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Exhibit 10.31
TESSERA, INC.
CONSULTING AGREEMENT
Xxxx Xxxxx
Date: March 31, 2000
Dear Xxxx:
1. TESSERA, INC. (hereinafter "Tessera" or the "Company"), a Delaware
corporation, having a principal place of business at 0000 Xxxxxxx Xxxxx, Xxx
Xxxx, Xxxxxxxxxx 00000, wishes to obtain your services as an independent
consultant/contractor (hereinafter "Consultant", "you" or "your") on projects
agreed upon by you or to be assigned by the Company (hereinafter the
"Projects"), and you as an independent Consultant desire to offer your services
to the Company and accept the assignment to complete such Projects. The initial
Projects are briefly outlined in Exhibit A attached hereto. This letter shall
constitute an agreement (the "Agreement") between you and the Company, and
contains all the terms and conditions relating to the services that you provide.
2. Either you or the Company may terminate this Agreement at any time, with or
without good cause, and with or without notice. However, for prudent business
reasons, it is expected that either party will give at least one week (5 working
days) notice for termination of this Agreement, except for the termination that
is due to poor performance, inability to complete Projects, and/or unfeasibility
of Projects.
3. As consideration for your services, you will be paid as set forth in Exhibit
A attached hereto for actual work performed on Projects. Fees for future
projects will be set forth in an amendment to this Agreement or in future
agreements for such future projects.
4. According to the nature of Projects, you may be reimbursed for reasonable
travel and other out-of-pocket expenses actually incurred by you in connection
with your services under this Agreement, provided that you must obtain prior
approval of the Company's Vice President in charge of Projects or Chief
Financial Officer of the Company for such expenses, and provided that you submit
proper receipts for reimbursement. Reimbursement will not be allowed for
expenses incurred without prior approval.
5. Your relationship with the Company shall be that of an independent
Consultant; and both parties agree and understand that it is not an employment
relationship. You will not be eligible for any employee benefits, nor will the
Company make deductions from payments made to you for taxes, which shall be your
sole responsibility as an independent Consultant. In this regard, you hereby
represent and confirm to the Company that you act as an independent Consultant
and that you will pay all taxes, including federal, state and local income
taxes, FICA, Medicare contributions, disability, and others.
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6. As an independent Consultant, you shall have no authority to enter into
contracts which bind the Company or create obligations on the part of the
Company without the express prior written authorization of the Company. Such
authorization must be signed by the Company's representative in accordance to
the Company's signature and authorization policy or by the Chief Financial
Officer. In addition, as an independent Consultant, you may establish your own
work schedule, consistent with the needs of Projects. You may determine the
location where you perform services under this Agreement, consistent with the
timeliness and cost-effectiveness of completing Projects. If you desire to
perform some part of the services on the Company's premises, Company will make
the appropriate arrangements to accommodate such needs. At times that you may
work in the Company's premises and use Company's furniture and equipment to
facilitate the completion of Projects, such should not be construed as a
condition for employment as an employee.
7. You and the Company acknowledge that your services will be requested on a
project by project basis and that no continuing relationship is created by this
Agreement.
8. The Company has selected you to provide consulting services based upon your
experience and expertise and, accordingly, does not anticipate to provide you
training or detailed instructions on all aspects of performing such services.
9. You confirm that you are doing business as an independent Consultant and that
the Tax Identification Number given by you hereunder is the correct I.D. for tax
reporting purpose. In addition, you understand that the Company is not
responsible for any worker compensation insurance for your. Tessera and
Consultant agree that, with respect to any action taken by Consultant 1) at the
request of Tessera, 2) pursuant to Consultant's obligations under this
Consulting Agreement, and 3) during the term of this Consulting Agreement, and
for the limited purpose of determining whether the company has an obligation to
indemnify Consultant pursuant to the terms of any Indemnification Agreement
between Tessera and Xxxx Xxxxx, Consultant shall be considered an "agent of the
Company" as that term is used in any Indemnification Agreement between Xxxx
Xxxxx and Tessera.
10. You shall keep in confidence and shall not disclose or make available to
third parties or make any use of any Tessera confidential information or
documents relating to your services under this Agreement or to the products,
methods of manufacture, trade secrets, processes, business practices, vendor or
customer lists, or confidential or proprietary information of the Company (other
than information already in the public domain), except with the prior written
consent of the Company. The parties understand and agree that "Tessera
confidential information and documents" as used herein includes any information
or document which Consultant knows or reasonably should know is Tessera
confidential. You recognize that the Company has received and in the future will
receive from third parties their confidential or proprietary information subject
to a duty on the Company's part to maintain the confidentiality of such
information and to use it only for certain limited purposes. You agree that you
owe the Company and such third parties, during the term of this Agreement and
thereafter, a duty to hold all such confidential or proprietary information in
the strictest confidence and not to disclose it to any person, firm or
corporation or to use it except as necessary in connection with the Projects
consistent with the Company's agreement with such third party. Upon termination
of this Agreement you will return to the Company all documents, or other
materials related to the services provided hereunder or furnished to you by the
Company. Your obligations under this Section 10 shall survive termination of
this Agreement.
