
above, includes but is not limited to those Patents set forth in Attachment A as of the date stated
therein. Tessera has sole discretion in the prosecution of the Tessera patent applications
licensed hereunder, non-exclusively including filing continuations, continuations-in-part,
divisionals, filing corresponding foreign patents applications and/or abandoning one or more of
such patent applications.
I. The term “Billable Pin” means any electrical connection to an IC electrical bond pad made
or contained in any Licensed Product.
J. The term “Licensee Affiliate” means any company which agrees to be bound by the terms and
conditions of this Agreement and has more than fifty percent (50%) of the voting stock or equity
owned or controlled by Licensee. A company shall be considered a Licensee Affiliate only so long
as such majority ownership or control exists. Licensee shall be ultimately responsible for the
actions of the Licensee Affiliates pursuant to this Agreement.
K. The term “Tessera Affiliate” means any company which agrees to be bound by the terms and
conditions of this Agreement and has more than fifty percent (50%) of the voting stock or equity
owned or controlled by Tessera. A company shall be considered a Tessera Affiliate only so long as
such majority ownership or control exists. Tessera shall be ultimately responsible for the actions
of the Tessera Affiliates pursuant to this Agreement.
L. The term “Licensed Package Assembler” means a party licensed by Tessera to assemble, use
and sell Licensed Products for others. Tessera agrees to periodically provide Licensee a list of
such parties.
II. Licensee Rights
A. License Grant. Subject to the terms and conditions hereinafter set forth, Licensee’s
compliance with 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 world-wide,
non-exclusive, non-transferable, non-sublicensable, limited license to the Tessera Patents to make,
have made, use, sell, import, and offer for sale Licensed Products that are sold as Licensee’s own
products (i.e., the Licensed Products bear the Licensee’s commercial indicia).
1.
Have Made Rights and Royalties. If Licensee exercises its
“have made” right hereunder, Licensee shall be responsible for the payment of all royalties due hereunder
directly to Tessera for such assembly of Licensed Products regardless of whether or not the
assembler of the Licensed Product is a Licensed Package Assembler. Nothing in this Paragraph
II.A.1 shall prevent Licensee from agreeing with a Licensed Package Assembler that the Licensed
Package Assembler shall report and pay royalties to Tessera under its license for all Licensed Products made for
Licensee provided, however, that if such Licensed Package Assembler fails to report and pay such
royalties, Licensee shall pay the unpaid royalties under this Agreement promptly upon notice by
Tessera. Licensee shall have no obligation to pay an additional royalty under this agreement for
3
products on which a Licensed Package Assembler has already paid a full royalty under its agreement
with Tessera. Any such agreement reached between Licensee and a Licensed Package Assembler shall
require such Licensed Package Assembler to clearly identify Licensed Products made for Licensee in
reports to Tessera, and Tessera shall be given notice of such agreement.
2. Notice to Assemblers. When Licensee exercises this “have made” right at a Package
Assembler, it shall provide a written notice to such Licensed Package Assembler, with a copy to
Tessera, substantially in the form attached hereto as Attachment D.
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 product made using Batch Technology.
Accordingly, products made using Batch Technology are not Licensed Products under this
Agreement, and no royalties are due under this Agreement for products made using Batch Technology.
C. No Implied License. Except for the licenses expressly granted in Paragraph II.A, no
license, express or implied, by estoppel or otherwise, to any of Tessera’s intellectual property
rights is granted or implied by this Agreement.
D. Exclusion from License. Licensee is licensed only for Licensed Products for which it pays
royalties hereunder. Tessera may, at any time during the term hereof, notify Licensee that Tessera
believes that a product made, used, sold, imported, or offered for sale by Licensee (“Notified
Product”) is a Licensed Product. During a sixty (60) day period after such notice, the parties
will engage in good faith negotiations to include the Notified Product hereunder as Licensed
Product, but neither party will commence any litigation or administrative proceedings relating to
the Notified Product until after the end of the sixty (60) day period. If the parties fail to
agree on including the Notified Product as a Licensed Product during such period, the Notified
Product will not be licensed hereunder and either party may commence litigation or administrative
proceedings upon the expiration of the sixty (60) day period.
III. Royalty and Other Consideration
A. Other Consideration. As partial consideration for the license under this Agreement,
Licensee shall pay to Tessera the sum of Forty Million US Dollars ($40,000,000) by August 18, 2006.
B. Royalty. As further consideration Licensee shall pay running royalties for the license
granted under this Agreement four times annually (as set forth in Paragraph V) to Tessera during
the term of this Agreement, as follows:
1. DRAM Licensed Products. For each DRAM Licensed Product sold by Licensee, Licensee shall
pay a royalty as set forth in Attachment B.
2. Non-DRAM Licensed Products. For each Non-DRAM Licensed Product sold by Licensee, Licensee
shall pay a royalty as set forth in Attachment B.
4
3. Multiple Substrate Licensed Products. In the case of a Multiple Substrate Licensed
Product, royalties due under this Paragraph III.B shall be calculated separately for each Package
Stack Unit of a Package Stack based on whether the Package Stack Unit solely contains DRAM or
includes other types of ICs. For example, the royalty due for a Package Stack Unit that contains
solely DRAM shall be determined according to Paragraph III.B.1 per Package Stack Unit, the royalty
due for a Package Stack Unit that contains an IC that is not DRAM shall be determined according to
Paragraph III.B.2 per Package Stack Unit, such that the total royalty due for a Multiple Substrate
Licensed Product shall be calculated by adding together the royalty determined for each Package
Stack Unit.
C. Royalty Adjustments. In making the royalty payments due Tessera, Licensee may subtract
from such royalty payments any preceding royalty payments for royalty bearing Licensed Products
that are returned to Licensee from Licensee’s customers (“Royalty Adjustment”). However, if at any
time such returned Licensed Products are resold by Licensee, Licensee shall pay a royalty to
Tessera for such resold Licensed Products, as set forth in the Agreement. Before a Royalty
Adjustment can be so subtracted, Licensee must have originally paid a royalty on the particular
returned Licensed Product. All Royalty Adjustments must be specified with the information set
forth in Attachment C.
IV. Taxes
Any taxes due to the German government relating to payments made by Licensee to Tessera
pursuant to this Agreement shall be paid by Licensee and deducted from the amount payable from
Licensee to Tessera. Licensee shall obtain official tax receipts from the German government
indicating payment of such taxes and submit such receipts to Tessera to enable Tessera to obtain
applicable tax credits. Licensee shall cooperate reasonably with Tessera, and offer such
assistance as it reasonably can, in order to ensure that Tessera receives the most favorable tax
treatment with respect to the payments detailed herein.
