Exhibit 10.1*
* Confidential treatment has been granted or requested with respect to
portions of this exhibit, and such confidential portions have been deleted and
replaced with "**" and filed separately with the Securities and Exchange
Commission pursuant to Rule 24b-2 or Rule 406.
SETTLEMENT AGREEMENT
This Settlement Agreement (the "Agreement"), is executed this 6th day of April
2004, by and between Ramtron International Corporation ("Ramtron"), 0000
Xxxxxxx Xxxxx, Xxxxxxxx Xxxxxxx, Xxxxxxxx, and National Semiconductor
Corporation ("National"), 0000 Xxxxxxxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx
[collectively, the "Parties"].
RECITALS
Whereas, X. Xxxxxxxxx Xxxxx Jr. ("Xxxxx") on February 17, 1987 filed with the
United States Patent and Trademark Office ("USPTO") patent application serial
number 07/013,746, which was assigned to Ramtron. That application matured
into U.S. patent number 4,783,664 on October 10, 1989 (the "664 Patent").
Whereas, Xxxxxx X. Xxxxx, Xx., Xxxxxxx X. Xxxxxx and Xxxxxxx X. Xxxxxx,
(collectively, "Xxxxx et al.") filed with the USPTO application serial
numbers:
1. 07/377,168 on July 10, 1989
2. 07/443,018 on November 29, 1989
3. 07/057,100 on June 2, 1990 [subsequently continued pursuant
to application serial number 07/596,212]
4. 07/582,672 on September 14, 1990
5. 07/582,615 on September 14, 1990
[collectively, the "Applications"].
Whereas, the Applications were subsequently assigned by Xxxxx et al. to
National.
Page-1
Whereas, on November 15, 1991 five interferences were declared by the USPTO
between Xxxxx et al. (as the junior party) and Xxxxx (as the senior party).
Namely:
Patent Interference No. 102,723: derived from Application 07/377,168.
Patent Interference No. 102,724: derived from Application 07/443,018.
Patent Interference No. 102,725: derived from Application 07/582,672.
Patent Interference No. 102,726: derived from Application 07/582,615.
Patent Interference No. 102,727: derived from Application 07/057,100
(subsequently continued through Application 07/596,212).
[collectively, the "Interferences"]
Whereas, the USPTO/Board of Patent Appeals and Interferences (the "Board")
subsequently ruled in favor of National in each of the Interferences on the
basis that Xxxxx/National reduced to practice the subject matter corresponding
to the counts of each of the Interferences prior to Xxxxx/Ramtron
[collectively, the "Board's Decision"].
Whereas, Ramtron subsequently appealed the Board's Decisions concerning the
Interferences as follows:
Appealed or Consolidated to
The U.S. District Court
Of the District of Columbia
Interference Case Number
------------ ---------------------------
No. 102,723 ] 99-2629
No. 102,724 ] 99-2630
No. 102,725 ] 99-0146
No. 102,726 ] 99-0147
[Collectively, the "Initial District Court Cases"]
Appealed to U.S. Court
Of Appeals for the
Interference: Federal Circuit Appeal No.
------------- --------------------------
No. 102,727 99-1267
[the "Federal Circuit Appeal"]
Page-2
Whereas, in February 2000, the United States Court of Appeals for the Federal
Circuit reversed the USTPO/Board's decision (previously in favor of National)
with respect to Interference No. 102,727 [the "'727 Interference"] and
remanded this interference to the USPTO for further consideration not
inconsistent with the holding by the U.S. Court of Appeals for the Federal
Circuit.
Whereas, in August 2001, the USPTO held that Ramtron was the first to invent
with respect to the ferroelectric memory cell design related to the '727
Interference. However, the USPTO further concluded that enablement and best
mode requirements for the '664 patent had not been met by Ramtron.
Whereas, the Initial District Court Cases were ultimately consolidated with a
district court review of the '727 Interference and Civil Action 02-02456 and
Civil Action No. 03-0061 into Civil Action No. 03-0061,
NOW THEREFORE, in consideration of the recitals set forth above, the promises
and the mutual covenants and conditions herein contained, Ramtron and
National, intending to be legally bound, hereby agree as follows:
1) Recitals: The recitals set forth above are hereby incorporated by this
reference as if set forth in their entirety.
2) Dismissal With Prejudice: Within five business days of the mutual
execution of this Agreement, Ramtron and National shall jointly execute
the attached Dismissal With Prejudice (attached hereto as Exhibit "A", and
incorporated by this reference) for Interference numbers "102,723",
"102,724", "102,725", and "102,726".
3) National's Assignment to Ramtron: Five days after National's receipt of
the initial $250,000.00 payment referenced in paragraph 8 of this
Agreement, National shall be deemed to have transferred, conveyed and
assigned to Ramtron, absolutely and without condition or reservation, all
of National's right, title and interest in Application "07/377,168"
[Patent Interference No. 102,723 (1T1C)], and Application "07/443,018"
[Patent Interference No. 102,724 (2T/2C)], said assignment to be effected
by and through the assignment attached hereto as Exhibit "B" and executed
simultaneously with this Settlement Agreement. In further consideration
of the covenants set forth herein, National's assignments referenced
herein shall include any continuations, divisionals, re-issues, re-
examinations or other patents or patent applications claiming priority to
the Applications 07/377,168 and 07/443,018. National's assignment herein
to Ramtron is subject to National licenses fully executed and granted on
or before the date of this Agreement only. These licensees are
**
Page-3
**
(collectively, the "NSC Licensees"). National represents
and warrants to Ramtron that NSC licenses granted to NSC Licensees
concerning Application Nos. 07/582,672 and 07/582,615 are non-exclusive,
royalty free, paid up, non-assignable licenses (with no right to
sublicense) any such NSC intellectual property. Subject to the terms of
this Agreement, National shall retain all right, title, and interest in
Application "07/582,672" (Patent Interference No. 102,725) and Application
"07/582,615" (Patent Interference No. 102,726) and any continuations,
divisionals, re-issues, re-examinations or other patents or patent
applications claiming priority to the Applications 07/582,672 and
07/582,615.
4) Ramtron's Covenants: In consideration of National's assignment to Ramtron
set forth in paragraph 3 immediately above, Ramtron hereby grants National
a non-exclusive, royalty-free, paid up, perpetual, non-assignable license
(with no right to sublicense) under Applications 07/377,168 and 07/443,018
and all patents maturing from such applications claiming priority to
Applications 07/377,168 and 07/443,018 ("Matured Ramtron Patents") to
make, have made, import, use offer for sale, and sell products in the
United States covered by the Matured Ramtron Patents. With respect to the
licenses granted in Paragraph 4, a license to National does not include
the right of National or it subsidiaries under the circuit and method
claims of any Ramtron patents to make products for sale to any third party
(other that a SUBSIDIARY) for said third party's sale, use , lease, or
other disposition of such products under the trade name, trademark, or
other commercial indicia of such third party where the product design or
manufacturing design is furnished by such third party in such sufficient
detail such that no substantial additional designing by the party or it
SUBSIDIARIES licensed herein is required, or to which only minor revisions
are made to conform to specifications used by the party or its
SUBSIDIARIES licensed herein. In the event such prohibited activity
occurs, the exclusive remedy of RAMTRON for any claim of patent
infringement shall be against the third party, provided that upon notice,
National hereto will cooperate with the other party to effectuate this
provision.
5) National's Covenants. In consideration of the promises set forth herein:
a) National hereby grants Ramtron, and any subsidiary of Ramtron which
may include but is not limited to any joint venture entered into by
Ramtron in which Ramtron owns a majority interest ("Ramtron's
Subsidiary"), a non-exclusive, royalty-free, paid up, perpetual, non-
assignable license (with no right to sublicense) under Applications
07/582,672 and 07/582,615 and any patents maturing from applications
claiming priority to Application 07/582,672 and Application 07/582,615
("Matured National Patents") to make, have made, import, use, lease,
offer for sale, sell or otherwise dispose of products in the United
States covered by the Matured National Patents. With respect to the
Page-4
licenses granted in Paragraph 5(a), a license to Ramtron does not
include the right of Ramtron or its subsidiaries under the circuit and
method claims of any National patents to make products for sale to any
third party (other than a SUBSIDIARY) for said third party's sale,
use, lease, or other disposition of such products under the trade
name, trademark, or other commercial indicia of such third party where
the product design or manufacturing design is furnished by such third
party in such sufficient detail such that no substantial additional
designing by the party or its SUBSIDIARIES licensed herein is
required, or to which only minor revisions are made to conform to
specifications used by the party or its SUBSIDIARIES license herein.
In the event such prohibited activity occurs, the exclusive remedy of
RAMTRON for any claim of patent infringement shall be against the
third party, provided that upon notice, Ramtron hereto will cooperate
with the other party to effectuate this provision.
b) In addition to the grant set forth in paragraph "5(a)" immediately
above, National hereby grants Ramtron four separate options to license
the Matured National Patents to parties identified by Ramtron as set
forth herein, and pursuant to the respective Appendices attached to
this Agreement. Ramtron may exercise these options as follows:
i) Foundry License Options (x2). Other than as specified below, any
proposed foundry licensee identified by Ramtron shall not be a
company that, at the time of such identification, sells, has made,
manufactures or offers to sell integrated circuit foundry services
or integrated circuits in the United States through any sales
organization, including direct sales, or through a sales
representative, or a distributor, located in the United States
("Qualifying Foundry"). Under no circumstances shall **
** be a Qualifying Foundry. Notwithstanding the foregoing
limitations, National hereby approves **
as Qualifying
Foundries eligible for such licensing. Only one National license
to a foundry identified by Ramtron will be a No-Fee Restricted
License and the other license will be a Fee-Based Unrestricted
License under the terms and conditions set forth below:
(a) No-Fee Restricted Foundry License - In order for Ramtron to
exercise its option for National to grant the No-Fee
Restricted Foundry License for a Qualifying Foundry, Ramtron
must identify the Qualifying Foundry on the later of: i) one
year from the date of mutual execution of this Agreement; or,
ii) prior to issuance of the first Matured National Patents
resulting from this Agreement. To facilitate Ramtron
providing timely notice to National as required herein,
National shall deliver written notice to Ramtron of
National's receipt of a notice of allowance from the USPTO
Page-5
concerning either Matured National Patent. Such notice
indicating National's receipt of the USPTO's notice of
allowance shall be delivered to Ramtron prior to National
paying the issue fee for the application. Upon Ramtron
exercising the option as set forth herein, National shall
immediately execute and deliver the license set forth in
Appendix A (the "No Fee Restricted Foundry License") to the
Qualifying Foundry identified by Ramtron.
