Vitesse Semiconductor Corporation Development Agreement for Proprietary Epitaxial DHBT Structure Compatible with the VIP2 InP IC Process
Vitesse
Semiconductor Corporation
Development
Agreement for Proprietary Epitaxial DHBT Structure
Compatible
with the VIP2 InP IC Process
Vitesse
Semiconductor Corporation, a corporation organized under the laws of the state
of Delaware,with a principal place of business at 000 Xxxxx Xxxxx, Xxxxxxxxx,
Xxxxxxxxxx
00000
(“Vitesse”) and GigaBeam Corporation, a corporation organized under the laws of
the state of Delaware, with a principal place of business at 000 Xxxxxxxxxx
Xxxxx, Xxxxx 000, Xxxxxxx, XX 00000 (“Customer”) agree to enter into this
agreement (the “Agreement”) for the development of analog and digital
communications integrated circuit products for the 00-000 XXx frequency range.
In part, this work includes the development of a custom InP-based epitaxial
layer stack to realize a transistor with properties required for the
implementation of certain of the communications integrated circuit products.
This Agreement is entered into this 8th day of August, 2005 (the “Effective
Date”).
In
consideration of the mutual promises contained in this Agreement, and other
good
and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, and intending to be legally bound, the parties agree as
follows:
1. Development
and Evaluation.
| a. |
Customer
agrees to furnish all critical DHBT device specifications required
for
Vitesse to develop and evaluate an InP-based epitaxial structure
as set
forth in subparagraphs b. - f. of this paragraph 1. These specifications
may include, and are not limited to, functional description of operation
of the transistor, arrangement and location of input, output, power,
and
control ports, temperature range of operation, and ac and dc performance.
|
| b. |
Vitesse
shall design a multilayer epitaxial structure (the “Stack”) that, when
used in conjunction with the VIP2 process, will produce transistors
which
meet the function and performance specified in part a. above, fabricate
wafers using the VIP2 InP integrated circuit process, and provide
prototypes of the transistors (the “ Transistor Prototypes”) to Customer
for development and evaluation purposes all in accordance with the
schedule and completion dates (the “Schedule”) set forth in Exhibit 1
attached hereto.
|
| c. |
In
accordance with the Schedule, Vitesse shall evaluate the Transistor
Prototypes within its own facility and supply the results of this
evaluation to Customer. Customer may also evaluate Transistor Prototypes
within its own facility and provide Vitesse written reports of the
performance and deficiencies of the Transistor Prototypes in accordance
with the Schedule. Based on these evaluations, Vitesse will modify
and
construct a transistor model, within the Cadence design environment,
suitable for use in high frequency circuit design. Upon reasonable
request
of Vitesse, Customer shall grant Vitesse representatives access to
Customer’s facility to observe evaluations. Vitesse shall deliver to
Customer the final design kit with updated transistor models per
the dates
in the Schedule.
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| d. |
Upon
completion of the development and evaluation of the Transistor Prototypes,
Vitesse shall make the Stack available for use by Customer in the
development of InP-based integrated circuit.
|
| e. |
Vitesse
shall review all Customer proposed integrated circuit product concepts
and
provide design services, where possible, to enable the timely
demonstration of prototypes (the “IC
Prototypes”).
|
| f. |
On
a biweekly basis, Vitesse shall provide Customer with information
as to
the progress and status of each development effort being conducted
under
this Agreement. Such documentation shall include, but is not limited
to
physical and/or schematic descriptions of the Prototype(s), test
data, and
an updated milestone chart showing performance in relationship to
the
Schedule.
|
| g. |
Vitesse
shall provide the necessary skilled personnel and proper facilities
to
perform its obligations under this
Agreement.
|
2. Pricing.
| a. |
Pricing
for the Stack development project is set forth, in Exhibit 2
attached
hereto. The Stack Development Price (as defined in Exhibit 2) will
be paid
by Customer to Vitesse, in full satisfaction for the completion of
the
Stack development project and related deliverables as set forth in
the
Schedule, and paid in accordance with the payment terms set forth
in
Paragraph 5 c. (1) of this
Agreement.
