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EXHIBIT 10.14
TESSERA CONFIDENTIAL
TESSERA, INC.
TCC(R) LICENSE AGREEMENT
This Agreement is entered into as of this 24th day of September, 1999
("Effective Date"), between TESSERA INC., a corporation organized under the laws
of Delaware, having a principal place of business at 0000 Xxxxxxx Xxxxx, Xxx
Xxxx, XX, 00000, XXX and the Tessera Affiliates ("Tessera") EEMS Italia, SpA a
corporation organized under the laws of Italy having a principal place of
business at Xxxxx Xxxxx Xxxxxxx, 000000 Cittaducale, RI and the Licensee
Affiliates ("Licensee") with reference to the following facts:
Scope:
WHEREAS, Tessera owns certain semiconductor integrated circuit ("IC") packaging
technology it calls TCC technology along with related IC tape design and
mounting technology it calls TCMT technology, where said technologies include
manufacturing processes, package device designs and specifications, including
design rules and certain other proprietary information and technology required
to manufacture TCC packages, and
WHEREAS, Licensee wishes to use the Tessera patented technology and Technical
Information to assemble said TCC packages and to sell same in accordance with
the terms hereof.
The Parties Hereto Agree:
I. DEFINITIONS. As used herein, the following terms shall have the
following meaning:
A. The term "TCC" is an acronym for Tessera Compliant Chip, a type of
integrated circuit ("IC") package which is the subject matter of certain Tessera
Patents licensed hereunder. By way of non-limiting examples, such TCC packages
may include IC packages that are in a fan-in arrangement (where external
electrical terminals overlie a surface of an IC device ) or are in a fan-out
arrangement (where external electrical terminals are arranged beyond the
periphery of an IC device) or are in a fan-in/fan-out arrangement (where
external electrical terminals both overlie a surface of an IC device and extend
beyond the periphery of the IC device). In such examples, the contact bearing
surface of the IC device may face either towards or away from the external
electrical terminals.
B. The term "Tape" shall mean any flexible film circuit starting material
that may be made under certain of the Tessera Patents, including but not limited
to TAB tape, flex-circuit film, and substantial equivalents commonly available
in the industry.
C. The verbs "Convert" and "Converted" and the noun, "Conversion" refer to
a process or method by which Tape (whether or not made under the Tessera
Patents) is configured with a compliant die mounting layer, die attach adhesive
layer, or otherwise disposed for subsequent packaging of an IC in a TCC package.
D. The term "TCMT" means Converted Tape capable of being incorporated into
the manufacture of a TCC package.
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TESSERA CONFIDENTIAL
E. The term "Technical Information" means Tessera Tape Conversion and
package assembly know-how relating to the design, manufacture and assembly of
TCC packages (excluding Batch Technology as defined herein) which may be
proprietary and/or confidential in nature and which may include, without
limitation, material specifications, current best method of assembly, tooling
specifications, design methods and techniques, proprietary software, process
data, yields, reliability data, and other Tessera engineering data and test
results needed by Licensee (the foregoing by mutual agreement) to exercise the
rights, licenses and privileges granted hereunder.
F. The term "Batch Technology" as used herein means Patents and technical
information relating to or including: (i) any method or result of U.S. Patent
Number 5,518,964 (and related Patents) for making flexible electrically
conducting element(s), joining said elements to electrical contact(s) on a
substantially planar electrical element such as a semiconductor integrated
circuit, undiced IC wafer, or interconnect substrate, and forming said
element(s) away from the plane of said contacts in a predetermined fashion into
the flexible electrical lead(s) of a TCC package; (ii) any method or result of
U.S. Patent 5,455,390 (and related Patents) for making and forming flexible
conducting element(s) on a dielectric film and then simultaneously joining said
elements to electrical contacts on a substantially planar electrical element
such as a semiconductor integrated circuit, undiced IC wafer or interconnect
substrate to produce the flexible electrical leads of a TCC package; and/or
(iii) any method or result of further invention or Patent made or acquired by
Tessera during the term hereof covering any processing method for simultaneously
forming, producing and/or connecting a plurality of flexible electrical leads of
a TCC package. Notwithstanding, the parties expressly agree that any TCC package
made and/or connected individually on a semiconductor integrated circuit or
undiced wafer by traditional wire bonding methods and/or tape automated bonding
("TAB") gang bonding methods, is NOT included in Batch Technology.
G. The term "Patent" means letters patents, utility models, allowances and
applications therefor in all countries of the world, including re-issues,
re-examinations, continuations, continuations-in-part, divisionals, and all
corresponding foreign patents.
H. The term "Tessera Patent" means Patent(s) assigned to Tessera that
arise out of inventions based on the Technical Information made and/or acquired
by Tessera prior to expiration or termination of this Agreement (excluding Batch
Technology as defined herein). The term Tessera Patent shall further include any
third party patent based on Technical Information (excluding Batch Technology as
defined herein) under which Tessera or any successor thereof has the right to
grant licenses of the scope granted herein, as of the Effective Date or at any
time during the term of this Agreement, without the payment of royalty or other
consideration to such third parties except for payment to third parties for
inventions made by said parties while employed by Tessera or any successor
thereof. As of the Effective Date of this Agreement, Tessera Patents, as defined
above, consist of those Patents set forth in Attachment A. Tessera has sole
discretion in the prosecution of the Tessera patent applications prospectively
licensed hereunder, non-exclusively including filing continuations,
continuations-in-part, divisionals, filing corresponding foreign patents
applications and/or abandoning one or more of such patent applications.
I. The term "Billable Pin" means any electrical connection to an IC bond
pad made or contained in any TCC package licensed hereunder.