(b) Fee Based Unrestricted Foundry License - In order for Ramtron
to exercise its option for National to grant the Fee Based
Unrestricted Foundry License for a Qualified Foundry, Ramtron
must identify the Qualified Foundry for this license within
one year after the issuance of the first Matured National
Patent. In such event, National shall immediately execute
and deliver the license set forth in Appendix B (the "Fee-
Based Unrestricted Foundry License") to the Qualified Foundry
identified by Ramtron.
ii) Customer License Options (x2). In order for Ramtron to exercise
its option for National to grant a no fee restricted license to
Matured National Patents to an existing or prospective customer
(the "Customer") of a Qualified Foundry, Ramtron must identify the
Customer on or before one year after Ramtron identifies the
foundry entitled to the No-Fee Restricted Foundry License set
forth in paragraph 5(b)(i)(a) immediately above. Upon Ramtron
notifying National of such Customer, National shall execute and
deliver to such Customer the license set forth in Appendix C to
this Agreement (the "No-Fee Restricted Customer License"). In
order for Ramtron to exercise its fourth option hereunder to a
Customer desiring a fee base unrestricted license to the Matured
National Patents, Ramtron must identify the Customer on or before
one year after the later of the date that Ramtron identifies: i)
the foundry entitled to the No-Fee Restricted Foundry License set
forth in paragraph 5(b)(i)(a) above; or, ii) the foundry entitled
to the Fee Based Unrestricted License set forth in paragraph
5(b)(i)(b). Upon receipt of such notification, National shall
execute and deliver to such party the license set forth in
Appendix D to this Agreement (the "Fee Based Unrestricted Customer
License").
6) '727 Interference: With respect to the '727 Interference, the Parties
will submit to a mutually agreed upon special master (the "Special
Master") the issues set forth herein. The Parties shall share evenly the
cost of the Special Master. In accordance with 37 CFR 1.690, within
twenty (20) days of mutual execution of this Agreement the Parties shall
file a copy of this Agreement. The Special Master shall consider and
provide answers to the following two questions: (a) whether the Ramtron
'664 patent claims designated as corresponding to the count of the '727
Interference have adequate enablement support and (b) if the Ramtron '664
Patent claims designated as corresponding to the count of the '727
interference do not have adequate enablement support, does the application
that matured into the '664 Patent constitute a constructive reduction to
practice of the inventions of the Ramtron '664 Patent claims designated as
corresponding to the count of the '727 Interference.
Page-6
a) Should the Special Master determine that the '664 Patent has adequate
enablement support for the corresponding patent claims, then National
shall request entry of adverse judgment in the '727 Interference
(including consenting to any motions filed by RIC on the issues of
best mode and enablement). In such event, Ramtron shall grant
National a license to the '664 Patent. Material terms of such
licenses shall include no license fees, royalty free with the right
for National to make, have made, import and sell products, only in the
US, covered by the '664 Patent. Within sixty (60) days of issuance of
a patent pertaining to '727 Interference either, Ramtron shall deliver
to National a license incorporating the material terms referenced
herein.
b) Should the Special Master determine that the '664 Patent does not have
adequate enablement support for the corresponding patent claims but
the Special Master determines that the application that matured into
the '664 Patent constitutes a constructive reduction to practice of
the inventions of the Ramtron '664 Patent claims designated as
corresponding to the count of the '727 Interference, then Ramtron and
National both shall request entry of adverse judgment in the '727
Interference.
c) Should the Special Master find that the '664 Patent does not have
adequate enablement support for the corresponding patent claims and
should the Special Master determine that the application that matured
into the '664 Patent does not constitute a constructive reduction to
practice of the inventions of the Ramtron '664 Patent claims
designated as corresponding to the count of the '727 Interference,
then Ramtron will request entry of adverse judgment in the '727
Interference. National shall retain all right, title and interest in
Application 07/057,100 (subsequently continued through Application
07/596,212) and any continuations, divisionals, re-issues, re-
examinations or other patents or patent applications claiming priority
to Application 07/057,100. In such event, National shall grant to
Ramtron and its Qualified Foundries a license under Application
07/057,100 and any patents issuing therefrom under the terms and
conditions set forth above with respect to Applications 07/582,672 and
07/582,615.
Notwithstanding the decision by the Special Master, neither Ramtron
nor National shall seek a review of any decision by the Special
Master, it being understood that the Parties hereto waive any right to
appeal or review such decision.
Page-7
7) Continued Prosecution of the Applications: National shall be responsible
for and shall have sole discretion over the prosecution of Applications
07/582,672 and 07/582,615. Ramtron shall be responsible for and shall
have sole discretion over the prosecution of Applications 07/377,168 and
07/443,018. Notwithstanding anything to the contrary above, National
shall not materially modify, expand or alter the scope of the pending
claims in Applications 07/582,672 and 07/582,615, through amendment,
continuations, reexaminations, reissue or otherwise. Notwithstanding
anything to the contrary above, Ramtron shall not materially modify,
expand or alter the scope of the pending claims in Applications 07/377,168
and 07/443,018, through amendment, continuations, reexaminations, reissue
or otherwise. A modification, expansion or alteration of a pending claim
shall be considered material if such claim would be equal in scope to or
obvious in view of the claims now pending in the applications owned by the
other party referenced above. For the avoidance of doubt, the addition of
dependent claims directed to a material to be used in a claimed method,
circuit or system shall not be deemed to be a material modification,
expansion or alteration.
8) Payment: No later than five (5) days after mutual execution of this
Agreement and pursuant to paragraph 3 of this Agreement, Ramtron will pay
National Two Hundred and Fifty Thousand Dollars (U.S. $ 250,000.00). On
the anniversary date of this Agreement (the "Anniversary Date") and for
the years set forth below, Ramtron shall make additional payments to
National as follows:
Anniversary Date Payment
---------------- ---------
2005 $250,000
2006 $250,000
2007 $250,000
2008 $250,000
2009 $250,000
2010 $250,000
2011 $250,000
2012 $250,000
2013 $250,000
a) Such payments shall be made via telegraphic transfer of immediately
available funds in United States Dollars to the account of NATIONAL as
follows:
Beneficiary Name: National Semiconductor Corporation
Bank Account: **
Bank Name: **
Bank Location: **
Bank ABA No.: **
b) Any payment once made pursuant to this Agreement shall not be
refundable for any reason.
Page-8
c) After the expiration of a ten (10) day grace period on the due date
for any payment, Ramtron shall be liable for interest on any overdue
payment required to be made pursuant to Paragraph 8, which interest
shall be paid with any such overdue payment. The interest on any
overdue payment shall be calculated commencing on the date such
payment became due, using an annual rate which is the lesser of ten
percent (10%) or one percentage point higher than the prime interest
rate as quoted by the head office of Citibank N.A., New York, USA (or
the successor of Citibank N.A. at that time or an equivalent
institute) at the close of banking on such date, or on the first
business day thereafter if such date falls on a non-business day. If
such interest rate exceeds the maximum legal rate in the jurisdiction
where a claim therefore is being asserted, the interest rate shall be
reduced to such maximum legal rate.
9) Ramtron's Release: Ramtron, for itself, its successors, assigns,
shareholders, directors, officers, employees, and attorneys, hereby
expressly releases, waives and discharges National, its successors,
assigns, shareholders, directors, officers, employees, and attorneys, from
and against any and all claims, charges, demands, liens, actions,
judgments, and executions that Ramtron ever had, or now has, or may have,
known or unknown, or that anyone claiming through or under Ramtron may
have, or claim to have, against National or its legal representatives,
successors and/or assigns created by, or arising out of any and all
matters pertaining to the Applications, Interference Counts, District
Court Cases, and/or Federal Circuit Appeal.
10) National's Release: National, for itself, its successors, assigns,
shareholders, directors, officers, employees, and attorneys, hereby
expressly releases, waives and discharges Ramtron, its successors,
assigns, shareholders, directors, officers, employees, and attorneys,
from and against any and all claims, charges, demands, liens, actions,
judgments, and executions that National ever had, or now has, or may
have, known or unknown, or that anyone claiming through or under National
may have, or claim to have, against Ramtron or its legal representatives,
successors and/or assigns created by, or arising out of any and all
matters pertaining to the Applications, Interference Counts, District
Court Cases, and/or Federal Circuit Appeal. California Civil Code
Section 1542 Waiver. Each Party represents and warrants to the other that
it has been informed of, has read, is familiar with, understands, and
does hereby expressly waive all rights that it has or may have under
section 1542 of the California Civil Code, which provides: A GENERAL
RELEASE DOES NOT EXTEND TO CLAIMS 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.
Page-9
11) Miscellaneous:
a) Notices / Facsimile Transmissions: Any notice, demand, or
communication required or permitted to be given by any provision
hereof shall be deemed to have been sufficiently given or served for
all purposes if delivered personally to the party or to an executive
officer of the party to whom the same is directed or, if sent by
registered or certified mail, postage and charges prepaid, addressed
to:
i) For Ramtron:
Ramtron International Corporation
Attention: Xxxx X. Xxxxx,
President - Technology Group
0000 Xxxxxxx Xxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxxx
With copies to:
Xxxxxxx X. Xxxxx, Esq.
Xxxxxxx Xxxxx, Esq.
Oblon, Spivak, McClelland, Xxxxx & Neustadt, P.C.
0000 Xxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Telephone: 000-000-0000
Facsimile: 000-000-0000
Xxxx X. Xxxxxxx, Esq.
