EXHIBIT 10.18
CONFIDENTIAL TREATMENT REQUESTED
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.
PATENT CROSS LICENSE AGREEMENT
THIS AGREEMENT is made and entered into on the 25th day of August, 1998,
by and between QuickLogic Corporation, a corporation incorporated under the laws
of California ("QuickLogic") and headquartered at 0000 Xxxxxxx Xxxxx, Xxxxxxxxx,
Xxxxxxxxxx 00000, and Actel Corporation, a corporation incorporated under the
laws of California ("Actel") and headquartered at 000 Xxxx Xxxxxx Xxxxxx,
Xxxxxxxxx, Xxxxxxxxxx 00000.
WHEREAS, QuickLogic and Actel are parties to those certain legal actions
entitled ACTEL CORPORATION V. QUICKLOGIC CORPORATION, No. C-94 20050 JW (PVT)
and ACTEL CORPORATION V. QUICKLOGIC CORPORATION, No. C-97 21107JW (EAI)
(collectively, the "Actions") currently pending before the United States
District Court for the Northern District of California, San Xxxx Division (the
"Court"); and
WHEREAS, QuickLogic and Actel mutually desire to settle the Actions, as
well as certain other actual or potential disputes between them, as part of such
settlement; and
WHEREAS, the Parties have entered into a settlement agreement of even
date herewith defining with particularity the terms of the settlement (the
"Settlement Agreement and Mutual Release");
NOW, THEREFORE, the Parties, in consideration of the premises and the
mutual promises of the Parties hereinafter set forth and intending to be bound
by the terms hereof, hereby agree, effective as of the Effective Date (as
defined below), as follows:
1. DEFINITIONS
As used in this Agreement, the following terms shall have the following
meanings:
1.1. "Actel" shall mean Actel Corporation, a California corporation,
and its successor, Actel Corporation, a Nevada corporation.
1.2. "Actel Licensed Patents" shall mean all Patents (a) that Actel
or any of its Affiliates now own or may hereafter during the term of this
Agreement own or (b) under which and to the extent that Actel or any of its
Affiliates have acquired or may hereafter during the term of this Agreement
acquire the right to grant licenses without the payment of a royalty or other
consideration to a third party (excluding consideration paid to an employee
in connection with the assignment to Actel of the employee's rights in an
invention that resulted from any work performed by the employee for Actel).
1.3. "Acquired Party" shall mean a party to this Agreement following
a Change in Ownership of such party.
1.4. "Acquiring Party" shall mean the Person(s), if any, in Control
of an Acquired Party following a Change in Ownership and the Affiliates of
such Person(s).
1.5. "Affiliate" shall mean a Person that directly, or indirectly
through one or more intermediaries, controls, or is controlled by, or is
under common control with, a specified Person.
1.6. "Antifuse" shall mean a two-terminal switch that is open prior to
programming.
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CONFIDENTIAL TREATMENT REQUESTED
1.7. "Antifuse Programmable Logic Device" shall mean any
Programmable Logic Device in which all of the Programmable Switching Elements
are Antifuses.
1.8. "Beneficial Owner" shall be used in this Agreement as defined
in Rule 13d-3 under the Securities Exchange Act of 1934, as amended.
1.9. "Change in Ownership" shall mean the occurrence of any one of the
following:
1.9.1. Any Person is or shall have the right to become the
Beneficial Owner, directly or indirectly, of Voting Securities of
such party representing 50% or more of the Total Voting Power of
such party's Voting Securities.
1.9.2. The shareholders of a party approving a merger or
consolidation of such party with any other corporation, other than a
merger or consolidation that would result in the Voting Securities of
such party outstanding immediately prior thereto continuing to represent
(either by remaining outstanding or by being converted into Voting
Securities of the surviving corporation) 50% or more of the Total Voting
Power represented by the Voting Securities of such party or such
surviving corporation outstanding immediately after such merger or
consolidation.
1.9.3. The shareholders of a party approving a plan of dissolution
or liquidation of such party or an agreement for the sale or disposition
by such party of all or substantially all of such party's assets in one
or a series of transactions.
1.10. "Control" including the terms "controlling," "controlled by,"
and "under common control with," shall mean the possession, directly or
indirectly, of the power to direct or cause the direction of the management
and policies of a Person, whether through the ownership of Voting Securities,
by contract, or otherwise. A Person's Beneficial Ownership of twenty (20%)
or more of a corporation's outstanding Voting Securities shall create a
rebuttable presumption that such Person has control of such corporation.