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TESSERA CONFIDENTIAL
J. The term "Licensee Improvements" means derivatives, improvements,
modifications, or enhanced specifications relating to a TCC package, or related
materials, that may infringe a Tessera Patent or may be made or incorporated in
a TCC package by or for Licensee.
K. The term "Standards" means those minimum standards as set forth in
Attachment C pursuant to which Licensee may sell any TCC package under a Xxxx
(as defined in Paragraph VIII.).
L. The term "Licensee Affiliate" means any company which agrees to be
bound by the terms and conditions of this Agreement and has more than fifty
percent (50%) of the voting stock owned or controlled by Licensee. A company
shall be considered a Licensee Affiliate only so long as such majority ownership
or control exists. Licensee shall be ultimately responsible for the actions of
the Licensee Affiliates pursuant to this Agreement.
M. The term "Tessera Affiliate" means any company which agrees to be bound
by the terms and conditions of this Agreement and has more than fifty percent
(50%) of the voting stock owned or controlled by Tessera. A company shall be
considered a Tessera Affiliate only so long as such majority ownership or
control exists.
N. The term "Consulting Services" means the training and assistance
provided by Tessera on a good faith reasonable efforts basis to Licensee for
equipment selection, set-up, integration and qualification for a single
semiconductor package manufacturing line for the manufacture of up to three (3)
million TCC packages (excluding Batch Technology as defined herein) per month
for which Tessera receives compensation under Paragraph III.D. herein. While
performing the Consulting Services, Tessera shall act only in the role of a
consultant, and Licensee shall solely bear financial and legal responsibilities
in connection with the completion and results of such Consulting Services,
including all aspects thereof. Tessera shall consult with Licensee on all
matters pertaining to the Consulting Services. At the time of execution of this
Agreement, the Parties agree that such line shall be based upon Tessera's
current Zinger(TM) 4.0 manufacturing line.
II. LICENSEE RIGHTS
A. License Grant. Subject to the terms and conditions hereinafter set
forth, Licensee's agreement to the provisions hereof including all attachments
hereto, and Licensee's payment of the fees and royalties stated herein in
Paragraph III, Tessera hereby grants Licensee a world-wide, non-exclusive,
non-transferable, non-sublicensable, limited license to the Tessera Patents and
Technical Information to make or have made Tape and Convert or have Converted
such Tape into TCMT (such Tape and Conversion rights pursuant to Paragraph IX)
for Licensee to package and/or assemble ICs into TCC packages and use or sell
such TCC packages. Licensee specifically is NOT granted any "have made" rights
which would allow Licensee to have non-Affiliates package and/or assemble ICs
into TCC packages for Licensee.
B. Batch Technology Excluded. Notwithstanding anything herein to the
contrary, Batch Technology is excluded from the scope of this Agreement, and
Licensee's rights herein expressly exclude any right to package and/or assemble,
or sell any TCC package made using Batch Technology.
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TESSERA CONFIDENTIAL
C. No Implied License. Notwithstanding the foregoing, nothing in this
Agreement shall be construed to grant Licensee or its Affiliates, successors or
assigns or any third parties an implied license under any patent owned by
Tessera other than the Tessera Patents (as defined above).
III. FEES AND ROYALTY
A. License Fee. As consideration for the licenses and privileges of
Paragraph II.A. hereof, Licensee shall pay to Tessera the sum of [*] US DOLLARS
($[*]). The payment of such License Fee shall be as follows:
(1) Licensee shall pay [*] US DOLLARS (US$[*]) in quarterly payments of
[*] US DOLLARS (US$[*]) on the following schedule:
------------------------------------------------------------------------------
Payment Amount Payment Deadline
(US$)
------------------------------------------------------------------------------
First US$[*] Within thirty (30) days of the
Payment Effective Date of the Agreement
------------------------------------------------------------------------------
Second US$[*] Four (4) months from the Effective Date
Payment
------------------------------------------------------------------------------
Third US$[*] Seven (7) months from the Effective
Payment Date
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Fourth US$[*] Ten (10) months from the Effective Date
Payment
------------------------------------------------------------------------------
(2) the remaining [*] US DOLLARS (US$[*]) in License Fee compensation
shall be waived by Licensee's attainment of a minimum cumulative production
quantity and sales level of royalty bearing TCC packages (for which Licensee
pays Tessera a royalty directly, i.e. based upon this Agreement) on the
following schedule:
------------------------------------------------------------------------------
Deadline Cumulative Production & Sales Quantity Waiver Amount
of Royalty Bearing TCC packages
------------------------------------------------------------------------------
Two years from [*] US$[*]
March 31, 2000
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Three years from [*] US$[*]
March 31, 2000
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Four years from [*] US$[*]
March 31, 2000
------------------------------------------------------------------------------
As Licensee meets the cumulative schedule (shown above) each year, the
amount listed in the "Waiver Amount" column shall be subtracted and waived from
the remaining [*] US DOLLARS due Tessera as a License Fee. If Licensee's
production and sales of royalty bearing TCC packages does not meet the
commitment schedule shown above at a respective Deadline, i.e. the end of a
respective production and sales period, any unpaid or unwaived portion of the
remaining [*] US DOLLAR License Fee shall be immediately due and payable to
Tessera from Licensee.
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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TESSERA CONFIDENTIAL
B. Royalty. In addition to the License Fee, Licensee shall pay running
royalties for the license granted in Paragraph II.A. four times annually (as set
forth in Paragraph V) to Tessera during the term of this Agreement. Licensee
shall pay a starting royalty of [*] (US$[*]) per Billable Pin for TCC packages
made by Licensee hereunder, whether sold, transferred or used internally. After
Licensee has paid to Tessera [*] US DOLLARS (US$[*]) in royalties, the Licensee
shall begin paying a mid-range royalty of [*] (US$[*]) per Billable Pin for TCC
packages made by Licensee hereunder, whether sold, transferred or used
internally. After Licensee has paid to Tessera [*] US DOLLARS (US$[*]) in
cumulative royalties, Licensee shall begin paying a base royalty of [*] (US$[*])
per Billable Pin for TCC packages made by Licensee hereunder, whether sold,
transferred or used internally for the remainder of this Agreement.
