Exhibit 10.11
LICENSE AGREEMENT
This License Agreement (the "Agreement"), Number 0020, with an "Effective Date"
of December 17, 1999, is made by and between Monolithic System Technology, Inc.,
a California corporation, with its principal place of business at 0000 Xxxxxxx
Xxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000, X.X.X. (hereinafter referred to as "MoSys"),
and NEC Corporation, a Japanese corporation with its principal place of business
at 0-0, Xxxxx, 0-xxxxx, Xxxxxx-xx, Xxxxx 000-0000, Xxxxx (hereinafter referred
to as "NEC").
WHEREAS, MoSys has developed and is developing certain semiconductor technology;
and
WHEREAS, NEC desires MoSys to perform the development work for certain
semiconductor products based on such technology to be used in the manufacture of
semiconductor products of NEC;
WHEREAS, NEC desires to obtain from MoSys, and MoSys is willing to grant to NEC,
certain license with respect to these products as developed by MoSys, all
subject to the terms and conditions set forth below;
NOW, THEREFORE, IN CONSIDERATION OF THE FOREGOING AND THE MUTUAL COVENANTS
CONTAINED HEREIN, THE PARTIES AGREE AS FOLLOWS:
1. DEFINITIONS
For purposes of this Agreement the following terms shall have the meanings set
forth below:
1.1 "MOSYS INTELLECTUAL PROPERTY" means any and all know-how, technical
information, trade secrets, patents and patent applications owned or controlled
by MoSys (a partial list of which is attached in Appendix F), which (i) MoSys
has the right to license, relating to memory architecture, protocol and circuit
implementation, and which (ii) are incorporated in the implementation of the
LICENSED PRODUCT by MoSys. The term "MOSYS INTELLECTUAL PROPERTY" does not
include any and all know-how, technical information, trade secrets and circuit
implementation which is (a) in the public domain, (b) known generally by persons
skilled in the art, (c) already in the rightful possession of NEC or its
SUBSIDIARIES, (d) hereafter become available for use without license, (e) owned
or controlled by others, including but not limited to which relating to generic
DRAM processes, memory cells, capacitor fabrication and memory operations, (f)
hereafter becomes rightfully known to NEC or its SUBSIDIARIES without
restriction or (g) subsequently developed independently by employees of or its
SUBSIDIARIES without access to the LICENSED PRODUCT.
1.2 "HIGH DENSITY 1T-SRAM MEMORY" means a stand-alone memory integrated circuit
to be manufactured by NEC based upon the LICENSED PRODUCT, and which strictly
conforms to the SPECIFICATIONS.
1.3 "WORK" means the work of design and evaluation of the HIGH DENSITY 1T-SRAM
MEMORY, which is specified in detail in Section 2.
1.4 "LICENSED PRODUCT" means the information, data and related documentation of
the MoSys design for the HIGH DENSITY 1T-SRAM MEMORY developed by MoSys
hereunder, including but not limited to, DELIVERABLES as set forth in item 2 of
Appendix B and any UPDATES thereto in any form.
1.5 "LICENSED SITE(S)" means the site(s) where NEC and/or its SUBSIDIARIES are
authorized to utilize the LICENSED PRODUCT as set forth in Appendix C.
1.6 "UPDATE(S)" means any error correction, revision or enhancements to the
DELIVERABLES made by or for MoSys, which MoSys provides to NEC through the WORK
and/or Technical Service identified in Section 4 of this Agreement.
1.7 "NET SALES" means the gross sales amount invoiced or otherwise charged to
NEC's customers for the HIGH DENSITY 1T-SRAM MEMORIES in finished and package
form, less amounts invoiced for returned goods for which a refund is given. NET
SALES will also include the deduction for charges including, but not limited to,
insurance, handling, duty, freight and taxes, if separately invoiced or charged.
1.8 "SUBSIDIARY(IES)" means a corporation or other legal entity in which at
least a majority of whose voting stock or voting power entitled to vote for the
election of directors (or other managing authority) is owned directly or
indirectly by NEC. Such corporations or other legal entities shall be considered
as SUBSIDIARIES only so long as such ownership exists.
1.9 "AUTHORIZED RECIPIENT(S)" shall mean those party(ies) licensed by MoSys to
have manufactured HIGH DENSITY 1T-SRAM MEMORY under terms of royalty payment and
cleared to receive HIGH DENSITY 1T-SRAM MEMORY manufactured by NEC. After
execution of agreement for such a license between MoSys and an AUTHORIZED
RECIPIENT (hereinafter referred to as "SET LICENSE AGREEMENT"), MoSys shall
immediately notify NEC of such execution, and such AUTHORIZED RECIPIENT shall be
deemed to become an AUTHORIZED RECIPIENT for purposes of this Agreement upon
receipt by NEC of notification by MoSys of the execution of such SET LICENSE
AGREEMENT, and shall continue to be an AUTHORIZED RECIPIENT for purposes of this
Agreement, in the context of NEC's free-royalty payment conditions set forth in
Section 7.3 below, until five (5) working days after receipt by NEC of notice
from MoSys of the termination of the SET LICENSE AGREEMENT.
1.10 "Nintendo" means Nintendo Co., Ltd., a Japanese corporation with its
principal place of business at 00 Xxxxxxx Xxxxxxxxxxxxx-xxx, Xxxxxxxxxxx-xx,
Xxxxx 605-8660, Japan.
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1.11 "DELIVERABLES" shall have the meaning set forth in Section 2.2.
1.12 "SPECIFICATIONS" shall have the meaning set forth in Section 2.2.