Notwithstanding the foregoing, a Person shall not be deemed to have control
of a corporation if such Person holds Voting Securities, in good faith and
not for the purpose of circumventing this Section, as an agent, bank, broker,
nominee, custodian, or trustee for one or more Beneficial Owners who do not
individually or as a group have control of such corporation.
1.11. "Effective Date" shall mean the date on which the Stipulations
(as defined in the Settlement Agreement and Mutual Release) are filed with
the Court.
1.12. "Embedded SRAM Programmable Logic Device" shall mean an
Embedded Programmable Logic Device in which any of the Programmable Switching
Elements is controlled by SRAM.
1.13. "Embedded Programmable Logic Device" shall mean a Programmable
Logic Device in which (x) the circuitry controlled by Programmable Switching
Elements and (y) the circuitry containing User Memories contain in the
aggregate less than 80% of the total number of transistors on the die.
1.14. "Flash" shall mean electrically erasable read only memory that
can be erased more than one bit at a time.
1.15. "GateField" shall mean GateField Corporation, a Delaware
corporation.
1.16. "Incumbent Directors" shall mean directors who either (a) are
directors of a party to this Agreement as of the Effective Date (or as of the
date of a Change of Ownership, in the case of an
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CONFIDENTIAL TREATMENT REQUESTED
Acquiring Party) or (b) are elected, or nominated for election, to the Board of
Directors of such party with the affirmative votes of at least a majority of the
Incumbent Directors at the time of such election or nomination, but "Incumbent
Directors" shall not include any individual whose election or nomination is in
connection with an actual or threatened proxy contest relating to the election
of directors of such party.
1.17. "Internal Use" by a Person shall mean (a) use by the Person or
its Affiliates without any sale, lease, distribution, or other transfer to a
third party that is not an Affiliate of the Person or (b) incorporation in a
value-added product made by the Person or its Affiliates that is sold,
leased, distributed, or otherwise transferred to a third party that is not an
Affiliate of the Person.
1.18. "Licensee Party" shall mean either Actel or QuickLogic in its
capacity as the recipient of rights under any Patent of the other party
pursuant to this Agreement.
1.19. "Licensor Party" shall mean either Actel or QuickLogic in its
capacity as the grantor of rights under any of its Patents pursuant to this
Agreement.
1.20. "Material Terms" shall refer to the provisions of Sections 3 and
6.4 of this Agreement.
1.21. "Matsushita" shall mean Matsushita Electric Industrial Co., Ltd,
a Japan corporation, Matsushita Electronics Corporation, a Japan corporation,
and their Affiliates.
1.22. "Non-Acquired Party" shall mean the party to this Agreement that
is not the Acquired Party or an Affiliate of the Acquired Party following a
Change in Ownership.
1.23. "Non-Antifuse Programmable Logic Device" shall mean any
Programmable Logic Device that is not an Antifuse Programmable Logic Device.
1.24. "Non-Assertion Patent" shall mean (a) any patent (including any
utility patent, design patent, patent of importation, patent of addition,
certificate of addition, certificate or model of utility) granted by the
United States or any other country, (b) any reissue, continuation, parent,
division, extension, renewal, or continuation-in-part of any of the foregoing,
and (c) any counterpart anywhere in the world of any of the foregoing.
1.25. "Patent" shall mean (a) any patent (including any utility patent,
design patent, patent of importation, patent of addition, certificate of
addition, certificate or model of utility) the application for which had a first
effective filing date in any country on or before the Effective Date, (b) any
patent that may issue on any such application, (c) any reissue, continuation,
parent, division, extension, renewal, or continuation-in-part of any of the
foregoing, and (d) any counterpart anywhere in the world of any of the
foregoing.
1.26. "Person" shall be used in this Agreement as defined under Sections
13(d) and 14(d) of the Securities Exchange Act of 1934, as amended.
1.27. "Programmable Logic Device" shall mean any integrated circuit that
implements logic the operation of which is determined after the integrated
circuit has been manufactured.
1.28. "Programmable Switching Element" shall mean a switch controlled by
electrical voltage or electrical currents that is used to configure the logic
function of a Programmable Logic Device. Programmable Switching Elements shall
not include data registers or User Memories or switches controlled by lasers.
1.29. "QuickLogic" shall mean QuickLogic Corporation, a California
corporation.
