* Confidential treatment has been granted or requested with respect to
portions of this exhibit, and such portions have been replaced with
"**". Such confidential portions have been deleted and separately
filed with the Securities and Exchange Commission pursuant to Rule 24b-2.
CONTAINS CONFIDENTIAL INFORMATION OF NEC AND EMS
SUBJECT TO PROTECTIVE ORDER
SETTLEMENT AND LICENSE AGREEMENT
--------------------------------
This Settlement and License Agreement ("Agreement") is effective as of the 9th
day of November 1999 ("Effective Date"), by and between Enhanced Memory
Systems, Inc., and NEC Corporation.
WHEREAS, the parties are involved in an Investigation before the United States
International Trade Commission, styled In re Certain Enhanced DRAM Devices
Containing Embedded Cache Memory Registers, Components Thereof, and Products
Containing the Same, Investigation No. 337-TA-421.
WHEREAS, the parties are involved in a lawsuit in the United States District
Court for the Northern District of California styled Enhanced Memory Systems,
Inc. v. NEC Corporation, NEC Electronics Inc., and NEC USA, Inc., Civil Action
No. C98-03841VRW.
WHEREAS, the parties wish to settle all claims, uncertainties and controversies
between themselves with respect to certain cache-DRAM type patents.
NOW, THEREFORE, in consideration of the mutual promises and obligations recited
herein, the parties agree as follows:
ARTICLE I
DEFINITIONS
-----------
1.1 "Agreement" means this Settlement and License Agreement.
1.2 "EMS" means Enhanced Memory Systems, Inc., a corporation organized and
existing under the laws of Delaware, having a principal place of business at
0000 Xxxxxxx Xxxxx, Xxxxxxxx Xxxxxxx, Xxxxxxxx 00000, and all of its officers,
directors, shareholders, employees, servants, attorneys, agents,
representatives, predecessors, successors and its corporate parents,
subsidiaries and Affiliates including its parent company, Ramtron International
Corporation, and its various Affiliates.
Page-3
1.3 "NEC" means NEC Corporation, a corporation organized and existing under
the laws of Japan, having a principal place of business at 7-1, Shiba 5-chome
Xxxxxx-xx, Xxxxx 000-0000, Xxxxx, and all of its officers, directors,
shareholders, employees, servants, attorneys, agents, representatives,
predecessors, successors and its corporate parents, subsidiaries, affiliates
and Related Companies, including NEC Electronics Inc. and NEC USA, Inc.
1.4 "Related Companies" means any corporation, company or other entity of
which NEC owns or controls, directly or indirectly, now or hereafter, more than
fifty percent (50%) of the Voting Rights. "Voting Rights" herein means
(i) the outstanding shares or other securities entitled to vote for the
election of directors (or other managing authority) of a corporation, company
or other entity in question, or (ii) in case such entity does not have
outstanding shares or securities, the ownership interest representing the right
to manage such entity.
1.5 "Licensed Patents" shall mean and include U.S. Patents Nos. 5,699,317,
5,721,862 and 5,887,272, all reissues or reexaminations of any of the
foregoing, and all U.S. and non-Japanese foreign patents which issue from, or
claim priority from, any or all of U.S. Patent Application Serials No.
07/824,211, No. 08/319,289, No. 08/460,665, No. 08/888,371, No. 09/182,994, and
any and all divisions, continuations, continuations-in-part, extensions,
renewals, reissues, reexaminations or supplementary protection certificates of
any of the foregoing.
1.6 "Licensed Products" shall mean any memory device having (a) a dynamic
random access memory portion ("DRAM") and (b) a static memory portion having a
plurality of separately addressable blocks that can store data that can be read
from the memory device ("SRAM Memory"), in which the DRAM and the SRAM Memory
are N-way associative in structure.
1.7 "N-way associative" means that each DRAM location can be mapped into N
blocks in the SRAM Memory where N is greater than 1.
1.8 "Customer" shall mean any person or entity other than the manufacturer of
the Licensed Product, specifically including but not limited to all controller
makers, chip set manufacturers, distributors, equipment manufacturers, and end
users.
1.9 "Direct Write-Only Path" shall mean a write-only data path from outside
the memory device to the DRAM, which write-only data path does not include the
SRAM Memory except for any block of the SRAM Memory that is controlled in such
a manner that data can only be written to such block from outside the memory
device.
Page-4
ARTICLE II
LICENCE
-------
2.1 License Grant
2.1.1 EMS grants to NEC a fully paid-up, non-exclusive, worldwide
license, with right to sublicense, under the Licensed Patents to
make, have made, use, import, sell, offer to sell, or otherwise
transfer Licensed Products at any time during the term of the
Licensed Patents, except as excluded under Section 2.1.3.
2.1.2 The rights granted under Section 2.1.1 extend to all Customers of
NEC.
