LICENSE AND JOINT OWNERSHIP AGREEMENT
WHEREAS, NVE owns or controls intellectual property and technology
(including patent and patent applications) in various countries of the world
relating to magnetoresistive memory devices for computers;
WHEREAS, Cypress desires to receive a nonexclusive, worldwide
license to such intellectual property and technology;
WHEREAS, Cypress owns or controls intellectual property and technology
(including patent and patent applications) in the U.S. and various countries of
the world relating to semiconductor process and/or manufacturing technology,
magnetic tunnel junction process and/or manufacturing technology and
magnetoresistive memory devices;
WHEREAS, NVE desires to receive a nonexclusive, worldwide license to such
intellectual property and technology;
WHEREAS, Contemporaneously with this License and Joint Ownership
Agreement, Cypress and NVE are entering into a Stock Purchase Agreement under
which Cypress agrees to purchase NVE common stock which will allow NVE to
further develop its business and to assist Cypress in developing its MRAM
business;
WHEREAS, in connection with this License and Joint Ownership
Agreement and the Stock Purchase Agreement, Cypress has also agreed to
provide NVE with a supply of certain components used to manufacture
magnetoresistive memory devices at a preferential price as more fully detailed
herein;
NOW, THEREFORE, for and in consideration of the premises, covenants and
mutual promises contained herein, the parties hereby agree as follows:
I. DEFINITIONS
A. "NVE MRAM Technology" means all intellectual property owned or
controlled by NVE or its Affiliates, including, without limitation, patents,
patent applications, copyrights, computer programs, trade secrets, mask works,
drawings, designs, formulas and any other know-how, as of the date hereof or
which is developed by NVE or any of its Affiliates, employees, consultants or
contractors during the term of this License and Joint Ownership Agreement, and
which relates to the design, development, processing, creating, manufacturing,
testing, using, selling or providing services with respect to products having
the principal purpose of storing data using magnetoresistive materials or
properties. NVE MRAM Technology includes, but is not limited to, the issued
U.S. patents and pending U.S. patent applications that are listed in Schedule 1
attached hereto, as well as any foreign counterparts (as listed on Schedule 2),
any renewal, continuation, continuation-in-part or divisional applications
thereof and any patents or reissue, extension, substitution, confirmation,
revalidation, revision, addition or re-examination patents issuing therefrom
(together with any future patents or patent applications covering inventions or
improvements included in NVE MRAM Technology, the "NVE Patent Rights").
B. "MRAM Products" means products used for the principal purpose of
storing data using magnetoresistive materials or properties, or services
related thereto. MRAM Products does not include any products (or related
services) having the principal purpose of giant magnetoresistive sensing or
isolation.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
C. "Affiliate" shall mean an individual or entity which
controls, is controlled by, is under common control with, or is a result from
the division of one of the parties to this Agreement.
D. "Subsidiary" shall mean any entity in which one of the
parties holds at least a majority ownership stake. With respect to Cypress,
Subsidiary shall specifically include Silicon Magnetic Systems.
E. "Cypress Technology" means all intellectual property owned or
controlled by Cypress or its Subsidiaries or Affiliates, including, without
limitation, patents, patent applications, copyrights, computer programs,
trade secrets, mask works, drawings, designs, formulas and any other know-
how, as of the date hereof or which is developed by Cypress or any of its
Subsidiaries, Affiliates, employees, consultants or contractors during the
term of this License and Joint Ownership Agreement, or which is owned by
third parties and subsequently licensed to Cypress (provided that Cypress has
secured the right to grant sublicenses with respect to such technology), and
which relates to the actual or planned design, development, processing,
manufacturing, testing, using, selling or providing services with respect to
products capable of storing data using magnetoresistive materials or
properties. Cypress Technology includes, but is not limited to, issued U.S.
patents and pending U.S. patent applications (as listed on Schedule 3), as
well as any foreign counterparts, any renewal, continuation, continuation-in-
part or divisional applications thereof and any patents or reissue,
extension, substitution, confirmation, revalidation, revision, addition or
re-examination patents issuing therefrom (together with any future patents or
patent applications covering inventions or improvements included in Cypress
Technology, the "Cypress Patent Rights").
II. GRANT
A. NVE hereby grants to Cypress a worldwide, nontransferable (except as
specifically provided herein) nonexclusive royalty free license under the NVE
MRAM Technology to make, have made, lease, use, sell, offer to sell, import and
otherwise dispose of MRAM Products. It is recognized and agreed that the
foregoing license grant (i) allows Cypress to use a third party to make MRAM
Products exclusively for Cypress, which Cypress may then use, sell, offer to
sell or import, and (ii) includes the right to (a) practice any process or
method involved in the manufacture or use of MRAM Products, (b) use, make or
have made any instrumentality or aggregate of instrumentalities primarily
designed for use in fabrication or manufacture of MRAM Products, (c) practice
any process or method involved in the use of such instrumentalities, and
(d) copy, prepare derivative works of and use the NVE MRAM Technology.
B. NVE hereby forever grants to the customers and users of
MRAM Products that are sold or leased by Cypress or its Affiliates pursuant
to this License and Joint Ownership Agreement a worldwide, royalty-free,
nonexclusive immunity from suit or claims by NVE under the NVE MRAM
Technology for the use, sale or lease of such MRAM Products, provided that
such immunity for customers and users shall extend only to the use, sale or
lease of such particular MRAM Products that were obtained directly or
indirectly from Cypress or its Subsidiaries or Affiliates.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
C. Cypress hereby grants to NVE a worldwide, nontransferable
(except as specifically provided herein) nonexclusive royalty free license
(without the right to sublicense except to NVE's Affiliates) under the
Cypress Technology to make, have made, lease, use, sell, offer to sell and
import MRAM Products and any related components and parts thereof. In the
event that NVE grants a sublicense to a NVE Affiliate, such sublicense must
preclude NVE or any other party from any rights so sublicensed. It is
recognized and agreed that the foregoing license grant (i) allows NVE to use
a third party to make MRAM Products for NVE, which NVE may then use, sell,
offer to sell or import, and (ii) includes the right to (a) practice any
process or method involved in the manufacture or use of MRAM Products,
(b) use, make or have made any instrumentality or aggregate of
instrumentalities primarily designed for use in fabrication or manufacture of
MRAM Products, (c) practice any process or method involved in the use of such
instrumentalities, and (d) copy, prepare derivative works of and use the
Cypress Technology.