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11. As an independent Consultant, you will have all the necessary expertise of
your own to complete Projects. You agree and represent that you will not use,
copy, or otherwise incorporate any proprietary information of third parties to
complete Projects. The Company will not authorize the use of third parties'
confidential and proprietary information.
12. You shall promptly disclose and hereby transfer and assign to the Company
all your right, title and interest to all techniques, methods, processes,
formulae, improvements, inventions and discoveries (collectively, the
"Inventions") made or conceived or reduced to practice by you, solely or jointly
with others, in the course of providing services hereunder or with the use of
materials or facilities of the Company during the period of this Agreement or
which relate to the Company's business or its actual or demonstrably anticipated
research or development (except as otherwise provided below) and agree that the
Inventions are the sole property of the Company unless such invention was
jointly invented by you and a person who is not obligated to assign all such
person's interests in such jointly invented invention to Tessera, in which case
you agree that all your interest in such invention is the sole property of the
Company. . When requested by the Company you will make available to the Company
all notes, drawings, data and other information relating to the Inventions. You
will promptly sign any document (including U.S. and Foreign Patent Assignments)
requested by the Company related to the above assignment of the Inventions. Any
Inventions that constitute copyrightable subject matter shall be considered
"works made for hire" as that term is defined in the United States Copyright
Act. You agree to assist the Company, or its designee, at the Company's expense,
in every proper way to secure the Company's rights in the above any copyrights,
patents, mask work rights or other intellectual property rights relating to the
Inventions in any and all countries, including the disclosure to the Company of
all pertinent information and data with respect thereto, the execution of all
applications, specifications, oaths, assignments and all other instruments which
the Company shall deem necessary in order to apply for and obtain such rights
and in order to assign and convey to the Company, its successors, assigns and
nominees the sole and exclusive rights, title and interest in and to the
Inventions, and any copyrights, patents, mask work rights or other intellectual
property rights relating thereto. You agree that if the Company is unable
because of your unavailability, dissolution, mental or physical incapacity, or
for any other reason, to secure your signature to apply for or to pursue any
application for any United States or foreign patents or mask work or copyright
registrations covering any Inventions assigned to the Company above, then you
hereby irrevocably designate and appoint the Company and its duly authorized
officers and agents as your agent and attorney in fact, to act for and in your
behalf and stead to execute and file any such applications and to do all other
lawfully permitted acts to further the prosecution and issuance of patents,
copyright and mask work registrations thereon with the same legal force and
effect as if executed by you. This Agreement does not apply to Inventions which
were made prior to the date of this Agreement and which are listed, if any in
Exhibit B attached hereto.
13. You agree that if in the course of working on Projects you incorporate any
invention, improvement, development, concept, discovery or other proprietary
information owned by you or in which you have an interest, into such Project or
an item thereof, you hereby grant to the Company a nonexclusive, royalty-free,
perpetual, irrevocable, worldwide license, to the full extent of your right or
interest in such invention, improvement, development, concept, discovery or
other proprietary information owned by you or in which you have an interest, to
make, have made, modify, use and sell such Project or item.
14. The Company understands that you do not presently perform or intend to
perform, during the term of this Agreement, consulting or other services for
companies whose business or
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proposed businesses in any way involve the design or use of products that would
be competitive with the products or proposed products of the Company (except for
the companies, if any, listed in Exhibit C attached hereto.) If, however, you
decide to do so within the consulting period of this Agreement, you agree to
notify the Company in writing in advance (specifying the organization with which
you propose to consult) and provide general, but not confidential, information
sufficient to allow the Company to determine if such consulting would conflict
with areas of interest to the Company or further services which the Company
might request of you pursuant to this Agreement. This provision does not
restrict you from providing consulting services to companies whose businesses do
no involve the design or use of such competitive products or conflict with the
Company's other business activities.
15. Any amendment to this Agreement must be in writing signed by you and the
Company.
16. All notices, requests or other communications called for by this Agreement
shall be deemed to have been given if made in writing and mailed, postage
prepaid, if to you at the address set forth above and if to the Company at the
principal office shown above, or to such other addresses as either party shall
specify to the other.