The Xxxxxxx Professional Corporation - Attorneys
0000 Xxxxxxx Xxxxxx - Xxxxx 0000
Xxxxxx, XX 00000
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
ii) For National:
Xxxx Xxxxx
General Counsel and Secretary - National Semiconductor
Corporation
2900 Semiconductor Dr.
X.X. Xxx 00000
Xxxxx Xxxxx, Xxxxxxxxxx 00000-0000
Facsimile No. 000-000-0000
Page-10
iii) Except as otherwise provided herein, any such notice shall be
deemed to be given three business days after the date on which
the same was deposited in a regularly maintained receptacle for
the deposit of United States mail, addressed and sent as
aforesaid. Transmittal via facsimile of a copy of this Agreement,
or any corollary agreements, notices, addenda and/or amendments
pertaining to this Agreement, which have been signed by either or
both parties, shall be deemed admissible and conclusive evidence
of a party's understanding of the matters set forth herein.
Subsequent to delivery via facsimile transmission, each party
agrees to deliver to the other party an originally signed
counterpart of any such instrument, which had been initially
delivered via facsimile transmission.
b) Date of Agreement: All references in this Agreement to "the date
hereof" or similar references shall be deemed to refer to the last
date, in point of time, on which all parties hereto have executed
this Agreement.
c) Application of California Law: This Agreement, and the application
or interpretation hereof, shall be governed exclusively by its terms
and by the laws of the State of California, without regard to
conflict of law principles.
d) Amendments: This Agreement may not be amended except by the
unanimous written agreement of all of the parties hereto.
e) Construction: Whenever the singular number is used in this Agreement
and when required by the context, the same shall include the plural
and vice versa, and the masculine gender shall include the feminine
and neuter genders and vice versa.
f) Headings: The headings in this Agreement are inserted for
convenience only and are in no way intended to describe, interpret,
define, or limit the scope, extent or intent of this Agreement or any
provision hereof.
g) Waivers: No delay or omission to exercise any right, power or
remedy accruing to either Party upon any breach or default of the
other Party under this Agreement shall impair any such right, power
or remedy of such Party, nor shall it be construed to be a waiver of
any such breach or default, or any acquiescence therein, or in any
similar breach or default thereafter occurring; nor shall any waiver
of any single breach or default be deemed a waiver of any other
breach or default theretofore or thereafter occurring. Any waiver,
permit, consent or approval of any kind or character on the part of
any Party hereto of any breach or default under this Agreement or any
waiver on the part of any Party hereto of any provisions or
conditions of this Agreement must be made in writing and shall be
effective only to the extent specifically set forth in such writing.
Page-11
h) Rights and Remedies Cumulative: The rights and remedies provided by
this Agreement are cumulative and not alternative. The use of any
one right or remedy by any party shall not preclude or waive the
right to use any or all other remedies. Said rights and remedies are
given in addition to any other rights the parties may have by law,
statute, ordinance or otherwise.
i) Severability: If any provision of this Agreement or the application
thereof to any person or circumstance shall be invalid, illegal or
unenforceable to any extent, the remainder of this Agreement and the
application thereof shall not be affected and shall be enforceable to
the fullest extent permitted by law.
j) Counterparts: This Agreement may be executed in counterparts, each
of which shall be deemed an original but all of which shall
constitute one and the same instrument.
k) Entire Agreement: This Agreement contains the entire agreement
between the parties on the matters covered herein. There are no
promises, agreements, conditions, undertakings, understandings,
warranties, covenants or representations, oral or written, express or
implied, between them with respect to the matters covered herein,
this Agreement, or the transaction described in this Agreement,
except as set forth in this Agreement.
l) Assignment / Change in Control: This Agreement, including all rights
and privileges granted herein, are not assignable or otherwise
transferable by any Party. Notwithstanding the foregoing, the rights
and obligations contemplated by this Agreement (or any other
agreement contemplated by this Agreement which may include without
limitation any license or other agreement referenced herein) shall
survive and remain enforceable without the need for any additional
consideration or approval should there be a change of control of or
related to either Party to this Agreement. For purposes of this
Agreement, "Change of Control" shall mean, with respect to any Party,
any transaction or event in which all of the assets, or equity
interests in such Party that have the power to elect all directors
(or similar officials), shall be acquired by another person or entity
(the "Third Entity"), regardless of the type of transfer, including
without limitation by being exchanged for, converted into or acquired
in consideration of the right to receive securities, cash or other
property (whether by means of a tender or exchange offer,
reclassification, consolidation, merger, sale or other disposition of
such assets or such equity interests, compulsory exchange of equity
interests, liquidation or otherwise). In the case of change in
control from the Third Entity to a Further Entity, such change in
control shall be deemed to have occurred when (i) all of the assets
of the Third Entity or (ii) equity interests in such Third Entity
that have the power to elect all directors (or similar officials),
shall be exchanged for, converted into or acquired for or constitute
Page-12
the right to receive securities, cash or other property. As a result
of such change in control, the Further Entity shall stand in the
shoes of the Third Entity with respect to the rights and obligations
contemplated by this Agreement as would any subsequent entities
involved in any farther such change and control. The Parties each
agree to take such further action and deliver such ancillary
documents as may be reasonably necessary in order to carry out the
terms and provisions of this Agreement.
m) Authorization: The undersigned hereby represent and warrant that all
necessary actions have been taken by the Parties to authorize the
respective signatories to execute this Agreement on behalf of each
Party. Such actions shall include, but are not limited to, a
specific authorization by the appropriate board or committee of the
respective Party for the undersigned to execute this Agreement,
and/or any corollary agreements or documents necessary for the matter
anticipated hereby.
n) Confidentiality: The Parties acknowledge that the terms and
conditions of this Agreement not in the public domain (See, "(o)"
below) shall be considered confidential information and shall not be
disclosed by one Party to any third party without the prior written
approval by the non-disclosing Party. Notwithstanding the foregoing
either Party may disclose the terms of this agreement: i) consistent
with requirements set forth by the U.S. Securities and Exchange
Commission concerning disclosure of material events; (ii) to its
current or bona fide prospective investors, employees, investment
bankers, lenders, accountants and attorneys, in each case where such
persons or entities are under appropriate confidentiality
obligations; and, iii) to the Arbitrator or Special Master as the
case may be, information necessary to assist the Arbitrator or
Special Master in making its decision pursuant to the terms of this
Agreement.
o) Press Release: Either party may issue a press release disclosing the
existence of this Agreement and the fact that Ramtron has taken a
license under two of the National Patent Applications and in turn two
of the National applications have been assigned to Ramtron. The
parties may disclose that one of the interference counts will be
decided by a special master. Any additional or more definitive
information requires prior written consent of the other party and is
subject to paragraph (n) Confidentiality, above.
p) Right to Cure - Dispute Resolution: Should either Party deem a
violation of the terms of this Agreement, and/or any corollary
documents, then the non-violating Party shall notify the other Party
of the alleged violation. The Party so notified shall have ten (10)
business days from receipt of such notice to cure the alleged
violation. Should the non-defaulting Party deem the cure
insufficient, then the non-defaulting Party may declare a default
Page-13
hereunder. Any uncured controversy or dispute among the Parties
which involve the construction, application, conditions and/or
obligations of this Agreement, or any claims arising out of or
relating to this Agreement or the material breach thereof, shall be
attempted to be settled through good faith negotiations. Senior
management level representatives of each party directly responsible
for the matters underlying the controversy shall use their reasonable
best efforts to meet as reasonably requested in writing by the
complaining party to resolve the controversy or dispute. Such senior
representatives shall meet at a mutually agreed time and place within
twenty (20) business days of receipt a notice of dispute. They shall
use reasonable best efforts to discuss the controversy or dispute and
negotiate in good faith for a period of at least thirty (30) business
days beginning on the first day of such meetings in an effort to
resolve the controversy and prior to the sending of any notice of
default and/or termination as set forth in this Agreement. Any
dispute or claim arising out of or in connection with this Agreement
or any corollary documents which has not be resolved pursuant to this
subparagraph, shall be finally settled through alternative dispute
resolution procedures mutually agreed to by the Parties. If no such
alternative dispute resolution procedure(s) is agreed to by the
Parties, then the dispute shall be resolved by binding final
arbitration in the United States by one (1) arbitrator appointed in
accordance with rules of arbitration issued by the American
Arbitration Association. The arbitrator will apply California law to
the merits of any dispute or claim, without reference to conflict of
law principles. Judgment of the award rendered by the arbitrators
may be entered in any court having jurisdiction thereof.
Notwithstanding the foregoing, the Parties may apply to any court of
competent jurisdiction for temporary or preliminary injunctive relief
without breach of this arbitration provision.
q) Additional Documents. Each Party agrees to execute such additional
documents as necessary to effect the obligations set forth herein
provided any such document does not materially alter the obligations
of either Party to this Agreement.
Page-14
IN WITNESS WHEREOF, the Parties have executed this Agreement on the day and
year first set forth above.
Ramtron International Corporation,
A Delaware Corporation
By: /S/ Xxxx X. Xxxxx
---------------------------
Xxxx X. Xxxxx
Title: President - Technology Group
Date: April 6, 2004
National Semiconductor Corporation,
A Delaware Corporation
By: /S/ Xxxx X. Xxxxx, III
------------------------------
Xxxx X. Xxxxx, III
Title: Senior Vice President, General
Counsel and Secretary
Date: April 7, 0000
Xxxx-00
XXXXXXXXXXXXXXXX
XXXXX XX XXXXXXXX )
) ss.
COUNTY OF EL PASO )
The foregoing instrument was acknowledged before me this 6 day of April, 2004,
by Xxxx X. Xxxxx as President - Technology Group of Ramtron International
Corporation, a Delaware Corporation.
Witness my hand and official seal.
My commission expires 10-30-07.
/S/ Xxxxxxx X. Xxxxx
----------------------
Xxxxxxx X. Xxxxx
Notary Public (SEAL)
On April 6, 2004 before me, Xxxxx X. Xxxx, Notary Public, personally appeared
Xxxx X. Xxxxx, III personally known to me to be the person whose name is
subscribed to the within instrument and acknowledged to me that he executed
the same in his authorized capacity, and that by his signature on the
instrument the person, or the entity upon behalf of which the person acted,
executed this instrument.
WITNESS my hand and official seal.