D. Cypress hereby forever grants to the customers and users of MRAM
Products that are sold or leased by NVE or its Affiliates pursuant to this
License and Joint Ownership Agreement a worldwide, royalty-free, nonexclusive
immunity from suit or claims by Cypress under the Cypress Technology for the
use, sale or lease of such MRAM Products, provided that such immunity for
customers and users shall extend only to the use, sale or lease of such
particular MRAM Products that were obtained directly or indirectly from NVE or
its Affiliates and for which Cypress was either paid (or specifically not
entitled to payment of) a royalty under Section VII B of this License and Joint
Ownership Agreement.
III. TERM
A. Unless terminated as otherwise provided herein, the term of this
License and Joint Ownership Agreement (the "Term") shall expire upon the later
of (i) the last to expire of any patents included in the NVE or Cypress Patent
Rights that relate to inventions made, created or conceived prior to June 2,
2004 or (ii) January 1, 2020. After expiration, but not termination, of the
Term, Cypress shall have a fully paid-up, royalty-free, perpetual nonexclusive
license to use the NVE MRAM Technology under expired patents and technology
related thereto to make, sell, offer for sale, use, import into the U.S. and
otherwise dispose of MRAM Products and to have MRAM Products made using the NVE
MRAM Technology for sale, offers for sale, use, importation into the U.S.
and/or other disposal, and NVE shall have a fully paid-up, royalty-free,
perpetual nonexclusive license to use the Cypress Technology under expired
patents and technology related thereto to make, sell, offer for sale, use,
import into the U.S. and otherwise dispose of MRAM Products and to have MRAM
Products made using the Cypress Technology for sale, offers for sale, use,
importation into the U.S. and/or other disposal.
B. In the event of a material breach of this License and Joint
Ownership Agreement by either party, the other party may terminate this
License and Joint Ownership Agreement after giving three (3) months' written
notice. Notwithstanding the foregoing, this License and Joint Ownership
Agreement shall remain in full force and effect if the breach is cured within
said three (3) month period or the parties agree in writing to renegotiate
this License and Joint Ownership Agreement.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
C. NVE shall have the right to terminate this License and Joint
Ownership Agreement immediately if NVE has not received from Cypress the supply
of MRAM wafers under the terms described in Section VII A below and as more
fully detailed in Appendix A.
D. Expiration or termination of this License and Joint Ownership
Agreement for any reason shall be without prejudice to any rights that have
accrued to the benefit of either party prior to such expiration or termination.
Any accrued obligations, including, without limitation those under Paragraph
VIII, the provisions of Paragraphs II B, III A (last sentence), IV, VI B, IX,
XI A, XI B 2-5, XIII, XVI, XVII, XVIII, and XIX, and the payment obligations of
NVE under the Foundry Manufacturing Agreement in Appendix A shall survive
expiration or termination of this Agreement.
IV. OWNERSHIP AND IMPROVEMENTS
A. Upon execution of this License and Joint Ownership Agreement by the
parties, a joint and undivided ownership interest in the NVE MRAM Technology,
including the "NVE Patent Rights," shall vest in Cypress and Silicon Magnetic
Systems, effective as of the date of this Agreement, and NVE agrees to assign
such joint ownership interest to Cypress and Silicon Magnetic Systems upon
reasonable request from Cypress. However, it is mutually understood and agreed
that nothing contained herein shall be construed as granting to Cypress or and
Silicon Magnetic Systems any other right to the NVE MRAM Technology or any
other intellectual property of NVE. Notwithstanding the vesting of the
foregoing joint ownership interest in the NVE MRAM Technology, neither Cypress
nor and Silicon Magnetic Systems acquire any rights by virtue of its joint
ownership except as specifically set forth elsewhere in this License and Joint
Ownership Agreement.
B. It is mutually understood and agreed that nothing contained herein
shall be construed as granting to NVE any other right to the Cypress Technology
or any other intellectual property of Cypress. Cypress is and shall remain the
sole and exclusive owner of all the Cypress Technology owned by it and any
improvements it makes to the Cypress Technology.
C. Both parties hereto recognize and acknowledge that, in addition to
the rights granted hereunder, during the term of this Agreement, each may enter
into negotiations with ** relating
to MRAM technology. In such event, each party agrees that, should it enter
into negotiations or contact or be contacted by ** regarding an agreement
which relates to the grant of rights to MRAM technology, it will notify the
other party of such negotiations or contact and will not, without the other
party's prior written consent, which shall not be unreasonably withheld, enter
into any such agreement.
D. In the event that a third party who has not licensed NVE MRAM
technology claims infringement by Cypress on the third party's intellectual
property, Cypress will notify NVE, and NVE will not, without Cypress' prior
written consent, which will not be unreasonably withheld, enter into a
license agreement with the third party. This prohibition will be limited to
two parties besides **.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
V. DRAWINGS AND ENGINEERING
NVE agrees to furnish to Cypress, as they are needed or requested by
Cypress, such standard detailed engineering and shop drawings, specifications,
design criteria, application information, mask works and computer software
applicable to MRAM Products, including their manufacture, use and testing and
the instrumentalities for use in their fabrication or manufacture, as NVE has
prepared and will prepare during the Term.