Notwithstanding, no running royalty need be paid for scrap TCC packages for
which Licensee provides Tessera a certification from a third party customer that
such third party customer does not use, sell or otherwise transfer such scrap
TCC packages or receive payment or value of any kind therefor.
C. Royalty Adjustments. In making the royalty payments due Tessera,
Licensee may subtract from such royalty payments any preceding royalty payments
for defective royalty bearing TCC packages that are returned to Licensee from
Licensee's customers ("Royalty Adjustment"). However, if at any time such
defective TCC packages are resold by Licensee, Licensee shall pay a royalty to
Tessera for such resold TCC packages, as set forth in this Agreement. Before a
Royalty Adjustment can be so subtracted, Licensee must have originally paid a
royalty on the particular returned TCC package. All Royalty Adjustments must be
specified with the information set forth in Attachment B hereto.
D. Royalty Buy-Down Payment. At any time, Licensee may elect to pay
Tessera [*] US DOLLARS (US$[*]) in which event said Licensee shall notify
Tessera of Licensee's intent to exercise the option under this Paragraph and
tender such payment and henceforth pay royalties at the base royalty level of
[*] (US$[*]) per Billable Pin (as set forth in Paragraph III.B., above). Such
royalty buy-down payment shall not affect the royalties Licensee has paid to
Tessera prior to Licensee's exercise of the royalty buy-down payment set forth
in this Paragraph. Further, such royalty buy down payment shall also not affect
the royalty amounts due Tessera for TCC packages manufactured prior to
Licensee's exercise of the royalty buy-down payment set forth in this Paragraph.
E. Consulting Fee and Deliverables. As consideration for the Consulting
Services, Licensee shall pay to Tessera a consulting fee in the sum of [*] US
DOLLARS (US$[*]) (hereinafter the "Consulting Fee"). The Consulting Fee shall be
paid to Tessera in progress payments for completion of tasks and services as
summarized in the table immediately below and further defined in Attachment D.
Notwithstanding anything herein to the contrary, Licensee agrees upon completion
of the relevant portion of the Deliverables (as set forth in the table below),
Tessera's Consulting Services' obligations with respect to such portions shall
terminate and Licensee shall tender any remaining, unpaid portion of the
Consulting Fee to Tessera with special dispatch. Licensee and Tessera agree to
coordinate all work with Licensee's project manager and engineers to accomplish
the following schedule of objectives:
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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TESSERA CONFIDENTIAL
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Consulting Fee Consulting Fee Consulting Fee Payment Milestones ("Deliverables")
Progress Payment Due
Payments Date
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o Completion of Tessera's on-site assessment of
Licensee's facilities, including written report
delivered to Licensee evaluating adequacy of
Licensee's facilities and factory cleanrooms and
Tessera's recommendations for any necessary
facilities/cleanroom upgrades;
o Delivery of Tessera's written, preliminary
recommendations for factory floor plans, process
flow charts, materials recommendations, and staffing
plans for a single semiconductor package
manufacturing line for the manufacture of
approximately three million TCC packages (excluding
Batch Technology as defined herein) per month or the
best balanced volume at the most effective price (to
be mutually decided by the Parties) to be installed
in Licensee's facility;
o Complete equipment list with draft, sample copies of
purchase orders ready for Licensee's placement,
including whenever possible at least two competing
quotations for each piece of manufacturing
equipment.
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US$[* ] Upon receipt of o Completion of detailed final facilities plans, final
the Deliverables floor plans, and equipment designs by Licensee's
in the table engineers working in cooperation with Tessera's
cell immediately engineers, and placement of all equipment purchase
to the left and orders by Licensee.
above
o Completion of tape design, frame design and
definition of ancillaries for XX Xxxxxxxxxxxxxxxx
X0X0 chip or equivalent chip mutually agreed upon by
the Parties.
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o Equipment installations completed and equipment buy-
off completed as per attachment D for a single
semiconductor package manufacturing line for the
manufacture of approximately three million TCC
packages (excluding Batch Technology as defined
herein) per month or the best balanced volume at the
most effective price (to be mutually decided by the
Parties) at Licensee's facility and such that the
line is ready for production of XX Xxxxxxxxxxxxxxxx
X0X0 chip (or equivalent chip mutually agreed upon
by the Parties). This manufacturing line being ready
for qualification using XX Xxxxxxxxxxxxxxxx X0X0
chip or equivalent chip mutually agreed upon by the
Parties.
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* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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TESSERA CONFIDENTIAL
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US$[*] Upon receipt of o Assembly of three (3) qualification lots at
the Deliverables Licensee's Facility using the ST Microelectronics
in the table cell A4A0 semiconductor package (or equivalent chip
immediately to the package as mutually agreed upon by the Parties) with
left and above minimum yield of [*]% according to the
Characterization Criteria in Attachment D hereto.
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o Notwithstanding the above Deliverables, Tessera shall
have an on-going obligation to cooperate with Licensee
in identifying the steps that Tessera believes are
necessary for Licensee to achieve a [*]% or greater
cumulative manufacturing line yield for the manufacture
of TCC packages. Where reasonably possible, Tessera
agrees to help Licensee achieve such steps; however,
if extensive Tessera assistance is required, Tessera
will xxxx licensee for such additional assistance at
a mutually agreed upon rate.