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CONFIDENTIAL TREATMENT REQUESTED
1.30. "QuickLogic Licensed Patents" shall all Patents (a) that
QuickLogic or any of its Affiliates now own or may hereafter during the term of
this Agreement own or (b) under which and to the extent that QuickLogic or any
of its Affiliates have acquired or may hereafter during the term of this
Agreement acquire the right to grant licenses without the payment of a royalty
or other consideration to a third party (excluding consideration paid to an
employee in connection with the assignment to QuickLogic of the employee's
rights in an invention that resulted from any work performed by the employee for
QuickLogic).
1.31. "Security Agreements" shall mean the security agreement of even
date herewith pursuant to which Actel has granted a security interest to
QuickLogic in the proceeds from the sale, assignment, or other transfer of the
Actel Licensed Patents to secure Actel's obligations under Section 6.4.4 of this
Agreement, and the security agreement of even date herewith pursuant to which
QuickLogic has granted a security interest to Actel in the proceeds from the
sale, assignment, or other transfer of the QuickLogic Licensed Patents to secure
QuickLogic's obligations under Sections 3 and 6.4.5 hereof.
1.32. "SRAM" shall mean static random access memory.
1.33. "SRAM Programmable Logic Device" shall mean a Programmable Logic
Device in which any of the Programmable Switching Elements is controlled by
SRAM.
1.34. "Termination Event" shall mean any of the following:
1.34.1. the filing by a party of a petition in Bankruptcy or
insolvency; or
1.34.2. any adjudication that a party is bankrupt or insolvent; or
1.34.3. the appointment of a receiver for all or substantially all
of the property of a party; or
1.34.4. the making by a party of any assignment or attempted
assignment for the benefit of creditors; or
1.34.5. the institution of any proceedings for the liquidation or
winding up of a party's business or for the termination of its corporate
charter; or
1.34.6. any assignment of this Agreement or any exercise of rights
under this Agreement by any successor or assign of a party, except in
accordance with Section 8.
1.35. "Total Voting Power" shall mean the total number of votes that
may be cast in the election of directors at a meeting of the shareholders of a
corporation if all Voting Securities are present and voted to the fullest extent
possible at such meeting.
1.36. "User Memory" shall mean random access memory (RAM), SRAM, read
only memory (ROM), or programmable read only memory (PROM), erasable
programmable read only memory (EPROM), electrically erasable programmable read
only memory (EEPROM), Flash, or variations thereof, used for storing data and
control bits during the logic operation of a Programmable Logic Device. The
circuitry of a Programmable Logic Device controlled by Programmable Switching
Elements and the circuitry of a Programmable Logic Device containing User
Memories are mutually exclusive.
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CONFIDENTIAL TREATMENT REQUESTED
1.37. "Voting Securities" shall mean all securities of a corporation
entitled to vote generally in the election of directors.
2. LICENSES
2.1. Subject to Sections 2.3 and 6.4.2 hereof, QuickLogic hereby grants
to Actel a nonexclusive, royalty-free, worldwide license under the QuickLogic
Licensed Patents (a) to make, have made only for Actel, use, import, offer to
sell, sell, lease, distribute; and otherwise transfer Programmable Logic
Devices, and (b) to grant sublicenses to make, have made only for the
sublicensee, use, import, offer to sell, sell, lease, distribute, and otherwise
transfer Embedded Programmable Logic Devices.
2.2. Subject to the payment of the amounts set forth in Section 3
hereof and to Sections 2.3, 4.5, 6.4.2, and 6.4.3 hereof, Actel hereby grants to
QuickLogic a nonexclusive, royalty-free, worldwide license under the Actel
Licensed Patents (a) to make, have made only for QuickLogic, use, import, offer
to sell, sell, lease, distribute, and otherwise transfer Programmable Logic
Devices, but excluding all SRAM Programmable Logic Devices, (b) to grant
sublicenses to make, have made only for the sublicensee, use, import, offer to
sell, sell, lease, distribute, and otherwise transfer Embedded Programmable
Logic Devices, but excluding all Embedded SRAM Programmable Logic Devices, and
(c) to grant sublicenses to make, have made (but only for a sublicensee that is
a semiconductor manufacturer or foundry), and use Embedded SRAM Programmable
Logic Devices only for the Internal Use of the sublicensee.