VI. WARRANTIES; LIABILITY/INDEMNIFICATION
A. 1. Joint Warranties and Representations. Except as provided in
Section VI B below, each party, to the best of its knowledge, warrants and
represents that as of the effective date of this License and Joint Ownership
Agreement: (i) it owns or controls all right, title and interest in its
respective MRAM Technology and has the right to grant the license herein;
(ii) it has not granted, and will not grant, any rights to its respective MRAM
Technology in conflict with this License and Joint Ownership Agreement;
(iii) it has no knowledge of any facts that would (a) affect the validity or
enforceability of any patents in its MRAM Technology, (b) prevent the issuance
of patents with respect to any pending patent applications included in the
respective party's Patent Rights, or (c) suggest that either party's Patent
Rights may be subject to an interference action or challenge; (iv) it is not
aware of any third-party patents (or pending patent applications that could
result in issued patents) that would be necessary to practice its MRAM
Technology to which it does not have a license or to which it would not be
capable of obtaining a license; (v) it believes, without having made any
independent legal or factual investigation into the issue, that neither the
United States government nor any other government has an interest in or imposed
restrictions (other than export control) upon its MRAM Technology; (vi) it has
the corporate power, authority and legal right to enter into this License and
Joint Ownership Agreement and to perform its obligations hereunder and has
taken all necessary corporate action to authorize the execution and delivery of
this License and Joint Ownership Agreement and the performance of its
obligations hereunder.
2. NVE WARRANTIES AND REPRESENTATIONS. NVE warrants that
(i) except for the rights of Honeywell, Motorola, Inc., Union Semiconductor
Technology Corporation, and a party to whom Honeywell may have transferred
some of its rights, and the customary rights of the United States government
relative to technology that was developed, in part, by funding obtained from
the United States government, no other party currently has an interest in or
license or option to the NVE MRAM Technology; (ii) Schedule 1 contains a true
and complete list of all patent and patent applications owned by NVE relating
to the NVE MRAM Technology as of the date of this Agreement.
3. DISCLAIMER. THE FOREGOING WARRANTIES ARE MADE BY EACH PARTY
EXPRESSLY IN LIEU OF AND IN EXPRESS DISCLAIMER OF ANY OTHER EXPRESS OR
IMPLIED WARRANTIES, INCLUDING, BUT NOT BY WAY OF LIMITATION, THE WARRANTIES
OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE OF ANY MRAM PRODUCTS.
VII. SUPPLY AGREEMENT
A. In exchange for the grant of rights to the NVE MRAM Technology under
this License and Joint Ownership Agreement, Cypress agrees to sell to NVE MRAM
wafers on pricing and terms which are outlined on Appendix A attached to this
License and Joint Ownership Agreement. Such sales shall be made on standard
and customary business terms, all as more fully detailed on Appendix A.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
VIII. RECORDS
A. Cypress does not need to provide records of its sales of MRAM
Products.
IX. EXPORT LAWS.
A. Cypress shall comply with all laws, rules, and regulations of the
United States and any foreign countries concerning the export, reexport, or
other transfer of information, technical data or MRAM Products and shall not
knowingly take any action that would subject NVE to any liability, criminal
or civil, under such laws, rules, and regulations.
B. NVE shall comply with all laws, rules, and regulations of
the United States and any foreign countries concerning the export, reexport,
or other transfer of information, technical data or MRAM Products and shall
not knowingly take any action that would subject Cypress to any liability,
criminal or civil, under such laws, rules, and regulations.
X. PATENT PROSECUTION AND MAINTENANCE
Each party shall, at its expense, diligently prosecute, maintain and
defend all patents and patent applications included in its respective Patent
Rights. NVE shall have the sole responsibility to prosecute and maintain any
patents or applications naming only NVE employees as inventors and based on
work performed for NVE in said inventors' capacity as NVE employees. NVE shall
keep Cypress currently advised of all major actions taken in the prosecution,
maintenance and defense of NVE's Patent Rights and furnish Cypress upon request
with copies of all substantive communications to and from applicable patent
offices regarding NVE's Patent Rights, and shall do so in a manner enabling
Cypress to provide its input into and/or on said actions, subject to the
confidentiality provisions of this Agreement.
XI. INFRINGEMENT
A. Infringement by Cypress. In the event of any charge of infringement
against Cypress arising from the manufacture, use or sale by Cypress of MRAM
Products, Cypress shall give NVE notice thereof, and Cypress may defend itself
against such charge of infringement, such defense to be at Cypress's expense
unless NVE's warranties in Paragraph VI A shall prove to have been untrue as of
the effective date of this Agreement and any such false warranties are
materially related to the charge of infringement.
B. Infringement by Third Party. In the event that either
party determines that a third party is making, using or selling a product
that may "Substantially Infringe," as defined below, the NVE MRAM Technology,
such party will promptly notify the other party in writing.
1. NVE may, at its sole option and expense
and within ninety (90) days from the receipt of notice of a
Substantial Infringement (the "Infringement Notice
Period"), either (i) bring suit against such alleged
infringer and diligently pursue such suit or (ii) cause the
cessation of such infringement. All recoveries in such
suit shall belong to NVE.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
2. Notwithstanding the ability of NVE to
respond to Substantial Infringement as described
immediately above, NVE grants to Cypress the right, upon
notice to NVE during the Infringement Notice Period
(including any mutually agreed extensions), to enforce the
Patent Rights on behalf of NVE as if such enforcement were
performed by NVE itself, subject to any previous allocation
of such right to enforce the Patent Rights that NVE may
have previously granted. In any action taken to enforce
such Rights, Cypress shall have the further rights to (i)
seek and obtain injunctive relief and/or (ii) subject to
mutual agreement by and among Cypress, NVE and the
sublicensee (with each of Cypress and NVE being obligated
to negotiate in good faith regarding such agreement), grant
sublicenses for a royalty, such sublicenses being of the
same or lesser scope than that of the license granted to
Cypress herein. NVE and Cypress expressly understand that
the existence of any limitations on Cypress's rights to
enforce the Patent Rights arising out of NVE's previous
license agreements does not constitute breach of NVE's
representations and warranties under this License and Joint
Ownership Agreement or the Stock Purchase Agreement. In
any such enforcement by Cypress, Cypress will be solely
responsible for its attorney's fees and other costs, and
will be entitled to all recoveries from whatever
enforcement actions it takes, without any obligation to
account to NVE for any such recoveries.