2. SCOPE OF WORK AND DEVELOPMENT OF LICENSED PRODUCTS
2.1 The scope of the WORK is (i) design work of HIGH DENSITY 1T-SRAM MEMORY
performed by MoSys which is described in Sections 2.2 and 2.3 below, and (ii)
evaluation and correction work of design of HIGH DENSITY 1T-SRAM MEMORY
performed by MoSys which is described in Sections 2.4.
2.2 MoSys shall develop and complete the deliverables specified in item 2 of
Appendix B (hereinafter referred to as "DELIVERABLES") and deliver the
DELIVERABLES to NEC at the delivery place specified in Appendix B, except as
mutually agreed by the parties in writing, all in accordance with specifications
of HIGH DENSITY 1T-SRAM MEMORY as specified in Appendix A, drawings and other
technical requirements agreed between the parties (hereinafter collectively
referred to as "SPECIFICATIONS") and the delivery schedule and responsibilities
set forth in Appendix B. The SPECIFICATIONS and delivery schedule may be revised
only by mutual agreement between the parties.
2.3 Upon delivery of DELIVERABLES to NEC, NEC shall notify MoSys of whether all
items of DELIVERABLES are delivered or not within one (1) week after said
delivery. MoSys shall, at its expense, deliver the missing items of DELIVERABLES
to NEC immediately if so notified by NEC. Upon delivery of such missing items of
DELIVERABLES to NEC, the DELIVERABLES shall be acknowledged by NEC to have been
completely delivered (hereinafter referred to as "Acknowledged"). If no
notification of missing is received by MoSys from NEC within two (2) weeks of
delivery of DELIVERABLES, such DELIVERABLES shall be deemed to have been
Acknowledged by NEC.
2.4 Upon receipt of certain kinds of samples (such as wafer samples or tooling
samples) of HIGH DENSITY 1T-SRAM MEMORY made by NEC under NEC's process based
upon and in accordance with all DELIVERABLES Acknowledged by NEC, MoSys shall
perform the evaluation of such samples through electrical or other tests within
the period specified by NEC under assistance and instruction of NEC. In the
event that the HIGH DENSITY 1T-SRAM MEMORY and/or any DELIVERABLES fail to meet
SPECIFICATIONS, MoSys shall correct or replace, at NEC's option, DELIVERABLES so
that HIGH DENSITY 1T-SRAM MEMORY and/or DELIVERABLES will meet SPECIFICATIONS.
NEC shall have the right at any time until the WORK is accepted subject to
Section 2.5, and irrespective of prior Acknowledge of any DELIVERABLES, to
reject any DELIVERABLES not conforming to SPECIFICATIONS and require that MoSys
correct or replace, at NEC's option, such DELIVERABLES to conform to
SPECIFICATIONS.
2.5 The WORK shall be deemed accepted by NEC upon MoSys's receipt of
notification in writing from NEC that final tooling samples of HIGH DENSITY
1T-SRAM MEMORY made by
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NEC based upon DELIVERABLES, or DELIVERABLES corrected or replaced by MoSys
under Section 2.4, are acceptable in accordance with NEC's acceptance criteria
and procedures. NEC shall notify MoSys of acceptance of the WORK before NEC's
mass production of HIGH DENSITY 1T-SRAM MEMORY. Mass production shall be deemed
to have commenced when [omitted pursuant to a request for confidential treatment
and filed with the SEC] sets of HIGH DENSITY 1T-SRAM MEMORY in total are
distributed with charge to Nintendo, which is a customer of NEC (hereinafter
refereed to as "Mass Production"). If no notification of acceptance of the WORK
from NEC is received by MoSys even after Mass Production, the WORK shall be
deemed to be accepted at the time Mass Production begins.
2.6 MoSys agrees that it will faithfully comply with all reasonable instructions
and requests of NEC in connection with the performance of the WORK hereunder.
2.7 NEC shall provide to MoSys, at the start of the development or from time to
time during the WORK, detailed process design rules, process, device, parasitic
and other relevant parameters and procedures and all guidelines, including, but
not limited to, design, simulation and layout, that NEC would use in accordance
with the acceptance criteria and procedures, to the extent that NEC considers
reasonably necessary to assist MoSys in performing the WORK.
2.8 Title to all DELIVERABLES to be delivered by MoSys to NEC under the WORK
shall pass to NEC at the time of delivery. Any risk of loss or damage to such
DELIVERABLES prior to delivery to NEC shall be borne by MoSys.
2.9 If there occurs a situation under which the terms of this Agreement shall be
amended or supplemented, or it is necessary to agree upon additional terms for a
project other than the WORK, the parties hereto will enter into good faith
negotiation for concluding a separate agreement for such amendment or supplement
of this Agreement or such additional terms.
3. LICENSE GRANT AND RESTRICTED USE
3.1 Subject to the terms and conditions stated herein, MoSys grants to NEC and
its SUBSIDIARIES a non-transferable, non-exclusive, royalty-bearing, world-wide,
limited license under MOSYS INTELLECTUAL PROPERTY to use, have used, reproduce,
have reproduced, modify and have modified (subject to the limitations of Section
3.2) the LICENSED PRODUCT for the sole purpose of the creation, distribution and
maintenance of HIGH DENSITY 1T-SRAM MEMORY, and to manufacture, have
manufactured, use, have used, sell and otherwise distribute HIGH DENSITY 1T-SRAM
MEMORY. It is expressly understood and agreed that NEC and its SUBSIDIARIES
shall have royalty-free, non-transferable, non-exclusive, world-wide rights
under MOSYS INTELLECTUAL PROPERTY based on the license granted to AUTHORIZED
RECIPIENTS by MoSys to use, have used, reproduce, have reproduced, modify and
have modified (subject to the limitations of Section 3.2) the LICENSED PRODUCT
for the sole purpose of the creation, distribution and maintenance of HIGH
DENSITY 1T-SRAM MEMORY, and to manufacture, have manufactured, use, have used,
sell and otherwise distribute HIGH DENSITY 1T-SRAM MEMORY to AUTHORIZED
RECIPIENTS (at the time of sign of
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this Agreement, Nintendo is included), as far as such AUTHORIZED RECIPIENTS
continue to be AUTHORIZED RECIPIENTS subject to Section 1.9.
