Exhibit 10.9
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
TECHNOLOGY LICENSE AGREEMENT
------------------------------------
This Technology License Agreement ("Agreement") is made as of this 29th day
of June, 1990 by and between WEITEK Corporation, a corporation with a
principal place of business at 0000 Xxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx
00000 ("WEITEK") and MIPS Computer Systems, Inc., a California corporation
with a principal place of business at 000 xx Xxxxxx Xxxxx, Xxxxxxxxx,
Xxxxxxxxxx 00000 ("MIPS"). WEITEK and MIPS are sometimes referred to singly
as "party" and collectively as the "parties."
1. DEFINITIONS
The following terms shall have the following meanings for purposes of this
Agreement:
1.1 ASP - means the average selling price during the fiscal quarter for
which compensation is being computed. The ASP shall be computed by dividing
the Net Revenue received by WEITEK from the sale of each type of MIPS Chip
(on a component basis) or Modified MIPS Chip (on a component basis) by the
total number of each type of MIPS Chip or Modified MIPS Chip thereof sold
during the applicable fiscal quarter.
1.2 DESIGNATED PROCESS TECHNOLOGY - means any technology for the design
and manufacture of integrated circuit products that incorporates a type of
circuit structure containing both p-channel and n-channel MOS devices on the
same silicon substrate (CMOS OR Bi-CMOS).
1.3 EFFECTIVE DATE - means the date first above written.
1.4 GENERATION - means a MIPS Architecture and its Lineal Descendants, a
MIPS Chip and its Lineal Descendants and/or a WEITEK Chip and its Lineal
Descendants, all in the same Designated Process Technology.
1.5 INTERNAL USE - means the use of a product (whether hardware,
software or combination thereof) to perform its intended and customary
function by and for the benefit of the party using the product and not for
sale, distribution or sublicensing to others. Internal Use includes, but is
not limited to, evaluation, development, maintenance, customer support,
employee training and the like.
1.6 LINEAL DESCENDANT - means changes and/or modifications within the
same Process Technology of MIPS Architecture, MIPS Chip, or WEITEK Chip
containing common design parameters and substantially similar functions
and/or capabilities. Such changes and/or modifications includes as examples,
without limitation, whether singly or in combination, such items as changes
to improve manufacturability, process yield, or reliability, changes to fix
functional design errors, and changes of speed and/or pin-out.
1.7 MIPS - means MIPS Computer Systems, Inc., a California corporation
and each of its subsidiaries which, except for MIPS Computer Systems, Inc.,
50% or more of the voting stock or controlling equity is directly owned by
MIPS Computer Systems, Inc., or 100% of the voting stock or controlling
equity interest of which is directly owned by a corporation which is itself
at least 50% or more owned by MIPS Computer Systems, Inc.
1.8 MIPS-BASED SYSTEM - means a computer system containing a CPU which
employs MIPS Architecture and/or MIPS Instruction Set.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 1 -
1.9 MIPS ARCHITECTURE - means the organization, structure, and content
of any CPU or CPU support chips, or portions thereof, as designed and
enhanced by MIPS, including but not limited to, MIPS Instruction Set (for
example, the architecture set forth in the book entitled, MIPS RISC
ARCHITECTURE) and interface specifications.
1.10 MIPS CHIP(S) - mean(s) (a) the CPU product(s) designed and/or
modified by or on behalf of MIPS; (b) the CO-processor product(s) designed
and/or modified by or on behalf of MIPS to connect with and operate with the
CPU'S; and (c) any other integrated circuit product(s) designed, developed,
and/or acquired by MIPS during the Term of this Agreement which (i) is
offered by MIPS for sale on a component basis to third parties in the
ordinary course of business or (ii) is offered to other MIPS architecture
licensees for manufacture and sale on a component basis to third parties in
the ordinary course of business. Notwithstanding the foregoing, nothing in
this definition shall require MIPS, or be deemed to create an obligation on
the part of MIPS, to create, develop, or acquire any particular MIPS Chip
referred to above. MIPS Chips do not include those custom MIPS Chips designed
by or on behalf of MIPS exclusively for a third party.
1.11 MIPS COMMERCIAL DOCUMENTATION - means the manuals, user guides, and
other documentation relating to MIPS Architecture, MIPS Chips, MIPS
Commercial Software or MIPS Systems, as applicable, including all
modifications, Patches, New Releases, Updates, derivations of and any other
changes thereto, whether in written, graphical, human readable or
machine-readable form, and on any medium, when MIPS offers for sale or
distribution to third parties in the ordinary course of business, as set
forth in MIPS then current price list or similar publication.
1.12 MIPS COMMERCIAL SOFTWARE - means the software in both source code
form and object code form owned, licensed or otherwise acquired by MIPS as of
the Effective Date or thereafter during the Term including all modifications,
Patches, New Releases, Updates, derivations of and any other changes thereto,
whether in written, graphical, human readable, machine-executable or
machine-readable form, and on any medium, which MIPS offers for licensing by
third parties in the ordinary course of business, as set forth in MIPS then
current price list or similar publication. MIPS Commercial Software includes
MIPS Binary Software and MIPS Source Code Software.
1.13 MIPS DOCUMENTATION - means MIPS Commercial Documentation and MIPS
Architecture License Documentation.
1.14 MIPS INSTRUCTION SET - means all or a portion of MIPS instruction
set as implemented in MIPS Chips, as applicable (for example, the instruction
set specified in the book entitled "MIPS RISC ARCHITECTURE").
1.15 MIPS ARCHITECTURE LICENSE DOCUMENTATION - means the manuals, user
guides and other documentation relative to the MIPS Architecture, MIPS Chips
or MIPS Software, as applicable, including all modifications, Patches, New
Releases, Updates, derivations of and other changes thereto, whether in
written graphical, human readable or machine readable form, and on any
medium, which MIPS makes available to architecture licensees, which is not
set forth in MIPS then current price list or similar publication and which is
provided by MIPS to WEITEK for any of the activities contemplated to be
performed by WEITEK pursuant to this Agreement.
1.16 MIPS ARCHITECTURE LICENSE SOFTWARE - means the software in source
code form or object code form owned, licensed or otherwise acquired by MIPS
as of the Effective Date or thereafter during the Term including all
modifications, Patches, New Releases, Updates, derivations of and any other
changes thereto, whether in written, graphical, human readable or
machine-readable form, and on any medium,
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 2 -
which MIPS licenses to architecture licensees, provided by MIPS to WEITEK for
any of the activities contemplated to be performed by WEITEK pursuant to this
Agreement.
1.17 MIPS BINARY SOFTWARE - means MIPS Commercial Software in object code
form (also called binary or executable code).
1.18 MIPS SOFTWARE - means MIPS Commercial Software and MIPS Architecture
License Software.
1.19 MIPS SOURCE CODE SOFTWARE - means MIPS Commercial Software in source
code form, or in a form from which a human readable form can be produced
without reverse compilation.
1.20 MIPS SYSTEM - means a computer system manufactured by or on behalf
of MIPS and containing one or more MIPS Chips.
1.21 MIPS TECHNOLOGY - means all patents (including utility models),
copyrights, mask work rights, trademarks, trade secrets and know-how or
portions thereof owned, licensed or otherwise acquired by MIPS as of the
Effective Date or thereafter during the Term with respect to the technology
licensed by MIPS to WEITEK pursuant to this Agreement. MIPS Technology
includes MIPS Architecture, MIPS Chips, MIPS Documentation, MIPS Software and
MIPS Systems.
1.22 MODULE - means two (2) or more integrated circuit products on a
substrate.
1.23 NET REVENUE - means the gross revenue received by WEITEK for
products incorporating and/or based upon MIPS Technology which are sold,
licensed or otherwise distributed by or on behalf of WEITEK, accounted for in
accordance with generally accepted accounting principles consistently
applied, and after deduction for discounts, returns, freight, insurance,
taxes and duties, if any, and after deduction of payments for any
compensation or other consideration payable by WEITEK to a third party upon
the grant of sublicenses with respect to MIPS Technology or prerequisites
thereto (such as an AT&T UNIX license).