3. "Substantially Infringe," as used herein, shall
mean an action which (a) infringes the NVE MRAM Technology as it
relates to the manufacture, distribution, or sale of MRAM
Products; and (b) has a significant impact, or is likely in
the future to have a potential significant impact, on the
market for MRAM Products.
4. In connection with any action brought by Cypress
hereunder, NVE agrees that Cypress may join NVE as a party
to such action or bring such action in NVE's name to the
extent required by applicable law. Further, NVE shall
provide Cypress reasonable assistance in connection with
any such action (including, without limitation, making its
employees and agents reasonably available for purposes of
consultation, depositions, preparation of affidavits and
trial or other testimony), at Cypress' expense.
5. The party prosecuting an infringement action
hereunder shall have the right to select its own counsel
and prosecute the action in accordance with the advice of
its own counsel. However, the prosecuting party shall keep
the other party promptly informed of, and shall consult
reasonably with the other party, regarding the status of
the action and strategy with respect to prosecution of the
action. The prosecuting party shall provide the other
party with copies of all substantive documents filed in,
and written communications relating to the suit. The
prosecuting party shall not abandon, settle or compromise
the action without the other party's prior written consent,
which shall not be unreasonably withheld.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
XII. ASSIGNMENT
Neither party may assign or otherwise transfer, in whole or in part, any
rights or obligations under this License and Joint Ownership Agreement without
the other party's prior written consent, except either party may, without such
consent, assign or transfer, in whole but not in part, this License and Joint
Ownership Agreement or all of its rights and obligations hereunder (a) in
connection with a merger, consolidation or reorganization of the party or to a
purchaser of all or substantially all of its assets, or (b) to a Subsidiary or
Affiliate.
XIII. CONFIDENTIALITY
A. All confidential information of either Cypress or NVE (as disclosing
parties) furnished to NVE or Cypress, respectively (as receiving parties),
during or prior to the Term and that relates to the subject matter hereof shall
be kept confidential by the receiving party if such confidential information is
in writing and marked CONFIDENTIAL, or, if disclosed orally, is reduced to
writing by the disclosing party within thirty (30) days of such oral disclosure
and that writing is marked CONFIDENTIAL and except insofar as disclosure of
such confidential information is reasonably necessary in connection with
manufacturing, marketing or sale by Cypress of MRAM Products or in connection
with the assignment or transfer by Cypress to others of rights under this
License and Joint Ownership Agreement. Any disclosure of confidential
information in contemplation of such an assignment or transfer must occur under
conditions of confidentiality substantially similar to those contained herein.
The receiving party shall not make any use of any such confidential information
except for the purposes and in the manner contemplated by this License and
Joint Ownership Agreement; provided that either party may disclose confidential
information (i) as required by law or (ii) to its officers and employees who
require the information for the purposes contemplated by this License and Joint
Ownership Agreement, and provided further that such officers and employees are
subject to like obligations of confidentiality with respect to such
information.
B. Notwithstanding the provisions of Paragraph XIII A, the obligations
of confidence and nonuse herein assumed by Cypress and NVE shall not apply to
information that the party attempting disclosure can document:
1. was, at the time of disclosure, or thereafter becomes, a
part of the public domain through no fault of the receiving party; or
2. was otherwise in the receiving party's lawful possession in
written form prior to the disclosure by the disclosing party; or
3. was lawfully disclosed to the receiving party on a
nonconfidential basis by a third party who is not in violation of an obligation
of confidentiality to the disclosing party with respect to such information.
D. Neither party may (i) mention the other party's name in any
advertising, unless previously approved by the other party or required by law
or (ii) claim any sort of exclusive rights in the technology of the other
party.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
XIV. CLAIMS CANCELED, DISCLAIMED OR INVALIDATED
A. If, during the Term, any patent claim included in the NVE Patent
Rights is disclaimed or becomes canceled or of no force or effect by operation
of law (as through an adverse interference judgment or otherwise), then such
claim shall be considered as no longer included in the NVE Patent Rights unless
and until it becomes reinstated, beginning with the date of such disclaimer or
cancellation or the date it becomes of no force or effect. Neither party shall
disclaim or otherwise seek to have or voluntarily allow any patent claims
included in the NVE Patent Rights to be canceled without first conferring with
and receiving the written consent of the other party.
B. If, during the Term, a claim included in the Patent Rights
shall be construed or held invalid by a court of competent jurisdiction from
whose decision no appeal is taken, then for the purpose of this License and
Joint Ownership Agreement the construction placed on such claim shall
thereafter be followed and any claims so held invalid shall be ignored.
XV. NOTICES
All notices given by either party under this License and Joint Ownership
Agreement shall be in writing and shall be sent by telefax, generally
recognized next business day courier, or first-class express, registered or
certified mail, return receipt requested, postage or other charges prepaid, to
the party, at its address identified below.
FOR Cypress and Silicon Magnetic Cypress Semiconductor Corporation
Systems: 0000 Xxxxx Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxx Xxxxxxxxxxx
With a copy to: Cypress Semiconductor Corporation
0000 Xxxxx Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxx X. Xxxxxxx, Ph.D., Esq.
FOR NVE: NVE Corporation
00000 Xxxxxx Xxxx Xxxx
Xxxx Xxxxxxx, XX 00000
Attention: Xxxxxx X. Xxxxx
With a copy to: Xxxx Plant Xxxxx
3400 City Center
00 Xxxxx Xxxxx Xxxxxx
Xxxxxxxxxxx, Xxxxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxxxxxx
Any such notice shall be considered given on the date deposited in the mails,
delivered to the courier or confirmed as received by telefax machine.