2.3. The licenses granted in Sections 2.1 and 2.2 of this Agreement
shall not include any right in favor of a Licensee Party:
2.3.1. to grant any sublicense to any Person, including any
Affiliate of a Licensee Party other than a wholly-owned subsidiary,
except as expressly provided with respect to Embedded Programmable Logic
Devices, PROVIDED, HOWEVER, that any such sublicense may not be further
sublicensed and may not be assigned or otherwise transferred except in
connection with a Change in Ownership of the sublicensee; or
2.3.2. to offer to sell, sell, lease, distribute, or otherwise
transfer any product to any semiconductor manufacturer or foundry or
Affiliate thereof, except exclusively for the Internal Use of the
semiconductor manufacturer or foundry; PROVIDED, HOWEVER, that Actel may
sell or otherwise transfer products to Matsushita for resale by
Matsushita in accordance with the Distribution Agreement between
Matsushita and Actel dated as of June 29, 1995, and any renewal thereof;
or
2.3.3. to sell, lease, distribute, or otherwise transfer all or a
part of the Licensee Party's business or the assets comprising such
business, or transfer control of a subsidiary engaged in such business,
to the extent such part of the Licensee Party's business or such assets
or such subsidiary include the business of making and selling products
covered by any license granted to the Licensee Party in Sections 2.1 or
2.2 of this Agreement, as applicable, except as may be permitted by
Section 8; or
2.3.4. to make, have made, import, offer to sell, sell, lease,
distribute, or otherwise transfer any product that is pin interchangeable
in the final application of the product with a product then offered for
sale by the Licensor Party (excluding products having pinouts originating
with a third party that either (a) are not replicas of a pinout of
QuickLogic or Actel or GateField products or (b) reflect standards
promulgated by a standards committee sanctioned by
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CONFIDENTIAL TREATMENT REQUESTED
the IEEE, JEDEC, or an equivalent organization other than the United
States Department of Defense).
2.4 Nothing contained in this Agreement shall be construed as
conferring by implication, estoppel, or otherwise upon either party any license
or other right except the licenses and rights expressly ranted hereunder to that
party. Notwithstanding the foregoing, the Licensee Party and its customers shall
have the right to program the products covered by any license (or covenant not
to xxx) granted under this Agreement to the Licensee Party.
2.5. Each party hereby accepts the licenses and rights granted to it by
a party under this Agreement subject to all of the terms and conditions of this
Agreement.
3. PAYMENTS
3.1. As consideration for the license granted to QuickLogic by Actel
under Section 2.2 of this Agreement, QuickLogic grants to Actel the rights set
forth in Section 2.1 of this Agreement and agrees to pay to Actel the sum of
[*]. [*] shall be due and payable on the Effective Date of this
Agreement, and (subject to Sections 3.2, 6.4.4, and 6.4.5 hereof) the balance
shall be due and payable in quarterly installments as follows:
3 months after Effective Date [*]
6 months after Effective Date [*]
9 months after Effective Date [*]
12 months after Effective Date [*]
15 months after Effective Date [*]
18 months after Effective Date [*]
21 months after Effective Date [*]
24 months after Effective Date [*]
27 months after Effective Date [*]
30 months after Effective Date [*]
33 months after Effective Date [*]
36 months after Effective Date [*]
If any such payment is not made when due and is not cured within
fifteen (15) business days after written notice to QuickLogic specifying the
failure to pay, all subsequently due payments shall become immediately due and
payable.
3.2. In the event QuickLogic effects an initial public offering of its
Common Stock pursuant to a registration statement under the Securities Act of
1933, all subsequently due payments shall become immediately due and payable on
the tenth business day following the closing of such offering.
[*] = 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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CONFIDENTIAL TREATMENT REQUESTED
4. NON-ASSERTION AGREEMENTS
4.1. QuickLogic agrees that QuickLogic and its Affiliates will not
assert during the term of this Agreement and thereafter, directly or indirectly,
any cause of action based, in whole or in part, upon the purported infringement
by Actel or its suppliers or customers, mediate or immediate, during the term of
this Agreement of any Non-Assertion Patent, whether granted by the United States
or another country to QuickLogic or its Affiliates or any third party, as a
result of the manufacture, use, importation, offer for sale, sale, lease,
distribution; or other transfer of (a) products first offered for sale by Actel
on or before the second anniversary of the Effective Date of this Agreement and
(b) future generations of such products reflecting the evolution of such
products in the ordinary course of business of QuickLogic's product lines as
they exist on the second anniversary of the Effective Date of this Agreement.