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Licensee shall promptly pay all invoices owing on the associated Payment Due
Dates, as set forth above. Further, Licensee shall execute and perform all
project orders, change orders, purchase orders, applications for building
permits or easements, or other regulatory request and shall promptly make all
payments necessary in connection therewith or due and owing so that the purpose
of the Consulting Services is not frustrated. Licensee shall assist Tessera by
timely providing Licensee's facilities, manufacturing equipment, necessary
personnel, along with any data, information, and Licensee's approvals which may
be material or otherwise relevant to Tessera's timely performance of the
Consulting Services. Licensee shall work closely with Tessera to accomplish the
mutual objectives hereof.
IV. TAXES
Any taxes imposed by the Republic of Italy based upon payments from
Licensee to Tessera under this Agreement shall be paid in accordance with the
Double Taxation Convention between the United States of America and the Republic
of Italy. In the event that Licensee is required to withhold the taxes from the
payments by Licensee to Tessera hereunder, Licensee shall deduct and pay such
taxes to the tax authorities in the Republic of Italy. Licensee shall promptly
furnish Tessera with the corresponding tax receipts evidencing payments thereof.
Tessera and Licensee recognize that the transactions contemplated hereunder may
qualify for withholding tax exemption or rebate under applicable Republic of
Italy laws and regulations and Licensee agrees, in good faith, that it will use
its best efforts to aid Tessera in obtaining such exemption or rebate.
V. LICENSEE REPORTS AND PAYMENT
A. Payment of Fees, Quarterly Royalty Payments & Reports. Beginning on the
Effective Date of this Agreement, royalties shall be calculated and paid in full
in quarter annual payment periods ending March 31, June 30, September 30 and
December 31 of each year. Beginning with the first such royalty payment,
Licensee shall deliver a written report (as shown in Attachment B) describing
the basis upon and containing the information sufficient to determine the
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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TESSERA CONFIDENTIAL
royalties due Tessera for the applicable payment period. All payments for fees
or royalties under this Agreement shall be made in US Dollars by wire transfer
to Union Bank of California, 00 Xxxxxxx Xxxx., Xxx Xxxx, XX 00000, Account Name:
Tessera, Account No.: 6450148359, Routing No. 000000000, International Swift
Code: XXXXXX00, or such other bank or account as Tessera may from time to time
designate in writing. The payments of royalties and submission of such reports
from Licensee to Tessera under this Paragraph shall be made within forty-five
(45) days from the end of each quarter annual payment period and shall be
considered to be made as of the day on which such payments are received in
Tessera's designated bank account.
VI. TECHNICAL TRANSFERS
A. Tessera Training Services. In addition to granting of the aforesaid
licenses under the Tessera Patents and Technical Information, upon the Effective
Date of this Agreement and the payment of the License Fee described in Paragraph
III.A. above, Tessera will begin to transfer to Licensee the Technical
Information on a mutually agreeable schedule, including certain TCC package
assembly know-how, specifications and Standards for the TCC packages licensed
herein. However, it is understood and agreed by both parties that Licensee will
not require Technical Information transfer from Tessera in order to manufacture
Tape under this Agreement and Tessera shall not transfer such Tape information
to Licensee. For a period of up to twelve (12) months commencing with the
Effective Date of this Agreement, and according to a mutually agreeable time
schedule and manpower assignment schedule, Tessera will make certain of its
engineering staff available at its San Xxxx facilities for transfer activities,
including joint activities with Licensee's engineers, as may be necessary in
accordance with mutual agreement of the parties to successfully complete the
Technical Information transfer; however, Tessera shall not be obligated to
provide more than forty (40) working man days of engineering support during the
first twelve month period. Further, Licensee agrees that the number of actual
working man-days for any training in Tessera's clean room manufacturing assembly
line shall be multiplied by a factor of four (4) and applied against the
remaining training time due Licensee under this Paragraph. Licensee agrees to
pay all reasonable coach class air travel and hotel charges incurred by Tessera
personnel in connection with engineering support performed at any of Licensee's
facilities outside of San Xxxx. Additional engineering interactions, conducted
to collaborate on technical issues of mutual concern, shall be supported by each
party at its own expense. Additional engineering support (not to exceed forty
(40) working days) beyond the initial twelve month period for an additional
twelve (12) month period may be made available, according to a mutually
agreeable time schedule and manpower assignment schedule, at a per diem rate of
US $[*] per support engineer, plus reasonable air travel and hotel charges. Any
support or other services required thereafter may be provided upon terms
mutually agreeable to the parties. Notwithstanding the foregoing, Tessera is
under no obligation to transfer and/or license any information whether
confidential, proprietary or otherwise that it may be prohibited from
transferring to Licensee by contract with a third party or applicable law.
VII. TCC IMPROVEMENT CROSS-LICENSE
A. Tessera Improvements. Tessera will make available TCC package
improvements which have been reduced to practice including changes and
modifications in Standards, methods, materials and specifications relating to
TCC packages during the term of this Agreement. Notwithstanding the foregoing,
Tessera is under no obligation to transfer and/or license any information
whether confidential, proprietary or otherwise that it may be prohibited from
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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TESSERA CONFIDENTIAL
transferring to Licensee by contract with a third party or applicable law.
Notwithstanding any provision to the contrary, Tessera shall not be under any
obligation to transfer or disclose actual patent applications or related
documents to Licensee.
B. Licensee Improvements. Licensee hereby grants to Tessera a world-wide,
fully-paid, non-exclusive, non-sublicensable, non-transferable, perpetual, right
to use Licensee Improvements and Licensee's Patents covering any inventions
contained in such Licensee Improvements to manufacture, have manufactured for
Tessera, use or sell TCC packages.