5
V. Licensee Reports and Payment
A. Quarterly Royalty Reports & Payment. Beginning on the Effective Date of this Agreement,
royalties shall be calculated and paid in full in quarter annual payment periods ending March 31,
June 30, September 30 and December 31 of each year. Beginning with the first such royalty payment,
Licensee shall deliver a written report (as shown in Attachment C) describing (i) the basis upon
which and containing the information sufficient to determine the royalties due Tessera for the
applicable payment period and (ii) the purchases by Licensee of Licensed Products from other
Tessera licensees. All payments under this Paragraph shall be made in US Dollars by wire transfer
to Union Bank of California, 00 Xxxxxxx Xxxx., Xxx Xxxx, XX 00000, Account Name: Tessera, Account
No.: 6450148359, Routing No. 000000000, International Swift Code: XXXXXX00XXX, or such other bank
or account as Tessera may from time to time designate in writing. The payments of royalties and
submission of such reports from Licensee to Tessera under this Paragraph shall be made within
thirty (30) days from the end of each quarter annual payment period and shall be considered to be
made as of the day on which such payments are received in Tessera’s designated bank account.
VI. Licensee Patents
A. Limited Rights Under Licensee’s Patents. Licensee hereby grants to Tessera a world-wide,
royalty-free, non-exclusive, non-sublicensable, non-transferable,
right under Licensee'’s
Patents for the term of this Agreement to make, use and sell Licensed Products (subject to the
Batch Technology exclusion of Paragraph II.B) for the purposes of internal research and
development, customer funded research and development, and in support of Tessera’s engineering
services business. For the sake of clarity, the license granted to Tessera in this Section VI.A is
limited to the IC package and interconnect of the Licensed Product, alone or in combination with an
IC, and does not include, for example, the functional circuitry on the die or semiconductor process
technology used in the formation of the functional circuitry on the IC (hereafter “Qimonda License
Scope”). If Licensee elects to extend the term of this Agreement to obtain a paid-up license, then
the license set forth in this Paragraph VI.A shall also become a fully paid-up and perpetual.
Furthermore, to the extent that Licensee believes a third party is directly infringing Licensee’s
patents within the Qimonda License Scope, Licensee agrees to pursue its claims directly with such
third party and not with Tessera unless Tessera first asserts a Tessera Patent against Licensee
that would require an additional royalty for Licensed Products made under this Agreement.
VII. This section intentionally left blank
VIII. Term and Termination
A. Term: This Agreement shall become effective on the Effective Date and, unless earlier
terminated as provided for elsewhere in this Agreement, shall remain in full force until it
automatically expires on May 22, 2012, unless Licensee notifies Tessera by November 22, 2011 that
Licensee elects to extend this Agreement by five (5) years until May 22, 2017, and continue to pay
royalties for Licensed Products during the five (5) year extension period at rates equal to fifty
percent (50%) of the amounts due under Paragraph III.B. herein. If Licensee elects to extend this
6
Agreement until May 22, 2017, upon expiration of the extended term, Licensee shall have a
fully paid-up and perpetual license on the terms set forth in Paragraphs II.A through II.D herein
to use the Tessera Patents to the same extent as Licensee was licensed to use and was using Tessera
Patents immediately prior to such expiration.
B. 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, failure to pay fees and royalties and provide reports as set
forth herein). The parties agree that such breach will cause substantial damages to the party not
in breach. Therefore, the parties agree to work together to mitigate the effect of any such breach;
however, the non-breaching party may terminate this Agreement if such breach is not cured or
sufficiently mitigated (to the non-breaching party’s satisfaction) within sixty (60) days of notice
thereof.
C. 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 (“Selling Party”) or (ii) a third
party acquires more than fifty percent (50%) of the capital stock entitled to vote for directors of
such party (“Purchasing Party”), the Selling Party shall notify the other party hereto of such sale
or assignment of assets or the Purchasing 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
Purchasing Party stating that such Purchasing Party shall expressly undertakes all the terms and
conditions of this Agreement to be performed by Selling Party. In the event that Licensee is the
Selling Party and the Purchasing Party does not agree to fulfill such obligations under this
Agreement, Tessera shall reserve a right to terminate this Agreement. In the event Tessera is the
Selling Party, the Purchasing Party shall be bound to the terms and obligations of this Agreement.
D. Termination for Bankruptcy. In the event that one party becomes insolvent or 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.
E. Effect of Termination. Any termination of this Agreement pursuant to this Paragraph VIII
shall be deemed a termination of this Agreement in accordance with its terms (including termination
of any payments of unaccrued royalties to Tessera and any rights of Licensee to use any Tessera
Patent licensed hereunder).
F. Survival Clause. Unless otherwise provided elsewhere in this Agreement, the following
provisions shall survive the termination or expiration of this Agreement:
1. Licensee’s obligation to make payments to Tessera accrued under this Agreement on or prior
to expiration or termination.
7
2. Licensee’s obligation to submit written reports stipulated in Paragraph V for periods
prior to termination, Licensee Reports and Payment, and to permit the inspection and audit of its
records stipulated in Paragraph IX, Reasonable Audit.
3. Paragraph VIII, Term and Termination.
4. Paragraph X, No Warranties
5. Paragraph XI, Limitation on Damages
6. Paragraph XII, Confidentiality of Agreement Terms
7. Paragraph XIV, Miscellaneous
IX. Reasonable Audit
A. Financial Audit. Upon reasonable written prior notice, Tessera shall have the right to
examine and audit through an independent third party CPA firm, not more frequently than once per
year, relevant records of Licensee that may contain information bearing upon the amount of fees and
royalties payable under this Agreement; provided, 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
Licensee proprietary information obtained during the course of such audit. Licensee shall permit
auditors to copy and retain audit relevant records in confidence. The results of any such audit
shall be final, and within thirty (30) days after receiving the auditor’s report, Licensee shall
make payment to Tessera of any amount which may be found to be payable, if any, and Tessera
shall make payment to Licensee of any amount which may be found to have been overpaid, if any.
Tessera shall bear the expenses of such audit examinations unless fees and royalties due and owing
to Tessera are determined by the auditor to be at least five percent (5%) greater than such
similar amounts as calculated and/or paid by Licensee, in which case Licensee shall bear such
expenses.
X. No Warranties
The Parties acknowledge and agree that the rights and licenses, Tessera Patents, Licensee
patents and standards granted or otherwise provided hereunder are provided “AS IS”, with no
warranty of any kind. NEITHER PARTY MAKES ANY WARRANTY, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE,
CONCERNING THE SUBJECT MATTER OF THIS AGREEMENT, INCLUDING WITHOUT LIMITATION, WARRANTIES OF
FITNESS FOR A PARTICULAR PURPOSE, QUALITY, USEFULNESS, PATENT VALIDITY OR NONINFRINGEMENT. Neither
Party makes any warranty that the Tessera Patents or the Licensee patents will be sufficient to
yield any particular result.
XI. 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
8
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.
