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[*] Confidential treatment has been requested with respect to the information
contained within the "[*]" markings. Such marked portions have been omitted
from this filing and have been filed separately with the Securities and
Exchange Commission.
LICENSE AGREEMENT
This License Agreement (the "Agreement") is made and is effective as of
September 26, 1997, by and between SEEQ Technology Incorporated, a Delaware
corporation, with a place of business at 00000 Xxxxxxx Xxxxxxx, Xxxxxxx,
Xxxxxxxxxx 00000, Xxxxxx Xxxxxx of America ("SEEQ") and Silicon Integrated
Systems Corporation, a Taiwan corporation, with a place of business at Xx. 00
Xxxxxxxx Xxxx 1, Science-Based Industrial Park, Xxxx Xxx, Taiwan, Republic of
China ("SiS"). Either SEEQ or SiS may be referred as a "Party" or collectively
as the "Parties".
1. Definitions
For purposes of this Agreement, the following terms shall have the
meanings set forth adjacent to them:
A. [*] designed and produced by SEEQ.
B. Combo Chip: A device that SiS will produce incorporating Intellectual
Property Rights embodied in the [*].
C. Intellectual Property Rights means and includes all intangible,
intellectual, proprietary and industrial property rights, and all tangible
embodiments thereof wherever located, including but not limited to the
following: (i) all copyrights and other rights in works of authorship including
all registrations and applications therefor; (ii) all mask works and other
rights pertaining to semiconductors, including cell libraries, microcode, tapes,
tape-outs and netlist rights, including all registrations and applications
therefor; (iii) all patents and patent applications, patentable ideas,
inventions and innovations; (iv) all knowhow and trade secrets; (v) all design
and code documentation, methodologies, processes, design information, formulas,
engineering specifications, technical data, testing procedures, drawings and
techniques and other proprietary information and material of any kind; (vi) all
documentation, records, databases, drafts, designs, code, drawings and
algorithms; and (vii) any and all translations of any of the foregoing.
2. SiS' PRINCIPAL OBLIGATIONS
A. License Fee: For the rights granted to SiS hereunder, SiS will
pay the following fee in U.S. Dollars due as specified:
1. For the Intellectual Property Rights embodied in the [*], $[*]
(the "license fee"), due per SEEQ's standard terms and conditions.
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2. SiS and SEEQ acknowledge that the license fee is subject to a
withholding tax of twenty percent (20%) imposed by the government of Taiwan. SIS
will apply for, and use its best efforts to obtain, a waiver by the government
of Taiwan of such twenty percent (20%) withholding tax.
3. INTELLECTUAL PROPERTY RIGHTS
A. OWNERSHIP
1. Except as expressly set forth herein, SEEQ retains all right,
title and interest in and to the Intellectual Property Rights embodied in the
[*] and the same are proprietary to SEEQ, and SEEQ retains all right, title and
interest in and to such Intellectual Property Rights. Any portion of the
Intellectual Property Rights embodied in the [*] incorporated into the Combo
Chip are licensed without the right to sublicense, not sold, to SiS solely for
the purposes, and subject to the applicable limitations, set forth herein.
2. Protection of Confidential Information. Each party agrees to
take responsible measures to preserve the secrecy of all confidential
information of the other party contained or embodied in the Combo Chip to avoid
any disclosure which would forfeit trade secret protection for such confidential
information.
B. LICENSE GRANTS
1. Subject to the terms and conditions of this Agreement, SEEQ
hereby grants to SiS a worldwide, nonexclusive,
nontransferable license, without the right to sublicense, to
SEEQ's Intellectual Property Rights embodied in the [*] solely
for the purpose of SiS's development of the Combo Chip.
4. LIMITATIONS ON LIABILITY.
NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ANY
INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL OR PUNITIVE DAMAGES ARISING OUT OF
OR RELATING TO THIS AGREEMENT, WHETHER LIABILITY IS BASED ON BREACH OF CONTRACT,
BREACH OF WARRANTY (EXPRESS, IMPLIED OR OTHERWISE) OR OTHERWISE, AND WHETHER
ASSERTED IN CONTRACT, TORT (INCLUDING NEGLIGENCE, INTENTIONAL ACTS AND STRICT
LIABILITY) OR OTHERWISE, AND IRRESPECTIVE OF WHETHER THE PARTIES HAVE ADVISED OR
BEEN ADVISED OF THE POSSIBILITY OF ANY SUCH DAMAGES. IN NO EVENT SHALL EITHER
PARTY'S LIABILITY HEREUNDER EXCEED $[*].
