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EXHIBIT 10.21
TESSERA, INC.
THIRD ADDENDUM TO
TCC MASTER LICENSE AGREEMENT
This Third Addendum Agreement ("Third Addendum") entered into between TESSERA,
INC., a corporation organized under the laws of Delaware ("Tessera") and SHINKO
ELECTRIC INDUSTRIES CO., LTD, a corporation organized under the laws of Japan
("Licensee") shall be effective as of the last date signed below. The parties to
this Third Addendum agree to the following terms:
I. SUPPLEMENT TO AGREEMENT: This Third Addendum merely supplements certain
provisions of the TCC Master License Agreement ("Agreement"), entered into on
January 20, 1994 and the Addendum to the TCC Master License Agreement, entered
into on November 22, 1994 ("First Addendum") and the Second Addendum to the TCC
Master License Agreement ("Second Addendum") entered into on July 13, 1995
(collectively "Combined Agreements"). All provisions, including Definitions,
contained within the Combined Agreements are therefore incorporated herein. In
the event any of the provisions of the Combined Agreements and this Third
Addendum conflict, the provisions contained in this Third Addendum shall
supersede the conflicting provisions. The modifications to the Combined
Agreements as set forth herein are pursuant to the Equitable License provision
of the Agreement and are substantially similar to the terms currently being
negotiated with Amkor Electronics.
II. DEFINITIONS:
A. The term "Batch Technology" as used herein means Technology including:
(i) any method or result of U.S. Patent Serial Number 08/271,768 (and related
Patents) for bonding or connecting one or more substantially planar
electrically conducting flexible elements to electrical contact(s) on a
substantially planar electrical element such as a semiconductor integrated
circuit, undiced IC wafer, or interconnect substrate, and then 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 one or more
flexible conducting elements on a flexible dielectric film and 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 batch processing
method for forming or producing and/or connecting flexible electrical leads of a
TCC package. The parties expressly agree that the term "Wafer Level Packaging
services", as it is defined in the Second Addendum, is included in Batch
Technology. The parties further expressly agree that any TCC package made and/or
connected individually on an IC wafer before dicing by traditional wire bonding
methods and/or tape automated bonding ("TAB") gang bonding methods, is NOT
included in Batch Technology.
B. [*].
* 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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II. LICENSEE RIGHTS - BATCH TECHNOLOGY EXCLUDED. Notwithstanding any language to
the contrary, Batch Technology is excluded from the scope of the licensed
Technology in this Third Addendum and the prior Combined Agreements, and
Licensee's rights herein expressly exclude any right or license to make, use or
sell any TCC or related IC package manufactured by or incorporating Batch
Technology.
III. ROYALTIES:
A. Base Royalty. As consideration for the modifications to the Combined
Agreements contained herein this Third Addendum, Licensee shall pay a total base
royalty to Tessera in the amount of [*] PERCENT ([*]%) [*] related to TCC
packages licensed hereunder.
B. Sliding Royalty Scale. Royalty payments due Tessera hereunder shall be
adjusted by multiplying Licensee's total base royalty calculated under Paragraph
A. above, by a [*] ([*]) until Licensee has paid Tessera [*] US DOLLARS (US$[*])
in aggregate royalties, and then by a factor of [*] ([*]) until Licensee has
paid Tessera an additional [*] US DOLLARS (US$[*]) in aggregate royalties.
DISCOUNT FOR PREPAYMENT: Licensee may elect to pay Tessera [*] US DOLLARS
(US$[*]) in lieu of any such Sliding Scale Royalties, in which event said
Licensee will notify and tender such payment to Tessera within six (6) months
from the Effective Date of this Third Addendum.
IV. ENTIRE UNDERSTANDING: This Third Addendum 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 Third Addendum. Any amendment or modification
of any provision of this Third Addendum must be in writing, dated and signed by
both parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this Third
Addendum as of the last date signed below.
TESSERA, INC. SHINKO ELECTRIC INDUSTRIES CO., LTD.
By: /s/ XXXX X. XXXXX By: /s/ SUGIO UCHIDA
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Name: XXXX X. XXXXX Name: SUGIO UCHIDA
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Title: PRESIDENT Title: EXECUTIVE MANAGING DIRECTOR
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Date: 5-28-96 Date: 5-31-'96
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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 LOGO]
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0000 Xxxxxxx Xxxxx Xxx Xxxx, XX 00000 Phone: (000) 000-0000 Fax: (000) 000-0000
FEB 10, 1997
VIA FACSIMILE
Xx. Xxxxxxxx Xxxxxxxxxx
Program Director - Marketing and Sales Planning Div.
Shinko Electric Industries Co. Ltd.
00 Xxxxxxxx-Xxxxx
Xxxxxx-xxx, 000-00 Xxxxx
RE: TCC License
Dear Takayanagi-San:
Xx. Xxxxx has asked me to follow-up up his recent discussion with you in Japan
regarding the TCC license terms between Tessera and Shinko Electric.
As you know, the Third Addendum to the TCC Master License Agreement gave Shinko
the option to pay Tessera [*] US DOLLARS (US$[*]) in lieu of any Sliding Scale
Royalties, as defined therein. However, this option only remained open for six
months from the date the Third Addendum was signed.
This option has lapsed; however, in the spirit of good will between our
companies, Xx. Xxxxx has authorized me to send this letter extending to Shinko
the option, for an indefinite period of time, to pay Tessera the [*] US DOLLARS
(US$[*]) in lieu of such Sliding Scale Royalties, in which event Shinko shall
notify Tessera and tender such payment and henceforth pay royalties at the [*]
without any such Sliding Scale Royalties. Let me be clear that the lowering of
royalties upon such payment has no retroactive effect on the amount of royalties
paid previous to such payment.
Please contact me if you have any comments or questions regards this matter.
Best regards,
/s/ XXXXXXXXXXX X. XXXXXXX
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Xxxxxxxxxxx X. Xxxxxxx
Director of Intellectual Property
* 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.