4.2. QuickLogic agrees that no purchaser or transferee of any
Non-Assertion Patent from QuickLogic or its Affiliate and no assignee of the
right to enforce any Non-Assertion Patent from QuickLogic or its Affiliate will
assert during the term of this Agreement or thereafter, directly or indirectly,
any cause of action based, in whole or in part, upon the purported infringement
by Actel or its suppliers or customers, mediate or immediate, during the term of
this Agreement of the Non-Assertion Patent sold, transferred, or assigned as a
result of the manufacture, use, importation, offer for sale, sale, lease,
distribution, or other transfer of (a) products first offered for sale by Actel
on or before the second anniversary of the Effective Date of this Agreement and
(b) future generations of such products reflecting the evolution in the ordinary
course of business of QuickLogic's product lines as they exist on the second
anniversary of the Effective Date of this Agreement.
4.3. Subject to Section. 4.5 hereof, Actel agrees that Actel and its
Affiliates will not assert during the term of this Agreement and thereafter,
directly or indirectly, any cause of action based, in whole or in part, upon the
purported infringement by QuickLogic or its suppliers or customers, mediate or
immediate during the term of this Agreement of any Non-Assertion Patent, whether
granted by the United States or another country Actel or its Affiliates or any
third party, as a result of the manufacture, use importation, offer for sale,
sale, lease, distribution, or other transfer of (a) products first offered for
sale by QuickLogic on or before the second anniversary of the Effective Date of
this Agreement and (b) future generations of such products reflecting the
evolution of such products in the ordinary course of business of Actel's product
lines as they exist on the second anniversary of the Effective Date of this
Agreement.
4.4. Subject to Section 4.5 hereof, Actel agrees that no purchaser or
transferee of any Non-Assertion Patent from Actel or its Affiliate and no
assignee of the right to enforce any Non-Assertion Patent from Actel or its
Affiliate will assert during the term of this Agreement or thereafter, directly
or indirectly, any cause of action based, in whole or in part, upon the
purported infringement by QuickLogic or its suppliers or customers, mediate or
immediate, during the term of this Agreement of the Non-Assertion Patent sold,
transferred, or assigned as a result of the manufacture, use, importation, offer
for sale, sale, lease, distribution, or other transfer of (a) products first
offered for sale by QuickLogic on or before the second anniversary of the
Effective Date of this Agreement and (b) future generations of such products
reflecting the evolution of such products in the ordinary course of business of
Actel's product lines as they exist on the second anniversary of the Effective
Date of this Agreement.
4.5. Notwithstanding anything in this Agreement to the contrary,
neither Actel nor its Affiliates shall be precluded or in any way restrained by
this Agreement from asserting against any Person, including QuickLogic and any
Acquiring Person, any claim of infringement of any Actel Licensed Patent or
Non-Assertion Patent as a result of the manufacture, use, importation, offer for
sale, sale, lease, distribution, or other transfer of (a) an SRAM Programmable
Logic Device prior to a Change in Ownership of QuickLogic, (b) a Non-Antifuse
Programmable Logic Device following a Change in
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CONFIDENTIAL TREATMENT REQUESTED
Ownership of QuickLogic, or (c)(i) flash products first offered for sale by
GateField on or before the second anniversary of the Effective Date of this
Agreement and future generations of such products reflecting the evolution of
such products in the ordinary course of business of GateField's product lines as
they exist on the second anniversary of the Effective Date of this Agreement or
(ii) "knockoffs" substantially similar to such products, in each case subject to
the rights of any sublicensee authorized under Sections 2.2(b) and (c) hereof.
5. REPRESENTATIONS, WARRANTIES, AND DISCLAIMERS
5.1. Each Licensor Party represents and warrants that it has all right,
title, and interest in and to the Patents purported to be licensed by it to the
Licensee Party and all power and authority necessary to grant the licenses to
such Patents that are granted by the Licensor Party to the Licensee Party
hereunder.
5.2. Each Licensor Party represents and warrants that neither it nor
any of its Affiliates has the right or power to direct any third party to assert
against the Licensee Party any cause of action based upon the Licensee Party's
purported infringement of any patent owned or enforceable by such third party.
5.3. Nothing contained in this Agreement shall be construed as a
warranty or representation that the manufacture, sale, lease, use, or other
transfer of Programmable Logic Devices by either party or any component thereof
will be free from infringement of patents, trademarks, copyrights, mask work
rights, or other intellectual property or other rights of third parties or of
the Licensor Party, except to the extent of the rights expressly licensed
hereunder to the Licensee Party by the Licensor Party, or that the Licensee
Party will be able to manufacture or to sell or otherwise transfer any product
based upon the rights it receives hereunder from the Licensor Party. Except to
the extent, and only to the extent, expressly stated herein, neither party
makes any warranty as to the accuracy, sufficiency, or suitability of any
information contained in any Patent licensed hereunder. Each Licensee Party
assumes the risk of defects or inaccuracies in the Patent or other data or
information, if any, supplied by the Licensor Party. Neither party shall be
under any obligation by this Agreement to obtain any patent or, once having
obtained a patent, to maintain' that patent in force.