XVI. APPLICABLE LAW
This License and Joint Ownership Agreement shall be deemed to be entered
into and governed by the laws of the State of Minnesota.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
XVII. CONSENT TO JURISDICTION
Each of the parties hereto hereby irrevocably and unconditionally consents
to submit to the exclusive jurisdiction of the courts of the State of Minnesota
or the United States of America located in the State of Minnesota for any
actions, suits or proceedings arising out of or relating to this License and
Joint Ownership Agreement and the transactions contemplated hereby and agrees
not to commence any action, suit or proceeding relating hereto except in such
courts or pursuant to the arbitration clause contained in Section XIX C, and
further agrees that service of any process, summons, notice or document by
United States registered or certified mail in accordance with Paragraph XV
shall be effective service of process for any action, suit or proceeding
brought in any such court. Each of the parties hereto hereby irrevocably and
unconditionally waives any objection to personal jurisdiction and the laying of
venue of any action, suit or proceeding arising out of this License and Joint
Ownership Agreement or the transactions contemplated hereby, in the courts of
the State of Minnesota or the United States of America located in the State of
Minnesota, and hereby further irrevocably and unconditionally waives and agrees
not to plead or claim in any such court that any such action, suit or
proceeding brought in any such court has been brought in an inconvenient forum.
XVIII. NONSOLICITATION
Neither party shall, for a period of two (2) years from the date of
this License and Joint Ownership Agreement, solicit, or attempt to solicit,
any employee of the other party.
XIX. MISCELLANEOUS PROVISIONS
A. Entire Agreement. This License and Joint Ownership Agreement
constitutes the entire understanding of the parties with respect to the subject
matter contained herein and shall supersede all previous communications,
representations or understandings, either oral or written, between the parties
relating to the subject matter hereof. No amendment or modification of this
License and Joint Ownership Agreement shall be valid or binding on the parties
unless signed by their respective duly authorized officers.
B. Severability. All provisions of this License and Joint
Ownership Agreement shall be deemed severable. The enforceability,
illegality or invalidity of any provision herein or portion thereof shall not
affect the enforceability, legality or validity of any other, further or
additional provision hereof, all of which shall remain valid, binding and
enforceable in accordance with their terms. Should any provision, term or
condition of this License and Joint Ownership Agreement be held
unenforceable, illegal or invalid, such provision, term or condition shall be
curtailed and limited only to the extent necessary to bring it within the
requirement of the law.
C. Arbitration. Any and all disputes arising in connection with this
License and Joint Ownership Agreement that cannot be settled by negotiation
between the parties hereto shall, at the request of either or both parties, be
referred to and finally settled under the then prevailing Rules of the American
Arbitration Association by one or more arbitrators appointed in accordance with
said Rules. Notwithstanding any provisions of such Rules or any applicable
state or federal law, the parties agree that the arbitrator cannot award
exemplary or punitive damages. Judgment upon the award may be entered in any
court having jurisdiction. All arbitration proceedings shall take place in
Minneapolis, Minnesota.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
D. Waiver. Any failure or delay on the part of either party
in the exercise of any right or privilege hereunder shall not operate as a
waiver thereof, nor shall any single or partial exercise of any such right or
privilege preclude other or further exercise thereof of any other right or
privilege.
E. Successors. The rights and benefits of this License and Joint
Ownership Agreement shall inure to the benefit of, and be enforceable by, the
successors and permitted assigns of the parties.
F. No Other Rights Granted. It is mutually understood and
agreed that Cypress receives no licenses or rights whatsoever, by implication
or otherwise, under any other patents or applications owned or controlled by
NVE, except those specifically granted by NVE by the terms of this License
and Joint Ownership Agreement. It is further mutually understood and agreed
that NVE receives no licenses or rights whatsoever, by implication or
otherwise, under any other patents or applications owned or controlled by
Cypress, except those specifically granted by Cypress by the terms of this
License and Joint Ownership Agreement.
G. Mutual Disclaimers. This License and Joint Ownership Agreement does
not render either party an agent of the other, or either party liable for any
debts, liabilities or obligations of the other, either now existing or to be
incurred in the performance of this License and Joint Ownership Agreement, and
neither party has any authority to delegate or represent the other.
H. Force Majeure. Neither party shall be liable or in breach
for any delay or failure to perform due to causes beyond its control and
without the fault or negligence of such party, including, but not limited to,
acts of God, acts of the public enemy, acts of any government, fires, floods,
epidemics, quarantine restrictions, strikes or embargoes.
I. Bankruptcy. All rights and licenses granted under or pursuant to
this License and Joint Ownership Agreement are, and shall otherwise be deemed
to be, for purposes of Section 365(n) of Title 11, U.S. Code (the "Bankruptcy
Code"), licenses of rights to "intellectual property" as defined under
Section 101(60) of the Bankruptcy Code. The parties agree that either party,
as a licensee of such rights under this License and Joint Ownership Agreement,
shall retain and may fully exercise all of its rights and elections under the
Bankruptcy Code. Each party agrees during the Term to create and maintain
current copies of or, if not amenable to copying, detailed descriptions or
other appropriate embodiments of all such intellectual property licensed
hereunder. The parties further agree that, in the event of the commencement of
any dissolution, winding up of business, or bankruptcy proceeding by or against
a party under the Bankruptcy Code (unless such party has caused the dismissal
of such proceeding within sixty (60) days from its commencement) (the
"Insolvent Party"), the other party shall be entitled to a complete duplicate
of (or complete access to, as appropriate) any such intellectual property and
all embodiments of such intellectual property, and the same, if not already in
its possession, shall be promptly delivered to such other party, upon the
written request therefor, (a) upon any such commencement of a bankruptcy
proceeding, unless the licensed party elects to continue to perform all of its
obligations under this License and Joint Ownership Agreement, or (b) if not
delivered under the preceding clause (a), upon the rejection of this License
and Joint Ownership Agreement by or on behalf of the Insolvent Party.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
J. Review of Agreement. This License and Joint Ownership
Agreement has been submitted to the scrutiny of both parties and their
respective counsel and shall be given a fair and reasonable interpretation in
accordance with the words hereof, without consideration or weight being given
to its being drafted, in whole or in part, by or for one of the parties.