3.2 The modification right granted by MoSys under Section 3.1 above shall be
limited to changes of feature size or scale (to the largest up to +10% in scale
and to the smallest up to -10% in scale) or other minor changes that do not
affect the functionality or compatibility of HIGH DENSITY 1T-SRAM MEMORY and
shall be solely for enhancing the manufacturability and performance of HIGH
DENSITY 1T-SRAM MEMORIES and shall only be made by employees of NEC and its
SUBSIDIARIES at the LICENSED SITES.
3.3 None of the LICENSED PRODUCT or portion thereof may be distributed to third
party entities except as needed to support the manufacturing or maintenance of
the HIGH DENSITY 1T-SRAM MEMORY. Except as specifically set forth herein, none
of the LICENSED PRODUCT may be disclosed to third parties or transferred outside
of LICENSED SITE(S).
3.4 NEC acknowledges and agrees that use of the LICENSED PRODUCT in any way
which is not expressly authorized by this Section 3 (hereinafter referred to as
"Unauthorized use") is a breach of NEC's material obligations under this
Agreement. In the event that Unauthorized use of the LICENSED PRODUCT by NEC,
its SUBSIDIARIES, or its/their personnel or third party entities occurs, and
MoSys elects not to terminate this Agreement pursuant to Section 10, NEC shall,
as NEC's entire liabilities for such NEC's material breach, by virtue of such
occurrence(s) be deemed to order and accept a license for and shall pay MoSys
for such license, license fees and applicable royalties for each such high
density 1T-SRAM memory manufactured under Unauthorized use of the LICENSED
PRODUCT and distributed to customers. These license fees and applicable
royalties shall be those MoSys is then initially offering to prospective
licensees proposing to use such technology in similar circumstances at the time
such Unauthorized use under this Agreement first occurs. Such license fees and
applicable royalties shall be due no later than thirty (30) days following
mutual agreement of the parties with respect to such Unauthorized use. It is
expressly understood and agreed that in no event shall such license fees be more
than [omitted pursuant to a request for confidential treatment and filed with
the SEC].
3.5 NEC shall xxxx all catalogues, brochures and other marketing material used
for the HIGH DENSITY 1T-SRAM MEMORY with the MoSys trademark and copyright
notations that appear on or in the LICENSED PRODUCT. NEC shall also visibly xxxx
each HIGH DENSITY 1T-SRAM MEMORY with said MoSys copyright notation, providing
it is reasonable and practical to do so, but in any event at least to the same
extent that NEC so marks its own copyright notations. However, the parties
acknowledge and agrees that, in the event that the marking of said MoSys
copyright notation is impossible or reasonably impracticable, NEC will not be
required to xxxx such HIGH DENSITY 1T-SRAM MEMORY with said MoSys copyright
notation. In the event that an end-customer for the HIGH DENSITY 1T-SRAM MEMORY
requires that the markings be removed from the HIGH DENSITY 1T-SRAM MEMORY
devices, NEC and MoSys shall discuss in good faith how they might accommodate
this requirement, while still satisfying MoSys' marketing goals and needs to
protect ownership of its intellectual property.
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3.6 NEC acknowledges and agrees that all HIGH DENSITY 1T-SRAM MEMORY shall meet
the compatibility requirements specified and administered by MoSys for the
LICENSED PRODUCT.
3.7 The licenses granted under this Section 3 are non-sublicenseable.
3.8 It is expressly understood and agreed that the terms of this Agreement shall
supersede the terms of any SET LICENSE AGREEMENT, including the AGREEMENT
executed as of August 31, 1999 between MoSys and Nintendo (hereinafter referred
to as "Nintendo Agreement"), to the extent that there is a contradiction between
NEC's and/or its SUBSIDIARIES' rights and duties with respect to the LICENSED
PRODUCTS as set forth in this Agreement and the equivalent rights and duties of
a manufacturer as set forth in such SET LICENSE AGREEMENT, provided nothing in
this Section 3.8 is intended to or shall be construed to diminish the rights or
duties of MoSys or the other party to such SET LICENSE AGREEMENT under such SET
LICENSE AGREEMENT with respect to the relationship between MoSys and the other
party, their rights in the LICENSED PRODUCTS or otherwise.
4. TECHNICAL SERVICE
MoSys shall provide NEC with the technical service described in Appendix D for
the LICENSED PRODUCT (hereinafter referred to as "Technical Service") in
consideration for fees set forth in Appendix D.
5. TERM
This Agreement is effective as of the Effective Date and shall remain in full
force and effect for a period of five (5) years, unless earlier terminated as
provided in this Agreement. Unless earlier terminated as provided in this
Agreement, this Agreement will automatically renew at the end of each term for
consecutive one (1) year renewal periods, unless either party notifies the other
at least sixty (60) days prior to the end of the then current term that it does
not desire the Agreement to renew for another year.