5.4. Each party acknowledges and agrees that the other party has made
no statement or representation as to the size of the market for the products
that may be made or sold utilizing the licenses granted or to be granted
hereunder or as to the amount of revenue or profits to be received by the party
obtaining such licenses. Each party acknowledges that, in entering into this
Agreement, it is relying entirely on its own estimate as to the market for the
products that may be made and sold utilizing the license granted and to be
granted hereunder.
5.5. Each party acknowledges and agrees that a Programmable Logic
Device containing SRAM is not and shall not be deemed to be an SRAM
Programmable Logic Device if all of the SRAM is User Memory; and a
Programmable Logic Device containing SRAM is and shall be deemed to be an
SRAM Programmable Logic Device only if one or more of the Programmable
Switching Elements of the Programmable Logic Device is controlled by SRAM.
6. TERM AND TERMINATION
6.1. The term of this Agreement shall commence on the Effective Date
and, subject to this Section 6 and to Section 8, shall expire when the last to
expire of the Patents licensed hereunder expires.
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CONFIDENTIAL TREATMENT REQUESTED
6.2. If either party shall fail to perform a Material Term of this
Agreement and such failure is not cured within sixty (60) days after written
notice to the defaulting party specifying the nature of the default, the
complaining party shall have the right at its option:
6.2.1. to terminate all rights and licenses granted by the
complaining party to the defaulting party under this Agreement by giving
written notice of such termination to the defaulting party, effective on
the sixtieth (60th) day after such termination notice is given if the
default has not then been cured; and/or
6.2.2. to seek any other remedies available at law or in equity as
a result of such failure.
6.3. Each party agrees that (a) this Agreement is personal to it; (b)
if it is the subject of a Termination Event described in Section 1.34.1 or
1.34.2 hereof, this Agreement shall automatically terminate; and (c) if it is
the subject of any other Termination Event, the other party shall have the right
to terminate this Agreement by giving written notice of termination to such
party, such termination to be effective on the tenth (10th) day after such
notice of termination under this Section 6.3 is given in accordance with this
Agreement. Upon termination of this Agreement under the provisions of this
Section 6.3, the rights and licenses granted to the party that was the subject
of the Termination Event shall terminate. The rights and licenses granted under
this Agreement to the other party shall survive termination in accordance with
the applicable terms hereof; PROVIDED, HOWEVER, all such licenses to a party
shall terminate no later than the last to expire of any Patents of the other
party that are licensed hereunder. Notwithstanding anything in this Agreement to
the contrary, the parties shall have the right to use, lease, sell, or otherwise
dispose of Programmable Logic Devices in the process of manufacture or in
finished goods inventory upon the termination of this Agreement.
6.4 In the event of a Change in Ownership, the rights and obligations
of the Acquired Party shall continue in full force and effect, and the Acquired
Party shall have the right to assign such rights (including the licenses and
non-assertion covenants) to the Acquiring Party, all subject to the following:
6.4.1. The Acquiring Party shall agree in writing to be fully
bound by all the terms and conditions of this Agreement.
6.4.2. All sublicenses granted by the Acquired Party to the
Acquiring Party and its Affiliates shall be limited to Internal Use.
6.4.3. If QuickLogic is the Acquired Party, the license under
Section 2.1(a) hereof shall be limited to Antifuse Programmable Logic
Devices following the Change in Ownership and any sublicense granted
under Section 2.1(b) hereof following the Change in Ownership shall be
limited to Internal Use.
6.4.4. Subject to Section 6.4.6 hereof, if Actel is the
Acquired Party, Actel shall pay to QuickLogic [*] if the Change in
Ownership occurs within one year after the Effective Date, [*] of the
Change in Ownership occurs one or more but less than two years after
the Effective Date, [*] if the Change in Ownership occurs two or more
but less than three years after the Effective Date, [*] if the Change
in Ownership occurs three or more but less than four years after the
Effective Date, and $0 if the Change in Ownership occurs four or more
years after the Effective Date (in each case, less the balance owed by
QuickLogic to Actel, if any, pursuant to Section 3 hereof).