|
| b. |
Pricing
for IC Prototypes and/or other developments shall be mutually agreed
upon
in applicable Purchase Order(s) (defined
below).
|
3. Exclusivity.
Customer
and Vitesse agree that during the term of this Agreement and any renewal or
extension thereof that Vitesse will not compete with Customer by developing,
designing, or selling analog or digital InP products for radio communications
applications in the 50 - 300 GHz frequency range (the “Field of Use”) subject to
Customer maintaining the minimum dollar volume of business with Vitesse as
set
forth in Exhibit 3 hereto.
4. Orders;
Payment Terms; Delivery Terms.
| a. |
Upon
execution of this Agreement, Customer shall issue a purchase order
(“Development Order”) for the Stack development project.
|
| b. |
Customer
may (but is not required) to purchase additional development or design
services, IC foundry services and/or custom IC Prototype development
to
produce a product (the “Product”), by issuing purchase orders (“Purchase
Orders”) to Vitesse from time to time. Purchase Orders, if any, shall be
issued in writing, by mail, facsimile or electronic means as the
parties
may from time to time agree. Each Purchase Order issued under this
Agreement is made a part of, and incorporated into, this Agreement.
If any
term of this Agreement conflicts with any term of a Purchase Order,
this
Agreement shall control. Acceptance of a Purchase Order by Vitesse
does
not constitute acceptance of provisions in the Purchase Order that
conflict with this Agreement; no additional or different provisions
proposed by Customer shall apply.
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| c. |
The
payment terms shall be as follows:
|
|
Development
Order:
|
20%
net 30 days after receipt of Development Order
|
|
|
20%
net 30 days after review of Stack by GigaBeam
|
||
|
40%
net 30 days after the start of transistor fabrication
|
||
|
20%
net 30 days after delivery to Customer of design kit with updated
transistor models
|
||
|
Future
foundry services purchases:
|
40%
net 30 days after start of wafer lot
|
|
|
40%
net 30 days after delivery of Testar1 data
|
||
|
20%
net 30 days after delivery of Testar2 data
|
||
|
IC
design and development services:
|
25%
net 30 days after design start
|
|
|
25%
net 30 days after Preliminary Design Review
|
||
|
25%
net 30 days after Critical Design Review
|
||
|
25%
net 30 days after release of GDS2 database tape to mask
maker
|
| d. |
Customer
shall pay all shipping and insurance costs associated with the delivery
of
Product. All shipments to or from Vitesse’s facilities shall be F.O.B.
Vitesse’s facilities. Title and risk of damage or loss to the Product and
Prototypes passes to Customer upon tender of the Product and Prototypes
to
the shipping carrier at Vitesse’s facilities.
|
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| e. |
Customer
shall be responsible for all applicable state, federal and local
taxes,
customs, duties, tariffs, assessments and other charges applicable
to the
sale or transfer of the Product and Prototypes from Vitesse to Customer,
excluding all taxes computed on the net income or gross revenue of
Vitesse.
|
| f. |
Customer
shall pay interest on any amount not paid when due at a monthly rate
of
1.5% or the maximum rate allowed by law, whichever is lower. In the
event
of a good faith dispute with any invoice issued by Vitesse under
this
agreement, Customer shall pay the undisputed portion in accordance
with
this Agreement. The parties will use commercially reasonable efforts
to
resolve any disputes within thirty days of Customer’s notification of such
a dispute to Vitesse.
|
5. Limited
Warranty and Disclaimer.
| a. |
ALL
PROTOTYPES ARE BEING PROVIDED “AS IS.” VITESSE MAKES NO WARRANTIES WITH
RESPECT TO THE PROTOTYPES INCLUDING,
BUT NOT LIMITED TO,
THE WARRANTIES OF MERCHANTABILITY, NON-INFRINGEMENT AND FITNESS FOR
A
PARTICULAR PURPOSE.