C. Cross Licensing With Other Tessera Licensees. Licensee agrees to grant
to the other licensees of Tessera on commercially reasonable terms a
non-exclusive, non-transferable, non-sublicensable license under Licensee's
Patents covering any inventions contained in such Licensee Improvements that are
discoverable from an examination of the TCC packages made by Licensee unless
such other licensees refuse to grant to Licensee similar licenses under any of
such other licensees' patents relating to any improvements developed by such
other licensee on similar commercially reasonable terms. In no event shall
Licensee be under any obligation to grant such licenses to other licensees of
Tessera, unless Licensee Improvements are used in IC packages sold externally to
non-Affiliates or proposed by Licensee and adopted for incorporation into a TCC
packaging standard.
D. Joint Improvements. Any improvement that is made through the joint
inventive efforts of Tessera and Licensee shall be deemed a "Joint Improvement"
hereunder and shall be the joint property of both Tessera and Licensee, and both
Tessera and Licensee shall have a fully-paid, non-assessable, transferable,
perpetual, sub-licensable right and license to use such Joint Improvements, but
such right and license shall not include any right of license by implication
with respect to any part of the Tessera Patents. Licensee and Tessera shall
reasonably consult with one another with respect to applying for and maintaining
jointly owned patents with respect to such Joint Improvements at shared expense.
In the event that one party hereto (the "Notifying Party") notifies the other
party that the Notifying Party wishes to apply for or maintain a patent in any
country for any such Joint Improvement and the other party hereto does not
confirm to the Notifying Party, within thirty (30) days thereafter, that such
other party will join in such patent application and share the cost thereof, the
Notifying Party shall have a right, at its own expense, to apply for or maintain
such patent in its own name, in which case such patent shall be the sole
property of the Notifying Party, and the Joint Invention in the country covered
by such patent shall be treated as an improvement made solely by the Notifying
Party, and shall be subject to the provisions of this Agreement covering such
party improvements. The parties hereto shall execute such documents and render
such assistance as may be appropriate to enable the party properly having title
to such improvements to maintain or obtain patents for the same.
VIII. TRADEMARKS & LICENSE NOTICE
A. Trademark Ownership. Licensee acknowledges Tessera's ownership of the
following trademarks: TESSERA BLOCK LOGO, TCC, COMPLIANT CHIP, ZINGER, (mu)BGA,
Micro BGA and F-(mu)BGA (hereinafter "Marks"). Licensee agrees that it will do
nothing inconsistent with such ownership and that all use of the Marks by
Licensee shall inure to the benefit of and be on behalf of Tessera. Licensee
agrees that nothing in this Agreement shall give Licensee any right, title
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TESSERA CONFIDENTIAL
or interest in the Marks other than the right to use the Marks in accordance
with this Agreement to make and sell TCC packages according to the Standards.
B. Trademark License Grant. Subject to the IC packages manufactured
pursuant to this Agreement meeting all of the Standards (as defined in Paragraph
I.K. and listed in Attachment C), Licensee's agreement and compliance with to
other provisions of this Agreement including all attachments hereto, and
Licensee's payment of the fees and royalties stated herein in Paragraph III,
Tessera hereby grants Licensee a non-exclusive, non-transferable,
non-sublicensable limited license to use the Marks to identify and distinguish
Licensee's royalty bearing TCC packages that are sold by Licensee under this
Agreement, subject to the proper use of such Marks (as set forth in this
Paragraph below) and the acknowledgement of ownership of such Marks in
documentation, articles and promotional material; to wit, each such use shall
contain the following text: "_______ (List of the Marks used in the item) are
trademarks of Tessera, Inc." or a suitable variant thereof to account for a
singular use of one or more of the Marks.
C. Trademark Form of Use. Licensee shall use its best efforts to use the
Marks as modifiers in conjunction with generic nouns, e.g. the (mu)BGA(R)
package. Further, all of the Marks, except "Zinger" and "F-(mu)BGA", are
federally registered by the U.S. Trademark Office. As such, Licensee shall use
the "(R)" symbol adjacent the Marks in all titles and headings and other
prominent uses of the Marks and shall also use its best efforts to use the "(R)"
symbol on at least the first and most obvious use of each of the Marks within
the text of any printed material. The terms "Zinger" and "F-(mu)BGA" are common
law trademarks of Tessera. As such, Licensee shall use the "TM" symbol adjacent
this Xxxx in all titles and headings and other prominent uses such Marks and
shall also use its best efforts to use the "TM" symbol on at least the first and
most obvious use of each such xxxx within the text of any printed material.
D. License Notice. Licensee promotional material and advertisements
referring to royalty bearing TCC packages shall include a prominent written
notice that "These products are made under a license from Tessera, Inc.".
IX. MATERIAL SUPPLIERS
Licensee may enter agreements ("Subcontract") with suppliers of Tape, TCMT
and other related packaging materials ("Supplier"), provided that: (a) prior to
any disclosure of Tessera confidential information, Licensee and Supplier shall
execute a Non-Disclosure Agreement having substantially similar terms as
Paragraph XIV herein (Non-Disclosure); (b) Licensee shall ensure that Supplier
receives no property rights to the Technical Information transferred under
Subcontract and that the rights to any improvements to the Technical Information
made by Supplier shall be Licensee Improvements as set forth in this Agreement;
(c) Licensee shall ensure that Supplier respects Licensee's duty to affix the
appropriate notices, trademarks and other designations to each product or
material made using the Technical Information as set forth under this Agreement;
and (d) Licensee shall indemnify and hold harmless Tessera and its successors
and assigns against any breach or any damages, costs, or expenses arising from
or related to any breach by Licensee or Supplier of the foregoing obligations.
Notwithstanding, this Paragraph does not apply to any technology independently
developed by a Supplier.