[*] = 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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CONFIDENTIAL TREATMENT REQUESTED
6.4.5. Subject to Section 6.4.6 hereof, if QuickLogic is the
Acquired Party, QuickLogic shall pay to Actel [*] if the Change in
Ownership occurs within one year after the Effective Date, [*] of the
Change in Ownership occurs one or more but less than two years after
the Effective Date, [*] if the Change in Ownership occurs two or more
but less than three years after the Effective Date, [*] if the Change
in Ownership occurs three or more but less than four years after the
Effective Date, and $0 if the Change in Ownership occurs four or more
years after the Effective Date (in each case, plus the balance owed by
QuickLogic to Actel, if any, pursuant to Section 3 hereof).
6.4.6. The payments described in Sections 6.4.4 and 6.4.5 hereof
shall be due and payable ten (10) business days following the Change in
Ownership, PROVIDED, HOWEVER, that no payment shall be due on account of
a Change in Ownership if all Programmable Logic Devices made by or for
the Acquiring Party or its Affiliates following the Change in Ownership
are exclusively for the Internal Use of the Acquiring Party and its
Affiliates.
6.5. If, following a Change in Ownership or in anticipation thereof, an
Acquiring Party or its Affiliate asserts during the term of this Agreement or
thereafter, directly or indirectly, any cause of action based, in whole or in
part, upon the purported infringement by the Non-Acquired Party or its suppliers
or customers, mediate or immediate, during the term of this Agreement of any
Non-Assertion Patent as a result of the manufacture, use, importation, offer for
sale, sale, lease, distribution, or other transfer of (a) a Programmable Logic
Device, if Actel is the Non-Acquired Party, (b) a Programmable Logic Device
other than an SRAM Programmable Logic Device, if QuickLogic is the Non-Acquired
Party and QuickLogic had not previously been subject to a Change in Ownership,
or (c) an Antifuse Programmable Logic Device, if QuickLogic is the Non-Acquired
Party and QuickLogic had previously been subject to a Change in Ownership, then
the Non-Acquired Party may terminate all rights and licenses granted by it under
this Agreement by giving written notice of such termination to the Acquiring
Party, effective on the thirtieth (30th) day after such termination notice is
given if the claim is then still being asserted against the Non-Acquired Party,
PROVIDED, HOWEVER, that the Non-Acquired Party Shall have no right to terminate
the rights and licensed granted by it under this Agreement if, prior to the
assertion by the Acquiring Party or its Affiliate of a Non-Assertion Patent
referred to above (but following the Change in Ownership or in anticipation
thereof), the Non-Acquired Party had first asserted, directly or indirectly, a
cause of action based, in whole or in part, upon the purported infringement by
the Acquiring Party or its Affiliate of any patent as a result of the
manufacture, use, importation, offer for sale, sale, lease, distribution, or
other transfer of (i) an Antifuse Programmable Logic Device, if Actel is the
Non-Acquired Party and QuickLogic had previously been subject to a Change in
Ownership, (ii) a Programmable Logic Device other than an SRAM Programmable
Logic Device, if Actel is the Non- Acquired Party and QuickLogic had not
previously been subject to a Change in Ownership, or (iii) a Programmable Logic
Device, if QuickLogic is the Non-Acquired Party.
6.6. Neither suspension nor termination shall excuse the defaulting
party from any obligation incurred hereunder prior to the date of suspension or
termination.
6.7. The terms and conditions of Sections 1, 3, 5, 6, 7, 8, and 9 shall
survive the expiration, termination, or cancellation of this Agreement from any
cause.
7. ENFORCEMENT
7.1. The formation, effect, performance, and construction of this
Agreement shall be governed by the laws of the State of California of the United
States of America, except those pertaining to choice of laws, as though made by
two parties residing in California so as to be fully performed with the State of
California.
[*] = 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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CONFIDENTIAL TREATMENT REQUESTED
7.2. IN NO EVENT SHALL EITHER PARTY HAVE ANY LIABILITY TO THE OTHER FOR
INDIRECT, INCIDENTAL, OR CONSEQUENTIAL DAMAGES, INCLUDING BUT NOT LIMITED TO
LOST PROFITS, OR FOR SPECIAL, EXEMPLARY, OR PUNITIVE DAMAGES, AND EACH PARTY
COVENANTS NOT TO SEEK ANY SUCH DAMAGES WITH RESPECT TO ANY CLAIM ARISING OUT OF
OR RELATED TO THIS AGREEMENT.