5. REPRESENTATIONS & WARRANTIES; DISCLAIMERS, CONSEQUENTIAL DAMAGES
A. REPRESENTATIONS & WARRANTIES
1. Subject to the limitations of this Article 5, SEEQ represents
and warrants to SiS as follows:
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a. As of the Effective Date: (1) Except for material in
the public domain, either (i) SEEQ was the sole and exclusive legal and
equitable owner of, and held good and marketable title to the Intellectual
Property Rights embodied in the [*] and/or (ii) to the extent all or a portion
of the Intellectual Property Rights embodied in the [*] were licensed by SEEQ
from third parties, SEEQ has license rights from its licensors sufficient to
permit SEEQ to perform its obligations under this Agreement; (2) the
Intellectual Property Rights embodied in the [*] were not subject to any lien,
security interest, royalty obligation or other interest or claim of any kind;
(3) SEEQ and/or its licensors had the sole right to bring actions for
infringements of any Intellectual Property Rights embodied in the [*]; and (4)
none of the Intellectual Property Rights embodied in the [*] was subject to any
escrow.
b. To the best knowledge of SEEQ: (1) the Intellectual
Property Rights embodied in the [*] and the marketing, reproduction or use of
the Intellectual Property Rights embodied in the [*] did not infringe upon any
patent, copyright, trade secret or other proprietary right of any third party;
(2) none of the Intellectual Property Rights embodied in the [*] were being
infringed upon by others; and (3) none of the Intellectual Property Rights
embodied in the [*] were subject to any outstanding order or judgment.
c. To the best knowledge of SEEQ, all SEEQ employees who
had been directly involved in the development of the Intellectual Property
Rights embodied in the [*] had executed confidentiality and non-disclosure
agreements covering the source code and other non-public information contained
in the Intellectual Property Rights embodied in the [*].
d. The Intellectual Property Rights embodied in the [*]
materially conformed to the specifications contained in the user manual and
documentation therefor.
B. DISCLAIMERS
Except as expressly set forth in Section 5-A and elsewhere in
this Agreement, SEEQ hereby disclaims making any representations or warranties,
whether arising by implication, estoppel or otherwise, and, more specifically,
makes no warranty that the Intellectual Property Rights embodied in the [*] will
be accurate, sufficient, or suitable for use by SiS or any intended use by SiS
and SEEQ assumes no responsibility or liability for damages, whether direct,
indirect, consequential or incidental which might arise out of use by SiS of
said Intellectual Property Rights embodied in the [*].
1. NO OTHER WARRANTIES.
EACH PARTY UNDERSTANDS AND AGREES THAT THE COMBO CHIP WILL
BE TESTED, USED AND MARKETED AT ITS SOLE RISK AND EXPENSE. EACH PARTY EXPRESSLY
DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION,
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
NONINFRINGEMENT WITH RESPECT TO THE COMBO CHIP AND IS SUITABLE OR OTHERWISE FIT
FOR USE IN OR IN CONNECTION WITH ANY CHIP THAT SUCH OTHER PARTY MAY NOW OR
HEREAFTER DEVELOP OR SEEK TO DEVELOP, AND FOR ANY OTHER USE OR PURPOSE.
C. NO CONSEQUENTIAL DAMAGES
NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR
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ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL OR PUNITIVE DAMAGES ARISING OUT
OF OR RELATING TO THIS AGREEMENT, WHETHER LIABILITY IS BASED ON BREACH OF
CONTRACT, BREACH OF WARRANTY (EXPRESS, IMPLIED OR OTHERWISE) OR OTHERWISE, AND
WHETHER ASSERTED IN CONTRACT, TORT (INCLUDING NEGLIGENCE AND STRICT Chip
LIABILITY) OR OTHERWISE, AND IRRESPECTIVE OF WHETHER THE PARTIES HAVE ADVISED OR
BEEN ADVISED OF THE POSSIBILITY OF ANY SUCH DAMAGES. IN NO EVENT SHALL EITHER
PARTY'S LIABILITY HEREUNDER EXCEED $[*].
IN WITNESS WHEREOF, the parties have had this Agreement executed by
their respective authorized offices on the date written below.
By and on behalf of
SEEQ TECHNOLOGY INCORPORATED,
a Delaware corporation
By: Xxxxxxx Xxxxxxxx
Its: Chief Executive Officer
Date: 11/14/97
By and on behalf of
SILICON INTEGRATED SYSTEMS CORPORATION,
a Taiwan corporation
By: Xxxxxx Xxx
Its: President
Date: 10/28/97
[*] Confidential treatment has been requested with respect to the information
contained within the "[*]" markings. Such marked portions have been omitted
from this filing and have been filed separately with the Securities and
Exchange Commission.
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