2.1.3 The rights granted under Section 2.1.1 do not extend to the use of
the Licensed Products when the Licensed Products are controlled in
such a manner that (a) a subportion of the DRAM can only be mapped
to one block of the SRAM Memory throughout operation of the device,
and (ii) data is written to that subportion of the DRAM through a
Direct Write-Only Path.
2.1.4 EMS grants to NEC the right to sublicense to any third party the
rights granted to it under Section 2.1.1.
2.1.5 All licenses granted under this Agreement are "pass-through"
licenses and specifically permit NEC and its Customers to sell
Licensed Products to third parties for resale by said third parties
under private labels or for incorporation by said third parties in
other products without requiring separate licenses between EMS and
said third parties or additional payments to EMS. EMS hereby
grants to all direct and indirect customers, agents, distributors
or other transferees of NEC a non-exclusive worldwide license to
use, lease, repair, sell, offer for sale, import, and/or export
Licensed Products made by or on behalf of NEC or which incorporate
a Licensed Product made by or on behalf of NEC, and to
manufacturers for NEC a non-exclusive worldwide license to make
Licensed Products for and sell Licensed Products to NEC.
2.1.6 Any Customer of NEC or user of the Licensed Product shall have the
right to enter into a license agreement directly with EMS to
exercise the rights reserved in Section 2.1.3 if such Customer of
NEC or user of the Licensed Product agrees to pay EMS a license fee
of ** .
2.2 **
2.2.1 ** .
2.2.2 ** .
Page-5
ARTICLE III
RELEASES
--------
3.1 EMS hereby releases, acquits and forever discharges NEC from any and all
liabilities, claims, demands, causes of action or suits, for royalties,
damages, interest, lost profits, attorney fees, costs, or any and all other
forms of compensation at law or equity, known or unknown, fixed or contingent,
liquidated or unliquidated, accrued or unaccrued, now existing or that might
arise, whether asserted in Civil Action No. C98-03841VRW or Inv. No. 337-TA-421
or not, as of the Effective Date, arising from or related to any act, omission,
event, transaction or matter that was or is the subject matter of Civil Action
No. C98-03841VRW or Inv. No. 337-TA-421, save and except any claims relating to
the enforcement of this Agreement. This release extends to agents,
representatives, suppliers, distributors, dealers, direct and indirect
customers, officers, directors and employees of NEC.
3.2 NEC hereby releases, acquits and forever discharges EMS from all
liabilities, claims, demands, causes of action or suits, for royalties,
damages, interest, lost profits, attorney fees, costs, or any and all other
forms of compensation at law or equity, known or unknown, fixed or contingent,
liquidated or unliquidated, accrued or unaccrued, now existing or that might
arise, whether asserted in Civil Action No. C98-03841VRW or Inv. No. 337-TA-
421 or not, as of the Effective Date, arising from or related to any act,
omission, event, transaction or matter that was or is the subject matter of
Civil Action No. C98-03841VRW or Inv. No. 337-TA-421, save and except any
claims relating to enforcement of this Agreement.
3.3 EMS and NEC expressly agree to waive the provisions of California Civil
Code Section 1542, which provides:
A general release does not extend to claims which the creditor
does not know or suspect to exist in his favor at the time of
executing the release, which if known by him must have materially
affected his settlement with the debtor.
ARTICLE IV
ENFORCEMENT OF THIS AGREEMENT
-----------------------------
4.1 At all times, EMS and NEC have the right to initiate legal proceedings to
enforce the terms of this Agreement or dismissal. EMS and NEC agree that the
United States District Court for the Northern District of California, shall
retain jurisdiction over this matter and the action with respect to enforcement
of this Agreement or the dismissal.
Page-6
ARTICLE V
CONFIDENTIALITY
---------------
5.1 The public version of this Agreement may be distributed freely. The
confidential version may only be disclosed under the following circumstances:
(1) EMS and NEC agree in writing to the disclosure, (2) this Agreement is
produced pursuant to Court Order or subpoena under an appropriate protective
order, (3) disclosure is otherwise compelled by a Court Order, (4) disclosure
is deemed necessary or required by the Securities and Exchange Commission or
similar regulatory agency requirements, or (5) disclosure is required in order
to enter into sales contracts or licensing agreements regarding the Licensed
Products.
ARTICLE VI
REPRESENTATIONS AND WARRANTIES
------------------------------
6.1 EMS and NEC each represents and warrants that it has the right and
authority to enter into this Agreement.
6.2 EMS and NEC each warrants and convenants that each person whose signature
appears in this Agreement has been duly authorized and has full authority to
execute this Agreement on behalf of the party for whom the signature is
indicated.
6.3 EMS warrants that it owns the entire right, title and interest in the
Licensed Patents.
6.4 By signing this Agreement, NEC does not stipulate or concede to any
infringement, validity, or enforceability of the patents subject to this
Agreement.