1.24 NEW RELEASE - means any revision of MIPS Documentation and/or MIPS
Software which contains major enhancements and which may include new features
and/or new functions and which is offered for sale or license by MIPS on a
general commercial basis in the ordinary course of business.
1.25 PATCHES - means any revision to MIPS Documentation and/or MIPS
Software which contains bug fixes only and which contains no enhancements and
no new features or new functions.
1.26 RUNTIME - means any software which (a) has been compiled, assembled
or interpreted by WEITEK or any of its sublicensees using MIPS Commercial
Software, or (b) incorporates a runtime library portion of a MIPS compiler or
substantial portion thereof, or (c) incorporates Systems Programmer's Package
(SPP) or a substantial portion thereof.
1.27 SOURCE MATERIALS - means MIPS Source Code Software, MIPS
Architecture License Software and/or MIPS Architecture License Documentation.
1.28 TERM - means the term of this Agreement, commencing upon the
Effective Date and extending for a period of time of five (5) years
thereafter, unless terminated or cancelled sooner in accordance with the
provisions of this Agreement.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 3 -
1.29 UPDATE(S) - means any revision to MIPS Documentation and/or MIPS
Software which contains Patches and certain enhancements and/or new features
and/or new functions but is not a sufficient revision to constitute a New
Release.
1.30 WEITEK - means WEITEK Corporation, a California corporation and each
of its subsidiaries which, except for WEITEK Corporation, 50% or more of the
voting stock or controlling equity is directly owned by WEITEK Corporation,
or 100% of the voting stock or controlling equity interest of which is
directly owned by a corporation which is itself at least 50% or more owned by
WEITEK Corporation.
1.31 WEITEK CHIP(S) - mean(s) an integrated circuit product which
embodies or is based upon part or all of MIPS Technology licensed by MIPS to
WEITEK and implemented in Designated Process Technology and which is not
pin-compatible with MIPS Chips.
2. TECHNOLOGY LICENSE
2.1 ARCHITECTURE
2.1.1 XXXXX 0 XXXXXXXXXXXX XXXXXXX - XXXXXXXXX XXXX. Subject to
the terms and conditions of this Agreement, upon payment by WEITEK
to MIPS of the fees set forth in section 3.1.1, below, and subject
to payment to MIPS of the royalties set forth in section 3.1.2,
below, MIPS shall grant to WEITEK and WEITEK shall accept a
worldwide, personal, non-exclusive, non-transferable,
royalty-bearing (as set forth in section 3, below), non-assignable
and revocable right and license to use (without the right to
sublicense, transfer or convey such rights, in whole or in part)
MIPS Technology, only as set forth in Exhibit A, for the purposes of
designing, modifying, manufacturing, having manufactured, marketing,
selling and otherwise disposing of integrated circuits which embody
or are based upon part or all of MIPS Technology licensed by MIPS to
WEITEK and implemented in Designated Process Technology and which
are not pin-compatible with MIPS Chips, in WEITEK products, as
components or Modules. The deliverables set forth on Exhibit A are
the same as those provided to all Level 2 Architecture Licensees
for the same Generation in the same Designated Process Technology.
MIPS agrees, during the Term of this Agreement, to provide to WEITEK
the deliverables which are provided to Xxxxx 0 Xxxxxxxxxxxx
Xxxxxxxxx for the same Generation in the same Process Technology
provided that WEITEK is entitled to receive said deliverables under
the terms of this Agreement. WEITEK Chips shall not be eligible for
certification by MIPS. WEITEK shall bear the entire expense of all
development, manufacturing, sale and support activities and WEITEK
shall be responsible for performing all work involved. When
referring to WEITEK Chips, WEITEK shall state that such chips
incorporate MIPS Architecture.
2.1.1.1 LINEAL DESCENDANTS. Subject to the terms and
conditions of this Agreement, MIPS shall, [*] provide to
WEITEK all rights, licenses, and deliverables with respect
to Lineal Descendants of the then current Generation of
MIPS Chip licensed by MIPS to WEITEK and for which WEITEK
has paid a fee.
2.1.1.2 NEW GENERATIONS. Subject to the terms and
conditions of this Agreement, upon payment to MIPS of the
fees set forth in section 3.1.1.2, below, and subject to
payment to MIPS of applicable royalties as set forth in
section 3.1.2, MIPS shall provide to WEITEK all rights,
licenses and deliverables for new Generations of MIPS Chips
after the first Generation licensed by WEITEK, provided
that WEITEK has acquired and paid for each previous
Generation.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 4 -
2.1.1.3 NEW PROCESS TECHNOLOGIES. Subject to the terms
and conditions of this Agreement, upon payment to MIPS of
the fees set forth in section 3.1.1.3, below, subject to
payment to MIPS of applicable royalties as set forth in
section 3.1.2, and subject to such additional terms and
conditions as are necessary as a function of technical
aspects of the proposed new process technology
implementation. MIPS shall provide to WEITEK all rights,
licenses, and deliverables regarding any then current
Generation of MIPS Architecture implemented in a process
technology other than Designated Process Technology.
2.1.2 R5000 OPTION
Subject to the terms and conditions of this Agreement, and upon payment
of the fees set forth in section 3.2, below, MIPS shall grant to WEITEK
and WEITEK shall accept the same rights, licenses and obligations with
respect to the deliverables set forth in Exhibit B, as those rights and
licenses set forth in section 2.1.1, above.
2.1.3 ARCHITECTURE MAINTENANCE
Subject to the terms and conditions of this Agreement and upon payment
of the fees set forth in section 3.3, below, MIPS shall provide WEITEK
with corrections and modifications to the Exhibit A deliverables and,
if applicable, the Exhibit B deliverables, for the Designated Process
Technology which MIPS makes available in the ordinary course of
business to its licensees.
2.2 SOFTWARE LICENSE
2.2.1 MIPS SOURCE CODE SOFTWARE. Subject to the terms and
conditions of this Agreement and the MIPS Source Code Use License
Agreement, and upon payment by WEITEK to MIPS of the applicable
license fees, MIPS shall grant to WEITEK and WEITEK shall accept a
world-wide, personal, non-exclusive, non-transferable,
non-sublicenseable, non-assignable and revocable right and license,
without any right to market, sublicense or distribute, to use, copy,
and modify (except as set forth in section 2.2.5, below) for
Internal Use only and only with MIPS Chips in Designated Process
Technology and/or MIPS Systems, certain MIPS Source Code Software as
set forth on the Source Code Use License Agreement. WEITEK shall be
entitled to market, sublicense and distribute WEITEK modifications
to MIPS Source Code Software licensed by WEITEK from MIPS Integrated
with MIPS Source Code Software subject to each sublicensee (a)
having signed a MIPS Source Code Use License Agreement which is then
currently in full force and effect and (b) having licensed the
equivalent release of MIPS Source Code Software from MIPS. WEITEK
may request that MIPS license MIPS Source Code Software to certain
WEITEK customers on MIPS then current terms, conditions and prices.
Modified MIPS Binary Software may be generated by MIPS Source Code
Software modified by or on behalf of WEITEK for use in and sublicense
in accordance with section 2.2.2, below and in connection with WEITEK
products containing WEITEK Chips in Designed Process Technology (except
as specified in section 2.2.5 below).
2.2.2 MIPS BINARY SOFTWARE. Subject to the terms and conditions
of this Agreement and the MIPS Binary Software License Agreement and
upon payment by WEITEK to MIPS of the applicable license fees,
distribution fees and sublicense fees. MIPS shall grant to WEITEK
and WEITEK shall accept a world-wide, personal, non-exclusive,
non-transferable, fee-bearing, non-assignable and revocable right
and license to use for Internal Use and for sublicensing, copy for
Internal Use and for sublicensing, market, grant non-exclusive
sublicenses for use and distribute
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 5 -
certain MIPS Binary Software, as set forth on the Binary Software
License Agreement all for use only with WEITEK Chips in Designated
Process Technology and/or MIPS-based Systems.