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TESSERA CONFIDENTIAL
X. TERM AND TERMINATION
A. Term. This Agreement shall become effective on the Effective Date and,
unless earlier terminated as provided for elsewhere in this Agreement, shall
remain in full force until the expiration of the last to expire of any Tessera
Patent.
B. Termination for Breach. Either party may terminate this Agreement due
to the other party's breach of this Agreement, such as failure to perform its
duties, obligations, or responsibilities herein (including, without limitation,
failure to pay royalties and provide reports as set forth herein). The parties
agree that such breach will cause substantial damages to the party not in
breach. Therefore, the parties agree to work together to mitigate the effect of
any such breach; however, the non-breaching party may terminate this Agreement
if such breach is not cured or sufficiently mitigated (to the non-breaching
party's satisfaction) within sixty (60) days of notice thereof.
C. Termination for Assignment. In the event that (i) a party either sells
or assigns substantially all of its assets or business to a third party
("Selling Party") or (ii) a third party acquires more than fifty percent (50%)
of the capital stock entitled to vote for directors of such party ("Purchasing
Party"), the Selling Party shall notify the other party hereto of such sale or
assignment of assets or the Purchasing Party's acquisition. In any case of sale,
assignment or acquisition, the Selling Party shall provide to the other party a
written confirmation from such Purchasing Party stating that such Purchasing
Party shall expressly undertake all the terms and conditions of this Agreement
to be performed by Selling Party. In the event that Licensee is the Selling
Party and the Purchasing Party does not agree to fulfill such obligations under
this Agreement, Tessera shall reserve a right to terminate this Agreement. In
the event Tessera is the Selling Party, the Purchasing Party shall be bound to
the terms and obligations of this Agreement.
D. Termination for Bankruptcy. In the event that one party becomes
insolvent or bankrupt, permanently ceases doing business, makes an assignment
for the benefit of its creditors, commits an act of bankruptcy, commences any
bankruptcy proceedings or other proceedings in the nature of bankruptcy
proceedings, or has commenced against it any bankruptcy proceedings or other
proceedings in the nature of bankruptcy proceedings that are not dismissed
within sixty (60) days, then the other party shall have the right to terminate
this Agreement immediately upon its notice.
E. Any termination of this Agreement pursuant to this Paragraph X shall be
deemed a termination of this Agreement in accordance with its terms (including
termination of any payments of unaccrued royalties to Tessera and any rights of
Licensee to use any Tessera Patent or Technical Information licensed hereunder).
F. Survival Clause. Unless otherwise provided elsewhere in this Agreement,
the following provisions shall survive the termination or expiration of this
Agreement:
1. Licensee's obligation to make payments to Tessera accrued under this
Agreement on or prior to expiration or termination.
2. Licensee's obligation to submit written reports stipulated in
Paragraph V, Licensee Reports and Payment, and to permit the inspection and
audit of its account record stipulated in Paragraph XI, Reasonable Audit.
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TESSERA CONFIDENTIAL
3. Paragraph VII.B., Licensee Improvements
4. Paragraph X, Term and Termination.
5. Paragraph XII, No Warranties
6. Paragraph XIII, Limitation on Damages
7. Paragraph XIV, Non-Disclosure.
8. Paragraph XV, Indemnity
9. Paragraph XVI, Miscellaneous
XI. REASONABLE AUDIT
A. Financial Audit. Upon reasonable written prior notice, Tessera shall
have the right to examine and audit through an independent third party CPA firm,
not more frequently than once per year, all records of Licensee that may contain
information bearing upon the amount of fees payable under this Agreement;
provided, that the said auditor shall have agreed in advance in writing to
maintain in confidence and not to disclose to Tessera or any third party any
Licensee proprietary information obtained during the course of such audit. The
results of any such audit shall be final, and within thirty (30) days after
receiving the auditor's report, Licensee shall make payment to Tessera of any
amount which may be found to be payable, if any. Tessera shall bear the expenses
of such audit examinations unless royalties due and owing to Tessera are
determined by the auditor to be at least five percent (5%) greater than such
similar amounts as calculated and/or paid by Licensee, in which case Licensee
shall bear such expenses.
B. Standards Audit. Prior to the first shipment of TCC packages to a third
party by Licensee upon which Licensee intends to bear the Marks under the
license set forth in Paragraph VIII.B. pursuant to this Agreement, Licensee
shall provide Tessera with sufficient quantities of such packages to enable
Tessera to determine if such packages are in compliance with the Standards
within a industry standard reasonable timeframe. Upon receipt of such packages,
Tessera shall promptly perform the tests set forth in Attachment C and provide a
written report to Licensee detailing the results of the tests so performed.
After the Licensee manufactured TCC packages have passed Tessera's testing
requirements, Licensee may use the Marks as set forth in Paragraph VIII. To
ensure the on-going, future minimum quality and reliability of the TCC packages
sold by Licensee under any of the Marks pursuant to this Agreement, Tessera
shall have a right to perform the tests set forth in Attachment C at any time
during the term of this Agreement upon 60 day written notice by Tessera to
Licensee of Tessera's intention to perform such Standards testing. Upon
Licensee's receipt of such written notice from Tessera, Licensee shall promptly
provide sufficient quantities of TCC packages for such testing. Upon receipt of
such packages, Tessera shall promptly perform the tests and provide a written
report to Licensee detailing the results of the tests so performed.
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TESSERA CONFIDENTIAL
XII. NO WARRANTIES
Licensee acknowledges and agrees that the rights and licenses, Tessera
Patents, Technical Information and specifications granted or otherwise provided
hereunder are provided to Licensee "AS IS", with no warranty of any kind.