/S/ Xxxxx X. Xxxx
------------------
Xxxxx X. Xxxx
Notary Public (SEAL)
Page-16
Exhibit A
---------
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
------------------------------
NATIONAL SEMICONDUCTOR CORP. )
)
Plaintiff, )
)
v. ) Civil Action No. 03-61 (RWR/JMF)
)
RAMTRON INTERNATIONAL CORP. )
) Judge: Xxxxxxx X. Xxxxxxx
Defendant. ) Magistrate Judge: Xxxx X. Xxxxxxxx
------------------------------
JOINT STIPULATION OF DISMISSAL AND PROPOSED ORDER
Defendant Ramtron International Corporation ("Ramtron") and Plaintiff National
Semiconductor Corporation ("National") respectfully move the Court for entry
of an Order of Dismissal.
Ramtron and National hereby stipulate and agree, pursuant to Fed. R. C. P.
41(a)(1), to a dismissal with prejudice of all claims and counterclaims in
this action that were made, or that could have been made, with respect to four
of the five interferences at issue in this action. Specifically, Ramtron and
National agree to dismiss with prejudice all claims that were made, or that
could have been made, with respect to interference nos. 102,723, 102,724,
102,725, and 102,726.
Ramtron and National further stipulate and agree to a dismissal without
prejudice of all claims and counterclaims in this action that were made, or
that could have been made, with respect to interference no. 102,727 ("the '727
interference"). With respect to the '727 Interference, the Parties will
submit to a mutually agreed upon special master (the "Special Master") issues
relating to the enablement of Ramtron's patent no. 4,873,664 ("the '664
patent") under 35 U.S.C. Section 112, Paragraph 1 and the '727 interference.
The parties agree not to submit the issue of best mode of the '664 patent to
the Special Master.
Neither Ramtron nor National shall seek a review of any decision by the
Special Master concerning '664 patent and the '727 interference, it being
understood that the Parties hereto waive any right to appeal or review such
decision.
Within 30 days after the Special Master rules, the parties agree that either
party may move to reopen the case for the limited purpose of making any
motions necessary to implement the Special Master's decision and to address
the '664 patent best mode issue.
Page-17
Accordingly, the parties jointly request the Court to enter the Proposed Order
of Dismissal submitted herewith.
Respectfully submitted,
Date: -------------- ------------------------------
Xxxxxxx Xxxxxx
DC Bar No. 419449
Xxxx X. Xxxxx
Texas Bar No. 15044500
Xxxx X. Xxxxxxx
Texas Bar No. 05973800
SIDLEY XXXXXX XXXXX & XXXX LLP
000 X. Xxxxxxx, Xxxxx 0000
Xxxxxx, Xxxxx 00000
(000) 000-0000 Telephone
(000) 000-0000 Facsimile
ATTORNEYS FOR DEFENDANT
NATIONAL SEMICONDUCTOR CORPORATION
Date: -------------- ------------------------------
Xxxxxxx X. Xxxxx
Bar Membership No. 58,396
OBLON, SPIVAK, McCLELLAND,
XXXXX & NEUSTADT, P.C.
0000 Xxxxxxxxx Xxxxx Xxxxxxx
Xxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxx 00000
(000) 000-0000 (direct dial)
(000) 000-0000 (facsimile)
XXXXXX@XXXXX.XXX (e-mail)
Xxxxxxx X. Xxxx, Esq.
Bar Membership No. 414,877
OBLON, SPIVAK, McCLELLAND,
XXXXX & NEUSTADT, P.C.
0000 Xxxxxxxxx Xxxxx Xxxxxxx
Xxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxx 00000
(000) 000-0000 (direct dial)
(000) 000-0000 (facsimile)
XXXXX@XXXXX.XXX (e-mail)
Page-18
Of Counsel:
Xxxxxxx X. Xxxxx, Esq.
OBLON, SPIVAK, McCLELLAND,
XXXXX & NEUSTADT, P.C.
0000 Xxxxxxxxx Xxxxx Xxxxxxx
Xxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxx 00000
(000) 000-0000 (direct dial)
(000) 000-0000 (facsimile)
XXXXXX@XXXXX.XXX (e-mail)
Xxxxxx X. Xxxxx, Esq.
OBLON, SPIVAK, McCLELLAND,
XXXXX & NEUSTADT, P.C.
0000 Xxxxxxxxx Xxxxx Xxxxxxx
Xxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxx 00000
(000) 000-0000 (direct dial)
(000) 000-0000 (facsimile)
XXXXXX@XXXXX.XXX (e-mail)
Xxxxx X. Xxxx, Esq.
OBLON, SPIVAK, McCLELLAND,
XXXXX & NEUSTADT, P.C.
0000 Xxxxxxxxx Xxxxx Xxxxxxx
Xxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxx 00000
(000) 000-0000 (direct dial)
(000) 000-0000 (facsimile)
XXXXX@XXXXX.XXX (e-mail)
ATTORNEYS FOR DEFENDANT
RAMTRON INTERNATIONAL CORPORATION
Page-19
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
------------------------------
RAMTRON INTERNATIONAL CORP. )
)
Plaintiff, )
)
v. ) Civil Action No. 99-0146
) (RWR/DAR)
NATIONAL SEMICONDUCTOR )
CORPORATION ) Judge: Xxxxxxx X. Xxxxxxx
)
Defendant. )
------------------------------
[PROPOSED] ORDER OF DISMISSAL
Upon consideration of the Joint Stipulation of Dismissal submitted by the
parties, it is hereby
ORDERED that all claims and counterclaims in this action that were made, or
that could have been made, with respect to Interference Nos. 102,723, 102,724,
102,725, and 102,726, are hereby dismissed with prejudice. It is further
ORDERED that all claims and counterclaims in this action that were made, or
that could have been made, with respect to Interference No. 102,727, are
hereby dismissed without prejudice pending resolution by a special master of
certain issues concerning enablement under 35 U.S.C. Section 112, Paragraph 1
and Ramtron's U.S. Patent No. 4,873,664. It is further
ORDERED that within 30 days after the special master rules on the enablement
issues, either party may move to reopen the case for the limited purpose of
making any motions necessary to implement the special master's decision and
the best mode issue identified in the Joint Stipulation of Dismissal. It is
further
ORDERED that if neither party moves to reopen the case within 30 days after
the special master rules on the enablement issues, this case shall, without
further order, stand dismissed with prejudice.
SIGNED this ------ day of -----------, 2004.
----------------------------
Xxxxxxx X. Xxxxxxx
United States District Judge
Page-20
EXHIBIT B
PATENT ASSIGNMENT
National Semiconductor Corporation a Delaware Corporation, ("Assignor")
located at 0000 Xxxxxxxxxxxxx Xxxxx, Xxxxx Xxxxx, XX 00000 is the sole and
exclusive owner of the entire right, title, and interest in United States
patent application "07/377,168" Ferroelectric Memory Cell, and Application
"07/443,018" Ferroelectric Memory Cell (collectively, the "Applications").
Ramtron International Corporation, a Delaware Corporation, ("Assignee")
located at 0000 Xxxxxxx Xxxxx, Xxxxxxxx Xxxxxxx, Xxxxxxxx is desirous of
acquiring the entire right title and interest in the Applications.
For good and valuable consideration the receipt of which is hereby
acknowledged, Assignor has sold, assigned, transferred and set over to
Assignee, the Applications, for its own use and enjoyment and that of its
successors, assigns or other legal representatives, to the end of the term or
terms for which said Applications and resulting U.S. Patents may be granted or
issued.
IN WITNESS WHEREOF, Assignor has caused this assignment to be signed by its
officer duly authorized to execute this agreement on behalf of assignor.
NATIONAL SEMICONDUCTOR CORPORATION
By: /S/ Xxxx X. Xxxxx, III
------------------------------
Xxxx X. Xxxxx, III
Sr. Vice President, Secretary and
General Counsel
State of California
County of Santa Xxxxx
On 4-7-04, before me; Xxxxx X. Xxxx, Notary Public, personally appeared Xxxx
X. Xxxxx III, personally known to me to be the person whose name is subscribed
to the within instrument and acknowledged to me that he executed the same in
his authorized capacity, and that by his signature on the instrument the
person or the entity upon behalf of which the person acted, executed the
instrument.
WITNESS my hand and official seal
/S/ Xxxxx X. Xxxx
-----------------------------
Xxxxx X. Xxxx,
Notary Public in and for the state of
California
(SEAL)
Page-21
APPENDIX A
PATENT LICENSE AGREEMENT
("NO-FEE RESTRICTED FOUNDRY LICENSE")
THIS PATENT LICENSE AGREEMENT ("Agreement") is made and entered into by and
between National Semiconductor Corporation, a corporation organized and
existing under the laws of Delaware, having principal offices at 0000
Xxxxxxxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
"NATIONAL"), and "-----------", [Identify Licensee by type of legal entity and
location] (hereinafter referred to as "COMPANY ONE") (NATIONAL and "COMPANY
ONE" are individually referred to herein as a "party," and collectively as the
"parties.").
WITNESSETH
WHEREAS, NATIONAL in conjunction with a Settlement Agreement with Ramtron
International Corporation has agreed to offer a single, one-time license as
follows:
ARTICLE I - DEFINITIONS
As used in this Agreement, the term:
1) "SUBSIDIARY(IES)" means any corporation, company, or other entity of which
more than fifty percent (50%) of the outstanding shares or stock entitled
to vote for the election of the directors (other than any shares of stock
whose voting rights are subject to restriction) is owned or controlled by
a party hereto, directly or indirectly, now or hereafter, but any such
entity shall be deemed to be a SUBSIDIARY only so long as such ownership
or control exists. The SUBSIDIARIES of "COMPANY ONE" as of the EFFECTIVE
DATE (hereinafter defined) of this Agreement shall be granted licenses and
releases under Articles 1 and 2 of this Agreement. After the EFFECTIVE
DATE of this Agreement, "COMPANY ONE" may also, from time to time,
identify in writing additional SUBSIDIARIES to be licensed under Article
2, provided, however, that: (i) no corporation, company, or other entity
so identified shall be released from liability for unlicensed infringement
of a party's PATENTS (hereinafter defined) occurring prior to such
corporation's, company's, or other entity's becoming a SUBSIDIARY under
this Agreement, unless and until "COMPANY ONE" shall pay an amount for a
release from past infringement as agreeable between the parties.