17. The validity, performance and construction of this Agreement shall be
governed by the laws of the State of California.
18. You agree that it would be impossible or inadequate to measure and calculate
the Company's damages from any breach of the covenants set forth herein.
Accordingly, you agree that if you breach any of the covenants set forth herein,
the Company will have available, in addition to any other right or remedy
available, the right to obtain from any court of competent jurisdiction an
injunction restraining such breach or threatened breach and specific performance
of any such provision. You further agree that no bond or other security shall be
required in obtaining such equitable relief, and you hereby consent to the
issuances of such injunction and to the ordering of such specific performance.
19. This Agreement is the entire agreement of the parties and supersedes any
prior agreements, whether verbal or written, whether express or implied, between
them with respect to the subject matter hereof.
If this Agreement is satisfactory and acceptable to you, please execute and
return one copy to us, retaining the second copy for your file. Yours very
truly,
COMPANY AGREED AND ACCEPTED:
/s/ XXXX X. XXXXX
By: /s/ XXXXX XXXXXXXXXX ------------------------------------
----------------------------- Signature
Xxxx X. Xxxxx
Title: CEO ------------------------------------
-------------------------- Print Name
------------------------------------
Tax I.D.
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EXHIBIT A - DESCRIPTION OF INITIAL
CONSULTING PROJECTS AND COMPENSATION
PROJECTS:
Consultant agrees to spend 2 - 3 days per month at Tessera's facility,
as requested by Tessera and on mutually agreeable dates, to: 1. Participate in
monthly Technical Issues Reviews by providing technical input on issues
presented; 2. Participate in monthly Patent Management Committee Meetings by
providing input on the technical and business merit of invention disclosures;
and 3. Review draft patent applications as requested to provide input as to
technical scope and accuracy.
Tessera and Consultant understand that such 2 - 3 days per month shall
generally be scheduled such that Consultant will usually only make one trip to
Tessera per month for purposes of this Consultant Agreement. Tessera agrees to
reimburse Consultant for all reasonable travel expenses, including airfare,
hotel and meals for such monthly trips. Consultant agrees to use reasonable
efforts to insure that such travel expenses are cost-effectively booked.
Tessera and Consultant understand that Consultant also currently serves
as a Member of Tessera's Board of Directors. The parties further understand that
Consultant may make additional trips to Tessera in regards to such Consultant's
duties as a Member of Tessera's Board of Directors. It is understood and agreed
that such duties, as well as any compensation or travel expense due to
Consultant pursuant to such Board Membership are outside the scope of this
Consulting Agreement. To minimize travel time and costs however, Consultant's
monthly visit may be scheduled in conjunction with Tessera Board of Directors
meetings that may be scheduled in the San Xxxx/San Francisco area.
COMPENSATION:
Consultant will be paid a fee of $3000.00 per month, plus travel
expenses as outlined above. Any compensation due to Consultant as a member of
Tessera's Board of Directors shall be separately discussed and agreed upon.
Consultant shall remain a Tessera employee until June 30, 2000, and will
be paid his regular salary and benefits until such date.
The parties agree that Consultant shall cease to be a Tessera employee
on June 30, 2000 and shall on that date be paid 2 months salary as severance
pay.
The parties further agree that the Company will reimburse you for up to
a maximum of $30,000 in relocation expenses incurred during your 1993/1994
relocation from Austin, Texas to the Silicon Valley area, upon the submission of
valid proof of such expenses. The parties further agree however, that if it is
determined by Tessera that the difference between the amount of reimbursement
offered in the 1993 employment offer to Xxxx Xxxxx (i.e. $65,000) and the amount
of reimbursement actually paid to Xxxx Xxxxx (to be determined) is less than
$30,000, Tessera shall only reimburse you for up to the amount of such lesser
value upon the submission of valid proof of your unreimbursed relocation
expenses
Consultant was granted Company stock options during his tenure as an
employee of the Company. Such stock options shall continue to vest, as per the
terms of the relevant original
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EXHIBIT A - CONTINUED
stock options agreements, so long as Consultant continuously remains as at least
one of 1) an employee of the Company, 2) a consultant to the Company, or 3) a
Member of the Board of Directors of the Company. If there is a lapse in
Consultant's status in all three of such roles, Consultant's stock options shall
cease to vest and any unvested options shall revert to the Company. Should such
a lapse occur, Consultant's vested options will be exercisable only for the time
period set forth in the applicable original stock options agreements.