TESSERA MAKES NO WARRANTY, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, CONCERNING
THE SUBJECT MATTER OF THIS AGREEMENT, INCLUDING WITHOUT LIMITATION, WARRANTIES
OF FITNESS FOR A PARTICULAR PURPOSE, QUALITY, USEFULNESS OR NONINFRINGEMENT.
Tessera makes no warranty that the Tessera Patents, Technical Information,
specifications or Standards will be sufficient to yield any particular result.
XIII. LIMITATION ON DAMAGES
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR ANY OTHER
PERSON OR ENTITY (UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER
THEORY) FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR
RELATED TO THE SUBJECT MATTER OF THIS AGREEMENT, EVEN IF THE PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR LOSSES.
XIV. NON-DISCLOSURE
A. Confidential Information Definition. "Confidential Information"
includes all information disclosed prior to the expiration or termination of
this Agreement by one party to another hereunder including, without limitation,
ideas, inventions (whether patentable or not), designs, product concepts,
improvements, manufacturing tolerances, quality standards, business strategies,
forecasts, customer lists, product development plans and marketing plans,
provided that such information is designated and marked as being confidential in
nature by the disclosing party at the time of disclosure to the receiving party
and provided further that such information, if disclosed orally, is reduced to
writing, marked as being confidential, and delivered to the receiving party
within thirty (30) days after such disclosure.
B. Exclusions. Notwithstanding, Confidential Information shall not include
any information which: (1) was lawfully in possession prior to receipt from
disclosing party; (2) is or becomes a matter of public knowledge through no
fault of the receiving party; (3) is lawfully obtained by the receiving party
from a third party under no obligation of confidentiality; (4) is independently
invented by the receiving party without reference to the disclosed Confidential
Information; or (5) the receiving party receives prior written consent from the
disclosing party for disclosure of certain Confidential Information to a third
party.
C. Standard of Care. The receiving party shall hold in confidence and
protect the disclosed Confidential Information by using the same degree of care
as they would use to protect their own Confidential Information, but no less
than a reasonable degree of care, to prevent unauthorized use, dissemination, or
publication of the Confidential Information. The parties hereto agree that there
is a duty to promptly advise the disclosing party of any unauthorized disclosure
or use of Confidential Information. The receiving party agrees the damages to
the disclosing party for improper disclosure of Confidential Information will
result in irreparable harm to the disclosing
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TESSERA CONFIDENTIAL
party and that therefore the disclosing party will be entitled to equitable
relief, including but not limited to injunctive relief. Notwithstanding, the
receiving party shall not be liable for any disclosure resulting from the sale
of any physical product or component; further, the receiving party may disclose
the other party's Confidential Information to the receiving party's Affiliates,
Suppliers or consultants where necessary for the manufacture, use or sale of
products by the receiving party so long as a suitable non-disclosure agreement
has been signed between such parties which has substantially similar terms as
this Paragraph XIV.
D. Confidentiality Period. The parties agree that Confidential Information
shall be maintained in confidence by the receiving party for a period of five
(5) years from the date of first disclosure to the receiving party by the
disclosing party and shall not be used by the receiving party except in
furtherance of the rights and licenses granted pursuant to this Agreement.
E. Early Termination & Return of Confidential Information. In the event
this Agreement is terminated for any reason and upon a request by a disclosing
party, the receiving party will promptly return or certify the destruction of
all Confidential Information it received from the disclosing party along with
all copies made by the receiving party. Upon such a request, the disclosing
party's Confidential Information contained on data storage media shall be
certified as being deleted therefrom.
F. Promotional Materials. The parties hereto shall consult with each other
from time to time and mutually approve promotional materials, including samples,
technical data, or otherwise containing any proprietary and/or confidential
information of the parties, for disclosure to customers by either party or
jointly under a mutually agreeable and reciprocal non-disclosure agreement.
G. Breach of Confidentiality. Breach of this Paragraph XIV by either party
shall be deemed sufficient cause for the other party to terminate any further
obligation to make confidential disclosures to the breaching party without
limiting any other remedy at law. If such a breach occurs, the non-breaching
party shall send a written notification to the breaching party. The breaching
party will then have thirty (30) days from the mailing date of the notification
within which to mitigate the effects of the wrongful disclosure amounting to a
breach hereunder. If such actions are sufficient to mitigate the effects of the
wrongful disclosure, the obligation of the non-breaching party to make
confidential disclosures shall resume.
H. Employee Agreements. Both parties hereto represent that all of their
employees, including contract employees, shall have executed agreements
obligating such employees to assign ideas and inventions to their respective
employer prior to having access to Confidential Information received hereunder.
I. Superceding Prior Confidentiality Terms. This supersedes all prior
written or oral understandings or agreements with respect to non-disclosure or
confidentiality issues.
XV. INDEMNITY
A. Licensee agrees to defend, indemnify and hold Tessera harmless from and
against any and all damages, liabilities, costs and expenses (including
reasonable attorney's fees and expenses) arising out of or related to Licensee's
use of Tessera Patents or Technical Information.
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TESSERA CONFIDENTIAL
Notwithstanding, Licensee shall not bear the obligation or expense of defending
the validity of any Tessera Patent. Tessera shall have sole control over and
bear the expense for so defending the validity of the Tessera Patents.
B. Tessera agrees to defend, indemnify and hold Licensee harmless from and
against any and all damages, liabilities, costs and expenses (including
reasonable attorney's fees and expenses) arising out of or related to Tessera's
use of Licensee Improvements. Notwithstanding, Tessera shall not bear the
obligation or expense of defending the validity of any Licensee Patent. Licensee
shall have sole control over and bear the expense for so defending the validity
of the Licensee Patents.