|
| b. |
As
Vitesse’s sole obligation and as Customer’s exclusive remedy for any
defective or nonconformity of any Product, Customer shall have the
right
to return any defective or nonconforming Product to Vitesse within
30 days
of receipt of such Product, and Vitesse shall, in its sole discretion,
either replace or repair such Product within 30 days of receipt of
the
returned Product. As used herein, “defective or nonconforming Product”
means Products that do not meet the Final Specifications as mutually
agreed upon between Customer and
Vitesse.
|
| c. |
EXCEPT
AS SET FORTH IN SECTION 5(b), VITESSE DISCLAIMS ANY AND ALL
WARRANTIES, CONDITIONS OR REPRESENTATIONS (EXPRESS OR IMPLIED, ORAL
OR
WRITTEN) WITH RESPECT TO ANY PRODUCT, INCLUDING ALL IMPLIED WARRANTIES
OF
MERCHANTABILITY OR FITNESS OR SUITABILITY FOR ANY PURPOSE (WHETHER
OR NOT
VITESSE KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED OR OTHERWISE
IS IN
FACT AWARE OF ANY SUCH PURPOSE) OR CONDITIONS OF TITLE OR NONINFRINGEMENT,
WHETHER ALLEGED TO ARISE BY OPERATION OF LAW, BY REASON OF CUSTOMER’S ACTS
OR OMISSIONS OR USAGE IN THE TRADE OR BY COURSE OF DEALING. VITESSE
ALSO
EXPRESSLY DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTY OR REPRESENTATION
TO
ANY PERSON OTHER THAN CUSTOMER. ALL VITESSE’S WARRANTIES SHALL BE NULL AND
VOID IF CUSTOMER OR ANYONE ELSE (i) ALTERS OR MODIFIES THE
PRODUCT
WITHOUT VITESSE’S PRIOR WRITTEN APPROVAL; (ii) DOES NOT USE THE
PRODUCT IN ACCORDANCE WITH ANY ACCOMPANYING DOCUMENTATION OR OTHER
INSTRUCTIONS; OR (iii) IF THE PRODUCT FAILS BECAUSE OF ANY
ACCIDENT,
ABUSE OR MISAPPLICATION.
|
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| d. |
VITESSE’S
LIABILITY FOR ANY CLAIMS, LOSSES OR DAMAGES ARISING UNDER THIS AGREEMENT
WITH RESPECT TO THE PROTOTYPES OR THE PRODUCT SHALL NOT EXCEED THE
AMOUNT
THAT CUSTOMER HAS PAID VITESSE FOR THE SPECIFIC PROTOTYPE OR PRODUCT
THAT
CAUSED THE DAMAGE. NEITHER VITESSE NOR CUSTOMER SHALL BE LIABLE TO
THE
OTHER OR ANY OTHER PERSON OR ENTITY, IN CONTRACT, TORT OR OTHERWISE,
FOR
ANY CONSEQUENTIAL DAMAGES (INCLUDING, WITHOUT LIMITATION, ANY DAMAGES
TO
DATA OR SYSTEMS OR FOR LOST PROFITS) AND ANY INCIDENTAL, SPECIAL,
EXEMPLARY OR PUNITIVE DAMAGES ARISING FROM ANY MATTERS COVERED BY
THIS
AGREEMENT, WHETHER FOR BREACH OF WARRANTY OR OTHERWISE, EVEN IF VITESSE
OR
CUSTOMER, AS THE CASE MAY BE, HAS BEEN ADVISED OF THE POSSIBILITY
OF SUCH
DAMAGES.