8. ASSIGNMENT OF AGREEMENT
8.1. Except as expressly set forth in Section 6.4 above, neither this
Agreement nor the rights granted and obligations undertaken pursuant to this
Agreement may be assigned, sold, or otherwise transferred, in whole or in part,
PROVIDED, HOWEVER, that this Agreement may be assigned by either party in
connection with its reincorporation under the laws of a state other than
California.
8.2. For all purposes of Section 6, a reference to any license granted
by either party under this Agreement shall also be deemed to be a reference to
that party's covenants under Section 4 of this Agreement not to assert claims
under its patents.
8.3. The parties acknowledge and agree that this Agreement is an
executory contract governed by 11 U.S.C. Sections 365(c)(i), (e)(ii), and (n)
in the event of a bankruptcy case with regard to either party. As such, this
Agreement is not subject to assumption or assignment in the event of
bankruptcy without the consent of the non-debtor party.
9. MISCELLANEOUS
9.1. This Agreement, the Settlement Agreement and Mutual Release,
and the Security Agreements incorporate the entire understanding of the
parties with respect to the subject matter of this Agreement and merge all
prior agreements and understanding between the parties whether oral or
written, with respect to this subject matter. This Agreement shall be
interpreted law of California such as applied to a contract to be wholly
performed within the state of California.
9.2. Except as may be expressly set forth herein, nothing in this
Agreement shall be construed as obligating any party to manufacture or sell any
particular product hereunder or as restricting the right of either party herein
to engage in any development of, or to make, have made, use, lease, loan, sell,
or otherwise dispose of any product, other than the products with respect to
which licenses are herein granted.
9.3. All notices required permitted to be given hereunder shall be in
writing and shall be sent by facsimile, receipt to be confirmed by sender via
telephone call, or by registered or certified mail, postage prepaid, addressed
as follows:
If to QuickLogic: QuickLogic Corporation
0000 Xxxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxxxx 00000
Telecopier No.: 000-000-0000
Attention: President
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CONFIDENTIAL TREATMENT REQUESTED
If to Actel: Actel Corporation
000 Xxxx Xxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Telecopier No.: (000) 000-0000
Attention: President
Either party may change its address by a notice given to the other party in the
manner set forth above. Notices given as herein provided shall be construed to
have been given (a) on the day received if sent by facsimile or (b) five (5)
days after the sending thereof by registered or certified mail, unless the
receiving party proves that the notice was actually received at a later date.
9.4. The failure of any party hereunder to perform any obligation
otherwise due as a result of governmental action, laws, orders, regulations,
directions or requests, or as a result of events, such as war, acts of public
enemies, strikes or other labor disturbances, fires, floods, acts of God, or any
causes of like or different kind beyond the control of the parties is excused
for so long as said cause exists to the extent such failure is caused by such
lain, order, regulation, direction, request, or other event.
9.5. No failure or delay on the part of either party in the exercise of
any right or privilege hereunder shall operate as a waiver thereof or of the
exercise of any other right or privilege hereunder nor shall any single or
partial exercise of any such right or privilege preclude other or further
exercise thereof or of any other right or privilege.
9.6. Any title or caption included herein is for convenience only and
is not to be used in the interpretation of this Agreement.
9.7. Nothing contained herein or done pursuant to this Agreement shall
constitute the parties as entering upon a joint venture or partnership or shall
constitute either party hereto the agent of the other party for any purpose or
in any sense whatsoever.
9.8. This Agreement may be executed simultaneously in two or more
counterparts, each of which shall be deemed an original, but all of which
together constitute one and the same Agreement.
9.9. Should any clause, sentence, or paragraph of this Agreement
judicially be declared to be invalid, unenforceable, or void, such decision
shall not invalidate or void the remainder of this Agreement, and the parties
hereby agree that the part or parts of this Agreement so held to be invalid,
unenforceable, or void shall be deemed to have been stricken, and the remainder
shall have the same force and effect as if such part or parts had never been
included herein.
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CONFIDENTIAL TREATMENT REQUESTED
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed in their respective corporate names.
ACTEL CORPORATION QUICKLOGIC CORPORATION
By: /s/ XXXX X. EAST By: /s/ E. XXXXXX XXXX
-------------------------------- --------------------------------
Name: XXXX X. EAST Name: E. XXXXXX XXXX
------------------------------ ------------------------------
Title: President & CEO Title: President & CEO
----------------------------- -----------------------------
Date: August 25, 1998 Date: 25 August 1998
------------------------------ ------------------------------
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