6. CHANGES
Except as otherwise agreed by both parties in writing, all LICENSED PRODUCT
provided to NEC by MoSys during the term of this Agreement will be subject to
the terms and conditions of this Agreement.
7. COMPENSATION
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7.1 Except as expressly provided herein, all payments made by NEC to MoSys
hereunder shall be non-refundable and non-creditable.
7.2 In consideration of the completion of the WORK, NEC shall pay to MoSys the
amounts of [omitted pursuant to a request for confidential treatment and filed
with the SEC] (hereinafter referred to as "Non-Recurring Engineering (NRE)
charges"). The foregoing provisions of this Section 7.2 shall not limit the
provisions of Section 3.4 above. Each installment of Non-Recurring Engineering
(NRE) charges shall be due within thirty (30) days after receipt by NEC of a
relevant invoice to be issued by MoSys after the completion of each milestone as
set forth in Appendix E.
7.3 In consideration of the rights and licenses granted to NEC and its
SUBSIDIARIES under this Agreement, NEC shall pay to MoSys the running royalty as
set forth in Appendix E and expressed as a percentage of the NET SALES of all
HIGH DENSITY 1T-SRAM MEMORIES sold directly or indirectly by NEC and/or its
SUBSIDIARIES to customers other than AUTHORIZED RECIPIENTS. NEC may request
MoSys to notify NEC of execution of SET LICENSE AGREEMENT between the said
AUTHORIZED RECIPIENT in writing, and upon the receipt by NEC of such
notification of execution, NEC shall have no more obligation to pay applicable
royalties to MoSys for HIGH DENSITY 1T-SRAM MEMORY distributed to such
AUTHORIZED RECIPIENT on and after the date of receipt of such notification.
MoSys shall notify NEC of the said execution of SET LICENSE AGREEMENT within
fifteen (15) days after NEC's written request. If no notification is received by
NEC within the said fifteen (15) day period and NEC knows that such SET LICENSE
AGREEMENT is in effect, it shall be deemed that such notification of execution
is received by NEC on the expiration date of the said fifteen (15) day period.
In the event that HIGH DENSITY 1T-SRAM MEMORIES are sold in circumstances in
which the selling price is established other than on an arms-length basis or as
a portion of a bundled products, the NET SALES for each such integrated circuit
shall be calculated based on the volume of such integrated circuit multiplied by
the average gross selling price earned by NEC and/or its SUBSIDIARIES during
such quarter on sales of that integrated circuit in finished and packaged form
in arms-length sales transactions. If there are no such arms-length sales
transactions, then the parties shall use such average gross selling price of
integrated circuits in finished and packaged form with similar functionality. It
is understood and agreed by the parties that, at most, only one royalty shall be
payable with respect to each HIGH DENSITY 1T-SRAM MEMORY. The parties agree that
no royalty shall accrue for any HIGH DENSITY 1T-SRAM MEMORIES shipped as a
replacement for defective HIGH DENSITY 1T-SRAM MEMORIES or furnished by NEC
and/or its SUBSIDIARIES for small quantity sample shipments without charge to
their customers.
7.4 MoSys and NEC agree to enter into good faith discussions on the possible
wafer supply to MoSys at privileged pricing following the completion of the
WORK.
8. PAYMENT TERMS AND TAXES
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8.1 All invoices for sums to be paid MoSys under this Agreement (except the
running royalty which shall not be invoiced) will be mailed to NEC's address
specified in Section 19, unless specified otherwise by NEC.
8.2 Within [omitted pursuant to a request for confidential treatment and filed
with the SEC] after the end of each calendar quarter during the term of this
Agreement, NEC shall pay to MoSys the running royalties set forth in Section 7.3
and Appendix E with respect to the HIGH DENSITY 1T-SRAM MEMORY manufactured and
sold to customers other than AUTHORIZED RECIPIENTS in such calendar quarter, if
any, and shall submit to MoSys with such royalty payment a report stating the
number for each HIGH DENSITY 1T-SRAM MEMORY manufactured and sold to the said
customers during such calendar quarter and the applicable running royalties
payable hereunder for such calendar quarter; and all reasonably necessary data
and supporting calculations used by NEC and/or its SUBSIDIARIES to compute the
running royalties payable by NEC to MoSys with respect to such calendar quarter.
8.3 Any and all amounts payable hereunder do not include any government taxes
(including without limitation sales, use, excise, and value added taxes) or
duties imposed by any governmental agency that are applicable to the export,
import, or purchase of the HIGH DENSITY 1T-SRAM MEMORY (other than taxes on the
net income of MoSys), and NEC shall bear all such taxes and duties. When MoSys
has a current or subsequent legal obligation to collect and/or pay such taxes,
the appropriate amount shall be added to NEC's invoice and paid by NEC, unless
NEC provides MoSys with a valid tax exemption certificate authorized by the
appropriate taxing authority.
8.4 All payments by NEC specified hereunder are expressed as net amounts and
shall be made free and clear of, and without reduction for, any withholding
taxes. Any such taxes which are otherwise imposed on payments to MoSys shall be
the sole responsibility of NEC. If any applicable law requires NEC to withhold
amounts from any payments to MoSys hereunder, (i) NEC shall effect such
withholding, remit such amounts to the appropriate taxing authorities and
promptly furnish MoSys with tax receipts evidencing the payments of such
amounts, and (ii) the sum payable by NEC upon which the deduction or withholding
is based shall be increased to the extent necessary to ensure that, after such
deduction or withholding, MoSys receives and retains, free from liability for
such deduction or withholding, a net amount equal to the amount MoSys would have
received and retained in the absence of such required deduction or withholding.