ARTICLE VII
TERM AND TERMINATION
--------------------
7.1 This Agreement shall be effective on the Effective Date and shall expire
on expiration of the last to expire of the Licensed Patents unless earlier
terminated pursuant to the terms of this Agreement.
7.2 This Agreement may be terminated by either EMS or NEC for a material
breach by the other party of the provisions hereof. Such termination shall be
effective twenty (20) days after written notice to the other party of the
breach if the breach has not been remedied within such twenty (20) days. The
right of either party to terminate under the provisions of this Article shall
not be an exclusive remedy, and either party shall be entitled, if the
circumstances warrant, alternatively or cumulatively, to damages for breach of
this Agreement, to an order requiring performance of the obligations of this
Agreement, or to any other legally available remedy.
Page-7
ARTICLE VIII
MISCELLANEOUS
-------------
8.1 Within three (3) days of the Effective Date of this Agreement, EMS and NEC
mutually agree to stipulate to dismissal with prejudice all of their claims
and/or counterclaims alleged in Civil Action No. C98-03841VRW, or claims or
counterclaims that could have been brought in any action relating to the
Licensed Patents. That Joint Stipulation is found in Appendix A. EMS and NEC
will each bear its own costs and attorney's fees. EMS and NEC also mutually
agree to jointly move to terminate Investigation No. 337-TA-421 based on this
Agreement. That Joint Motion is found at Appendix B.
8.2 EMS and NEC agree to issue a mutually acceptable press release. This
press release will constitute the only press release that either EMS or NEC
will issue regarding this Agreement.
8.3 This Agreement embodies the entire understanding of EMS and NEC with
respect to the subject matter hereof, and merges all prior discussions between
them, and neither EMS nor NEC shall be bound by any conditions, definitions,
warranties, understandings or representations with respect to the subject
matter hereof other than as expressly provided herein. No oral explanation or
oral information by either EMS or NEC shall alter the meaning or interpretation
of this Agreement. No modification, alteration, addition or change in the
terms hereof shall be binding on either party unless reduced to writing and
duly executed by EMS and NEC.
8.4 If any provision hereof should be held invalid, illegal or unenforceable
in any jurisdiction, such invalidity, illegality, or unforceability shall not
affect the validity, legality or enforceability of any other provision in this
Agreement unless such holding frustrates the purpose of this Agreement.
8.5 This Agreement may be executed in one or more counterparts, and all so
executed shall constitute one agreement, binding on EMS and NEC.
8.6 The Agreement does not constitute either party hereto the agent of the
other party for any purpose whatsoever, nor does either party hereto have the
right or authority to assume, create, or incur any liability of any kind,
express or implied, against or in the name or on behalf of the other party.
8.7 This Agreement shall be interpreted and construed, and the legal relations
created herein shall be determined, in accordance with the laws of California
and the United States.
8.8 EMS and NEC each agrees to execute, acknowledge and deliver all such
further instruments, if any, and to do all such further acts, as may be
necessary or appropriate to effectuate this Agreement.
Page-8
8.9 Any and all notices or other communications required or permitted by this
Agreement to be served on or given to either party hereto by the other party
shall be in writing and delivered or sent to:
If to EMS:
Xxxxx Xxxxxxx
Vice President
Enhanced Memory Systems, Inc.
0000 Xxxxxxx Xxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxxx 00000
If to NEC:
Shigemichi Nidaira
Vice President, Intellectual Property
0-0, Xxxxx 0-xxxxx Xxxxxx-xx
Xxxxx 000-0000, Xxxxx
Each party may change its address for purposes of this Agreement by written
notice to the other party. All notices or other communications shall be deemed
duly served and given on the date when personally delivered to the party to
whom it is directed, when transmitted electronically by facsimile, or when
deposited in the United States mail, first class, postage prepaid, and
addressed to the party at the above address. All communications and documents
shall be in the English language.
IN WITNESS WHEREOF, the parties have executed this Agreement in duplicate on
the signature page hereof.
ENHANCED MEMORY SYSTEMS, INC.
DATE: November 9, 1999
BY: /S/ Xxxxx X. Xxxxxxx
TITLE: Vice President
NEC CORPORATION
DATE: November 9, 1999
BY: /S/ Shigemichi Nidaira
TITLE: Vice President, Intellectual Property
Page-9
APPENDIX A
Xxxxxxx X. Xxxxxxx (Bar No. 82620)
Xxxxx X. Xxxxx (Bar No. 192722)
XXXXX & XXXXXXX
Xxx Xxxxxxxx Xxxxx
Xxxxx Xxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
Telephone: (000) 000-0000
Xxxx X. Xxxxxxxx (Pro Hac Vice)
Xxxxx X. Xxxx (Pro Hac Vice)
Xxxxx X. Xxxxxxx (Pro Hac Vice)
XXXXX & XXXXXXX
0000 X Xxxxxx, X.X.
Xxxxx 000
Xxxxxxxxxx, X.X. 00000
Telephone: (000) 000-0000
Attorneys for Defendants-Counterplaintiffs NEC Corporation,
NEC Electronics, Inc., and NEC USA, Inc.