XII. Confidentiality of Agreement Terms
A. Confidential Terms. Tessera and Licensee shall keep the terms of this Agreement
(including all Attachments hereto) confidential except:
(1) to any court or governmental body or agency compelling such disclosure; however, any
disclosure shall be limited to that compelled by the governmental body or agency and the
disclosing party will take all reasonable actions to obtain a protective order protecting
the disclosure. With respect to any disclosure of this Agreement required by the United
States Securities and Exchange Commission or similar governmental agencies (it being
acknowledged and agreed that Licensee will file this Agreement as an exhibit to the
registration statement on form F-1 it has filed with respect to its initial public
offering), Licensee shall use reasonable efforts to secure confidential treatment of the
royalty terms set forth in Attachment B hereto, provided, however, that, if after making
such reasonable efforts Licensee is unable to secure such confidential treatment without
adversely effecting the timing of its planned initial public offering, then
Licensee need not secure such confidential treatment of the royalty terms;
(2) as may otherwise be required by law;
(3) disclosures to their respective attorneys, accountants, and financial advisors; or
(4) either party may disclose to third parties the existence of this Agreement to the extent
described in the Recitals section hereof.
B. Order to Disclose. A party receiving a request, subpoena or order for the disclosure of
the terms or conditions of this Agreement shall notify the other party as soon as practicable and
if, at all possible, in sufficient time to allow the other party to oppose disclose or seek
appropriate protective orders. The party receiving such request, subpoena or order shall cooperate
to the extent reasonably possible with the other party in any effort to oppose disclosure or seek
protective orders.
C. Breach of Confidentiality. If either party learns of a breach of this Paragraph XII, such
party shall immediately send a written notification to the other party describing the circumstances
of such breach.
D. Employee Agreements. Licensee will disclose the terms of this Agreement solely to its
employees who have a need to know such information.
E. Prior Confidentiality Terms. This Paragraph XII applies only to the matters described
herein and does not supersede any prior written agreements between the parties.
9
XIII. This Section Intentionally Left Blank
XIV. 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 State of California, irrespective of choice of laws provisions. Both parties
shall use reasonable 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 dispute
resolution proceeding shall take place in the United States, but if either party files a claim in a
state or federal court, such claim shall be filed in the state or federal courts within the
geographic boundaries of the federal Eastern District of Texas. The parties hereby consent to
personal jurisdiction and venue in the state and federal courts of the federal Eastern District of
Texas. Nothing herein shall alter or affect any other rights either party may have to redress any
breach or act of the other party. Notwithstanding any provision herein, after the sixty (60) day
cure period set forth in Paragraph VIII.B and notice of termination of this Agreement by one of the
parties, either party may bring an action in the U.S. International Trade Commission.
B. No Waiver. Any waiver, express or implied, by either of the parties hereto of any right
hereunder or default by the other party, shall not constitute or be deemed a continuing waiver or a
waiver of any other right or default. No failure or delay on the part of 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 of any
other right or privilege.
C. Equitable Relief. Nothing herein shall preclude either party from taking actions at any
time in the courts specified in Paragraph XIV.A that are necessary to prevent immediate,
irreparable harm to its interests. Otherwise, these procedures are exclusive and shall be fully
exhausted prior to the initiation of any litigation.
D. 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: | Qimonda XX | |||
Xxxxxx-Xxxxxxxxx-Xxxx 000, | ||||
00000 Xxxxxxx, |
00
Xxxxxxx | ||||
Facsimile No.:x00-00-000-0000000 | ||||
Attn: General Counsel |
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
shall be deemed to have been received at the time of dispatch, unless such date of receipt is not a
business day, in which case the date of deemed receipt shall be the next succeeding business day.
E. 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 reasonable 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.
F. Assignment. With the exception of Paragraph VIII.C (Termination for Assignment), neither