2) "LICENSED PRODUCTS" means discrete and integrated circuit devices and
semiconductive material as an operable part thereof, such devices and
materials being (i) in the form of a separate discrete device or a
separate integrated circuit device or (ii) integral with a wafer and
severable therefrom, circuits contained therein and, if provided
therewith, supporting means, terminal members, housing means,
environmental controlling means included within such housing means, or
unitary therewith and packaging therefore.
Page-22
3) "EFFECTIVE DATE" shall mean the date the last party executes this
Agreement.
4) "TERM" means a period beginning on the EFFECTIVE DATE of this Agreement
and ending on the last to expire patent.
5) "NATIONAL PATENTS" means patents, reexaminations, reissues, and
continuations that issue from U.S. Patent Interference No. 102,725 derived
from Application 07/582,672 and U.S. Patent Interference No. 102,726
derived from Application 07/582,615.
Article II - GRANTS AND COVENANTS
2.1 Subject to Sections 2.2 through 2.6 inclusive, NATIONAL, on behalf of
itself and its SUBSIDIARIES, hereby grants to "COMPANY ONE" and "COMPANY
ONE"'s SUBSIDIARIES, during the TERM of this Agreement, a non-exclusive
non-transferable license, without right to sublicense to third parties,
under NATIONAL PATENTS, (a) to make, use, lease, sell, offer for sale,
export, import or otherwise dispose of LICENSED PRODUCTS; provided
however, that no rights are conveyed hereunder to customers of COMPANY
ONE under any claim of a NATIONAL PATENT which is directed to (1) a
combination of any LICENSED PRODUCT sold, leased or otherwise disposed of
by "COMPANY ONE" or "COMPANY ONE"'s SUBSIDIARIES with any other product,
or (2) a method or process which is other than the normal and intended
use of such LICENSED PRODUCT itself as sold, leased or otherwise disposed
of by "COMPANY ONE" or "COMPANY ONE"'s SUBSIDIARIES.
2.2 Feature Size Restriction - No license is granted by NATIONAL for product
that contains a feature size of less than .35 um any where on the
integrated circuit device.
2.3 No release or license is granted by NATIONAL, or any SUBSIDIARIES, either
directly or by implication, estoppel or otherwise, under any patent
licensed hereunder, to "COMPANY ONE" or its SUBSIDIARIES, or third
parties acquiring product from "COMPANY ONE" or any SUBSIDIARY, for the
combination of LICENSED PRODUCTS with any other product which is not a
LICENSED PRODUCT.
2.4 With respect to the licenses granted in Sections 2.1 and 2.2, a license
to "COMPANY ONE" does not include the right of "COMPANY ONE" or its
SUBSIDIARIES under the product and apparatus claims of any NATIONAL
PATENTS to make products for sale to any third party (other than a
SUBSIDIARY) for said third party's sale, use, lease, or other disposition
of such products under the trade name, trademark, or other commercial
indicia of such third party where the product design or circuit design is
furnished by such third party in such sufficient detail such that no
substantial additional designing by the party or its SUBSIDIARIES
licensed herein is required, or to which only minor revisions are made to
conform to specifications used by the party or its SUBSIDIARIES licensed
herein. In the event such prohibited activity occurs, the exclusive
remedy of NATIONAL for any claim of patent infringement shall be against
the third party, provided that upon notice, "COMPANY ONE" hereto will
cooperate with the other party to effectuate this provision.
Page-23
2.5 If a SUBSIDIARY of "COMPANY ONE" ceases to be a SUBSIDIARY of "COMPANY
ONE", the licenses and rights granted hereunder with respect to the
patents of the NATIONAL to the former SUBSIDIARY shall terminate on the
date the former SUBSIDIARY ceases to be a SUBSIDIARY. Notwithstanding
the foregoing, the licenses and rights granted hereunder to the former
SUBSIDIARY with respect to patents of NATIONAL on LICENSED PRODUCTS made
or have made prior to the date of such cessation, shall not be affected
by such cessation.
2.6 Notwithstanding anything in subparagraph 2.4 to the contrary, should
NATIONAL execute and deliver a license in favor of a customer of COMPANY
ONE as identified by Ramtron International Corporation pursuant to a 2004
Settlement Agreement between Ramtron International Corporation and
NATIONAL, then with respect to the license granted under this Agreement,
and notwithstanding anything in this Agreement to the contrary, "COMPANY
ONE" or its SUBSIDIARIES shall have the right under the claims of any
NATIONAL PATENTS to fabricate wafers for such third party where the
product design or circuit design is entirely or partially furnished by
such third party for said third party's sale, use, lease or other
disposition of such products under the trade name, trademark, or other
commercial indicia of such third party in such sufficient detail such
that no substantial additional designing by the party or its
SUBSIDIARIES licensed herein is required, or to which only minor
revisions are made to conform to specifications used by the party or its
SUBSIDIARIES licensed herein.
ARTICLE III - CONSIDERATION
3.1 As consideration for the settlement agreement between NATIONAL and
Ramtron International Corporation, this license is provided without cost
and is royalty free.
ARTICLE IV - EFFECTIVE DATE AND TERM
4.1 This Agreement shall become effective on the EFFECTIVE DATE and shall
remain in force until the expiration of the last patent.
4.2 In the event of a material breach of this Agreement by "COMPANY ONE", if
such breach is not corrected within sixty (60) days after written notice
thereof is received by "COMPANY ONE" in breach, this Agreement may be
terminated forthwith by written notice to that effect from NATIONAL. The
licenses and covenants granted hereunder to "COMPANY ONE" in breach and
its SUBSIDIARIES shall automatically terminate as of the date of such
termination of this Agreement. If an integrated circuit device with a
feature size of less than .35 um anywhere on the die, is shipped from
"COMPANY ONE" and is found to infringe a NATIONAL PATENT, it will result
in a material breach of this agreement.
Page-24
ARTICLE V - ASSIGNMENT
5.1 This Agreement and rights granted therein are not assignable or otherwise
transferable.
ARTICLE VI - MISCELLANEOUS PROVISIONS
6.1 Nothing contained in this Agreement shall be construed as:
a) a warranty or representation by either party as to the validity or
scope of any of its PATENTS;
b) a warranty or representation by either party that any manufacture,
sale, use, or other disposition of products by the other party has
been or will be free from infringement of any patents, utility
models, and/or design patents;
c) an agreement by either party to bring or prosecute actions or suits
against third parties for infringement, or conferring any right to
the other party to bring or prosecute actions or suits against third
parties for infringement;
d) conferring any right to the other party to use in advertising,
publicity, or otherwise, any trademark, trade name or names of either
party, or any contraction, abbreviation or simulation thereof;
e) conferring by implication, estoppel or otherwise, upon either party,
any license or other right under any class or type of patent, utility
model, or design patent except for the rights expressly granted
hereunder; or
f) an obligation to furnish any technical information or know-how.
6.2 The parties shall keep the terms of this Agreement confidential and shall
not now or hereafter divulge the terms of this Agreement or any part
thereof to any third party except:
a) to SUBSIDIARIES of the parties;
b) with the prior written consent of the other party;
c) to any governmental body having jurisdiction and specifically
requiring such disclosure;
d) in response to a valid subpoena or as otherwise may be required by
law; or
Page-25
e) to a party's accountants or legal counsel, subject to guarantees of
confidentiality and/or privilege;
provided, however, that prior to any such disclosure pursuant to
paragraphs (c) and/or (d) hereof, the party seeking disclosure shall
notify the other party and take all reasonable actions in an effort to
minimize the nature and extent of such disclosure.
6.3 All notices required or permitted to be given hereunder shall be in
writing and be deemed to have been given when sent by facsimile and
confirmed by sending the same notice via an internationally recognized
express courier service addressed as follows:
If to NATIONAL: General Counsel and Secretary
National Semiconductor Corporation
Mail Stop 16-135
2900 Semiconductor Drive
X.X. Xxx 00000
Xxxxx Xxxxx, Xxxxxxxxxx 00000-0000
Facsimile No.: 0-000-000-0000
If to "COMPANY ONE":
Either party may at any time give written notice of a change of its
address to the other party.
6.4 This Agreement and matters connected with the performance thereof shall
be interpreted and construed in all respects in accordance with the laws
of the State of California (U.S.A.), without reference to those
provisions regarding conflict of laws. The parties further consent to
personal jurisdiction in State of California and agree that any and all
legal actions related to or arising from this Agreement shall be brought
in the State of California.
6.5 Neither party shall issue any press release concerning this Agreement
unless mutually agreed upon by both parties.
6.6 The terms and conditions herein contained shall supersede all previous
communications, oral or written, between the parties hereto with respect
to the subject matter hereof, and no agreement or understanding varying,
modifying, or extending the same, nor any subsequent course of dealing or
conduct of the parties, shall be binding upon either party hereto unless
in writing and signed by a duly authorized officer or representative of
each party hereto.
Page-26
6.7 This Agreement sets forth the entire agreement and understanding between
the parties as to the subject matter hereof and merges all prior
discussions between them. Neither of the parties shall be bound by any
warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or in a writing
signed with or subsequent to execution hereof by an authorized
representative of the party to be bound thereby.
6.8 California Civil Code Section 1542 Waiver. Each Party represents and
warrants to the other that it has been informed of, has read, is familiar
with, understands, and does hereby expressly waive all rights that it has
or may have under section 1542 of the California Civil Code, which
provides: A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS 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.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed
below by their respective duly authorized officers.
NATIONAL SEMICONDUCTOR "COMPANY ONE", INC.
CORPORATION
------------------------------ -------------------------------
By: Xxxx Xxxxx By: ---------------------------
Title: Sr. Vice President & Title: ------------------------
General Counsel
Date: -------------------- Date: -------------------------
Page-27
APPENDIX B
PATENT LICENSE AGREEMENT
(FEE-BASED UNRESTRICTED FOUNDRY LICENSE)
THIS PATENT LICENSE AGREEMENT ("Agreement") is made and entered into by and
between National Semiconductor Corporation, a corporation organized and
existing under the laws of Delaware, having principal offices at 0000
Xxxxxxxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
"NATIONAL"), and "----------", [Identify Licensee by type of legal entity and
location] (hereinafter referred to as "COMPANY TWO") (NATIONAL and "COMPANY
TWO" are individually referred to herein as a "party," and collectively as the
"parties.").