K. Counterparts. This License and Joint Ownership Agreement may be
executed in counterparts, any one of which need not contain the signatures of
more than one party, but all of which, taken together, shall constitute one and
the same agreement.
L. NVE shall use its best efforts to cause its Affiliates to make
available to Cypress NVE MRAM Technology pursuant to the terms of this License
and Joint Ownership Agreement.
IN WITNESS WHEREOF, the parties have hereunto executed this License and
Joint Ownership Agreement effective as of the date first written above.
NVE
NVE Corporation
By: /s/ Xxxxxx Xxxxx
Name: Xxxxxx Xxxxx
Title: President & CEO
Cypress
Cypress Semiconductor Corporation
By: /s/ X.X. Xxxxxxx
Name: X.X. Xxxxxxx
Title: CEO
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
Schedule 1. NVE MRAM Patents
U.S. Patent # Title Inventors Issue Date
-------------------------------------------------------------------------------
5,251,170 Offset Magnetoresistive Memory X. Xxxxxxxx 10/5/93
5,420,819 Method for Sensing Data in a Magneto- A. Pohm 5/30/95
resistive Memory Using Large Fractions
of Memory Cell Films for Data Storage.
5,424,236 Method for Forming Offset Magneto- X. Xxxxxxxx 6/13/95
resistive Memory Structures. A. Pohm
5,569,544 Magnetoresistive Structure Comprising X. Xxxxxxxx 10/29/96
Ferromagnetic Thin Films and Inter-
mediate Layers of Less Than 30
Angstroms Formed of Alloys Having
Immiscible Components.
5,595,830 Magnetoresistive Structure With Alloy X. Xxxxxxxx 1/21/97
Layer Having Two Substantially
Immiscible Components.
5,636,159 Magnetoresistive Memory Using Large A. Pohm 6/3/97
Fractions of Memory Cell Films for
Data Storage.
5,768,180 Magnetoresistive Memory Using Large A. Pohm 6/16/98
Fractions of Memory Cell Films for
Data Storage.
5,617,071 Magnetoresistive Structure Comprising X. Xxxxxxxx 4/1/97
Ferromagnetic Thin Films and Inter-
Mediate Alloy Layer Having Magnetic
Concentrator and Shielding Permeable
Masses.
5,892,708 Magnetoresistive Memory Using Large A. Pohm 4/6/99
Fraction of Memory Cell Films for Data
Storage.
5,949,707 Giant Magnetoresistive Effect Memory A. Pohm
9/7/99
Cell X. Xxxxxxx
5,966,322 Giant Magnetoresistive Effect Memory A. Pohm
10/12/99
Cell. X. Xxxxxxx
6,021,065 Spin Dependent Tunneling Memory. X. Xxxxxxxx
2/1/00
A. Pohm
X. Xxxxxxx
6,147,900 Spin Dependent Tunneling Memory. A. Pohm
11/14/00
6,168,860 Magnetic Structure With Stratified X. Xxxxxxxx
1/2/01
Layers.
6,275,411 Spin Dependent Tunneling Memory. X. Xxxxxxxx
8/14/01
A. Pohm
X. Xxxxxxx
NVE Proprietary and Confidential
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
NVE MRAM U.S. Patents Pending
USPTO # Title Inventors File Date
09/814,637 Read Heads in Planar Monolithic A. Pohm 3/22/01
Integrated Circuit Chips.
09/673,827 Magnetic Memory Coincident Thermal X. Xxxxxxxx 4/23/01
Pulse Data Storage. A. Pohm
60/289,162 Circuit Selected Joint Magnetoresistive A. Pohm 5/7/01
Junction Tunneling-Giant Magneto-
Resistive Effects Memory Cells.
60/291,209 Current Switched Magnetoresistive X. Xxxxxxxx 5/17/01
Memory Cell Cross Reference to A. Pohm
Related Applications. X. Xxxxxx
09/891,619 Spin Dependent Tunneling Memory. X. Xxxxxxxx 6/26/01
A. Pohm
X. Xxxxxxx
09/929,435 Circuit Selection of Magnetic Memory X. Xxxxxxxx 8/14/01
Cells. A. Pohm
60/316,640 Antiparallel Magnetoresistive Memory X. Xxxxxxxx 8/31/01
Cells. A. Pohm
60/368,172 Spin Dependent Tunneling Device having X. Xxxxxxxx 3/27/02
Orange Peel Coupling Reduction Structure. et. al.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
Schedule 2. Foreign Patents
NVE Foreign MRAM Patents Issued
Patent # Title Inventor Issue Date
633 099 Magnetoresistive Memory Structure A. Pohm 6/23/99
Large Fraction Utilization.
744 076 Magnetoresistive Structure With X. Xxxxxxxx 7/26/00
Alloy Layer.
710 390 Magnetic Structure With Stratified X. Xxxxxxxx 6/20/01
Layers.
NVE Foreign MRAM Patents Pending
PCT # Title Inventors File Date
US93,10782 Magnetoresistive Structure With Alloy X. Xxxxxxxx 11/8/93
Layer.
US96,01580 Magnetoresistive Structure With Alloy X. Xxxxxxxx 2/6/96
Layer.
US97,15704 Giant Magnetoresistive Effect Memory A. Pohm 9/5/97
Cell. X. Xxxxxxx
US97,20373 Spin Dependent Tunneling Memory. X. Xxxxxxxx 11/7/97
A. Pohm
X. Xxxxxxx
US00,30553 Spin Dependent Tunneling Memory. A. Pohm 11/6/00
US00,40235 Magnetic Memory Coincident Thermal X. Xxxxxxxx 6/16/00
Pulse Data Storage.
US01,09118 Read Heads in Planar Monolithic A. Pohm 3/22/01
Integrated Circuit Chips.
US01,25727 Circuit Selection of Magnetic Memory 8/16/01
Cells and Related Cell Structures.