Xxxxx X. York (Bar No. 89942)
Xxxxxxx X. Xxxxxxx (Bar No. 158667)
Xxxxxxx X. XxXxxxx (Pro Hac Vice)
XXXXXX & XXXXXXX
000 Xxxxxxxxxxxx Xxxxx
Xxxxx Xxxx, Xxxxxxxxxx 00000
Telephone: (000) 000-0000
Attorneys for Plaintiff Enhanced Memory Systems, Inc.
IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
ENHANCED MEMORY SYSTEMS, INC., )
) Civil Action No. C98-03841 VRW
Plaintiff, )
)
) STIPULATION OF
) DISMISSAL AND ORDER
v. )
)
NEC CORPORATION, NEC ELECTRONICS, )
INC., AND NEC USA, INC., )
)
Defendants )
--------------------------------------)
Page-10
IT IS HEREBY STIPULATED by plaintiff Enhanced Memory Systems, Inc. ("EMS") and
defendants NEC Corporation, NEC Electronics, Inc. and NEC USA, Inc.
(collectively "NEC") through their respective counsel of record that:
(1) a settlement and license agreement has been entered into by and
between the parties;
(2) all claims, counterclaims, causes of action, and counts alleged
in the above-captioned action should be dismissed with prejudice;
(3) each party shall bear its own costs and expenses in the above-
captioned action; and
(4) the Court shall retain jurisdiction to enforce the parties'
agreement.
XXXXX & XXXXXXX
Xxxx X. Xxxxxxxx (Pro Hac Vice)
Xxxxxxx X. Xxxxxxx
Dated: 11-9-99 By: /S/ Xxxx X. Xxxxxxxx
---------- -------------------------------
Xxxx X. Xxxxxxxx (Pro Hac Vice)
Attorneys for Defendants-Counterplaintiffs NEC
Corporation, NEC Electronics, Inc. and NEC USA, Inc.
XXXXXX & XXXXXXX
Xxxxx A. York
Xxxxxxx X. Xxxxxxx
Dated: 11-9-99 By: /S/ Xxxxx X. York
---------- ----------------------------
Xxxxx X. York
Attorneys for Plaintiff-Counterdefendant
Enhanced Memory Systems, Inc.
IT IS ORDERED that all claims, counterclaims, causes of action, and counts
alleged in Civil Action No. C98-03841 VRW are dismissed with prejudice, each
party to bear its own costs. The Court shall retain jurisdiction to enforce
the parties' agreement.
Dated this --- day of ---------, 1999 ----------------------------
United States District Judge
Page-11
APPENDIX B
PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C. 20436
Before the Honorable Xxxxxx Xxxxxx
Administrative Law Judge
-----------------------------------)
)
CERTAIN ENHANCED DRAM DEVICES )
CONTAINING EMBEDDED CACHE ) Investigation No. 337-TA-421
MEMORY REGISTERS, COMPONENTS )
THEREOF, AND PRODUCTS )
CONTAINING SAME )
)
-----------------------------------)
JOINT MOTION TO TERMINATE INVESTIGATION
---------------------------------------
Pursuant to Commission Rule 210.21(b), Complainant Enhanced Memory Systems,
Inc. ("EMS") and Respondents NEC Corporation, NEC Electronics, Inc., and NEC
USA, Inc. (collectively "NEC"), having entered into a Settlement and License
Agreement jointly move to terminate the above captioned investigation as to all
Respondents.
A public version of the Settlement and License Agreement is attached to this
motion. Pursuant to Rule 210.21(b), the parties certify that there are no
other agreements, written or oral, express or implied between the parties
concerning the subject matter of the investigation.
Respectfully submitted,
Dated: 11-9-99 /S/ Xxxxx X. York
---------- -----------------
Xxxxx X. York
XXXXXX & XXXXXXX
000 Xxxxxxxxxxxx Xxxxx
Xxxxx Xxxx, Xxxxxxxxxx 00000
Tel: (000) 000-0000
Attorneys for Complainant
Enhanced Memory Systems, Inc.
Dated: 11-9-99 /S/ Xxxx X. Xxxxxxxx
---------- --------------------
Xxxx X. Xxxxxxxx
XXXXX & LARDNER
0000 X Xxxxxx, X.X., Xxxxx 000
Xxxxxxxxxx, X.X. 00000
Tel: (000) 000-0000
Attorney for Respondents NEC Corporation,
NEC Electronics, Inc., and NEC USA, Inc.
Page-12