WITNESSETH
WHEREAS, NATIONAL in conjunction with a Settlement Agreement with Ramtron
International Corporation has agreed to offer a single, one-time license as
follows:
Article I - DEFINITIONS
As used in this Agreement, the term:
1) "SUBSIDIARY(IES)" means any corporation, company, or other entity of which
more than fifty percent (50%) of the outstanding shares or stock entitled
to vote for the election of the directors (other than any shares of stock
whose voting rights are subject to restriction) is owned or controlled by
a party hereto, directly or indirectly, now or hereafter, but any such
entity shall be deemed to be a SUBSIDIARY only so long as such ownership
or control exists. The SUBSIDIARIES of "COMPANY TWO" as of the EFFECTIVE
DATE (hereinafter defined) of this Agreement shall be granted licenses and
releases under Articles 1 and 2 of this Agreement. After the EFFECTIVE
DATE of this Agreement, "COMPANY TWO" may also, from time to time,
identify in writing additional SUBSIDIARIES to be licensed under Article
2, provided, however, that: (i) no corporation, company, or other entity
so identified shall be released from liability for unlicensed infringement
of a party's PATENTS (hereinafter defined) occurring prior to such
corporation's, company's, or other entity's becoming a SUBSIDIARY under
this Agreement, unless and until "COMPANY TWO" shall pay an amount for a
release from past infringement as agreeable between the parties.
2) "LICENSED PRODUCTS" means discrete and integrated circuit devices and
semiconductive material as an operable part thereof, such devices and
materials being (i) in the form of a separate discrete device or a
separate integrated circuit device or (ii) integral with a wafer and
severable therefrom, circuits contained therein and, if provided
therewith, supporting means, terminal members, housing means,
environmental controlling means included within such housing means, or
unitary therewith and packaging therefore.
Page-28
3) "EFFECTIVE DATE" shall mean the date the last party executes this
Agreement.
4) "TERM" means a period beginning on the EFFECTIVE DATE of this Agreement
and ending on the last to expire patent.
5) "NATIONAL PATENTS" means patents, reexaminations, reissues, and
continuations that issue from U.S. Patent Interference No. 102,725 derived
from Application 07/582,672 and U.S. Patent Interference No. 102,726
derived from Application 07/582,615.
Article II - GRANTS AND COVENANTS
2.1 Subject to Sections 2.2, 2.3, and 2.4 NATIONAL, on behalf of itself and
its SUBSIDIARIES, hereby grants to "COMPANY TWO" and "COMPANY TWO"'s
SUBSIDIARIES, during the TERM of this Agreement, a non-exclusive non-
transferable license, without right to sublicense to third parties, under
NATIONAL PATENTS, (a) to make, use, lease, sell, offer for sale, export,
import or otherwise dispose of LICENSED PRODUCTS. provided however, that
no rights are conveyed hereunder to customers of COMPANY TWO under any
claim of a NATIONAL PATENT which is directed to (1) a combination of
any LICENSED PRODUCT sold, leased or otherwise disposed of by "COMPANY
TWO" or "COMPANY TWO"'s SUBSIDIARIES with any other product, or (2) a
method or process which is other than the normal and intended use of such
LICENSED PRODUCT itself as sold, leased or otherwise disposed of by
"COMPANY TWO" or "COMPANY TWO"'s SUBSIDIARIES.
2.2 No release or license is granted by NATIONAL, or any SUBSIDIARIES, either
directly or by implication, estoppel or otherwise, under any patent
licensed hereunder, to "COMPANY TWO" or its SUBSIDIARIES, or third
parties acquiring product from "COMPANY TWO" or any SUBSIDIARY, for the
combination of LICENSED PRODUCTS with any other product which is not a
LICENSED PRODUCT.
2.3 With respect to the licenses granted in Sections 2.1 and 2.2, a license
to "COMPANY TWO" does not include the right of "COMPANY TWO" or its
SUBSIDIARIES under the product and apparatus claims of any NATIONAL
PATENTS to make products for sale to any third party (other than a
SUBSIDIARY) for said third party's sale, use, lease, or other disposition
of such products under the trade name, trademark, or other commercial
indicia of such third party where the product design or manufacturing
design is furnished by such third party in such sufficient detail such
that no substantial additional designing by the party or its SUBSIDIARIES
licensed herein is required, or to which only minor revisions are made to
conform to specifications used by the party or its SUBSIDIARIES licensed
herein. In the event such prohibited activity occurs, the exclusive
remedy of NATIONAL for any claim of patent infringement shall be against
the third party, provided that upon notice, "COMPANY TWO" hereto will
cooperate with the other party to effectuate this provision.
Page-29
2.4 If a SUBSIDIARY of "COMPANY TWO" ceases to be a SUBSIDIARY of "COMPANY
TWO": The licenses and rights granted hereunder with respect to the
patents of the NATIONAL to the former SUBSIDIARY shall terminate on the
date the former SUBSIDIARY ceases to be a SUBSIDIARY. Notwithstanding
the foregoing, the licenses and rights granted hereunder to the former
SUBSIDIARY with respect to patents of NATIONAL on LICENSED PRODUCTS made
or have made prior to the date of such cessation, shall not be affected
by such cessation.
2.5 Notwithstanding anything in subparagraph 2.4 to the contrary, should
NATIONAL execute and deliver a license in favor of a customer of COMPANY
ONE as identified by Ramtron International Corporation pursuant to a 2004
Settlement Agreement between Ramtron International Corporation and
NATIONAL, then with respect to the license granted under this Agreement,
and notwithstanding anything in this Agreement to the contrary, "COMPANY
ONE" or its SUBSIDIARIES shall have the right under the claims of any
NATIONAL PATENTS to fabricate wafers for such third party where the
product design or circuit design is entirely or partially furnished by
such third party for said third party's sale, use, lease or other
disposition of such products under the trade name, trademark, or other
commercial indicia of such third party in such sufficient detail such
that no substantial additional designing by the party or its
SUBSIDIARIES licensed herein is required, or to which only minor
revisions are made to conform to specifications used by the party or its
SUBSIDIARIES licensed herein.
Article III - CONSIDERATION
3.1 As consideration for the grants provided in this Agreement, "COMPANY TWO"
agrees to pay to NATIONAL a total of **
** . Said sum shall become irrevocably due and
payable on the EFFECTIVE DATE and shall be paid to NATIONAL as follows:
a) An initial payment of ** U.S. dollars within five days of the
Effective Date of this agreement.
b) An additional payment of ** U.S. dollars within one year of the
EFFECTIVE DATE;
c) An additional payment of ** U.S. dollars within two years of
the EFFECTIVE DATE; and
d) An additional payment of ** U.S. dollars within three years of
the EFFECTIVE DATE, and.
e) An additional payment of ** U.S. dollars within four years of
the EFFECTIVE DATE, and.
f) An additional payment of ** U.S. dollars within five years of
the EFFECTIVE DATE, and.
Page-30
g) An additional payment of ** U.S. dollars within six years of
the EFFECTIVE DATE, and.
h) An additional payment of ** U.S. dollars within seven years of
the EFFECTIVE DATE, and.
i) An additional payment of ** U.S. dollars within eight years of
the EFFECTIVE DATE, and.
j) An additional payment of ** U.S. dollars within nine years of
the EFFECTIVE DATE.
3.2 Such payments shall be made via telegraphic transfer of immediately
available funds in United States Dollars to the account of NATIONAL as
follows:
Beneficiary Name: National Semiconductor Corporation
Bank Account: **
Bank Name: **
Bank Location: **
Bank ABA No.: **
3.3 Any payment once made pursuant to this Agreement shall not be refundable
for any reason.
3.4 After the expiration of a ten (10) day grace period on the due date for
any payment, "COMPANY TWO" shall be liable for interest on any overdue
payment required to be made pursuant to Article 5, which interest shall
be paid with any such overdue payment. The interest on any overdue
payment shall be calculated commencing on the date such payment became
due, using an annual rate which is the lesser of ten percent (10%) or one
percentage point higher than the prime interest rate as quoted by the
head office of Citibank N.A., New York, USA (or the successor of Citibank
N.A. at that time or an equivalent institute) at the close of banking on
such date, or on the first business day thereafter if such date falls on
a non-business day. If such interest rate exceeds the maximum legal rate
in the jurisdiction where a claim therefore is being asserted, the
interest rate shall be reduced to such maximum legal rate.
3.5 All taxes imposed as a result of the existence of this Agreement or the
performance hereunder shall be paid by the party required to do so by
applicable law.
Article IV - EFFECTIVE DATE AND TERM
4.1 Agreement shall become effective on the EFFECTIVE DATE and shall remain
in force until the expiration of the last patent.
Page-31
4.2 In the event of a material breach of this Agreement by either party, if
such breach is not corrected within sixty (60) days after written notice
thereof is received by the party in breach, this Agreement may be
terminated forthwith by written notice to that effect from the
complaining party. The licenses and covenants granted hereunder to the
party in breach and its SUBSIDIARIES shall automatically terminate as of
the date of such termination of this Agreement.
4.3 In the event of termination of this Agreement by one party pursuant to
Section 4.1, the licenses and covenants granted hereunder to or for the
benefit of such party and its SUBSIDIARIES shall survive such termination
and shall extend for the full TERM, as the case may be, but the licenses
granted to or for the benefit of the other party and its SUBSIDIARIES
shall terminate as of the date of termination takes effect.
Notwithstanding the foregoing, if the "other party" is a SUBSIDIARY, the
termination will be only as to that SUBSIDIARY. If the "other party" is
NATIONAL or "COMPANY TWO", the termination will also affect all
SUBSIDIARIES of the terminated party.
Article V - ASSIGNMENT
5.1 This Agreement and the rights granted therein are not assignable or
otherwise transferable.