party may assign this Agreement or any of its rights or obligations hereunder without the prior
written consent of the other party; provided, however, that Tessera may assign this Agreement to a
Tessera Affiliate, a parent company, or any company owned or controlled by such parent company.
G. Export Regulations. Both parties shall comply with the laws and regulations of the
government of the United States and of any other country as relevant to each party hereto relating
to the export of goods and information.
H. Paragraph Headings. The headings and captions used herein shall not be used to interpret
or construe this Agreement.
I. 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.
J. Contingency. This Agreement shall not become effective unless and until Tessera’s
Executive Committee (consisting of Tessera’s Chief Executive Officer, Chief Financial Officer and
General Counsel) confirms acceptance of this Agreement on
August 1, 2006, between 3:00 pm and 4:00
pm EDT. Tessera will use reasonable efforts to inform Licensee (by e-mail or facsimile) of acceptance
by Tessera’s Executive Committee within an hour of such
acceptance, provided, however, that Tessera shall not publish a press
release prior to the delivery of such information to Infineon.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this Agreement as of the
date first above written.
11
TESSERA, INC. | QIMONDA AG | |||||||
By:
|
/s/ Xxxxxxxxxxx Xxxxxxx |
By: | /s/ Xxxxx Xxxxxxxxxxx |
|||||
Print Name:
|
Xxxxxxxxxxx Xxxxxxx |
Print Name: | Xxxxx Xxxxxxxxxxx |
|||||
Title:
|
Executive Vice President &
General Counsel |
Title: | Vice President |
|||||
Date:
|
August 1, 2006 |
Date: | August 1, 2006 |
|||||
By: | /s/ Xxxxxxx Xxxxx |
|||||||
Print Name: | Xxxxxxx Xxxxx |
|||||||
Title: | Corporate Legal Counsel |
|||||||
Date: | August 1, 2006 |
12
ATTACHMENT A (current through January 1, 2005)
US PATENT NO. | TITLE | EXPIRATION | ||
5,148,265
|
SEMICONDUCTOR CHIP ASSEMBLIES WITH FAN-IN LEADS |
9/24/2010 | ||
5,148,266
|
SEMICONDUCTOR CHIP ASSEMBLIES HAVING INTERPOSER AND FLEXIBLE LEAD |
9/24/2010 | ||
5,258,330
|
SEMICONDUCTOR CHIP ASSEMBLIES WITH FAN-IN LEADS |
11/2/2010 | ||
5,346,861
|
SEMICONDUCTOR CHIP ASSEMBLIES AND METHODS OF MAKING SAME |
9/13/2011 | ||
5,347,159
|
SEMICONDUCTOR CHIP ASSEMBLIES WITH FACE-UP MOUNTING AND REAR-SURFACE CONNECTION TO SUBSTRATE |
9/13/2011 | ||
5,390,844
|
SEMICONDUCTOR INNER LEAD BONDING TOOL |
7/23/2013 | ||
5,398,863
|
SHAPED LEAD STRUCTURE AND METHOD | 7/23/2013 | ||
5,414,298
|
SEMICONDUCTOR CHIP ASSEMBLIES AND COMPONENTS WITH PRESSURE CONTACT |
3/26/2013 | ||
5,477,611
|
METHOD OF FORMING INTERFACE BETWEEN DIE AND CHIP CARRIER |
9/20/2013 | ||
5,489,749
|
SEMICONDUCTOR CONNECTION COMPONENTS AND METHODS WITH RELEASABLE LEAD SUPPORT |
2/6/2013 | ||
5,491,302
|
MICROELECTRONIC BONDING WITH LEAD MOTION |
9/19/2014 | ||
5,525,545
|
SEMICONDUCTOR CHIP ASSEMBLIES AND COMPONENTS WITH PRESSURE CONTACT |
6/11/2013 | ||
5,536,909
|
SEMICONDUCTOR CONNECTION COMPONENTS AND METHODS WITH RELEASABLE LEAD SUPPORT |
7/16/2013 | ||
5,548,091
|
SEMICONDUCTOR CHIP CONNECTION COMPONENTS WITH ADHESIVES AND METHODS FOR BONDING TO THE CHIP |
10/26/2013 |
13
US PATENT NO. | TITLE | EXPIRATION | ||
5,597,470
|
METHOD OF MAKING A FLEXIBLE LEAD FOR A MICROELECTRONIC DEVICE |
6/19/2015 | ||
5,619,017
|
MICROELECTRONIC BONDING WITH LEAD MOTION |
9/19/2014 | ||
5,629,239
|
MANUFACTURE OF SEMICONDUCTOR CONNECTION COMPONENTS WITH FRANGIBLE LEAD SECTIONS |
3/21/2015 | ||
5,659,952
|
METHOD OF FABRICATING COMPLIANT INTERFACE FOR A SEMICONDUCTOR CHIP |
9/20/2014 | ||
5,663,106
|
METHOD OF ENCAPSULATING DIE AND CHIP CARRIER |
9/2/2014 | ||
5,679,194
|
FABRICATION OF LEADS ON SEMICONDUCTOR CONNECTION COMPONENTS |
5/4/2015 | ||
5,679,977
|
SEMICONDUCTOR CHIP ASSEMBLIES, METHODS OF MAKING SAME AND COMPONENTS FOR SAME |
9/24/2010 | ||
5,682,061
|
COMPONENT FOR CONNECTING A SEMICONDUCTOR CHIP TO A SUBSTRATE |
10/28/2014 | ||
5,685,885
|
WAFER-SCALE TECHNIQUES FOR FABRICATION OF SEMICONDUCTOR CHIP ASSEMBLIES |
9/13/2011 | ||
5,706,174
|
COMPLIANT MICROELECTRONIC MOUNTING DEVICE |
7/7/2014 | ||
5,766,987
|
MICROELECTRONIC ENCAPSULATION METHODS AND EQUIPMENT |
9/22/2015 | ||
5,776,796
|
METHOD OF ENCAPSULATING A SEMICONDUCTOR PACKAGE |
5/19/2014 | ||
5,777,379
|
SEMICONDUCTOR ASSEMBLIES WITH REINFORCED PERIPHERAL REGIONS |
8/18/2015 | ||
5,787,581
|
METHODS OF MAKING SEMICONDUCTOR CONNECTION COMPONENTS WITH RELEASABLE LOAD SUPPORT |
7/24/2012 | ||
5,801,446
|
MICROELECTRONIC CONNECTIONS WITH SOLID CORE JOINING UNITS |
9/1/2015 |
14
US PATENT NO. | TITLE | EXPIRATION | ||
5,807,453
|
FABRICATION OF LEADS ON SEMICONDUCTOR CONNECTION COMPONENTS |
5/4/2015 | ||
5,821,608
|
LATERALLY SITUATED STRESS/STRAIN RELIEVING LEAD FOR A SEMICONDUCTOR CHIP PACKAGE |
9/6/2016 | ||
5,821,609
|
SEMICONDUCTOR CONNECTION COMPONENT WITH FRANGIBLE LEAD SECTIONS |
3/21/2015 | ||
5,834,339
|