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
Schedule 3. Cypress Patents
Issue Date US Patent No. Title Inventors
21-Nov-95 5,468,342 Method of Etching an Oxide Layer X. Xxxxx, X. Xxxxxxx
07-May-96 5,514,622 Method for the Formation of X. Xxxxxxxxx,
Interconnects and Landing Pads X. Xxxxxxxx
Having a Thin, Conductive Film
Underlying the Plug or an
Associated Contact of Via Hole
04-Jun-96 5,523,258 Method for Avoiding Lithographic X. Xxxxx, A.
Rounding Effects for Stolmeijer,
Semiconductor Fabrication Helm
08-Oct-96 5,562,801 Method of Etching an Oxide Layer X. Xxxxx
05-Aug-97 5,654,915 6-Bulk-Transistor Static Memory X. Xxxxx, A.
Cell Using Split Wordline Stolmeijer
Architecture
12-May-98 5,751,507 ESD Protection Apparatus Having X. Xxxx, A.
Floating ESD Bus and Xxxxxx
Semiconductor Structure
20-Oct-98 5,825,600 Fast Turn-On Silicon Controlled X. Xxxx
Rectifier (SCR) for Electrostatic
Discharge (ESD) Protection
27-Apr-99 5,897,371 Alignment Process Compatible with K. Yeh, A.
Chemical Mechanical Polishing Chatila, X.
Xxxxxxxxxxx
22-Jun-99 5,913,712 Scratch Reduction in X. Xxxxxxx
Semiconductor Circuit Fabrication
using Chemical-Mechanical
Polishing
19-Oct-99 5,968,851 Controlled Isotropic Etch Process X. Xxxx, E.
and Method of Forming an Opening Shan
in a Dielectric Layer
04-Jan-00 6,011,420 ESD Protection Apparatus Having X. Xxxx, A.
Floating ESD Bus and Xxxxxx
Semiconductor Structure
07-Mar-00 6,033,991 Isolation Scheme Based on X. Xxxxxxxx,
Recessed LOCOS using a Sloped Si X. Xxxxxxx, S.
Etch and Dry Field Oxidation Sadoughi
23-May-00 6,066,555 Method for Eliminating Lateral X. Xxxxx, J.
Spacer Erosion on Enclosed Xxxxx
Contact Topographies During RF
Sputter Cleaning
05-Dec-00 6,156,645 Method of Forming a Metal Layer X. Xxxx, E.
on a Substrate, Including Shan
Formation of Wetting Layer at a
High Temperature
26-Dec-00 6,165,375 Plasma Etching Method X. Xxxx, X.
Xxxxxxxx, X.
Xxxxxxx, X.
Xxxxxx, X.
Xxxxx
30-Oct-01 6,309,971 Hot Metallization Process X. Xxxx
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
Issue Date Patent No. Title Inventors
(Country)
11-Jan-00 110982 (Taiwan) Hot Metallization Process X. Xxxx
00-Xxx-00 00 00000 (Xxxxxx) Hot Metallization Process X. Xxxx
Cypress Filed Patent Applications
Filing Date Inventors Serial No. Title
16-Jan-96 T. Yen, X. Xxxxxxx, P. 08/587,417 LOCOS with Sloped Silicon
Xxxxxxxxxx, A. Recess
Xxxxx
30-Jun-97 X. Xxxxxxxx, S. 08/885,046 Method and Structure For
Sadoughi, P. Isolating Integrated Circuit
Xxxxxxx Components and/or
Semiconductor Elements
19-Sep-97 X. Xxxx, A. 08/933,562 Method & Apparatus To Prevent
Xxxxxx, X. Xxxx, Latch Up In CMOS Devices
X. Xxxxxxxx, X.
Xxxxx, X.
Xxxxxxxxx, X.
Xxxxxx
14-Jan-98 E. Shan, X. Xxx, 09/006,958 Method of Forming a Low
X. Xxxxx Resistivity Titanium-
Containing Interconnect and
Semiconductor Device
Comprising the Same
18-Dec-98 X. Xxxx, G. 09/215,093 High Vapor Plasma Strip
XxXxxxx Methods and Devices to Enhance
the Reduction of Organic
Residues Over Metal Surfaces
10-Apr-00 X. Xxxx, U. 09/546,714 Plasma Etching Method
Xxxxxxxx, X.
Xxxxxxx, X.
Xxxxxx, X. Xxxxx
29-May-01 X. Xxxx 09/886,957 Hot Metallization Process
Filing Date Inventors Serial No. Title
(Country)
29-Aug-97 X. Xxxx 42701/1997 Hot Metallization Process
(S. Korea)
24-Oct-97 X. Xxxx 228,406/97 Hot Metallization Process
(Japan)
NVE-Cypress License Agreement CONFIDENTIAL
April 12, 2002
Silicon Magnetic Systems: Filed Applications
Filing Date Inventors Serial No. Title
(Ref. No.) Asymmetric Dot Shape for
08-Mar-02 X. Xxxxxxxxx, F. --(SMS02001) Increasing Select-Unselect
Xxxxx Margin in MRAM Devices
Silicon Magnetic Systems: Drafts in Process
Reference No. Inventors Title
SMS01001 X. Xxxxxxxx, K. Dielectric Layer to Protect Sidewall of
Xxxxxxxxx MTJ Stack
SMS01002 X. Xxxxxxxx, K. Magnetic Tunnel Junction Etch Stop on
Xxxxxxxxx Tunneling Layer
SMS01003 X. Xxxxxxxx Metal Layer Scheme for MTJ Stack
SMS01004 X. Xxxxxx Method of Creating a Coplanar Surface
using Fixed Abrasive
SMS01005 X. Xxxxxx Method of Smoothing a Surface using
Dielectric CMP
SMS01006 X. Xxxxxx Method of Smoothing a Surface using
Dielectric CMP
SMS01007 X. Xxxxx Closed and/or Coupled Flux System
SMS01008 X. Xxxxx Die Surface Magnetic Field Shield
SMS01009 X. Xxxxx Flux Concentrator
SMS01010 X. Xxxxx Shared Global Word Line
SMS01011 X. Xxxxxxxxx, Voltage Divider Based MTJ Cell Sensing
X.X. Xxxxxxx, G. Scheme
Xxxxx, X. Xxxxx
SMS01012 X. Xxxxxxxxx MTJ Logic Configuration Cell
SMS01013 X. Xxxxxxxx Metal Etch to Stop Metallic Dielectric
APPENDIX A
FOUNDRY MANUFACTURING AGREEMENT
FOUNDRY SERVICE AND PRICING
For
Cypress Processes (MR4T and MR8T)
The intent is for Manufacturer to provide Customer with wafers and the
necessary Design Kits, CAD support, masking making support, process files
(e.g. DRC, LVS, ERC, simulation parameters), etc. to enable Customer to have
its products manufactured by Manufacturer.