In the event that MoSys receives a reduction in tax due or rebate from any tax
authority directly due to the amount withholding tax paid by NEC, it will
reimburse NEC such amount that it has had reduced or received from the tax
authority.
8.5 As a material condition to this Agreement, NEC shall keep complete and
accurate records and books of account relating to sales of HIGH DENSITY 1T-SRAM
MEMORY to customers, to the extent reasonably necessary for MoSys to ascertain
the accuracy of the royalty reports to be furnished hereunder. These books and
records shall be retained for a period of three (3) years from the date of the
last day of each calendar quarter period, notwithstanding the expiration or
termination of this Agreement. As a material condition to this Agreement, upon
receiving thirty (30) days prior written notice from MoSys, NEC agrees to permit
these books and records to be
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examined by an independent firm, experienced in conducting such an exercise,
designated by MoSys and approved by NEC (such approval shall not be unreasonably
withheld), subject to the confidentiality provisions set forth in this Agreement
and at a time and place convenient to both parties, but during normal business
hours and not more frequently than annually, to verify the accuracy of royalties
paid to MoSys under this Agreement, if any. Adjustment shall be made by NEC
corresponding to the net amount of any underpayment of any and all royalties
disclosed by such examination within thirty (30) days after NEC's receipt of a
relevant invoice issued by MoSys therefor. The net amount of any overpayment of
any and all royalties disclosed by such examination shall be credited by MoSys
against subsequent royalties to be paid by NEC to MoSys. If such an examination
reveals an underpayment of more than five percent (5%), then NEC shall promptly
reimburse MoSys for the cost of such examination.
8.6 All payment amounts stated hereunder, and all payments to be made hereunder,
shall be in U.S. Dollars and shall be transmitted by telegraphic transfer to
MoSys' bank account designated by MoSys in writing in advance. If any currency
conversion shall be required in connection with the calculation of amounts
payable under this Agreement, such conversion shall be made using the TTS rate
for conversion of the foreign currency into U.S. Dollars, published by the Bank
of Tokyo-Mitsubishi, Ltd. for the last business day of the calendar quarter to
which such payment pertains.
9. EXPORT RESTRICTIONS
This Agreement, the LICENSED PRODUCT(S) and the rights granted hereunder are
subject to any and all laws, regulations, orders or other restrictions relative
to export, re-export or redistribution of the LICENSED PRODUCT(S) that may now
or in the future be imposed by the government of the United States or foreign
governments. NEC agrees to comply, at its cost and expense, with all such
applicable laws and regulations. Upon the request of MoSys, NEC will provide
MoSys with written confirmation of such compliance.
10. TERMINATION
10.1 (a) If either party defaults in the performance of any material obligation
hereunder and if any such default is not corrected within forty-five (45) days
after the defaulting party receives written notice thereof from the
non-defaulting party, then the non-defaulting party, at its option, may, in
addition to any other remedies it may have, terminate this Agreement. For the
purposes of this section, each of NEC's obligations pursuant to Sections 3, 7
and 8 above and each of MoSys' obligations pursuant to Sections 2, 4, 13 and 14
and both parties obligations pursuant to Section 16 shall be considered
material.
(b) Either party may terminate this Agreement effective upon receipt of
written notice by the other party in the event that the other party becomes the
subject of a voluntary or involuntary petition in bankruptcy or any proceeding
relating to insolvency, or the assignment
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for the benefit of creditors, if that petition or proceeding is not dismissed
within ninety (90) days after filing.
10.2 Upon any termination or expiration of this Agreement, all licenses and
rights granted by MoSys shall terminate, and NEC shall promptly destroy or
deliver to MoSys all materials comprising, incorporating, or using any MOSYS
INTELLECTUAL PROPERTY or any LICENSED PRODUCTS, provided, however, that if this
Agreement expires or is terminated by NEC under the terms of Section 10.1, NEC's
license under Section 3.1 shall continue strictly limited to HIGH DENSITY
1T-SRAM MEMORY which NEC or its SUBSIDIARIES had started in the manufacturing
process prior to the effective date of termination and strictly subject to
continuing compliance with all the surviving Sections of this Agreement. NEC
shall have no right pursuant to the preceding clause to develop new products. In
addition, all amounts due or payable to MoSys as a result of events prior to the
date of termination or expiration shall remain due and payable.
10.3 Upon any termination or expiration (in this Section 10.3, hereinafter
collectively referred to as "Termination") of SET LICENSE AGREEMENT (including
Nintendo Agreement) with an AUTHORIZED RECIPIENT (including Nintendo), MoSys
shall immediately notify NEC of Termination of such SET LICENSE AGREEMENT. Upon
five (5) working days after receipt by NEC of such notification of Termination,
NEC shall lose all rights to sell or otherwise distribute HIGH DENSITY 1T-SRAM
MEMORY without any royalties to the party of such Terminated SET LICENSE
AGREEMENT. However, it is confirmed and agreed by the parties that NEC may
continue to sell or otherwise distribute HIGH DENSITY 1T-SRAM MEMORY to that
party with applicable royalty payment to MoSys and subject to other related
obligations under this Agreement. None of rights or licenses of NEC under this
Agreement shall terminate upon Termination of SET LICENSE AGREEMENTS except
free-royalty payment conditions set forth in Section 7.3.
10.4 The provisions of Sections 3 (for Section 3.1, subject to Section 10.2),
7.1, 7.3, 8, 9, 10.2, 10.3, 10.4, 11, 12, 13, 14, 15 (except for Sections 15.1
and 15.2), 16, 17, 18, 20, 21, 22 and 23 shall survive any expiration or
termination of this Agreement for any reason.