EFFECTIVE DATE AND TERMINATION DATE:
The effective date of this Agreement is July 1, 2000. The termination
date of this agreement is June 30, 2001. Such termination date is subject to the
early termination clause of section 2 of the Agreement. This Agreement may be
extended upon the written agreement of both parties.
MUTUAL RELEASE:
Consultant agrees to refrain from any disparagement, criticism, slander
or libel or the Company. The consideration set forth herein represents
settlement in full for any and all possible outstanding obligations owed to you
by the Company. You represent that you are not aware of any claim you may have
against the Company and that any other claims (including currently unknown
claims) are waived and hereby released. The parties understand and agree that
Consultant does not waive any claim arising from any Tessera obligation to
Consultant as set forth in any Director and Officer Indemnification Agreement
Between Tessera and Xxxx Xxxxx. You waive the benefit 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." Notwithstanding the foregoing, your waiver shall
not apply to any event occurring after the date of this Agreement.
Tessera agrees to refrain, and to cause it officers and directors, and
its employees while acting within the scope of their employment to refrain from
any disparagement, criticism, slander or libel of you. The Company represents
that it is not aware of any claim it may have against you and that any other
claims (including currently unknown claims) are waived and hereby released.
Tessera waives the benefit 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."
Notwithstanding the foregoing, Tessera's waiver shall not apply to any event
occurring after the date of this Agreement.
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EXHIBIT B
INVENTIONS MADE PRIOR TO THIS AGREEMENT AND
EXCLUDED FROM SECTION 12
(IF NONE, SO STATE)
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EXHIBIT C
LISTING OF COMPANIES COMPETITIVE TO COMPANY FOR WHICH
CONSULTING SERVICES ARE PRESENTLY BEING PERFORMED
(IF NONE, SO STATE)
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ADDENDUM TO THE CONSULTING AGREEMENT
BETWEEN XXXX XXXXX AND TESSERA, INC.
This First Addendum is entered into as of the date last written below ("First
Addendum Effective Date") between TESSERA INC., a corporation organized under
the laws of Delaware having a principle place of business at 0000 Xxxxxxx Xxxxx,
Xxx Xxxx, XX 00000 ("Tessera") and XXXX XXXXX, an individual residing at _______
_____________________________________, ("Consultant") and modifies the
Consulting Agreement entered into by and between the parties and having an
Effective Date of March 31, 2000 ("Consulting Agreement"), with reference to the
following:
I. Supplement to the Consulting Agreement. This First Addendum merely
supplements certain provisions of the Consulting Agreement. All provisions
contained within the Consultant Agreement are therefore incorporated herein. In
the event any of the provisions of the Consultant Agreement and this First
Addendum conflict, the provisions contained in this First Addendum shall
supersede the conflicting provisions.
II. Additional Services. Tessera anticipates that Tessera will require
services from Consultant for litigation support and/or other activities, in
addition to the 2 -3 days per month specified in the Consulting Agreement for
technical and patent related activities. Any consulting services provided by
Consultant during the term of the Consulting Agreement above (three) 3 days in
any calendar month shall be referred to as Additional Services. Consultant
agrees to provide such Additional Services as requested by Tessera's Vice
President & General Counsel or Tessera's President, at mutually agreeable times
and locations. When feasible, Tessera will provide reasonable advance notice to
Consultant of a schedule for such Additional Services, detailing the timing,
duration and scope of such requested Additional Services from Consultant.
Consultant agrees to use reasonable efforts to accommodate such schedule.
III. Compensation for Additional Services. Consultant will be paid a fee
of $1200.00 (One Thousand two Hundred U.S. dollars) per day for all Additional
Services provided pro-rated for any partial day of Additional Services provided,
plus all reasonable travel expenses, including airfare, hotel and meals for any
travel requested by Tessera for the performance of such Additional Services.
Consultant agrees to use reasonable efforts to insure that such travel expenses
are cost-effectively booked.
V. Entire Understanding. This First Addendum embodies the entire
understanding between the parties relating to the subject matter hereof, whether
written or oral, and there are no prior representations, warranties or
agreements (except those specifically set forth in the Addendum and/or the
Consulting Agreement) between the parties not contained in this First Addendum.
Any amendment or modification of any provision of this First Addendum must be in
writing, dated and signed by both parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the date first above written.
TESSERA, INC.
Signature /s/ XXXXX XXXXXXXXXX Signature /s/ XXXX X. XXXXX
-------------------------- ---------------------------
Printed Name Xxxxx XxXxxxxxxx Print Name Xxxx X. Xxxxx
----------------------- --------------------------
Title President Tax I.D.
------------------------------ ----------------------------
Date 7/11/00 Date 8/8/00
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