2.2.3 FUTURE SOFTWARE RELEASES. Updates and Patches to MIPS
Source Code Software modified by WEITEK may be distributed without
charge to sublicensees by WEITEK provided (1) WEITEK has a then
current MIPS Source Code Use License Agreement with rights to
distribute Binaries of such software and a then current Software
Maintenance Agreement with MIPS for the specific MIPS Software at
the equivalent release level, (2) the sublicensee has signed a MIPS
Source Code Use License Agreement which is then currently in full
force and effect and (3) the sublicensee has licensed the equivalent
release of unmodified MIPS Source Code Software from MIPS.
Updates and Patches to MIPS Binary Software may be distributed to
WEITEK's sublicensees, without charge to WEITEK, provided WEITEK has
the then current release of MIPS Binary Software and a Software
Maintenance Agreement with MIPS regarding such software which is then
currently in full force and effect.
New Releases, distributed by WEITEK to new sublicensees or to
sublicensees who do not have the next prior release, are subject to the
full New Release fee less discounts applicable to WEITEK, New Releases
supplied to current sublicensees who have the next prior release are
supplied as upgrades to New Releases at a fee, which is a percentage of
the New Release fee (less discounts applicable to WEITEK) specified in
MIPS then current price list.
2.2.4 MIPS ARCHITECTURE LICENSE SOFTWARE. Subject to the terms
and conditions of this Agreement and the Source Code Use License
Agreement and upon payment by WEITEK to MIPS of the compensation set
forth in section 3.1.1, MIPS shall grant to WEITEK and WEITEK shall
accept a worldwide, personal, non-exclusive, non-transferable,
non-sublicenseable, non-assignable and revocable right and license
without any right to market, distribute or sublicense, to use, copy
and modify (except as set forth in section 2.2.5, below), all for
Internal Use only and only with MIPS Systems, certain MIPS
Architecture License Software, as set forth in Exhibit A.
2.2.5 LIMITATIONS. Neither WEITEK nor any sublicensee of WEITEK
shall be authorized or permitted, unless MIPS has agreed in writing
in advance, to (a) sublicense or distribute Source Materials, (b)
operate (including, without limitation, store, compile and/or edit)
Source Materials on systems other than MIPS Systems and/or MIPS
Chips in Designated Process Technology, (c) rehost Source Materials
with the result that they operate with systems other than MIPS
Systems and/or MIPS Chips in Designated Process Technology, (d)
retarget Source Materials with the result that Binaries may be
generated which are capable of operating with systems other than
MIPS Systems and/or MIPS Chips in Designated Process Technology
and/or MIPS-based Systems, (e) modify Source Materials or Binaries
in order to incorporate any portion of MIPS compiler back end
including the optimizer with any compiler front end other than the
compiler front ends licensed by WEITEK from MIPS, (f) retarget
System Programmer's Package with the result that it models or
simulates any computer architecture other than MIPS Architecture,
(g) modify, adapt, reverse engineer, decompile, disassemble or
create derivative works based on MIPS Binary Software, (h) in lieu
of a sublicense, lease, rent, loan, or sell MIPS Binary Software on
a temporary or permanent basis or, (i) sublicense, distribute or
make available to any third party Source Materials.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 6 -
2.3 DOCUMENTATION RIGHTS
2.3.1 MIPS ARCHITECTURE LICENSE DOCUMENTATION. Subject to the
terms and conditions of this Agreement and upon payment by WEITEK to
MIPS of the fees set forth in section 3.1.1 MIPS shall grant to
WEITEK and WEITEK shall accept a worldwide, personal, non-exclusive,
fully-paid, non-transferable, non-assignable and revocable right and
license, to use, modify, copy and distribute, all for Internal Use
only, without any right to market, copy or distribute outside of
WEITEK, MIPS Architecture License Documentation as set forth in
Exhibit A.
2.3.2 MIPS COMMERCIAL DOCUMENTATION. Subject to the terms and
conditions of this Agreement and upon payment by WEITEK to MIPS of
the fees set forth in section 3.1.1, MIPS shall grant to WEITEK and
WEITEK shall accept a world-wide, personal, fully-paid,
non-exclusive, non-transferable, non-assignable and revocable (only
in accordance with section 8) right and license, to use, modify and
distribute all for Internal Use and for distribution outside of
WEITEK. MIPS Commercial Documentation, WEITEK shall be responsible
for creating and publishing in a timely manner technical
documentation to assist WEITEK's customers.
2.4 UPDATES/MAINTENANCE/SUPPORT
2.4.1 ARCHITECTURE LICENSE. MIPS shall, at no additional charge
to the compensation set forth in section 3.1.1, provide to WEITEK,
for one (1) year from the Effective Date, all corrections and
modifications to the same Generation of MIPS Architecture licensed
by MIPS to WEITEK which MIPS makes available in the ordinary course
of its business to its architecture licensees for Designated Process
Technology.
Upon payment of the fees set forth in section 3.3, MIPS shall provide
to WEITEK, updates and maintenance support to the Deliverables set
forth in Exhibit A, with respect to each Generation of MIPS
Architecture for Designated Process Technology for which WEITEK has
paid the applicable fee.
2.4.2 ARCHITECTURE LICENSE SOFTWARE. WEITEK shall bear the sole
and complete responsibility for maintaining and supporting MIPS
Architecture License Software unless the parties mutually agree
otherwise. MIPS shall promptly after availability, provide to WEITEK
Updates for MIPS Architecture License Software, in accordance with
section 2.4.1 above.
2.4.3 MIPS SOFTWARE. Subject to the terms and conditions of this
Agreement and MIPS then current standard Software Maintenance
Agreement and upon payment by WEITEK to MIPS of the fees set forth
in section 3.4.4, MIPS shall periodically provide to WEITEK all
Patches and Updates made by MIPS to MIPS Software licensed by WEITEK
(except as otherwise specified herein).
2.5 RESERVATION
MIPS reserves all rights and licenses not expressly granted to WEITEK.
2.6 NO CONTEST
WEITEK shall not contest or take any action to impair MIPS ownership or the
validity of MIPS Technology for which WEITEK is a licensee or holder of rights
under this Agreement.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 7 -
2.7 NO SUPPORT
MIPS shall have no responsibility or obligation, unless specifically provided
otherwise herein or unless otherwise mutually agreed, to provide any maintenance
or support whatsoever to any person or entity, including WEITEK, regarding (a)
MIPS Chips, (b) WEITEK Chips, (c) MIPS Architecture License Software, (d)
WEITEK's modifications to MIPS Commercial Software, (e) WEITEK's modifications
to MIPS Commercial Documentation, (f) WEITEK's modifications to MIPS
Architecture License Documentation, (g) any other modification by or on behalf
of WEITEK to MIPS Technology, (h) WEITEK software or (i) third party products
including software.
2.8 WEITEK PURCHASES OF MIPS PRODUCTS
MIPS agrees to negotiate with WEITEK in good faith a Volume Purchase Agreement.
Said agreement will allow WEITEK to purchase MIPS Products at the then current
discount levels offered to other Level 2 Architecture Licensees purchasing under
similar terms and conditions.
3. COMPENSATION
3.1 LEVEL 2 ARCHITECTURE LICENSE - COMPONENT SALES. In consideration of the
Level 2 Architecture License-Component Sales set forth in section 2.1.1, above,
WEITEK shall pay MIPS as follows:
3.1.1 TECHNOLOGY LICENSE FEE
3.1.1.1 INITIAL FEE. WEITEK shall pay MIPS a
non-refundable license fee of [*] of which shall
constitute prepaid royalties and such [*] shall be payable
within forty-five (45) days of the Effective Date, [*] shall
constitute a non-refundable licensee fee, in payment of
which MIPS shall accept [*] in engineering services from
WEITEK and a credit in an amount of [*] from WEITEK which
shall be applied pro-rata as payment against [*] of
WEITEK products purchased by MIPS for use in MIPS Systems.