XVI. MISCELLANEOUS
The following additional terms shall apply to this Agreement:
A. Governing Law. This Agreement shall be governed, interpreted and
construed in accordance with the laws of the State of California, irrespective
of choice of laws provisions. Both parties shall use reasonable efforts to
resolve by mutual agreement any disputes, controversies, claims or difference
which may arise from, under, out of or in connection with this Agreement. If
such disputes, controversies, claims or differences cannot be settled between
the parties, any litigation between the parties relating to this Agreement shall
take place in San Jose, California. The parties hereby consent to personal
jurisdiction and venue in the state and federal courts of California.
B. No Waiver. Any waiver, express or implied, by either of the parties
hereto of any right hereunder or default by the other party, shall not
constitute or be deemed a continuing waiver or a waiver of any other right or
default. No failure or delay on the part of either party in the exercise of any
right or privilege hereunder shall operate as waiver thereof, nor shall any
single or partial exercise of such right or privilege preclude other or further
exercise thereof or any other right or privilege.
C. Equitable Relief: Nothing herein shall preclude either party from
taking whatever actions are necessary to prevent immediate, irreparable harm to
its interests. Otherwise, these procedures are exclusive and shall be fully
exhausted prior to the initiation of any litigation.
D. Notices. All notices, required documentation, and correspondence in
connection herewith shall be in the English language, shall be provided in
writing and shall be given by facsimile transmission or by registered or
certified letter to Tessera and Licensee at the addresses and facsimile numbers
set forth below:
Tessera: Tessera, Inc.
0000 Xxxxxxx Xx.
Xxx Xxxx, Xxxxxxxxxx 00000
Facsimile No.: 000-000-0000
Attn.: Chief Executive Officer
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TESSERA CONFIDENTIAL
Licensee: EEMS Italia, SpA
Xxxxx Xxxxx Xxxxxxx
000000 Xxxxxxxxxxx, XX
Facsimile No.: 390-746-604-262
Attn.: President
Either Party may change its address and/or facsimile number by giving the
other party notice of such new address and/or facsimile number. All notices if
given or made by registered or certified letter shall be deemed to have been
received on the earlier of the date actually received and the date three days
after the same was posted and if given or made by facsimile transmission shall
be deemed to have been received at the time of dispatch, unless such date of
receipt is not a business day, in which case the date of deemed receipt shall be
the next succeeding business day.
E. Documentation Managers. Both Licensee and Tessera shall designate a
Documentation Manager to perform the task of logging and tracking the
confidential documents transferred between the companies. If possible, each
transfer of confidential information should be first transferred between the
respective Documentation Managers before disclosure in a meeting or via
mail/fax. If the information is first disclosed between representatives of the
parties, an effort should be made to send a copy of the disclosed information to
the receiving party's Documentation Manager along with the date of the
disclosure. Tessera's Documentation Manager is Xxxxxxxxxxx X. Xxxxxxx, Vice
President and General Counsel and may be contacted at the Tessera fax and street
address. Licensee's Documentation Manager is Enzo D'Antonio, President and may
be contacted at Licensee's fax and street address. Either party may change its
Documentation Manager or the associated address and/or facsimile number by
giving the other party notice of such new information.
F. Invalidity. If any provision of this Agreement is declared invalid or
unenforceable by a court having competent jurisdiction, it is mutually agreed
that this Agreement shall endure except for the part declared invalid or
unenforceable by order of such court. The parties shall consult and use their
reasonable efforts to agree upon a valid and enforceable provision which shall
be a reasonable substitute for such invalid or unenforceable provision in light
of the intent of this Agreement.
G. Force Majeure. Neither party shall be liable for any failure to perform
or for any delay in performance of any obligation under this Agreement caused by
circumstances beyond its reasonable control including, but not limited to, fire,
storm, flood, earthquake, explosion, war, labor disputes, acts of God, acts of
any national, state, or local government authority, and judicial action,
provided that the delayed party: (i) gives the other party written notice of
such cause promptly, and in any event within fifteen (15) days of discovery
thereof; and (ii) uses its reasonable efforts to correct such failure or delay
of its performance. If a party's performance is delayed under this Paragraph
more than sixty (60) days after the date when such performance was due, the
parties shall negotiate in good faith (i) to amend the delayed obligation to
accommodate the force majeure event, (ii) to delete the delayed obligation if
such deletion will not affect the validity or enforceability of the remainder of
this Agreement, provided such amendment or deletion complies with the intent of
the parties as stated herein, or (iii) to terminate this Agreement (as per
Paragraph X.B., above) upon the mutual agreement of the parties.
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TESSERA CONFIDENTIAL
H. Assignment. Neither party may assign this Agreement or any of its
rights or obligations hereunder without the prior written consent of the other
party.
I. No Agency. Nothing in this Agreement or any Attachment hereto shall be
construed to deem either party as agent for the other.
J. Export Regulations. Both parties shall comply with the laws and
regulations of the government of the United States and of any other country as
relevant to each party hereto relating to the export of commodities and
technical data.
K. Section Headings. The headings and captions used herein shall not be
used to interpret or construe this Agreement.
L. Entire Understanding. This Agreement embodies the entire understanding
between the parties relating to the subject matter hereof, whether written or
oral, and there are no prior representations, warranties or agreements between
the parties not contained in this Agreement. Any amendment or modification of
any provision of this Agreement must be in writing, dated and signed by both
parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the date first above written.
TESSERA, INC. EEMS ITALIA, SPA
By: /s/ XXXXX XxXXXXXXXX By: /s/ ENZO D'ANTONIO
------------------------------ ------------------------------
Print Name: Xxxxx XxXxxxxxxx Print Name: Enzo D'Antonio
---------------------- ----------------------
Title: CEO Title: CEO
---------------------------- ----------------------------
Date: Sept 23, 1999 Date: September 24, 1999
----------------------------- -----------------------------
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