|
6. Indemnification.
| a. |
Vitesse
shall indemnify and hold harmless Customer and its shareholders,
officers,
directors, employees and agents from and against any losses, costs
or
damages, including reasonable attorneys’ fees and expenses, arising or
resulting from or in connection with (i) the fault, negligence
or
misconduct of Vitesse, its employees, representatives or agents in
performing or failing to perform this Agreement; (ii) the
breach by
Vitesse of its obligations hereunder, including without limitation,
any
warranty provided in this Agreement with respect to the Prototype
or
Product; and (iii) the use of the Prototype or Product in
accordance
with the instructions of Vitesse. The foregoing indemnification shall
be
null and void if (A) the Product is not installed, operated
and
maintained according to written procedures recommend by Vitesse or
(B) the Product has been altered, or modified with other products
or
materials without Vitesse’s prior written
approval.
|
| b. |
Customer
shall indemnify and hold harmless Vitesse and its shareholders, officers,
directors, employees and agents from and against any losses, costs
or
damages, including reasonable attorneys’ fees, arising or resulting from
or in connection with (i) the fault, misconduct or negligence of
Customer,
its employees, representatives or agents in the performance of this
Agreement; (ii) the breach by Customer of its obligations hereunder;
or
(iii) any non-commercial damage resulting from use of any product
or
material supplied by Customer.
|
7. Term
and Termination.
This
Agreement shall be effective as of the Effective Date and shall continue for
a
minimum five year term from the date hereof and will automatically extend on
a
year by year basis, provided,
however,
that
this Agreement may be terminated for any of the following reasons:
Page
5 of
12
| a. |
Either
party hereto may terminate this Agreement: (i) in the event
of a
default by the other party of any material obligation of this Agreement,
effective 30 days after written notice of such default is received
by the
other party and such default has not been cured or, if such default
is
incapable of being cured within the 30 day period, no steps have
been
taken to cure; or (ii) mutual written agreement of both
parties.
|
| b. |
Either
party hereto shall have the right to terminate this Agreement in
the event
the other party is unable to meet its debts and obligations to creditors
when due and enters into an arrangement with its creditors with respect
to
the payment of its debts and obligations which arrangements is not
terminated within thirty (30) days, makes a general assignment for
the
benefit of creditors, voluntarily files a petition in bankruptcy
or has
such a petition involuntarily filed against it, or is placed in an
insolvency proceedings, or if an order is issued appointing a receiver,
liquidator, trustee or assignee in bankruptcy or insolvency covering
all
or substantially all of such party’s
property.
|
8. Confidentiality.
Vitesse
and Customer each acknowledges that the other is the owner of valuable
confidential and proprietary information and trade secrets including,
but not limited to,
the
terms of this Agreement, the results of any tests completed by Customer, the
documentation exchanged between the parties relating to the Stack and any
Product, the reports provided pursuant to Section 1(c) and any such
similar
information all of which are subject to the Non-Disclosure Agreement dated
September 4, 2004.
9. Intellectual
Property.
Vitesse
Background Intellectual Property shall remain the exclusive property of Vitesse.
Customer Background Intellectual Property shall remain the exclusive property
of
Customer. Vitesse and Customer will execute and deliver any and all
applications, assignments, and documents necessary to evidence respective
ownership.
Any
Intellectual Property related to the Stack and any Products that are conceived,
invented, or developed during the course of this Agreement or any extension
or
renewal thereof shall be jointly owned by Vitesse and Customer, shall be deemed
to be cross licensed for use by each party on a royalty-free license basis,
and
subject to the exclusivity limitations set forth in paragraph 3 of this
Agreement. Upon mutual agreement to obtain patent protection or to secure other
Intellectual Property Rights for any such Intellectual Property, the parties
will share equally the costs of any patent applications, registration or
maintenance fees, including reasonable attorneys' fees and costs, that may
be
incurred in order to obtain such protection. In the event that either party
shall elect in writing not to participate in obtaining patent or other
Intellectual Property Right protection for such Intellectual Property, such
party will, upon request, convey, license, or otherwise make available, its
interest in the Intellectual Property to the other party.