Article VI - MISCELLANEOUS PROVISIONS
6.1 Nothing contained in this Agreement shall be construed as:
a) a warranty or representation by either party as to the validity or
scope of any of its PATENTS;
b) a warranty or representation by either party that any manufacture,
sale, use, or other disposition of products by the other party has
been or will be free from infringement of any patents, utility
models, and/or design patents;
c) an agreement by either party to bring or prosecute actions or suits
against third parties for infringement, or conferring any right to
the other party to bring or prosecute actions or suits against third
parties for infringement;
d) conferring any right to the other party to use in advertising,
publicity, or otherwise, any trademark, trade name or names of either
party, or any contraction, abbreviation or simulation thereof;
e) conferring by implication, estoppel or otherwise, upon either party,
any license or other right under any class or type of patent, utility
model, or design patent except for the rights expressly granted
hereunder; or
Page-32
f) an obligation to furnish any technical information or know-how.
6.2 The parties shall keep the terms of this Agreement confidential and shall
not now or hereafter divulge the terms of this Agreement or any part
thereof to any third party except to SUBSIDIARIES of the parties;
a) with the prior written consent of the other party;
b) to any governmental body having jurisdiction and specifically
requiring such disclosure;
c) in response to a valid subpoena or as otherwise may be required by
law; or
d) to a party's accountants or legal counsel, subject to guarantees of
confidentiality and/or privilege;
6.3 provided, however, that prior to any such disclosure pursuant to
paragraphs (c) and/or (d) hereof, the party seeking disclosure shall
notify the other party and take all reasonable actions in an effort to
minimize the nature and extent of such disclosure.
6.4 All notices required or permitted to be given hereunder shall be in
writing and be deemed to have been given when sent by facsimile and
confirmed by sending the same notice via an internationally recognized
express courier service addressed as follows:
If to NATIONAL: General Counsel and Secretary
National Semiconductor Corporation
Mail Stop 16-135
2900 Semiconductor Drive
X.X. Xxx 00000
Xxxxx Xxxxx, Xxxxxxxxxx 00000-0000
Facsimile No.: 0-000-000-0000
If to "COMPANY TWO":
Either party may at any time give written notice of a change of its
address to the other party.
6.5 This Agreement and matters connected with the performance thereof shall
be interpreted and construed in all respects in accordance with the laws
of the State of California (U.S.A.), without reference to those
provisions regarding conflict of laws. The parties further consent to
personal jurisdiction in State of California and agree that any and all
legal actions related to or arising from this Agreement shall be brought
in the State of California.
Page-33
6.6 Neither party shall issue any press release concerning this Agreement
unless mutually agreed upon by both parties.
6.7 The terms and conditions herein contained shall supersede all previous
communications, oral or written, between the parties hereto with respect
to the subject matter hereof, and no agreement or understanding varying,
modifying, or extending the same, nor any subsequent course of dealing or
conduct of the parties, shall be binding upon either party hereto unless
in writing and signed by a duly authorized officer or representative of
each party hereto.
6.8 This Agreement sets forth the entire agreement and understanding between
the parties as to the subject matter hereof and merges all prior
discussions between them. Neither of the parties shall be bound by any
warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or in a writing
signed with or subsequent to execution hereof by an authorized
representative of the party to be bound thereby.
6.9 California Civil Code Section 1542 Waiver. Each Party represents and
warrants to the other that it has been informed of, has read, is familiar
with, understands, and does hereby expressly waive all rights that it has
or may have under section 1542 of the California Civil Code, which
provides:
A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS 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.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed
below by their respective duly authorized officers.
NATIONAL SEMICONDUCTOR "COMPANY TWO", INC.
CORPORATION
------------------------------ -------------------------------
By: Xxxx Xxxxx By: ---------------------------
Title: Sr. Vice President & Title: ------------------------
General Counsel
Date: -------------------- Date: -------------------------
Page-34
APPENDIX C
PATENT LICENSE AGREEMENT
(NO-FEE RESTRICTED CUSTOMER LICENSE)
THIS PATENT LICENSE AGREEMENT ("Agreement") is made and entered into by and
between National Semiconductor Corporation, a corporation organized and
existing under the laws of Delaware, having principal offices at 0000
Xxxxxxxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
"NATIONAL"), and "------------", [Identify Licensee by type of legal entity
and location] (hereinafter referred to as "COMPANY ONE") (NATIONAL and
"COMPANY ONE" are individually referred to herein as a "party," and
collectively as the "parties.").
WITNESSETH
WHEREAS, NATIONAL in conjunction with a Settlement Agreement with Ramtron
International Corporation has agreed to offer a single, one-time license as
follows:
ARTICLE I - DEFINITIONS
As used in this Agreement, the term:
1) "SUBSIDIARY(IES)" means any corporation, company, or other entity of which
more than fifty percent (50%) of the outstanding shares or stock entitled
to vote for the election of the directors (other than any shares of stock
whose voting rights are subject to restriction) is owned or controlled by
a party hereto, directly or indirectly, now or hereafter, but any such
entity shall be deemed to be a SUBSIDIARY only so long as such ownership
or control exists. The SUBSIDIARIES of "COMPANY ONE" as of the EFFECTIVE
DATE (hereinafter defined) of this Agreement shall be granted licenses and
releases under Articles 1 and 2 of this Agreement. After the EFFECTIVE
DATE of this Agreement, "COMPANY ONE" may also, from time to time,
identify in writing additional SUBSIDIARIES to be licensed under Article
2, provided, however, that: (i) no corporation, company, or other entity
so identified shall be released from liability for unlicensed infringement
of a party's PATENTS (hereinafter defined) occurring prior to such
corporation's, company's, or other entity's becoming a SUBSIDIARY under
this Agreement, unless and until "COMPANY ONE" shall pay an amount for a
release from past infringement as agreeable between the parties.
2) "LICENSED PRODUCTS" means discrete and integrated circuit devices and
semiconductive material as an operable part thereof, such devices and
materials being (i) in the form of a separate discrete device or a
separate integrated circuit device or (ii) integral with a wafer and
severable therefrom, circuits contained therein and, if provided
therewith, supporting means, terminal members, housing means,
environmental controlling means included within such housing means, or
unitary therewith and packaging therefore.
Page-35
3) "EFFECTIVE DATE" shall mean the date the last party executes this
Agreement.
4) "TERM" means a period beginning on the EFFECTIVE DATE of this Agreement
and ending on the last to expire patent.
5) "NATIONAL PATENTS" means patents, reexaminations, reissues, and
continuations that issue from U.S. Patent Interference No. 102,725 derived
from Application 07/582,672 and U.S. Patent Interference No. 102,726
derived from Application 07/582,615.
Article II - GRANTS AND COVENANTS
2.1 Subject to Sections 2.2, 2.3, 2.4 and 2.5, NATIONAL, on behalf of itself
and its SUBSIDIARIES, hereby grants to "COMPANY ONE" and "COMPANY ONE"'s
SUBSIDIARIES, during the TERM of this Agreement, a non-exclusive non-
transferable license, without right to sublicense to third parties, under
NATIONAL PATENTS, (a) to have made (by a foundry licensed only by
NATIONAL), and to use, lease, sell, offer for sale, export, import or
otherwise dispose of LICENSED PRODUCTS; provided however, that no rights
are conveyed hereunder to customers of COMPANY ONE under any claim of a
NATIONAL PATENT which is directed to (1) a combination of any LICENSED
PRODUCT sold, leased or otherwise disposed of by "COMPANY ONE" or
"COMPANY ONE"'s SUBSIDIARIES with any other product, or (2) a method or
process which is other than the normal and intended use of such LICENSED
PRODUCT itself as sold, leased or otherwise disposed of by "COMPANY ONE"
or "COMPANY ONE"'s SUBSIDIARIES.
2.2 Feature Size Restriction - No license is granted by NATIONAL for product
that contains a feature size of less than .35 um any where on the
integrated circuit device.
2.3 No release or license is granted by NATIONAL, or any SUBSIDIARIES, either
directly or by implication, estoppel or otherwise, under any patent
licensed hereunder, to "COMPANY ONE" or its SUBSIDIARIES, or third
parties acquiring product from "COMPANY ONE" or any SUBSIDIARY, for the
combination of LICENSED PRODUCTS with any other product which is not a
LICENSED PRODUCT.
2.4 With respect to the licenses granted in Sections 2.1 and 2.2, a license
to "COMPANY ONE" includes the right of "COMPANY ONE" or its SUBSIDIARIES
under the claims of any NATIONAL PATENTS to have products made only by a
foundry licensed by NATIONAL. The product design or circuit design of
such products may be entirely or partially furnished by COMPANY ONE or
its SUBSIDIARIES to such NATIONAL licensed foundry in sufficient detail
by COMPANY ONE or its SUBSIDIARIES such that no additional designing by
the foundry is required, or to which only minor revisions are made by the
foundry to conform to specifications used by COMPANY ONE or its
SUBSIDIARIES licensed herein. Any products fabricated for COMPANY ONE
or its SUBSIDIARIES by such foundry may be sold, used, leased or
otherwise disposed of by COMPANY ONE or its SUBSIDIARIES under the trade
name, trademark, or ANY other commercial indicia of COMPANY ONE or its
SUBSIDIARIES.
Page-36
2.5 If a SUBSIDIARY of "COMPANY ONE" ceases to be a SUBSIDIARY of "COMPANY
ONE": The licenses and rights granted hereunder with respect to the
patents of the NATIONAL to the former SUBSIDIARY shall terminate on the
date the former SUBSIDIARY ceases to be a SUBSIDIARY. Notwithstanding
the foregoing, the licenses and rights granted hereunder to the former
SUBSIDIARY with respect to patents of NATIONAL on LICENSED PRODUCTS made
or have made prior to the date of such cessation, shall not be affected
by such cessation.
ARTICLE III - CONSIDERATION
3.1 As consideration for the settlement agreement between NATIONAL and
Ramtron International Corporation, this license is provided without cost
and is royalty free.
ARTICLE IV - EFFECTIVE DATE AND TERM
4.1 This Agreement shall become effective on the EFFECTIVE DATE and shall
remain in force until the expiration of the last patent.
4.2 In the event of a material breach of this Agreement by "COMPANY ONE", if
such breach is not corrected within sixty (60) days after written notice
thereof is received by "COMPANY ONE" in breach, this Agreement may be
terminated forthwith by written notice to that effect from NATIONAL. The
licenses and covenants granted hereunder to "COMPANY ONE" in breach and
its SUBSIDIARIES shall automatically terminate as of the date of such
termination of this Agreement. If an integrated circuit device with a
feature size of less than .35 um anywhere on the die, is shipped from
"COMPANY ONE" and is found to infringe a NATIONAL PATENT, it will result
in a material breach of this agreement.