The intent is to focus on products that will be fabricated in the Cypress
MR4T and MR8T Process.
Term of This Agreement: The terms of this agreement shall commence on the
Effective date and shall continue in full force until December 31, 2006. The
parties agree to negotiate in good faith any extension to this Foundry
Manufacturing Agreement beyond December 31, 2006.
Wafer Forecast: Customer shall provide a 6 month rolling production forecast
of which only the first (3) months are binding.
Order Cancellation: Orders are non cancellable, non refundable.
Pricing: The initial wafer pricing will be set at the time of signing to be
** per wafer for MR4T Process and ** per wafer for MR8T.
This pricing will be valid for the first 6 months of the process after full
qualification of the process (Cypress - Process Review 5). After that 6 month
period and on annual basis in December, co-incident with the yearly planning
cycle, through the term of the contract a wafer pricing review will occur.
Quantities: Customer shall have the right during the term of this Agreement
to order from Manufacturer a maximum of 500 wafers per quarter for the agreed
upon time period. If for any reason Customer should desire more wafers than
the maximum amounts, an additional surcharge of Five Hundred United States
dollars (US $500.00) each will be added to the wafer price defined in the
Pricing section of this Agreement above. Manufacturer reserves the right to
accept or refuse these additional request amounts based upon availability.
Hot Lot & Hand Carry Lot Charges: Hot Hand Carry product lots per the cycle
time commitment defined (below) shall be charged 3X the normal lot charge or
** for MR4T, ** for MR8T. Hot Lot product
lots shall be charged 2X the normal lot charge or ** for
MR4T, ** for MR8T. Hot and Hand Carry Lot Charges will change
accordingly if the base wafer price changes during the annual process cost
review process.
Short Loop Lot Charges: Short loop lots shall be charged at 50% of the normal
wafer price + (processing step cost x number of engineering processing steps
required), up to a maximum of the normal wafer price. For example, if the
standard MR4T Process has 110 process steps, the step cost at the initial
normal wafer price of ** per wafer is **/step. Consequently, for a
short loop lot that has 20 process steps, the cost would be: **.
Delivery - Cycle Time Commitment: Normal product lot cycle time shall be 2.5
days/mask layer (DPML), so if a process has 22 mask steps the product cycle
time would be expected to be 55 days from silicon start. Hot Lot product
cycle time shall be 1.75 days/mask layer, so for example a 22 mask process
would have a hot lot cycle time of 39 days. Hot Hand Carry Lot product cycle
time shall be 1.25 days/mask layer, so for example a 22 mask process would
have a hot lot cycle time of 28 days.
Shipping: FOB Cypress plant. Customer shall pay all transportation and
insurance costs.
Reticle Procurement: Manufacturer shall procure reticles typically within one
(1) week after tape out and receipt of a purchase order of same from the
customer.
Scrap Lot Charge: Customer shall have the option to halt and scrap partially
fabricated wafers paying manufacturer according to the following formula:
Scrap Charge =
1. Minimum charge of 50% of the normal wafer price for lots scrapped
before Poly Mask.
2. At or after Poly Mask, 50% of the normal wafer price + (processing step
cost x number of processing steps completed beyond Poly Mask), up to a
maximum of the normal wafer price. For example, if the MR4T process
has 110 process steps, at the initial normal wafer price the step cost
would be **/step, so a wafer scrapped 15 steps after Poly Mask
would have a charge of **.
Hold Lot Charge: Customer may put 1 production lot on hold at any time free
of charge. If customer wants to put additional production lots on hold for
any reason other than quality or yield improvement, customer shall pay
manufacturer a hold fee of $100.00 per lot for each calendar day that a
production lot is held. Production lots may be held only at certain
manufacturing steps. Manufacturer will provide customer with a listing of
such manufacturing steps. The cumulative maximum number of days that a
production lot may be held is 60 days.
Payment Terms: Net 30 days of invoice date.
Cancellation Notice: Either party may cancel this Agreement upon (a) at
least 6 months' notice in writing to the other party of the intent to cancel,
and (b) the written consent of the other party.
Export Control Laws/Regulations: The parties agree to comply strictly with
all applicable export control laws and regulations. The failure of either
Party to enforce any right resulting from breach of any provision of this
Agreement by the other Party will not be deemed a waiver of any right
relating to a subsequent breach of such provision or of any other right
hereunder. This agreement shall be governed by the laws of the State of
California, without regard to conflict of law or choice of law principles.
Notes:
> Manufacturer will provide wafer parametric testing.
> Probe and package testing will be the responsibility of Customer.
> Customer will be responsible for device packaging.
> Manufacturer will run a "golden" rule check to ensure the GDS II data
meets their minimum manufacturing requirements
> Sample devices (per site) in Item 1 must be ordered in 25-wafer lots.
> Wafers are 200mm in diameter.
> To assist Customer in the preparation of devices to run in the appropriate
Manufacturer process, Manufacturer will provide design rules, cell
library, and models. Manufacturer will also provide Customer with process
support in connection with this information.