This credit and the right to take engineering services
shall expire at a date to be mutually agreed but in no
event later than the Term of this Agreement.
WEITEK and MIPS shall mutually agree upon the scope of the
work to be performed by WEITEK and schedule therefor.
Engineering services performed by WEITEK shall be valued at
[*] per day in 1990 and 1991. This value shall increase by
10% per year after 1991. These services shall be performed
by senior architecture, software, logic or circuit design
engineers, or others as may be mutually agreed. Both
parties agree that it is preferable that MIPS purchase
WEITEK product rather than WEITEK services and MIPS agrees
to use its best efforts to achieve this objective. Despite
using its best efforts, if MIPS is unable to purchase [*]
of WEITEK products by December 31, 1992, then MIPS shall
have the right to accept additional engineering services in
lieu of any unutilized portions of the [*] WEITEK product
purchase credit. All work products shall be subject to
reasonable acceptance by MIPS.
To the fullest extent permitted bylaw, the work product of all
engineering services performed by WEITEK for MIPS in lieu of
cash payments hereunder shall be a "Work Made for Hire."
Accordingly, WEITEK hereby: (a) makes an assignment of
copyright to MIPS; (b) grants to MIPS all right, title and
interest including, without limitation, the
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 8 -
right of MIPS to grant licenses and sublicenses to others
and to file for copyright and patent with respect thereto,
without accounting to WEITEK, in and to all such work
products and all patents, copyrights, mask work rights,
trade secrets and other proprietary rights therein or based
thereon.
3.1.1.2 NEW GENERATION RELEASES. If during the Term of
the Technology License WEITEK desires to receive any new
Generation releases; i.e., beyond the R5000, then WEITEK
shall pay MIPS a one-time, up-front, non-recoverable
license fee of [*] for each new Generation within thirty
(30) days of delivery of the release. Included in the fee
for any such new Generation releases will be one (1) year
of maintenance comparable to what is provided herein in
connection with the initial Deliverables. [*] WEITEK may
not skip a Generation.
3.1.1.3 OTHER PROCESS TECHNOLOGIES.
3.1.1.3.1 If during the Term of the Agreement WEITEK
desires to implement MIPS Chips, based on the deliverables
provided in CMOS specified in Exhibit A in any Process
Technology other than CMOS or Bi-CMOS, then WEITEK shall
pay to MIPS a onetime, up-front, non-recoverable license
fee of [*] for each additional Process Technology other
than CMOS or Bi-CMOS per new Generation in which WEITEK
intends to implement. Said fee shall be payable within
thirty (30) days of notice by WEITEK to MIPS that WEITEK
intends to commence work to implement the deliverables
provided in CMOS in another Process Technology.
3.1.1.3.2 If during the Term of this Agreement WEITEK
desires to implement MIPS Chips based upon deliverables
which may be subsequently available from MIPS in any
Process Technology other than CMOS, then WEITEK shall pay
to MIPS, MIPS then current license fee for each additional
Process Technology per new Generation. Said fee shall be
payable within thirty (30) days of receipt by WEITEK from
MIPS of the deliverables implemented in any Process
Technology other than CMOS.
3.1.2 ROYALTIES. WEITEK shall pay royalties to MIPS regarding
WEITEK Chips manufactured by or on behalf of WEITEK (for WEITEK's
Internal Use and for external sales) in an amount equal to the
following:
(a) [*], the royalty rate shall be [*] of the Net
Revenue received by WEITEK per WEITEK Chip sold as a
component or in a Module, which is based upon the Exhibit A
Architecture License deliverables.
(b) For all other WEITEK Chips the royalty rate shall be
[*] of the Net Revenue received by WEITEK.
WEITEK must pay a royalty on each WEITEK Chip manufactured by
or on behalf of WEITEK and sold or used internally but only
one royalty shall be payable for each such WEITEK Chip. WEITEK
shall pay the same royalty on a dollar per unit basis,
regarding WEITEK Chips used by WEITEK for internal purposes,
as WEITEK pays regarding sales of the same grade WEITEK Chips
to unaffiliated third parties during the same period of time.
No royalty shall be payable by WEITEK to MIPS for any WEITEK
Chip purchased by MIPS from WEITEK in accordance with this
Agreement.
3.2 R5000 OPTION
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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Upon exercise of the option as set forth in section 2.1.2, above, WEITEK
shall pay MIPS [*], which MIPS shall accept in the form of engineering
services to be provided by WEITEK to MIPS, as mutually agreed by the parties,
or other compensation as mutually agreed by the parties. WEITEK shall pay
royalties to MIPS with respect to WEITEK Chips based upon the Exhibit B
deliverables upon the same terms, conditions and prices as set forth in
section 3.1.2. with respect to the Exhibit A deliverables, except that the
royalty rate for WEITEK Chips as specified in section 3.1.2.(a) shall be [*]
and for section 3.1.2(b) the royalty shall be [*].
3.3 ARCHITECTURE MAINTENANCE
In consideration of the grant of rights set forth in section 2.1.3., above,
WEITEK shall pay MIPS [*] per year in advance for architecture maintenance.
Architecture Maintenance is provided to Weitek at no cost for the first 12
months from the date of delivery of deliverables in Exhibit A, and if
applicable in Exhibit B. Weitek is under no obligation to buy support
thereafter.
3.4 SOFTWARE FEES
3.4.1 MIPS SOURCE CODE SOFTWARE. WEITEK shall pay to MIPS, MIPS
then current standard license fees for each license of MIPS Source
Code Software which WEITEK wishes to obtain as set forth on the
Source Code Use License Agreement. WEITEK may license MIPS Source
Code Software on a single user, site or corporate basis.
3.4.2 MIPS BINARY SOFTWARE. WEITEK shall pay to MIPS, MIPS then
current standard license fees, distribution fees and sublicense fees
for each sublicense and/or Internal Use copy of MIPS Binary Software
as set forth on the Binary Software License Agreement. If WEITEK
sublicenses, MIPS Binary Software as modified by WEITEK, WEITEK
shall pay MIPS the same sublicense fee as if WEITEK were
sublicensing unmodified MIPS Binary Software.
3.4.3 RUNTIME FEES. WEITEK shall pay to MIPS, MIPS then current
applicable Runtime Fee for each Runtime used or distributed by
WEITEK.
3.4.4 MAINTENANCE. WEITEK shall pay to MIPS, MIPS then current
standard software maintenance fees regarding all MIPS Software on
which WEITEK desires to obtain Patches, Upgrades and/or New
Releases, as applicable.
3.5 PAYMENT
Except as otherwise explicitly provided in section 3.1.1, WEITEK shall make
payments of all compensation due to MIPS within thirty (30) days following
the end of each WEITEK fiscal quarter for the payment due during the quarter.
On any overdue payments, WEITEK shall pay a one and one-half percent (1-1/2%)
per month finance charge, of, if lower, the highest rate then permitted by
law, upon the unpaid balance until the date of payment.
3.6 RECORDS AND REPORTS
3.6.1 RECORDS. WEITEK shall keep accurate records reasonably
necessary in accordance with generally accepted accounting
principles consistently applied to ascertain the amount of fees,
royalties and other compensation payable to MIPS relating to (a) the
total amount of Net Revenue regarding WEITEK Chips sold as
components or in Modules, (b) the total amount of royalties payable
in connection with WEITEK Chips, (c) the total number of licenses
and sublicenses of MIPS Commercial Software and the total amount of
license, sublicense, distribution and New
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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Release fees payable therefor and (d) copies of WEITEK sublicense
agreements. Notwithstanding the foregoing, WEITEK shall not be
obligated to keep copies of actual binary licenses other than a
standard form of such binary license.