METHODS FOR PROVIDING VOID FREE LAYERS FOR SEMICONDUCTOR ASSEMBLIES |
3/7/2016 | ||
5,848,467
|
METHODS OF MAKING SEMICONDUCTOR CHIP ASSEMBLIES |
9/13/2011 | ||
5,852,326
|
FACE-UP SEMICONDUCTOR CHIP ASSEMBLY |
9/24/2010 | ||
5,861,666
|
STACKED CHIP ASSEMBLY | 8/29/2016 | ||
5,868,301
|
SEMICONDUCTOR INNER LEAD BONDING TOOL |
4/10/2016 | ||
5,875,545
|
METHOD OF MOUNTING A CONNECTION COMPONENT ON A SEMICONDUCTOR CHIP WITH ADHESIVES |
10/26/2013 | ||
5,885,849
|
MICROELECTRONIC CONNECTIONS WITH SOLID CORE JOINING UNITS |
3/28/2015 | ||
5,915,170
|
MULTIPLE PART COMPLIANT INTERFACE FOR PACKAGING OF A SEMICONDUCTOR CHIP AND METHOD THEREFOR |
9/16/2017 | ||
5,915,752
|
METHOD OF MAKING CONNECTIONS TO A SEMICONDUCTOR CHIP ASSEMBLY |
7/24/2012 | ||
5,929,517
|
COMPLIANT INTEGRATED CIRCUIT PACKAGE AND METHOD OF FABRICATING THE SAME |
7/27/2016 | ||
5,932,254
|
SYSTEM FOR ENCAPSULATING MICROELECTRONIC DEVICES |
9/22/2015 | ||
5,937,276
|
BONDING LEAD STRUCTURE WITH ENHANCED ENCAPSULATION |
10/8/2017 |
15
US PATENT NO. | TITLE | EXPIRATION | ||
5,950,304
|
METHODS OF MAKING SEMICONDUCTOR CHIP ASSEMBLIES |
9/24/2010 | ||
5,966,587
|
METHODS OF MAKING SEMICONDUCTOR ASSEMBLIES WITH REINFORCED PERIPHERAL REGIONS |
8/18/2015 | ||
5,966,592
|
STRUCTURE AND METHOD FOR MAKING A COMPLIANT LEAD FOR A MICROELECTRONIC DEVICE |
11/21/2015 | ||
5,977,618
|
SEMICONDUCTOR CONNECTION COMPONENTS AND METHODS WITH RELEASABLE LEAD SUPPORT |
7/24/2012 | ||
5,989,939
|
PROCESS OF MANUFACTURING COMPLIANT WIRE BOND PACKAGE |
12/12/2017 | ||
5,994,222
|
METHOD OF MAKING CHIP MOUNTINGS AND ASSEMBLIES |
4/25/2017 | ||
5,994,781
|
SEMICONDUCTOR CHIP PACKAGE WITH DUAL LAYER TERMINAL AND LEAD STRUCTURE |
5/29/2018 | ||
6,002,168
|
MICROELECTRONIC COMPONENT WITH RIGID INTERPOSER |
11/25/2017 | ||
6,012,224
|
METHOD OF FORMING COMPLIANT MICROELECTRONIC MOUNTING DEVICE |
7/7/2014 | ||
6,030,856
|
BONDABLE COMPLIANT PADS FOR PACKAGING OF A SEMICONDUCTOR CHIP AND METHOD THEREFOR |
6/10/2017 | ||
6,045,655
|
METHOD OF MOUNTING A CONNECTION COMPONENT ON A SEMICONDUCTOR CHIP WITH ADHESIVE |
10/26/2013 | ||
6,046,076
|
VACUUM DISPENSE METHOD FOR DISPENSING AN ENCAPSULANT AND MACHINE THEREFOR |
12/29/2014 | ||
6,049,972
|
UNIVERSAL STRIP/CARRIER FRAME ASSEMBLY AND METHODS |
1/23/2018 | ||
6,054,337
|
METHODS OF MAKING A COMPLIANT MULTICHIP PACKAGE |
12/12/2017 | ||
6,054,756
|
CONNECTION COMPONENTS WITH FRANGIBLE LEADS AND BUS |
7/24/2012 |
16
US PATENT NO. | TITLE | EXPIRATION | ||
6,080,605
|
METHOD OF ENCAPSULATING A SEMICONDUCTOR CHIP USING A SETTABLE ENCAPSULANT |
10/6/2018 | ||
6,080,932
|
SEMICONDUCTOR PACKAGE ASSEMBLIES WITH MOISTURE VENTS |
4/14/2018 | ||
6,081,035
|
MICROELECTRONIC BOND RIBBON DESIGN | 10/24/2016 | ||
6,083,837
|
FABRICATION OF COMPONENTS BY COINING |
12/12/2017 | ||
6,107,123
|
METHODS FOR PROVIDING VOID-FREE LAYERS FOR SEMICONDUCTOR ASSEMBLIES |
3/7/2016 | ||
6,107,682
|
COMPLIANT WIRE BOND PACKAGES HAVING WIRE LOOP |
12/12/2017 | ||
6,121,676
|
STACKED MICROELECTRONIC ASSEMBLY AND METHOD THEREFOR |
12/11/2017 | ||
6,126,428
|
VACUUM DISPENSE APPARATUS FOR DISPENSING AN ENCAPSULANT |
12/29/2014 | ||
6,127,724
|
PACKAGED MICROELECTRONIC ELEMENTS WITH ENHANCED THERMAL CONDUCTION |
10/31/2017 | ||
6,130,116
|
METHOD OF ENCAPSULATING A MICROELECTRONIC ASSEMBLY UTILIZING A BARRIER |
12/4/2017 | ||
6,133,627
|
SEMICONDUCTOR CHIP PACKAGE WITH CENTER CONTACTS |
9/24/2010 | ||
6,133,639
|
COMPLIANT INTERFACE FOR A SEMICONDUCTOR CHIP AND METHOD THEREFOR |
9/20/2014 | ||
6,147,401
|
COMPLIANT MULTICHIP PACKAGE | 12/12/2017 | ||
6,157,075
|
SEMICONDUCTOR ASSEMBLIES WITH REINFORCED PERIPHERAL REGIONS |
8/18/2015 | ||
6,162,661
|
SPACER PLATE SOLDER BALL PLACEMENT FIXTURE AND METHODS THEREFOR |
5/29/2018 | ||
6,169,328
|
SEMICONDUCTOR CHIP ASSEMBLY | 9/20/2014 | ||
6,170,151
|
UNIVERSAL UNIT STRIP/CARRIER FRAME ASSEMBLY AND METHODS |
1/23/2018 |
17
US PATENT NO. | TITLE | EXPIRATION | ||
6,182,546
|
APPARATUS AND METHODS FOR SEPARATING MICROELECTRONIC PACKAGES FROM A COMMON SUBSTRATE |
3/4/2018 | ||
6,184,140
|
METHODS OF MAKING MICROELECTRONIC PACKAGES UTILIZING COINING |
12/12/2017 | ||
6,191,473
|
BONDING LEAD STRUCTURE WITH ENHANCED ENCAPSULATION |
10/8/2017 | ||
6,196,042
|
COINING TOOL AND PROCESS OF MANUFACTURING SAME FOR MAKING CONNECTION COMPONENTS |
3/31/2019 | ||
6,197,665
|
LAMINATION MACHINE AND METHOD TO LAMINATE A COVERLAY TO A MICROELECTRONIC PACKAGE |
4/15/2019 | ||
6,202,299
|
SEMICONDUCTOR CHIP CONNECTION COMPONENTS WITH ADHESIVES AND METHOD OF MAKING SAME |
10/26/2013 | ||
6,204,091
|
METHOD OF ASSEMBLING A SEMICONDUCTOR CHIP PACKAGE |
12/4/2017 | ||
6,208,025
|
MICROELECTRONIC COMPONENT WITH RIGID INTERPOSER |
11/25/2017 | ||
6,214,640
|
METHOD OF MANUFACTURING A PLURALITY OF SEMICONDUCTOR PACKAGES |
8/3/2019 | ||
6,215,191
|
COMPLIANT LEAD STRUCTURES FOR MICROELECTRONIC DEVICES |
11/21/2015 | ||
6,218,213
|
MICROELECTRONIC COMPONENTS WITH FRANGIBLE LEAD SECTIONS |