For
purposes of this paragraph 9, the following definitions shall
apply:
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12
"Intellectual
Property" shall
mean all work product, documents, drawings, specification, designs, algorithms,
component board models, layout cells, schematics, functional blocks, diagrams,
design rules, simulation models, software, test protocols, methods and patterns
and other engineering, scientific, technical or other information, all
techniques, inventions, improvements, innovations, methodologies, and know-how,
whether patented, patentable, or registerable, all copyrights, trademarks,
semiconductor or circuit layout rights (whether such rights are registered
or
not) together with trade secrets and unique process structures.
"Intellectual
Property Rights" shall
mean any and all rights throughout the world related to the ownership or
exploitation of any Intellectual Property, including patent rights, rights
in
designs, copyrights and semiconductor topography rights (whether registered
or
not and any applications to obtain or register any of the foregoing), rights
in
inventions or other other confiddential information, and all other intellectual
property rights of a similar or corresponding character as the context may
require which may now or in the future exist.
“Customer
Background Intellectual Property”shall
mean the Intellectual Property owned or used, as at the Effective Date of this
Agreement, by Customer and which Customer may provide to Vitesse under this
Agreement, including Intellectual Property Rights embodied therein.
"Vitesse
Background Intellectual Property" shall
mean the Intellectual Property owned or used, as at the Effective Date of this
Agreement, by Vitesse and which Vitesse may provide to Customer under this
Agreement, including Intellectual Property Rights embodied therein.
10. Contacts.
Vitesse
and Customer shall each specify, in writing, a primary contact for all purposes
of this Agreement.
11. Governing
Law. This
Agreement shall be governed by and construed in accordance with the laws of
the
State of Delaware other than the conflicts of laws provisions
thereof.
12. Survival.
Sections 5(c), 5(d), 6, 7, 8, 9, 11, 12, 18 and 19, shall survive the
termination of this Agreement.
13. Entire
Agreement; Modification. This
Agreement and the exhibits hereto, constitute the entire agreement between
the
parties and supercedes any prior or contemporaneous agreements or
understandings. No amendment or modification of this Agreement shall be
effective unless in a writing signed by both parties hereto.
14. Independent
Contractor.
This
Agreement does not constitute Vitesse as an employee, agent, or legal
representative of Customer for any purpose whatsoever. Vitesse is not granted,
nor shall it represent that it has been granted, any right or authority to
assume or create any obligation or responsibility, expressed or implied, on
behalf of, or in the name of, Customer, to incur debts or make collections
for
Customer or to bind Customer in any manner whatsoever. It being the intent
of
the parties hereto to create the relationship on the part of Vitesse of an
independent contractor, for whose actions or failure to act, Customer shall
not
be responsible.
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15. Time
of the Essence.
Time is
of the essence and Vitesse shall design and deliver the Stack and the Transistor
Prototypes in accordance with Schedule 1 hereto.
16. No
Subcontracting.
Vitesse
may not subcontract in whole or in part any of its obligations under this
Agreement without the prior written consent of Customer which may be
withheld.
17. Assignment.
Neither
party may assign or otherwise transfer any of its rights, duties or obligations
under this Agreement without the prior written consent of the other party,
except either party may, upon prior written notice to the other party (but
without any obligation to obtain the consent of such other party), assign this
Agreement or any of its rights hereunder to any person or entity who succeeds
(by purchase, merger, operation of law or otherwise) to all or substantially
all
of the capital stock, assets or business of such party provided such person
or
entity agrees in writing to assume and be bound by all of the obligations of
such party under this Agreement. Any attempted assignment or transfer in
contravention of this Section 17 shall be void and of no force and effect.
This
Agreement shall be binding upon and inure to the benefit of the parties and
their respective legal representatives, successors and permitted
assigns.
18. Waiver.
No
failure or delay by either party in exercising any of its rights or remedies
hereunder will operate as a waiver thereof, nor will any single or partial
exercise of any such right or remedy preclude any other or further exercise
thereof or the exercise of any other right or remedy. The rights and remedies
of
a party provided in this Agreement are cumulative and not exclusive of any
rights or remedies provided under this Agreement, by law, in equity or
otherwise.