3.6.2 REPORTS. WEITEK shall report to MIPS on a WEITEK fiscal
quarterly basis for each WEITEK Chip manufactured by or on behalf of
WEITEK, the Net Revenues for WEITEK Chips so manufactured, each type
of MIPS Commercial Software reproduced/licensed/sublicensed by
WEITEK, the quantity of MIPS Commercial Software so
reproduced/licensed/sublicensed, and the total amount of royalties,
distribution fees, license fees and sublicense fees due and owing to
MIPS for such WEITEK fiscal quarter. The reports described in this
section 3.6.2. shall be made to MIPS no later than thirty (30) days
after the close of each WEITEK fiscal quarter.
3.6.3 AUDIT. MIPS shall have the right, through a nationally
recognized independent CPA firm, to make an examination and audit,
at its own expense, not more frequently than once per year, during
normal business hours, of WEITEK's records and accounts as may
contain information bearing upon the amounts due hereunder for a
period of time up to five (5) years prior to the date of the audit.
Prompt adjustment shall be made by WEITEK for any underpayments
disclosed by such audit. In the event that any quarterly report
understates the compensation due to MIPS for any fiscal quarter by
more than ten percent (10%), WEITEK shall pay any shortfall plus
reimburse MIPS for the cost of such audit, but in no case shall the
amount reimbursed for the audit exceed the amount identified as
shortfall, nor shall any auditor be compensated or incentivized
based on the number of errors found. Any and all information
regarding Weitek sales or customers shall be treated as Proprietary
and Confidential Information and shall not be disclosed to any third
party unless legally required to do so.
3.7 TAXES
In addition to the compensation set forth above, WEITEK shall exclusively
bear and pay all sales, use, VAT or other taxes, fees, duties, tariffs and
levies imposed as a result of payment of the compensation set forth above,
other than taxes measured by MIPS income.
4. INTELLECTUAL PROPERTY RIGHTS
All right, title and interest in and to all MIPS Technology, including any
MIPS modifications, enhancements or derivations thereof, and any copies of
all or any part thereof, all know-how and all proprietary rights, including
patents, patent applications, copyrights, mask work rights and trade secrets,
shall at all times be and remain with MIPS or its suppliers, as applicable,
WEITEK shall have no ownership of MIPS Technology, other than ownership of
the physical media.
All right, title and interest in and to all WEITEK technology, including any
WEITEK modifications, enhancements or derivations thereof, and any copies of
all or any part thereof, all know-how and all proprietary rights, including
patents, patent applications, copyrights, mask work rights and trade secrets,
shall at all times be and remain with WEITEK or its suppliers, as applicable.
MIPS shall have no ownership of WEITEK technology, other than ownership of
the physical media.
All proprietary notices, labels or marks relating to MIPS intellectual
property rights ("Notices") incorporated in, marked on, or fixed to MIPS
Chips, MIPS Software, MIPS Documentation or MIPS Technology or products
incorporating or based upon MIPS Technology by MIPS or its suppliers shall
not be removed, altered or obliterated by WEITEK and WEITEK shall, where
appropriate, duplicate any such Notices on any copies, in whole or in part,
in any form. In addition, WEITEK shall, where appropriate, incorporate
adequate notices to protect MIPS intellectual property rights on any MIPS
Technology or
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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products incorporating or based upon MIPS Technology or any modifications to
MIPS Technology or products incorporating or based upon MIPS Technology made
by or on behalf of WEITEK.
WEITEK shall not delivery any MIPS Technology or products incorporating or
based upon MIPS Technology or modifications to MIPS Technology made by or on
behalf of WEITEK or any portion thereof, or any technical data relating
thereto, to any branch or agency of the United States Government without a
written predetermination that such items will be protected by limited or
restricted rights as set forth in DOD FAR 52.227-7013 or equivalent rights
and without taking all required actions to preserve such rights including,
without limitation: (a) marking MIPS Software or modified MIPS Software with
the then currently prescribed Restricted Rights Legend, (b) marking technical
data with the then currently prescribed Limited Rights Legend, and (c)
ensuring that the contract with the U.S. Government or agency thereof
contains the standard Department of Defense "Rights in Technical Data and
Computer Software" clause at DOD FAR 52.227-7013 and the "Restrictive
Markings on Technical Data" clause at DOD FAR 52.227-7018 or the equivalent
clauses for other government agencies.
5. PROGRAM MANAGEMENT
5.1 LIAISON
Each party will identify an individual employee ("Program Manager") who shall
be responsible for interfacing with the other party. The Program Manager
shall be technically knowledgeable about his employer's products and design
and manufacturing activities and possess adequate communication skills to
keep the other party fully informed relative to his employer's performance
under this Agreement. Each party will notify the other in writing or any
successor or designee of the Program Manager. The Program Manager shall be
responsible for fielding inquiries and facilitating the administration of
this Agreement. The parties agree to conduct regular discussions as and when
appropriate.
5.2 ON-SITE
Both parties shall permit appropriate employees of the other party to visit
their facilities for the purpose of conducting program discussions. Both
parties shall be required to give reasonable notice of their intent to visit
and shall conduct such visits during normal business hours, subject to mutual
convenience of the parties.
Employees of one party visiting the site of the other party (a) shall not be
deemed to be employees of the party at the site being visited and (b) shall
observe the rules and regulations (as to safety and security) of the party at
the site being visited.
Each party shall indemnify the other party against all loss and liability for
personal injury and property damage caused by the negligence and/or willful
acts or omissions of its employees at the site of the other party.
5.3 OTHER TECHNOLOGY
It is expressly contemplated by the parties that WEITEK [*]. WEITEK, in its
discretion, may disclose to MIPS summary technical information regarding any
such [*]. MIPS may identify to WEITEK areas of technology which MIPS
considers will be useful, for the achievement of the mutual goals and
objectives of the parties and this Agreement, for MIPS to obtain a license
from WEITEK in such area. If the parties determine that such a license may be
appropriate, the parties will negotiate in good faith regarding whether
WEITEK will license MIPS as to
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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any such proprietary [*] any portions thereof, including the applicable
terms, conditions and fees of such license.
6. TRAINING
6.1 ARCHITECTURE
MIPS shall provide to WEITEK, at no charge to WEITEK additional to the
compensation set forth in section 3.1.1, twenty (20) person hours of training
to assist WEITEK in understanding MIPS Architecture. The parties agree to
negotiate in good faith as to WEITEK's additional training needs.
6.2 MIPS COMMERCIAL SOFTWARE TRAINING
WEITEK may purchase training from MIPS in accordance with the then current
MIPS Customer Services price list.
7. PROPRIETARY INFORMATION AGREEMENT
All information, documentation and devices exchanged between the parties
hereunder other than Proprietary Information shall be received and treated by
the receiving party on a nonconfidential and unrestricted basis, subject,
however, to the restrictions imposed by the Patent, Mask Work Right and
Copyright Laws through the grant of valid patents, mask work rights and
copyrights; provided, however, the parties agree, for a period of ten (10)
years from the date of disclosure, without the prior written consent of the
other party regarding a specific contemplated transaction:
7.1 not to disclose Proprietary Information of the other party outside
of the receiving party unless such Proprietary Information is produced or
disclosed pursuant to applicable laws, regulations or court order, provided
the receiving party has given the disclosing party prompt notice of such
request so that the disclosing party has an opportunity to defend, limit or
protect such production or disclosure; and
7.2 to limit dissemination of the other party's Proprietary Information
to only those of the receiving party's officers, directors and employees who
require access thereto to perform their functions regarding the purposes of
this Agreement; and
7.3 not to use Proprietary Information of the other party except for
purposes of this Agreement.
The standard of care to be exercised by the receiving party to meet these
obligations shall be the standard exercised by the receiving party with
respect to its own proprietary information of a similar nature, but in no
event less than due care.