11. RIGHT TO NEC'S CONTRIBUTION
NEC and MoSys agree that MoSys shall retain all rights (excluding any NEC's
patent rights) to the LICENSED PRODUCT and any other products offered or
distributed by MoSys, provided that NEC shall retain all rights to any NEC
contribution or voluntarily disclosed information provided to MoSys in the
course of NEC (i) requesting changes or modifications to the LICENSED PRODUCT,
(ii) making suggestions for improvements to the LICENSED PRODUCT, or (iii)
suggesting how to correct any identified deficiencies in the LICENSED PRODUCT.
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12. WARRANTY
12.1 MoSys warrants that MoSys is a corporation duly organized, validly existing
and in good standing under the laws of the state of California. MoSys has full
capacity, power and authority to enter into this Agreement and to carry out the
transactions contemplated by this Agreement. This Agreement has been duly
authorized, executed and delivered by MoSys and is a legal, valid and binding
agreement enforceable in accordance with its terms.
12.2 MoSys warrants that MoSys owns all rights, title and interest in and to all
MOSYS INTELLECTUAL PROPERTY to be furnished or licensed to NEC and its
SUBSIDIARIES. With respect to those owned by licensors of MoSys, if any, MoSys
has the right to sublicense to NEC and its SUBSIDIARIES.
12.3 MoSys warrants that the execution, delivery and performance of this
Agreement by MoSys shall not (i) result in the breach of, or constitute a
default under, any contract or other instrument or obligation applicable to
MoSys, (ii) result in the breach of any of the terms or conditions of, or
constitute a default under, the charter, bylaws or other governing instruments
of MoSys, or (iii) violate any order, writ, injunction, decree, or any statute,
rule or regulation applicable to MoSys.
13. INTELLECTUAL PROPERTY OWNERSHIP AND INDEMNIFICATION
13.1 MoSys shall own all rights, title interest (excluding any NEC's patent
rights) in the LICENSED PRODUCT licensed under this Agreement including
any and all upgrades, enhancements and improvements thereto made by
MoSys. MoSys will also retain all patent rights, trademarks, trade
secrets, copyrights, mask work rights and all other proprietary rights
(excluding any NEC's patent rights) therein or relating thereto. Except
for the licenses granted in Section 3, no other grants of licenses or
rights to NEC and its SUBSIDIARIES shall be implied from the provisions
stated herein.
13.2 MoSys represents and warrants as of the Effective Date:
(a) to the best of MoSys' knowledge, it is the originator and/or rightful
owner of the product(s), information and documentation provided to NEC
pursuant to the terms of this Agreement (including, not limited to,
LICENSED PRODUCT) (hereinafter collectively " Information"); and
(b) to the best of MoSys' knowledge, there are no claims pending or
threatened against MoSys or any other party, that relate to the Information
or the contemplated use of the Information under this Agreement.
13.3 Except as expressly provided herein, MoSys disclaims and shall have no
obligation of defense, contribution, or indemnity with respect to any actual or
alleged intellectual property infringement with respect to the Information
provided or otherwise arising out of this Agreement.
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MoSys shall have no liability arising out of any such actual or alleged
intellectual property infringement. NEC, however, will use its reasonable
efforts to notify MoSys, in writing, of each such infringement claim of which
NEC becomes aware, and NEC shall cooperate with MoSys if MoSys desires to
intervene in any such infringement action against NEC.
13.4 In the event of any claim by a third party of infringement of its
intellectual property rights by the NEC and/or its SUBSIDIARIES where such claim
(i) is caused substantially by the unmodified LICENSED PRODUCT and, (ii) is not
associated with standard DRAM operations, processes, design or manufacturing
then MoSys agrees to use reasonable efforts at MoSys' expense to provide
assistance, including appropriate documentation, to NEC, in its defense against
such claim under this provision. If pursuant to such a claim NEC and/or its
SUBSIDIARIES are prohibited from using the LICENSED PRODUCTS, MoSys agrees to
use reasonable efforts to modify the LICENSED PRODUCTS to avoid the
infringement.
13.5 The foregoing states MoSys' sole obligations and entire liability with
respect to any claimed infringement of the LICENSED PRODUCT(S) of any
intellectual property or other rights of any third party.
14. LIMITATION OF LIABILITY
IN NO EVENT WILL MOSYS' LIABILITY ARISING OUT OF THIS AGREEMENT EXCEED THE FEES
AND ROYALTIES, IF ANY, RECEIVED BY MOSYS' HEREUNDER. EXCEPT FOR INFRINGEMENT OF
THE OTHER PARTY'S INTELLECTUAL PROPERTY RIGHTS, IN NO EVENT SHALL EITHER PARTY
BE LIABLE 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 OUT OF THIS AGREEMENT
OR THE DESIGNS, TECHNOLOGY OR PRODUCT LICENSED OR OTHERWISE PROVIDED PURSUANT TO
THIS AGREEMENT.
15. PUBLICITY; CONFIDENTIALITY
15.1 Both parties agree to cooperate in good faith announcements and disclosures
after the execution of this Agreement that includes (a) NEC is a customer of
MoSys, and (b) MoSys has provided the LICENSED PRODUCT to NEC and that the
LICENSED PRODUCT was used in the development of the HIGH DENSITY 1T-SRAM MEMORY,
and (c) a product description of the LICENSED PRODUCT as contained in MoSys'
standard product literature. Neither party shall announce or publicly disclose
any other terms or conditions of this Agreement without a prior written approval
from the other party. An initial public announcement plan and contents are
attached in Appendix G.