6/3/2019 | ||
6,218,215
|
METHODS OF ENCAPSULATING A SEMICONDUCTOR CHIP USING A SETTABLE ENCAPSULANT |
10/6/2018 | ||
6,225,688
|
STACKED MICROELECTRONIC ASSEMBLY AND METHOD THEREFOR |
12/11/2017 | ||
6,232,152
|
METHOD OF MANUFACTURING A PLURALITY OF SEMICONDUCTOR PACKAGES AND THE RESULTING SEMICONDUCTOR PACKAGE STRUCTURES |
5/19/2014 |
18
US PATENT NO. | TITLE | EXPIRATION | ||
6,248,656
|
METAL-JACKETED LEAD MANUFACTURING PROCESS USING RESIST LAYERS |
8/13/2019 | ||
6,253,992
|
SOLDER BALL PLACEMENT FIXTURES AND METHODS |
3/17/2019 | ||
6,255,723
|
LAYERED LEAD STRUCTURES | 10/27/2018 | ||
6,255,738
|
ENCAPSULANT FOR MICROELECTRONIC DEVICES |
9/30/2017 | ||
6,261,863
|
COMPONENTS WITH RELEASABLE LEADS AND METHODS OF MAKING RELEASABLE LEADS |
10/24/2015 | ||
6,265,759
|
LATERALLY SITUATED STRESS/STRAIN RELIEVING LEAD FOR A SEMICONDUCTOR CHIP PACKAGE |
9/6/2016 | ||
6,266,872
|
METHOD FOR MAKING A CONNECTION COMPONENT FOR A SEMICONDUCTOR CHIP PACKAGE |
12/9/2017 | ||
6,272,744
|
SEMICONDUCTOR CONNECTION COMPONENTS AND METHODS WITH RELEASABLE LEAD SUPPORT |
7/24/2012 | ||
6,274,822
|
MANUFACTURE OF SEMICONDUCTOR CONNECTION COMPONENTS WITH FRANGIBLE LEAD SECTIONS |
7/2/2018 | ||
6,294,040
|
TRANSFERABLE RESILIENT ELEMENT FOR PACKAGING OF A SEMICONDUCTOR CHIP AND METHOD THEREFOR |
6/20/2017 | ||
6,300,231
|
METHOD FOR CREATING A DIE SHRINK INSENSITIVE SEMICONDUCTOR PACKAGE AND COMPONENT THEREFOR |
5/28/2019 | ||
6,300,254
|
METHODS OF MAKING COMPLIANT INTERFACES AND MICROELECTRONIC PACKAGES USING SAME |
4/16/2019 | ||
6,306,752
|
CONNECTION COMPONENT AND METHOD OF MAKING SAME |
9/15/2019 | ||
6,309,910
|
MICROELECTRONIC COMPONENTS WITH FRANGIBLE LEAD SECTIONS |
5/18/2019 |
19
US PATENT NO. | TITLE | EXPIRATION | ||
6,309,915
|
SEMICONDUCTOR CHIP PACKAGE WITH EXPANDER RING AND METHOD OF MAKING SAME |
2/5/2019 | ||
6,313,528
|
COMPLIANT MULTICHIP PACKAGE | 12/12/2017 | ||
6,324,754
|
METHOD FOR FABRICATING MICROELECTRONIC ASSEMBLIES |
3/25/2018 | ||
6,329,224
|
ENCAPSULATION OF MICROELECTRONIC ASSEMBLIES |
4/28/2018 | ||
6,334,942
|
SELECTIVE REMOVAL OF DIELECTRIC MATERIALS AND PLATING PROCESS USING SAME |
2/9/2019 | ||
6,358,780
|
SEMICONDUCTOR PACKAGE ASSEMBLIES WITH MOISTURE VENTS AND METHODS OF MAKING SAME |
4/14/2018 | ||
6,359,236
|
MOUNTING COMPONENT WITH LEADS HAVING POLYMERIC STRIPS |
7/24/2012 | ||
6,359,335
|
METHOD OF MANUFACTURING A PLURALITY OF SEMICONDUCTOR PACKAGES AND THE RESULTING SEMICONDUCTOR PACKAGE STRUCTURES |
5/19/2014 | ||
6,370,032
|
COMPLIANT MICROELECTRONIC MOUNTING DEVICE |
7/7/2014 | ||
6,373,128
|
SEMICONDUCTOR ASSEMBLIES WITH REINFORCED PERIPHERAL REGIONS |
8/18/2015 | ||
6,373,141
|
BONDABLE COMPLIANT PADS FOR PACKAGING OF A SEMICONDUCTOR CHIP AND METHOD THEREFOR |
6/10/2017 | ||
6,380,060
|
OFF-CENTER SOLDER BALL ATTACH AND METHODS THEREFOR |
8/31/2020 | ||
6,388,340
|
COMPLIANT SEMICONDUCTOR CHIP PACKAGE WITH FAN-OUT LEADS AND METHOD OF MAKING SAME |
2/5/2019 | ||
6,423,907
|
COMPONENTS WITH RELEASABLE LEADS | 2/9/2018 | ||
6,433,419
|
FACE-UP SEMICONDUCTOR CHIP ASSEMBLIES |
9/24/2010 |
20
US PATENT NO. | TITLE | EXPIRATION | ||
6,458,628
|
METHODS OF ENCAPSULATING A SEMICONDUCTOR CHIP USING A SETTABLE ENCAPSULANT |
10/6/2018 | ||
6,458,681
|
METHODS FOR PROVIDING VOID-FREE LAYERS FOR SEMICONDUCTOR ASSEMBLIES |
3/7/2016 | ||
6,460,245
|
METHOD OF FABRICATING SEMICONDUCTOR CHIP ASSEMBLIES |
10/26/2013 | ||
6,465,744
|
GRADED METALLIC LEADS CONNECTION TO MICROELECTRONIC ELEMENTS |
3/26/2019 | ||
6,465,747
|
MICROELECTRONIC ASSEMBLIES HAVING SOLDER-WETTABLE PADS AND CONDUCTIVE ELEMENTS |
3/25/2018 | ||
6,465,893
|
STACKED CHIP ASSEMBLY | 9/24/2010 | ||
6,468,830
|
COMPLIANT SEMICONDUCTOR PACKAGE WITH ANISOTROPIC CONDUCTIVE MATERIAL INTERCONNECTS AND METHODS |
1/25/2019 | ||
6,468,836
|
LATERALLY SITUATED STRESS/STRAIN RELIEVING LEAD FOR A SEMICONDUCTOR CHIP PACKAGE |
9/6/2016 | ||
6,486,003
|
EXPANDABLE INTERPOSER FOR A MICROELECTRONIC PACKAGE AND METHOD THEREFOR |
12/10/2017 | ||
6,489,674
|
METHOD FOR CREATING A DIE SHRINK INSENSITIVE SEMICONDUCTOR PACKAGE AND COMPONENT THEREFOR |
5/28/2019 | ||
6,492,201
|
FORMING MICROELECTRONIC COMPONENTS BY ELECTROPHORETIC DEPOSITION |
7/10/2018 | ||
6,518,662
|
METHOD OF ASSEMBLING A SEMICONDUCTOR CHIP PACKAGE |
8/13/2018 | ||
6,521,480
|
A METHOD FOR MAKING A SEMICONDUCTOR CHIP PACKAGE |
7/25/2015 | ||
6,525,429
|
METHODS OF MAKING MICROELECTRONIC ASSEMBLIES INCLUDING COMPLIANT INTERFACES |
9/20/2014 | ||
6,527,163
|
METHODS OF MAKING BONDABLE CONTACTS AND A TOOL FOR MAKING SUCH CONTACTS |
11/21/2020 |
21
US PATENT NO. | TITLE | EXPIRATION | ||
6,534,392
|
METHODS OF MAKING MICROELECTRONIC ASSEMBLIES USING BONDING STAGE AND BONDING STAGE THEREFOR |
9/14/2021 | ||
6,541,845
|
COMPONENTS WITH RELEASABLE LEADS AND METHODS OF MAKING RELEASABLE LEADS |
10/24/2015 | ||
6,541,874
|
ENCAPSULATION OF MICROELECTRONIC ASSEMBLIES |
4/28/2018 | ||