Proprietary Information shall not include any data, information or device
that is: (a) in the possession of the receiving party prior to its disclosure
by the disclosing party and not subject to other restrictions on disclosure;
(b) independently developed by the receiving party without access to
Proprietary Information; (c) publicly disclosed by the disclosing party; (d)
rightfully received by the receiving party from a third party without
restrictions on disclosures; or (e) approved in writing for unrestricted
release or unrestricted disclosure by the disclosing party.
8. GENERAL TERMS AND CONDITIONS
8.1 GOVERNING LAW
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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This Agreement shall be governed by the laws of the State of California,
excluding its conflict of laws rules. The parties consent to the personal and
exclusive jurisdiction and value of the California federal and state courts,
as applicable.
8.2 DISCLAIMER OF WARRANTY
MIPS TECHNOLOGY IS BEING PROVIDED TO WEITEK BY MIPS ON AN "AS IS" BASIS. MIPS
MAKES NO REPRESENTATION OR WARRANTY OF ANY KIND, EXPRESS, IMPLIED OR
STATUTORY, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE.
8.3 TERM, CANCELLATION AND TERMINATION
8.3.1 TERM
The Term of this Agreement shall be for five (5) years commencing upon the
Effective Date, unless earlier cancelled or terminated in accordance with the
provisions hereof.
8.3.2 TERMINATION
Either party may terminate or suspend this Agreement effective immediately
and without liability upon written notice to the other party if any one of
the following events occurs:
8.3.2.1 the other party files a voluntary petition in bankruptcy or
otherwise seeks protection under any law for the protection of
debtors;
8.3.2.2 a proceeding is instituted against the other party under
any provision of any bankruptcy law which is not dismissed within
ninety (90) days;
8.3.2.3 the other party is adjudged a bankrupt;
8.3.2.4 a court assumes jurisdiction of all or a substantial
portion of the assets of the other party under a reorganization law;
8.3.2.5 a trustee or receiver is appointed by a court for all or a
substantial portion of the assets of the other party;
8.3.2.6 the other party becomes insolvent, ceases or suspends
business;
8.3.2.7 the other party makes an assignment of all or a majority of
its assets for the benefit of its creditors; or
8.3.2.8 the other party admits in writing its inability to pay its
debts as they become due.
8.3.3 CANCELLATION FOR CAUSE
If either party fails to perform or violates any material obligation pursuant
to this Agreement, then, upon thirty (30) days written notice to the
breaching party specifying such default (the "Default Notice"), the
non-breaching party may terminate or suspend this Agreement, without
liability, unless:
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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8.3.3.1 The breach specified in the Default Notice has been cured
within the thirty (30) day period; or
8.3.3.2 The default reasonably requires more than thirty (30) days
to correct (specifically excluding any failure to pay money), and
the defaulting party has begun substantial corrective action to
remedy the default within such thirty (30) day period and diligently
pursues such action, in which event, termination shall not be
effective unless ninety (90) days has expired from the date of the
Default Notice without such corrective action being completed and
the default remedied.
8.3.4 CONTINUATION
Notwithstanding the expiration, termination or cancellation of this
Agreement for any reason except for cancellation for cause attributable
to WEITEK in accordance with section 8.3.3, above, the rights and
licenses granted to WEITEK pursuant to section 2 of this Agreement,
with respect to MIPS Technology, shall survive the expiration,
termination or cancellation of this Agreement subject to WEITEK's (a)
having paid to MIPS the fees set forth in section 3 which have become
due and payable prior to the expiration, termination or cancellation of
this Agreement, (b) compliance with its non-disclosure obligations and
(c) payment to MIPS of all applicable royalties, distribution fees,
sublicense fees and other software fees as and when such amounts become
due and payable. The right of WEITEK to receive from MIPS (a) new
Generations of MIPS Technology, (b) information on future Generations
of MIPS Technology and (c) information on new technology shall
terminate upon the expiration or earlier cancellation or termination of
this Agreement.
8.4 PUBLIC ANNOUNCEMENTS
The parties shall, after the Effective Date, make joint announcements
regarding this transaction and their relationship in mutually agreeable forms
and at a mutually agreeable times. Such announcements shall include a
statement, among others, that WEITEK is adopting MIPS Architecture and MIPS
Technology for future RISC products.
Prior to such announcements, the parties agree to keep confidential and not
to disclose to the public or any third party other than external auditors and
disclosures required by law (regarding which the disclosing party shall, in
all instances other than regarding necessary approvals of United States
government and authorities, give the other party advance written notice of
the material circumstances which require the disclosure and the information
to be disclosed) any information regarding this matter without the prior
consent of the other party.
8.5 EXPORT
Before exporting or reexporting any MIPS Technology, including Updates, or
any technical information, technical data (including any confidential
information) or the direct product of such technical data of either party,
the receiving party must fully comply with all then current laws of the
United States including, without limitation, rules and regulations of the
United States Office of Export Administration and other applicable U.S.
governmental agencies.
8.6 ASSIGNMENT
Neither party shall assign this Agreement or any of the licenses or rights,
or delegate any duties created hereunder to any person or entity without the
prior written consent of the other party, except as expressly
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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set forth herein, and except that (1) MIPS may assign this Agreement to a
person or entity with which it has merged or which has otherwise succeeded to
all or substantially all of the business and assets of MIPS, and which has
assumed in writing or by operation of law its obligations under this
Agreement; and (2) WEITEK may assign this Agreement to a person or entity
with which it has merged or which has otherwise succeeded to all or
substantially all of the business and assets of WEITEK, and which has assumed
in writing or by operation of law its obligations under this Agreement,
provided said person or entity is not a competitor of MIPS in that it
produces non-MIPS RISC-based products. Any attempt of assignment or
delegation without the required consent shall be void. This section is not
intended to prohibit either party from reasonably subcontracting work in the
course of exercising its rights or complying with its obligations pursuant to
this Agreement.
8.7 LIMITATION OF DAMAGES
IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR COSTS OF PROCUREMENT OF
SUBSTITUTE GOODS OR SERVICES, LOSS OF USE, DATA OR PROFITS, INTERRUPTION OF
BUSINESS OR ANY SPECIAL, INCIDENTAL, INDIRECT, EXEMPLARY, OR CONSEQUENTIAL
DAMAGES, ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, HOWEVER CAUSED
AND ON ANY THEORY OF LIABILITY, WHETHER IN AN ACTION FOR CONTRACT, STRICT
LIABILITY OR TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, AND WHETHER OR NOT THE
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE.
EACH AND EVERY PROVISION OF THIS AGREEMENT WHICH PROVIDES FOR A LIMITATION OF
LIABILITY, DISCLAIMER OF WARRANTY OR EXCLUSION OF DAMAGES IS INTENDED BY THE
PARTIES TO BE SEVERABLE AND INDEPENDENT OF ANY OTHER SUCH PROVISION. FURTHER,
IN THE EVENT THAT ANY REMEDY HEREUNDER IS DETERMINED TO HAVE FAILED OF ITS
ESSENTIAL PURPOSE, ALL LIMITATIONS OF LIABILITY AND EXCLUSIONS OF DAMAGES
SHALL REMAIN IN EFFECT.
THE LIABILITY OF EACH PARTY, RESPECTIVELY, IN ANY SINGLE EVENT OR IN THE
AGGREGATE, SHALL NOT EXCEED U.S. $1,000,000.
8.8 SURVIVAL
The provisions of section 3 (Compensation), section 4 (Intellectual Property
Rights), section 7 (Proprietary Information), section 8.1 (Governing Law),
section 8.2 (Disclaimer of Warranty), section 8.5 (Export), section 8.6
(Assignment), section 8.7 (Limitation of Damages), section 9 (Inventions),
section 10 (Indemnification) and section 11 (Entire Agreement) shall survive
the expiration, cancellation or termination of this Agreement.
9. INVENTIONS
9.1 WEITEK. All discoveries, improvements and inventions
conceived or first reduced to practice exclusively by or on behalf
of WEITEK (collectively, "WEITEK Inventions") shall be the property
of WEITEK exclusively throughout the world, WEITEK shall have the
exclusive, world-wide right, title and interest in and to all
intellectual property rights relating to WEITEK Inventions.