19. Notices.
Any
notice contemplated hereunder or provided for in this Agreement shall be made
to
the following in writing or by facsimile with confirmation or by overnight
courier services as follows:
|
To
Customer:
|
GigaBeam
Corporation
|
To
Vitesse:
|
Vitesse
Semiconductor Corporation
|
|
000
Xxxxxxxxxx Xxxxx
|
000
Xxxxx Xxxxx
|
||
|
Xxxxxxx,
XX 00000
|
Xxxxxxxxx,
XX 00000
|
||
|
Attn:
Legal Department
|
Attn:
Xxxx Xxxxx
|
||
|
Fax:
(000) 000-0000
|
Fax:
(000) 000-0000
|
20. Technology
Escrow.
Vitesse
agrees during the term of this Agreement, including any extension or renewal
thereof, to create and maintain current copies of any technical drawings or
other technical documents relating to the design and specification of the Stack
and any other development project undertaken pursuant to this Agreement (the
“IP
Materials”). Within 90 days of the date of this Agreement, Vitesse will enter
into a binding contractual arrangement with an escrow agent mutually agreeable
to the parties hereto (the “Escrow Agent”) according to which the Escrow Agent
will agree (i) to hold and safeguard the escrowed IP Materials during the term
of this Agreement (and any extension or renewal thereof), and (ii) to release
a
copy of such escrowed IP Materials to Customer if and when Vitesse enters into
bankruptcy, liquidates or winds up its business during the term of this
Agreement.
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IN
WITNESS WERHEOF, the parties hereto, by their duly authorized representatives,
have caused this Agreement to be executed as of the date first above
written.
|
GigaBeam
Corporation
|
Vitesse
Semiconductor Corporation
|
|
|
/s/
Xxxxxxx X. Xxxxxx
|
/s/
X. X. Xxxxxx
|
|
|
Signature
|
Signature
|
|
|
Xxxxxxx
X. Xxxxxx
|
X.
X. Xxxxxx
|
|
|
Name
|
Name
|
|
|
President
|
V.P.
Optical Technology
|
|
|
Title
|
Title
|
|
|
August
8, 2005
|
August
8, 2005
|
|
|
Date
|
Date
|
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Exhibit 1
Stack
Development Schedule
Milestones
dates of completion are measured sequentially commencing from order placement
and receipt of the key specs that the device must meet (e.g ft, fmax, beta,
etc).
| Critical Milestone: | Date of Completion: |
|
Define
epi stack and order wafers
|
1
week
|
|
Receive
epi material
|
3
weeks
|
|
Process
wafer lot using existing mask set
|
10
weeks
|
|
Characterize
wafer lot
|
3
weeks
|
|
Update
transistor models & release design kit
|
2
weeks
|
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of 12
Exhibit 2
Stack
Development Pricing
|
Fabricate
one lot of 5 InP wafers using existing mask set
|
$
|
125,000
|
||
|
Characterize
all wafers
|
50,000
|
|||
|
Update
transistor model and release design kit
|
30,000
|
|||
|
Stack
Development Price:
|
$
|
205,000
|
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of 12
Exhibit 3
Exclusivity
Minimums
The
minimum business level for maintaining exclusivity in the Field of Use for
each
of the next five years is shown below. The minimum business level may be
satisfied by Customer with a combination of development and/or production orders
and/or government funding (provided that any participation by Vitesse in
securing such government funding is limited to co-marketing and support
activities (e.g., proposal writing, briefings, project reporting, etc.) where
the costs of Vitesse of such activities are less and 5% of the value of the
funding) under this Agreement:
|
Period
|
Business
Level Minimums
|
|||||
|
August
8, 2005 through August 7, 2006
|
$
|
600,000
|
||||
|
August
8, 2006 through August 7, 2007
|
$
|
2,000,000
|
||||
|
August
8, 2007 through August 7, 2008
|
$
|
5,000,000
|
||||
|
August
8, 2008 through August 7, 2009
|
|
$
|
7,000,000
|
|||
|
August
8, 2009 through August 7, 2010
|
$
|
10,000,000
|
||||
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