15.2 The parties acknowledge that by reason of their relationship to each other
hereunder, each party may have access to the other party's Confidential
Information. For the purposes of this
12
Section 15, the term " Confidential Information" shall mean any and all
information and materials which are provided by one party to the other party (i)
in written or other tangible form clearly marked with a legend identifying it as
"Confidential" or "Proprietary" or (ii) in oral or visual form identified as
"Confidential" or "Proprietary" at the time of such oral or visual disclosure
and within thirty (30) days following such oral or visual disclosure the summary
of which is provided to the other party in written or other tangible form marked
with such legend. Each party agrees that except as may otherwise be stated
herein, it shall not use, except to perform its obligations and/or to exercise
its rights and licenses specified under this Agreement, nor disclose to any
third party (except to Nintendo, ArtX, Inc. and recipient's independent
contractors and affiliates (including SUBSIDIARIES) who are under an obligation
of confidentiality, and subject to the other terms and conditions of this
Agreement), any such Confidential Information revealed to it by the other party.
Each party shall take reasonable precautions to protect the confidentiality of
such information, which in any event will be no less than what it takes with
respect to its own similar confidential information.
15.3 Information shall not be deemed Confidential Information hereunder if such
information: (i) is known to the recipient at the time of disclosure; (ii)
hereafter becomes rightfully known to the recipient (as for NEC, including
Nintendo) directly or indirectly from a third party without such third party
imposing an obligation of confidentiality on the disclosing party; (iii) becomes
publicly available or otherwise ceases to be secret or confidential, except
through a breach of this Agreement by the recipient; (iv) was independently
developed by the recipient (as for NEC, including Nintendo) without access to
the disclosing party's Confidential Information; (v) is required to be disclosed
pursuant to any statutory or regulatory authority, provided the disclosing party
is given prompt notice of such requirement and the scope of such disclosure is
limited to the extent possible; or (vi) is required to be disclosed by a court
order, provided the disclosing party is given prompt notice of such order and
provided the opportunity to contest it, and/or is reasonably necessary to
disclose in order to enforce this Agreement.
Notwithstanding any of the foregoing, NEC agrees not to disclose any
Confidential Information of NEC to MoSys unless MoSys requests disclosure of
such information in writing (including e-mail).
15.4 Recipient may make copies, in whole or in part, of disclosing party's
Confidential Information only to the extent necessary for the use thereof by
recipient in accordance with Section 15.2 above, provided recipient shall
reproduce and include disclosing party's proprietary and confidentiality notice
on each such copy.
15.5 As to each item of Confidential Information, the provisions of this Section
will continue for five (5) years following first receipt of such information,
except for the LICENSED PRODUCT, for which the provisions of this Section will
continue for eight (8) years following first receipt of each LICENSED PRODUCT.
15.6 This Agreement and the terms of confidentiality hereunder shall not be
construed to limit any party's right to independently develop or acquire
products or technology, including similar or competing products or technology,
without the use of the other party's Confidential
13
Information.
Notwithstanding anything contained in this Section and the Agreement, any party
shall be free to use for any purpose the residuals resulting from access to or
work with the Confidential Information, provided that such party shall maintain
the confidentiality of the Confidential Information as provided herein. For the
purposes of this Agreement, the term "residuals" means information in
non-tangible form, which may be retained in the minds of employees, provided not
deliberately memorized, who have had access to such Confidential Information,
including ideas, concepts, know-how or techniques contained therein. No party
shall have any obligation to limit or restrict the assignment of such employees
or to pay royalties for any work resulting from the use of residuals. However,
the foregoing shall not be deemed to grant to any party a license under the
other party's copyrights or patents.
16. GOVERNING LAW
This Agreement shall be governed by and construed in accordance with the laws of
the State of California, without regard to the conflict of law provisions
thereof.
17. DISPUTE SETTLEMENT
17.1 In the event of any dispute, controversy or difference which may arise
between the parties hereto out of or in connection with or in relation to this
Agreement, or the breach thereof, the parties hereto shall in the first instance
do their utmost to settle such dispute, controversy or difference amicably.
17.2 Where the parties hereto fail to settle such dispute, controversy or
difference amicably within ten (10) working days of the written notice of its
existence given by either party to the other party, then the dispute,
controversy or difference shall be finally settled by arbitration in Santa
Clara, California, U.S.A. in accordance with the Rules of Conciliation and
Arbitration of the International Chamber of Commerce. The award of arbitration
shall be final and binding upon the parties hereto and shall not be subject to
appeal to any court, and may be entered into the court of competent jurisdiction
for its execution forthwith.
18. ASSIGNMENT
Neither this Agreement nor any rights or obligations hereunder, in whole or in
part, shall be assignable or otherwise transferable by either party without the
prior written approval of the other party. Any unauthorized attempt by either
party to assign or transfer this Agreement or any rights or obligations
hereunder shall be null and void. Subject to the foregoing, this Agreement will
be binding upon and inure to the benefits of the parties hereto, their
successors and assigns.
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19. NOTICE
Any notices required to be given pursuant to this Agreement shall be in writing,
sent via certified mail, return receipt requested, express overnight courier, or
by facsimile (a confirmed copy of which to be sent promptly by mail to
addressee) to the address of MoSys or NEC as set forth below or to such other
address as may be specified from time to time by notice in writing, and such
notice shall be deemed to have been received on the earlier of (a) the date when
actually received or (b) if by facsimile, when the sending party shall have
received a facsimile confirmation that the message has been received by the
receiving party's facsimile machine.