6,572,781
|
MICROELECTRONIC PACKAGING METHODS AND COMPONENTS |
5/16/2021 | ||
6,573,459
|
GRADED METALLIC LEADS FOR CONNECTION TO MICROELECTRONIC ELEMENTS |
3/26/2019 | ||
6,602,740
|
ENCAPSULATION OF MICROELECTRONIC ASSEMBLIES |
11/22/2020 | ||
6,603,209
|
COMPLIANT INTEGRATED CIRCUIT PACKAGE |
12/29/2014 | ||
6,653,172
|
METHODS FOR PROVIDING VOID-FREE LAYERS FOR SEMICONDUCTOR ASSEMBLIES |
3/7/2016 | ||
6,664,484
|
COMPONENTS WITH RELEASABLE LEADS | 5/1/2018 | ||
6,686,015
|
TRANSFERABLE RESILIENT ELEMENT FOR PACKAGING OF A SEMICONDUCTOR CHIP AND METHODTHEREFOR |
6/30/2017 | ||
6,687,980
|
APPARATUS FOR PROCESSING FLEXIBLE TAPE FOR MICROELECTRONIC ASSEMBLIES |
12/14/2018 | ||
6,699,730
|
STACKED MICROELECTRONIC ASSEMBLY AND METHOD THEREFOR |
4/15/2018 | ||
6,707,149
|
LOW COST AND COMPLIANT MICROELECTRONIC PACKAGES FOR HIGH I/O AND FINE PITCH |
10/11/2021 | ||
6,709,469
|
SPACER PLATE SOLDER BALL REPLACEMENT FIXTURE AND METHODS THEREFOR |
5/29/2018 | ||
6,709,895
|
PACKAGED MICROELECTRONIC ELEMENTS WITH ENHANCED THERMAL CONDUCTION |
10/31/2017 | ||
6,716,671
|
METHODS OF MAMING MICROELECTRONIC ASSEMBLIES USING COMPRESSED RESILIENT LAYER |
3/19/2021 |
22
US PATENT NO. | TITLE | EXPIRATION | ||
6,723,584
|
METHODS OF MAKING MICROELECTRONIC ASSEMBLIES INCLUDING COMPLIANT INTERFACES |
9/20/2014 | ||
6,763,579
|
METHODS OF MAKING COMPONENTS WITH RELEASABLE LEADS |
2/9/2018 | ||
6,765,288
|
MICROELECTRONIC ADAPTORS, ASSEMBLIES AND METHODS |
9/6/2022 | ||
6,774,317
|
CONNECTION COMPONENTS WITH POSTS | 12/29/2014 | ||
6,780,747
|
METHODS FOR PROVIDING VOID-FREE LAYERS FOR SEMICONDUCTOR ASSEMBLIES |
3/7/2016 | ||
6,791,169
|
COMPLIANT SEMICONDUCTOR PACKAGE WITH ANISOTROPIC CONDUCTIVE MATERIAL INTERCONNECTS AND METHODS THEREFOR |
1/25/2018 | ||
6,821,815
|
METHODS OF ASSEMBLING A SEMICONDUCTOR CHIP PACKAGE |
12/4/2017 | ||
6,822,320
|
MICROELECTRONIC CONNECTION COMPONENTS UTILIZING CONDUCTIVE CORES AND POLYMERIC COATINGS |
7/10/2018 | ||
6,828,668
|
FLEXIBLE LEAD STRUCTURES AND METHODS OF MAKING SAME |
7/7/2014 |
23
US APPLICATION | ESTIMATED | |||
SERIAL NO. | TITLE | EXPIRATION DATE | ||
09/534,939
|
CONNECTION COMPONENTS WITH FRANGIBLE LEADS AND BUS |
7/24/2012 | ||
09/656,690
|
FACE-UP SEMICONDUCTOR CHIP ASSEMBLIES |
9/24/2010 | ||
09/766,814
|
MICROELECTRONIC PACKAGES HAVING DEFORMED BONDED AND METHODS THEREFOR |
7/7/2014 | ||
09/827,840
|
MICROELECTRONIC ASSEMBLY HAVING ENCAPSULATED WIRE BONDING LEADS |
9/24/2010 | ||
09/942,386
|
COMPONENTS WITH CONDUCTIVE SOLDER MASK LAYERS |
3/26/2019 | ||
10/044,121
|
STACKED MICROELECTRONIC ASSEMBLIES AND METHODS OF MAKING SAME |
1/11/2022 | ||
10/077,145
|
OFF-CENTER SOLDER BALL ATTACH ASSEMBLY |
8/31/2020 | ||
10/077,388
|
ASSEMBLIES HAVING STACKED SEMICONDUCTOR CHIPS AND METHODS OF MAKING SAME |
2/15/2022 | ||
10/095,561
|
METHOD OF MANUFACTURING A PLURALITY OF SEMICONDUCTOR PACKAGES AND THE RESULTING SEMICONDUCTOR PACKAGE |
5/19/2014 | ||
10/123,547
|
METHODS OF MAKING MICROELECTRONIC ASSEMBLIES INCLUDING COMPLIANT INTERFACES |
9/20/2014 | ||
10/162,957
|
CONNECTION COMPONENTS WITH FRANGIBLE LEADS AND BUS |
7/24/2012 | ||
10/164,116
|
SEMICONDUCTOR CHIP ASSEMBLIES, METHODS OF MAKING SAME AND COMPONENTS FOR SAME |
9/24/2010 | ||
10/210,160
|
HIGH-FREQUENCY CHIP PACKAGES | 8/1/2022 | ||
10/210,811
|
METHOD OF FABRICATING SEMICONDUCTOR CHIP ASSEMBLIES |
3/7/2016 | ||
10/235,102
|
MICROELECTRONIC ASSEMBLY FORMATION WITH RELEASABLE LEADS |
9/5/2022 |
24
US APPLICATION | ESTIMATED | |||
SERIAL NO. | TITLE | EXPIRATION DATE | ||
10/267,450
|
STACKED PACKAGES | 10/9/2022 | ||
10/281,550
|
METHODS OF MAKING MICROELECTRONIC ASSEMBLIES INCLUDING FOLDED SUBSTRATES |
12/11/2017 | ||
10/301,188
|
MICROELECTRONIC COMPONENT AND ASSEMBLY HAVING LEADS WITH OFFSET PORTIONS |
9/24/2010 | ||
10/487,482
|
STACKED CHIP ASSEMBLY WITH STIFFENING LAYER |
12/31/2011 | ||
10/488,210
|
HIGH-FREQUENCY CHIP PACKAGES | 7/31/2022 | ||
10/771,252
|
METHOD FOR MAKING A MICROELECTRONIC PACKAGE USING PRE-PATTERNED, REUSABLE MOLD AND METHOD FOR MAKING THE MOLD |
2/3/2024 | ||
10/783,314
|
HIGH-FREQUENCY CHIP PACKAGES | 8/1/2022 | ||
10/786,819
|
BALL GRID ARRAY WITH BUMPS | 2/25/2024 | ||
10/834,342
|
STACKED PACKAGES | 10/9/2022 | ||
10/858,167
|
METHOD OF MAKING COMPONENTS WITH RELEASABLE LEADS CROSS-REFERENCE TO RELATED APPLICATIONS |
2/9/2018 | ||
10/872,105
|
CONNECTION COMPONENTS WITH FRANGIBLE LEADS AND BUS |
5/8/2015 | ||
10/959,465
|
FORMATION OF CIRCUITRY WITH MODIFICATION OF FEATURE HEIGHT |
10/6/2024 | ||
10/969,527
|
FOLDOVER PACKAGES AND MANUFACTURING AND TEST METHODS THEREFOR |
10/20/2024 | ||
10/981,067
|
STACKED PACKAGES AND SYSTEMS INCORPORATING THE SAME |
11/4/2024 | ||
10/985,119
|
MICRO PIN GRID ARRAY WITH PIN MOTION ISOLATION |
11/10/2024 | ||
10/985,126
|
MICRO PIN GRID ARRAY WITH WIPING ACTION |
11/10/2024 | ||
10/988,160
|
STACKED MICROELECTRONIC ASSEMBLIES WITH CENTRAL CONTACTS |
11/12/2024 | ||