9.2 MIPS. All discoveries, improvements and inventions
conceived or first reduced to practice exclusively by or on behalf
of MIPS (collectively, "MIPS Inventions") shall be the property of
MIPS exclusively throughout the world. MIPS shall have the
exclusive, world-wide right, title and interest in and to all
intellectual property rights relating to MIPS Inventions.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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10. PROPRIETARY RIGHTS INDEMNIFICATION
10.1 INDEMNIFICATION
10.1.1 INDEMNIFICATION BY MIPS. MIPS shall indemnify and hold
WEITEK harmless against any action based on a claim that MIPS
Technology when used in accordance with this Agreement infringes a
United States patent or copyright, shall defend at MIPS expense all
suits against WEITEK based upon such a claim and shall pay all costs
and damages finally awarded against WEITEK in such suit, provided
that WEITEK shall notify MIPS promptly in writing of such suit and
at MIPS request and at MIPS expense MIPS is given sole control of
such suit and all information and assistance for defense of same
reasonably requested by MIPS. MIPS shall not be liable for any costs
or expenses incurred by WEITEK after MIPS has assumed the defense of
such action. WEITEK shall have the right to be represented by its
own attorney at WEITEK's expense. This indemnity does not extend to
any suit based upon an infringement or alleged infringement of any
patent, copyright, mask work right or trademark by WEITEK's
manufacturing process or modification of MIPS Technology made by or
on behalf of WEITEK; the use of MIPS Technology in combination with
other technology or software not provided by MIPS or a modification
or enhancement to MIPS Technology not made by MIPS, if such claim
would not have occurred but for such combination, modification or
enhancement; any marking or branding applied to MIPS Technology or
modification or design of MIPS Technology by or at the request of
WEITEK, except any such marking or branding in accordance with MIPS
written instructions; or any infringement based upon third party
software except as to any modifications or enhancements to such
software made by MIPS and delivered to WEITEK. The foregoing states
the entire liability of MIPS for trade secret, patent, mask work
right, copyright, trademark or other proprietary rights infringement.
10.1.2 INDEMNIFICATION BY WEITEK. WEITEK shall indemnify and hold
MIPS harmless against any action based on a claim that (1) the
process used by or on behalf of WEITEK in manufacturing products
incorporating or based upon MIPS Technology, or (2) any WEITEK
modification of MIPS Technology, if such claim would not have
occurred but for such modification or (3) the use of MIPS Technology
in combination with other equipment, software, data or technology
not provided by MIPS, if such claim would not have occurred but for
such use in combination or (4) any marking or branding applied to
MIPS Technology by or at the request of WEITEK except any such
marking or branding in accordance with MIPS written instructions, or
(5) any infringement based upon third party software except as to
any modifications or enhancements to such software made by MIPS and
delivered to WEITEK, has infringed a United States patent or
copyright, shall defend at WEITEK's expense all suits against MIPS
based upon such a claim and shall pay all costs and damages finally
awarded against MIPS in such suit, provided that MIPS shall notify
WEITEK's expense WEITEK is given sole control of such suit and all
information and assistance for defense of same reasonably requested
by WEITEK. WEITEK shall not be liable for any costs or expenses
incurred by MIPS after WEITEK has assumed the defense of such
action. MIPS shall have the right to be represented by its own
attorney at MIPS expense. The foregoing states the entire liability
of WEITEK for trade secret, patent, mask work right, copyright,
trademark or other proprietary rights infringement.
10.2 REMEDY FOR INFRINGEMENT
10.2.1 If any MIPS Technology or any portion thereof, for which
MIPS is responsible as set forth in section 10.1.1, is finally
adjudged to infringe a United States patent or copyright as to which
MIPS is obligated to indemnify WEITEK in accordance with section
10.1.1, MIPS shall use reasonable best efforts to:
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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10.2.1.1 procure the right to continue using the
unmodified MIPS Technology,
10.2.1.2 modify the MIPS Technology so that becomes
non-infringing, or
10.2.1.3 replace the unmodified MIPS Technology, or
infringing portions thereof, with reasonably equivalent
non-infringing products.
10.2.2 If any WEITEK manufacturing process, any modification to
MIPS Technology, any use of MIPS Technology in combination, any
marking or branding of MIPS Technology, or any infringement based
upon third party software for which WEITEK is responsible as set
forth in section 10.1.2, is finally adjudged to infringe a United
States patent or copyright as to which WEITEK is obligated to
indemnify MIPS in accordance with section 10.1.2, WEITEK shall use
reasonable best efforts to:
10.2.2.1 procure the right to continue using the process,
modification, marking branding or use in combination
10.2.2.2 modify the process, modification, marking,
branding or use in combination so that it becomes
non-infringing, or
10.2.2.3 replace the process, modification, marking,
branding or use in combination, or infringing portions
thereof, with reasonably equivalent non-infringing products
or processes.
10.2.3 In the event that there is a final adjudication of
infringement, the liability of the indemnifying party for
infringement indemnification shall terminate with respect to all
damages regarding the infringing intellectual property arising after
the date of such final adjudication.
11. ENTIRE AGREEMENT
This Agreement and the exhibits attached hereto contain and constitute the
sole, complete and entire agreement and understanding of the parties
concerning the matters contained herein and may not be altered, modified or
changed in any manner except by writing duly executed by the parties. No
statements, promises or representations have been made by any party to
another, or are relied upon, and no consideration has been or is offered,
promised, expected or held out, other than as stated in this Agreement. No
party is relying on any representations other than those expressly set forth
herein. No conditions precedent to the effectiveness of this Agreement exist,
other than as may be expressly provided herein. There are no oral or written
collateral agreements. All prior and contemporaneous discussions and
negotiations have been, and are, merged and integrated into, and superseded
by, this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representative.
WEITEK CORPORATION MIPS COMPUTER SYSTEMS, INC.
"WEITEK" "MIPS"
By: \s\ Xxxx Xxxxxx By: \s\
--------------------------------- ---------------------------------
Title: V.P. Development Title: Vice President and Treasurer
------------------------------- ------------------------------
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
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Date: 8-10-90 Date: August 14, 1990
-------------------------------- -------------------------------
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 19 -
EXHIBIT A
ARCHITECTURE LICENSE DELIVERABLES
A. MIPS R Series Architecture Specification including the Instruction
Set descriptions for the R4000 Series.
B. MIPS Instruction Set and System Performance Simulator (SABLE).
C. MIPS R4000 Test Program
1. Source code in Teradyne J953 format
2. Pattern source code (Assembly language)
D. MIPS R4000 RTL Model
1. All RTL equations for each chip (ASCII, on tape)
2. Binary, executable copy of the MIPS simulator for the R4000
(SLOGAN)
3. Overview block diagrams of the R4000
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 20 -
EXHIBIT B
ARCHITECTURE LICENSE DELIVERABLES
A. MIPS R5000 Architecture Specification (superscalar)
B. MIPS R5000 Instruction Set and System Performance Simulator (SABLE)
C. MIPS R5000 Test Programs
1. Source code in MIPS then current tester format
2. Pattern source code (Assembly language)
D. MIPS R5000 RTL Model
1. All RTL equations for each chip (ASCII, on tape)
2. Binary, executable copy of the MIPS simulator for the MIPS
Chip
E. MIPS R5000 Diagnostics
F. Interface Specifications
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
- 21 -
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
ASSIGNMENT AGREEMENT
This Assignment Agreement ("Agreement") is made and entered into as of
the 19th day of June, 1996 (the "Effective Date") between Weitek Corporation,
a California corporation ("Weitek"), and Quantum Effect Design, Inc.
("Quantum").