If to MoSys: MoSys, Inc.
0000 Xxxxxxx Xxxxx
Xxxxxxxxx, XX 00000, X.X.X.
Attn: Chief Financial Officer
Telephone: x0 (000) 000-0000
Facsimile: x0 (000) 000-0000
If to NEC: NEC Corporation
0000,Xxxxxxxxxxx,
Xxxxxxxxxx,Xxxxxxxx, Xxxxx
Attn: Xx.Xxxxxxxx Xxxxxx
Telephone: +81 (42) -771-0688
Facsimile: +81 (42) -771-0624
20. SEVERABILITY AND WAIVER
20.1 The invalidity or unenforceability of any particular provision of this
Agreement shall not affect the other provisions of this Agreement and shall be
construed in all respects as if such invalid or unenforceable provisions were
omitted.
20.2 The waiver by either party of any default or breach of this Agreement shall
not constitute a waiver of any other subsequent default or breach.
20.3 Failure or delay by either party in exercising any right or power hereunder
shall not operate as a waiver of such right or power.
21. INHERENTLY DANGEROUS APPLICATIONS
The LICENSED PRODUCT is not specifically developed or licensed for use in the
planning, construction, maintenance, operation or other use of any nuclear
facility, or for the flight, navigation or communication of aircraft or ground
support equipment, or for military use, medical use or in any other inherently
dangerous activity. NEC agrees that MoSys shall not be
15
liable for any claims, losses, costs or liabilities arising from such use if
NEC, its SUBSIDIARIES, or its/their distributors or customers use the LICENSED
PRODUCT for such applications. NEC agrees to indemnify and hold MoSys harmless
from any claims, losses, costs, and liabilities arising out of or in connection
with the use of the LICENSED PRODUCT or HIGH DENSITY 1T-SRAM MEMORY in any such
applications.
22. ATTORNEYS FEES
The prevailing party in any action to enforce the terms of this Agreement shall
be entitled to reasonable attorney's fees and other costs and expenses incurred
by it in connection with such action.
23. MISCELLANEOUS TERMS
23.1 The relationship of the parties hereto is that of independent contractors,
and neither party is an employee, agent, partner or joint venturer of the other.
23.2 Neither party shall have liability for its failure to perform its
obligations hereunder when due to circumstances beyond its reasonable control.
23.3 If NEC and/or its SUBSIDIARIES distribute the HIGH DENSITY 1T-SRAM MEMORY,
as authorized herein, to an agency, department, or other entity of the United
States Government ("Government"), the Government's use, reproduction, release,
modification, disclosure or transfer of the LICENSED PRODUCT, or of any related
documentation of any kind, including technical data, is restricted in accordance
with Federal Acquisition Regulation ("FAR") 12.212 for civilian agencies and
Defense Federal Acquisition Regulation Supplement ("DFARS";) 227.7202 for
military agencies. The LICENSED PRODUCT is intended for commercial use. The use
of the by any Government agency, department, or other entity of the Government,
is further restricted in accordance with the terms of this Agreement, or any
modification hereto. NEC will affix the following legend before delivery to the
Government of each of the Models and User Documentation and/or Physical Views to
be delivered to the Government:
Use, duplication, reproduction, release, modification, disclosure or transfer of
this commercial product and accompanying documentation, is restricted in
accordance with FAR 12.212 and DFARS 227.7202, and by a license agreement.
Contractor/manufacturer is: MoSys, Inc., 0000 Xxxxxxx Xxxxx, Xxxxxxxxx,
Xxxxxxxxxx 00000 X.X.X.
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BOTH PARTIES ACKNOWLEDGE THAT THIS AGREEMENT INCLUDING THE EXHIBITS AND
APPENDICES ATTACHED HERETO IS THE COMPLETE AND EXCLUSIVE STATEMENT OF THE MUTUAL
UNDERSTANDING OF THE PARTIES AND SUPERSEDES AND CANCELS ALL CONFLICTING TERMS
AND CONDITIONS AND ALL PREVIOUS AND CONTEMPORANEOUS WRITTEN AND ORAL AGREEMENTS
AND COMMUNICATIONS RELATING TO THE SUBJECT MATTER HEREOF. THIS AGREEMENT MAY NOT
BE MODIFIED, SUPPLEMENTED, QUALIFIED, OR INTERPRETED BY ANY TRADE USAGE OR PRIOR
COURSE OF DEALING NOT MADE A PART OF THIS AGREEMENT BY ITS EXPRESS TERMS. THIS
AGREEMENT MAY NOT BE MODIFIED OR AMENDED EXCEPT IN WRITING AND EXECUTED BY DULY
AUTHORIZED REPRESENTATIVES OF BOTH PARTIES.
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BOTH PARTIES ACKNOWLEDGE THAT THEY HAVE READ THIS AGREEMENT, UNDERSTAND IT AND
AGREE TO BE BOUND BY ITS TERMS AND CONDITIONS AS EVIDENCED BY THEIR SIGNATURES
BELOW.
MONOLITHIC SYSTEM TECHNOLOGY, INC. NEC CORPORATION
By: By:
------------------------------------ ------------------------------------
Signature of an Officer of Signature of an Authorized
the Corporation Representative
By: Dr. Fu-Xxxxx Xxx By:
--------------------------------------- ------------------------------------
Printed Name of the Signing Officer Printed Name of the Signing
Authorized Representative
Title: Chief Executive Officer Title:
--------------------------------------- ------------------------------------
Date: December 17, 1999 Date:
--------------------------------------- ------------------------------------
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[APPENDICES OMITTED]
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