10/994,695
|
CONNECTION COMPONENTS WITH ANISOTROPIC CONDUCTIVE MATERIAL INTERCONNECTION |
5/9/2021 | ||
11/014,439
|
MICROELECTRONIC PACKAGES AND METHODS THEREFOR |
12/16/2024 |
25
FOREIGN PATENT NO. | TITLE | EXPIRATION DATE | ||
XX0000000 (Euro)
|
SEMICONDUCTOR CHIP ASSEMBLIES AND METHODS OF MAKING SAME AND COMPONENTS FOR SAME |
9/24/2011 | ||
000000 (Xxxxx) |
SEMICONDUCTOR CHIP ASSEMBLIES AND METHODS OF MAKING SAME AND COMPONENTS FOR SAME |
9/24/2011 | ||
000000 (Xxxxx) |
SEMICONDUCTOR CONNECTION COMPONENTS AND METHODS WITH RELEASABLE LEAD SUPPORT |
7/23/2013 | ||
0322289 (Korea) |
METHOD OF FORMING INTERFACE BETWEEN DIE AND CHIP CARRIER |
8/5/2014 | ||
0334990 (Korea) |
MICROELECTRONIC BONDING WITH LEAD MOTION |
9/19/2015 | ||
0000000 (Japan) |
SEMICONDUCTOR CHIP ASSEMBLIES AND METHODS OF MAKING SAME AND COMPONENTS FOR SAME |
9/24/2011 | ||
0000000 (Japan) |
SEMICONDUCTOR CONNECTION COMPONENTS AND METHODS WITH RELEASABLE LEAD SUPPORT |
7/23/2013 | ||
2,091,438 (Canada)
|
SEMICONDUCTOR CHIP ASSEMBLIES AND METHODS OF MAKING SAME AND COMPONENTS FOR SAME |
9/24/2011 | ||
NI-142874 (Taiwan)
|
ENCAPSULATION OF MICROELECTRONIC ASSEMBLIES |
4/25/2019 | ||
0384255 (Korea)
|
COMPLIANT INTERFACE FOR A SEMICONDUCTOR CHIP |
9/20/2015 | ||
800753 (Germany)
|
MICROELECTRONIC BONDING WITH LEAD MOTION |
9/19/2015 | ||
800753 (FRANCE)
|
MICROELECTRONIC BONDING WITH LEAD MOTION |
9/19/2015 | ||
800753 (GR.BRIT)
|
MICROELECTRONIC BONDING WITH LEAD MOTION |
9/19/2015 | ||
EP0800754 (Euro)
|
COMPLIANT INTERFACE FOR A SEMICONDUCTOR CHIP |
9/20/2015 |
26
FOREIGN | ||||
APPLICATION | ESTIMATED | |||
SERIAL NO. | TITLE | EXPIRATION DATE | ||
94924580.7 (Euro)
|
METHOD OF FORMING INTERFACE BETWEEN DIE AND CHIP CARRIER |
8/5/2014* | ||
1200301.8 (Euro) |
SEMICONDUCTOR CHIP ASSEMBLIES | 9/24/2011 | ||
7-505309 (Japan) |
SHAPED LEAD STRUCTURE AND METHOD | 7/21/2014 | ||
8-511028 (Japan) |
MICROELECTRONIC BONDING WITH LEAD MOTION |
9/19/2015 | ||
8-511045 (Japan) |
COMPLIANT INTERFACE FOR A SEMICONDUCTOR CHIP |
9/20/2015 | ||
8-533523 (Japan) |
FABRICATION OF LEADS ON SEMICONDUCTOR CONNECTION COMPONENTS |
5/3/2016 | ||
000000/0000 Xxxxx) |
ENCAPSULATION OF MICROELECTRONIC ASSEMBLIES |
4/26/2019 | ||
00-0000-0000000 (Korea) |
ENCAPSULATION OF MICROELECTRONIC ASSEMBLIES |
4/26/2019 |
27
Attachment B
DRAM Licensed Products. For each DRAM Licensed Product sold by Licensee, Licensee shall pay a
royalty of US$[***] per DRAM Licensed Product.
Non-DRAM Licensed Products. For each Non-DRAM Licensed Product sold by Licensee, Licensee shall
pay a royalty of [***] (US$[***]) per Billable Pin. Notwithstanding the
foregoing, the maximum number of payable Billable Pins per Non-DRAM Licensed Product for any
royalties due hereunder shall be capped at [***].
28
Attachment C
Reporting Period: From through
ROYALTY REPORT UNDER TESSERA TCC LICENSE AGREEMENT
PARTY | ||||||||||||||||||||||||
ASSEMBLING | ||||||||||||||||||||||||
LICENSED | NUMBER | |||||||||||||||||||||||
PRODUCT | OF | NUMBER OF | ||||||||||||||||||||||
(Licensee or | PART | TYPE OF IC | LICENSED | BILLABLE | ROYALTY | ROYALTY | ||||||||||||||||||
Subcontractor) | NUMBER | DEVICE | PRODUCTS | PINS | RATE | (US$) | ||||||||||||||||||
TOTAL ROYALTY REMITTED: US$
PURCHASES OF LICENSED PRODUCTS FROM OTHERS
NUMBER OF | ||||||||||||||||
SUPPLIER OF | TYPE OF | NUMBER OF | BILLABLE PINS | |||||||||||||
LICENSED | LICENSED | TYPE OF IC | LICENSED | PER LICENSED | ||||||||||||
PRODUCT | PRODUCT | DEVICE | PRODUCTS | PRODUCT | ||||||||||||
29
Attachment D
Name
Title
Subcontracting Company
Address
Title
Subcontracting Company
Address
Dear ,
Qimonda has entered into a license agreement with Tessera, Inc. (“Tessera”) under certain Tessera
patents (including but not limited to U.S. Patent Nos. 5,679,977; 5,852,326; 6,133,627; 6,433,419
and 6,465,893) to make, use and sell BGA packages. We have determined that certain BGA packages
made by you for Qimonda are covered by our license agreement with Tessera, and Qimonda will pay
royalties for such BGA packages made by you going forward. If you have a license with Tessera to
make such BGA packages, you do not have to pay a royalty to Tessera in addition to what Qimonda
pays. However, you should understand that our payment of royalties for such BGA packages does not,
in any way, affect your obligations to pay royalties to Tessera for similar BGA packages made for
other customers.
A list of the packages made by you for which Qimonda is paying royalties under its license with
Tessera is attached hereto. We will update the attached list from time-to-time.
If you have any questions regarding the subject matter of this letter, please feel free to contact
me directly.
Sincerely,
Appropriate Qimonda signature |
Copy sent to: Xxxxxxxxxxx Xxxxxxx, Executive Vice President, Licensing Business, Tessera, Inc.
0000 Xxxxxxx Xxxxx, Xxx Xxxx, XX 00000 XXX; FAX x0-000-000-0000
30