WHEREAS, Weitek and MIPS Technologies, Inc. ("MIPS") are parties to that
certain Technology License Agreement dated as of June 29, 1990 (the "License
Agreement"); and
WHEREAS, Weitek desires to assign the License Agreement to Quantum, and
Quantum desires to accept such assignment; and
WHEREAS, MIPS has consented to such assignment;
NOW THEREFORE, in consideration of the mutual promises made herein,
Weitek and Quantum hereby agree as follows:
1. ASSIGNMENT AND ASSUMPTION. Weitek hereby assigns to Quantum all of
Weitek's rights and interest in and to the License Agreement, and Quantum
hereby accepts such assignment and assumes and agrees to perform all of the
obligations of the licensee under the License Agreement. (The assignment of
the rights and obligations under the License Agreement provided for in this
Section 1 is referred to as the "Assignment.")
2. CONSIDERATION. In consideration for the Assignment, Quantum hereby
agrees to pay to Weitek the [*] as follows: concurrent with the execution of
this Agreement, (i) Quantum shall pay to Weitek by wire transfer the [*] and
(ii) shall execute and deliver to Weitek, and pay when due, a promissory note
in the form attached hereto as Exhibit A.
3. INDEMNIFICATION. Weitek hereby agrees to indemnify and hold
harmless Quantum, its officers, directors and stockholders from any and all
royalties, fees, payments and other liabilities owing to MIPS under the
License Agreement from the effective date of the License Agreement to the
Effective Date hereof. Quantum hereby agrees to indemnify and hold harmless
Weitek, its officers, directors and stockholders from any and all royalties,
fees payments and other liabilities owing to MIPS under the License Agreement
from and after the Effective Date hereof.
4. NO WARRANTIES GIVEN. Weitek's assignment hereunder is made with no
representation or warranty of any type (other than to represent to Quantum
that the Assignment has been approved by MIPS). Quantum acknowledges that it
has reviewed and understands the scope of the License Agreement, and is not
relying any representation of Weitek with respect to the execution and
delivery of this Agreement.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
22.
5. MISCELLANEOUS.
5.1 COMPLETE AGREEMENT; NO ORAL MODIFICATION. This Agreement
constitutes the entire Agreement between the parties with respect to the
subject matter hereof, and supersedes all other communications or
negotiations relating thereto between the parties. No amendment or change
hereof or addition to this Agreement shall be effective unless reduced to a
writing signed by authorized representatives of the parties.
5.2 COUNTERPARTS. This Agreement may be executed in counterparts,
each of which shall be deemed to be an original and both together shall be
deemed to be one and the same agreement.
IN WITNESS WHEREOF THE PARTIES HAVE EXECUTED THIS LICENSE AGREEMENT AS
OF THE EFFECTIVE DATE SET FORTH ON THE FIRST PAGE HEREOF.
WEITEK CORPORATION QUANTUM EFFECT DESIGN, INC.
By: \s\ R.I.S. Xxxxxx By: \s\ Xxxxxx X. Xxxxxxx
---------------------------- -------------------------------
Name: R.I.S. Xxxxxx Name: Xxxxxx X. Xxxxxxx
-------------------------- -----------------------------
Title: President Title: President
------------------------- ----------------------------
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
23.
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
AMENDMENT No. 1 TO THE
TECHNOLOGY LICENSE AGREEMENT
This Amendment No. 1 to the Technology License Agreement (this "Amendment")
is entered into between MIPS Technologies, Inc. ("MIPS") and Quantum Effect
Design, Inc. ("QED"), effective March 31, 1997.
WHEREAS, MIPS Computer Systems, Inc. ("MCSI") and Weitek Corporation
("Weitek") entered into a Technology License Agreement, dated June 19, 1990
(the "Weitek Technology License Agreement"), under which MCSI licensed to
Weitek certain technology, including the MIPS(R) Instruction Set Architecture;
WHEREAS, MCSI merged into Silicon Graphics, Inc. ("SGI") effective on June
29, 1992, and MIPS, as the surviving business entity to MCSI, succeeded to
the rights and obligations of MCSI under the Weitek Technology License
Agreement;
WHEREAS, Effective June 19, 1996, Weitek assigned to QED all of Weitek's
rights and interests in and to the Weitek Technology License Agreement and
QED accepted such assignment and assumed and agreed to perform all of the
obligations of Weitek under the. Weitek Technology License Agreement;
WHEREAS, MIPS consented to such assignment; and
WHEREAS, QED has exercised the R5000 Option described in Section 2.1.2 of the
Weitek Technology License Agreement and QED and MIPS have agreed to the form
of compensation, valued at [*], which QED owes MIPS for the exercise of such
option as required by Section 3.2 of the Weitek Technology License Agreement.
NOW THEREFORE. the parties agree as follows:
A. The parties acknowledge and agree that MIPS and QED are bound by the
terms and conditions of the Weitek Technology License Agreement, in the
manner specified in Section 8.3.4, to the same extent that each party's
predecessor in interest (i.e., MCSI and Weitek) was bound as of the
expiration date of the Weitek Technology License Agreement. Further, all
references to Weitek in the Weitek Technology License Agreement will be
deemed references to QED. For convenience of drafting, references in this
Amendment to defined terms which are used in the Weitek Agreement and which
contain "Weitek" will include `QED" instead of "Weitek". For example, "Weitek
Chips" are referred to as "QED Chips" in this Amendment.
B. The parties acknowledge and agree that (a) the R5000 Option
described in Section 2.1.2 constitutes a license to the MIPS IV Instruction
Set Architecture, (b) the scope of QED's license rights to the MIPS IV
Instruction Set Architecture are specified in Section 2.1.1, and (c) the
license is effective in the manner specified in Section 8.3.4. Further, since
QED already has the technology required to exercise such license rights, the
parties acknowledge and agree that MIPS is not required to provide QED with
any deliverables, notwithstanding anything contained in the Weitek Technology
License Agreement or Exhibit B to the contrary.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
24.
C. Notwithstanding anything contained in Section 3.2 of the Weitek
Technology License Agreement to the contrary, the parties acknowledge and
agree that as compensation for the R5000 Option as set forth in Section
2.1.2, QED will pay MIPS [*], in the following manner:
(i) QED will pay MIPS [*] by April 30, 1997, in immediately
available funds in the manner specified by MIPS.
(ii) The remaining [*] will be paid by QED to MIPS in the form
of incremental royalties (i.e., increased royalties paid in addition to those
otherwise payable under the Weitek Technology License Agreement) on each of
the specified QED Chips in accordance with the following schedule:
QED Chip Incremental Royalty %
-------- ---------------------
RM5230 [*]
RM5260 [*]
RM7000 [*]
(iii) Incremental royalties for other QED Chips will be mutually
agreed upon in writing based on the likeness of such QED Chips to the above
QED Chips considering the similarity of the core processor design and ASP.
So-called "ASSP" (highly integrated derivatives) of a QED Chip will be
subject to the incremental royalty rate applicable to the QED Chip from which
it was derived. The parties must make good faith efforts to agree to the
appropriate incremental royalty prior to the shipment of any of the QED Chips
described in this Section C(iii).
(iv) At any time prior to April 30, 2000, QED may compensate
MIPS for the then-current outstanding balance of the [*] compensation for the
R5000 Option by means of engineering services that are mutually agreed upon
in writing by MIPS and QED.
(v) If the entire [*] compensation has not been paid by April
30, 2000, QED will pay in full to MIPS the remaining balance of the [*]
compensation in a lump sum by that date. QED's obligation to pay the [*]
compensation will survive any expiration or termination of the Weitek
Technology License Agreement.
MIPS Technologies Quantum Effect Design, Inc.
By: \s\ Xxxx Xxxxxxx By: \s\ Xxxxxx X. Xxxxxxx
-------------------------------- --------------------------------
Name: Xxxx Xxxxxxxx Name: Xxxxxx X. Xxxxxxx
------------------------------ ------------------------------
Title: President, MTI Title: President
----------------------------- -----------------------------
Date: 3/31/97 Date: 31 March 97
------------------------------ ------------------------------
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
25.