ARTICLE V - ASSIGNMENT
5.1 This Agreement and rights granted therein are not assignable or otherwise
transferable.
ARTICLE VI - MISCELLANEOUS PROVISIONS
6.1 Nothing contained in this Agreement shall be construed as:
a) a warranty or representation by either party as to the validity or
scope of any of its PATENTS;
b) a warranty or representation by either party that any manufacture,
sale, use, or other disposition of products by the other party has
been or will be free from infringement of any patents, utility
models, and/or design patents;
c) an agreement by either party to bring or prosecute actions or suits
against third parties for infringement, or conferring any right to
the other party to bring or prosecute actions or suits against third
parties for infringement;
Page-37
d) conferring any right to the other party to use in advertising,
publicity, or otherwise, any trademark, trade name or names of either
party, or any contraction, abbreviation or simulation thereof;
e) conferring by implication, estoppel or otherwise, upon either party,
any license or other right under any class or type of patent, utility
model, or design patent except for the rights expressly granted
hereunder; or
f) an obligation to furnish any technical information or know-how.
6.2 The parties shall keep the terms of this Agreement confidential and shall
not now or hereafter divulge the terms of this Agreement or any part
thereof to any third party except:
a) to SUBSIDIARIES of the parties;
b) with the prior written consent of the other party;
c) to any governmental body having jurisdiction and specifically
requiring such disclosure;
d) in response to a valid subpoena or as otherwise may be required by
law; or
e) to a party's accountants or legal counsel, subject to guarantees of
confidentiality and/or privilege;
provided, however, that prior to any such disclosure pursuant to
paragraphs (c) and/or (d) hereof, the party seeking disclosure shall
notify the other party and take all reasonable actions in an effort to
minimize the nature and extent of such disclosure.
6.3 All notices required or permitted to be given hereunder shall be in
writing and be deemed to have been given when sent by facsimile and
confirmed by sending the same notice via an internationally recognized
express courier service addressed as follows:
If to NATIONAL: General Counsel and Secretary
National Semiconductor Corporation
Mail Stop 16-135
2900 Semiconductor Drive
X.X. Xxx 00000
Xxxxx Xxxxx, Xxxxxxxxxx 00000-0000
Facsimile No.: 0-000-000-0000
If to "COMPANY ONE":
Either party may at any time give written notice of a change of its
address to the other party.
Page-38
6.4 This Agreement and matters connected with the performance thereof shall
be interpreted and construed in all respects in accordance with the laws
of the State of California (U.S.A.), without reference to those
provisions regarding conflict of laws. The parties further consent to
personal jurisdiction in State of California and agree that any and all
legal actions related to or arising from this Agreement shall be brought
in the State of California.
6.5 Neither party shall issue any press release concerning this Agreement
unless mutually agreed upon by both parties.
6.6 The terms and conditions herein contained shall supersede all previous
communications, oral or written, between the parties hereto with respect
to the subject matter hereof, and no agreement or understanding varying,
modifying, or extending the same, nor any subsequent course of dealing or
conduct of the parties, shall be binding upon either party hereto unless
in writing and signed by a duly authorized officer or representative of
each party hereto.
6.7 This Agreement sets forth the entire agreement and understanding between
the parties as to the subject matter hereof and merges all prior
discussions between them. Neither of the parties shall be bound by any
warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or in a writing
signed with or subsequent to execution hereof by an authorized
representative of the party to be bound thereby.
6.8 California Civil Code Section 1542 Waiver. Each Party represents and
warrants to the other that it has been informed of, has read, is familiar
with, understands, and does hereby expressly waive all rights that it has
or may have under section 1542 of the California Civil Code, which
provides: A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS 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.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed
below by their respective duly authorized officers.
NATIONAL SEMICONDUCTOR "COMPANY ONE", INC.
CORPORATION
------------------------------ -------------------------------
By: Xxxx Xxxxx By: ---------------------------
Title: Sr. Vice President & Title: ------------------------
General Counsel
Date: -------------------- Date: -------------------------
Page-39
APPENDIX D
PATENT LICENSE AGREEMENT
(FEE-BASED UNRESTRICTED CUSTOMER LICENSE)
THIS PATENT LICENSE AGREEMENT ("Agreement") is made and entered into by and
between National Semiconductor Corporation, a corporation organized and
existing under the laws of Delaware, having principal offices at 0000
Xxxxxxxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
"NATIONAL"), and "--------", [Identify Licensee by type of legal entity and
location] (hereinafter referred to as "COMPANY TWO") (NATIONAL and "COMPANY
TWO" are individually referred to herein as a "party," and collectively as the
"parties.").
WITNESSETH
WHEREAS, NATIONAL in conjunction with a Settlement Agreement with Ramtron
International Corporation has agreed to offer a single, one-time license as
follows:
Article I - DEFINITIONS
As used in this Agreement, the term:
1.1 "SUBSIDIARY(IES)" means any corporation, company, or other entity of
which more than fifty percent (50%) of the outstanding shares or stock
entitled to vote for the election of the directors (other than any shares
of stock whose voting rights are subject to restriction) is owned or
controlled by a party hereto, directly or indirectly, now or hereafter,
but any such entity shall be deemed to be a SUBSIDIARY only so long as
such ownership or control exists. The SUBSIDIARIES of "COMPANY TWO" as
of the EFFECTIVE DATE (hereinafter defined) of this Agreement shall be
granted licenses and releases under Articles 1 and 2 of this Agreement.
After the EFFECTIVE DATE of this Agreement, "COMPANY TWO" may also, from
time to time, identify in writing additional SUBSIDIARIES to be licensed
under Article 2, provided, however, that: (i) no corporation, company, or
other entity so identified shall be released from liability for
unlicensed infringement of a party's PATENTS (hereinafter defined)
occurring prior to such corporation's, company's, or other entity's
becoming a SUBSIDIARY under this Agreement, unless and until "COMPANY
TWO" shall pay an amount for a release from past infringement as
agreeable between the parties.
1.2 "LICENSED PRODUCTS" means discrete and integrated circuit devices and
semiconductive material as an operable part thereof, such devices and
materials being (i) in the form of a separate discrete device or a
separate integrated circuit device or (ii) integral with a wafer and
severable therefrom, circuits contained therein and, if provided
therewith, supporting means, terminal members, housing means,
environmental controlling means included within such housing means, or
unitary therewith and packaging therefore.
Page-40
1.3 "EFFECTIVE DATE" shall mean the date the last party executes this
Agreement.
1.4 "TERM" means a period beginning on the EFFECTIVE DATE of this Agreement
and ending on the last to expire patent.
1.5 "NATIONAL PATENTS" means patents, reexaminations, reissues, and
continuations that issue from U.S. Patent Interference No. 102,725
derived from Application 07/582,672 and U.S. Patent Interference No.
102,726 derived from Application 07/582,615.
Article II - GRANTS AND COVENANTS
2.1 Subject to Sections 2.2, 2.3, 2.4 and 2.5, NATIONAL, on behalf of itself
and its SUBSIDIARIES, hereby grants to "COMPANY ONE" and "COMPANY ONE"'s
SUBSIDIARIES, during the TERM of this Agreement, a non-exclusive non-
transferable license, without right to sublicense to third parties, under
NATIONAL PATENTS, (a) to have made (by a foundry licensed only by
NATIONAL), and to use, lease, sell, offer for sale, export, import or
otherwise dispose of LICENSED PRODUCTS; provided however, that no rights
are conveyed hereunder to customers of COMPANY ONE under any claim of a
NATIONAL PATENT which is directed to (1) a combination of any LICENSED
PRODUCT sold, leased or otherwise disposed of by "COMPANY ONE" or
"COMPANY ONE"'s SUBSIDIARIES with any other product, or (2) a method or
process which is other than the normal and intended use of such LICENSED
PRODUCT itself as sold, leased or otherwise disposed of by "COMPANY ONE"
or "COMPANY ONE"'s SUBSIDIARIES.
2.2 Feature Size Restriction - None.
2.3 No release or license is granted by NATIONAL, or any SUBSIDIARIES, either
directly or by implication, estoppel or otherwise, under any patent
licensed hereunder, to "COMPANY ONE" or its SUBSIDIARIES, or third
parties acquiring product from "COMPANY ONE" or any SUBSIDIARY, for the
combination of LICENSED PRODUCTS with any other product which is not a
LICENSED PRODUCT.
2.4 With respect to the licenses granted in Sections 2.1 and 2.2, a license
to "COMPANY ONE" includes the right of "COMPANY ONE" or its SUBSIDIARIES
under the claims of any NATIONAL PATENTS to have products made only by a
foundry licensed by NATIONAL. The product design or circuit design of
such products may be entirely or partially furnished by COMPANY ONE or
its SUBSIDIARIES to such NATIONAL licensed foundry in sufficient detail
by COMPANY ONE or its SUBSIDIARIES such that no additional designing by
the foundry is required, or to which only minor revisions are made by the
foundry to conform to specifications used by COMPANY ONE or its
SUBSIDIARIES licensed herein. Any products fabricated for COMPANY ONE
or its SUBSIDIARIES by such foundry may be sold, used, leased or
otherwise disposed of by COMPANY ONE or its SUBSIDIARIES under the trade
name, trademark, or ANY other commercial indicia of COMPANY ONE or its
SUBSIDIARIES.
Page-41
2.5 If a SUBSIDIARY of "COMPANY ONE" ceases to be a SUBSIDIARY of "COMPANY
ONE": The licenses and rights granted hereunder with respect to the
patents of the NATIONAL to the former SUBSIDIARY shall terminate on the
date the former SUBSIDIARY ceases to be a SUBSIDIARY. Notwithstanding
the foregoing, the licenses and rights granted hereunder to the former
SUBSIDIARY with respect to patents of NATIONAL on LICENSED PRODUCTS made
or have made prior to the date of such cessation, shall not be affected
by such cessation.
Article III - CONSIDERATION
3.1 As consideration for the grants provided in this Agreement, "COMPANY ONE"
agrees to pay to NATIONAL a total of **
** . Said sum shall become irrevocably due and
payable on the EFFECTIVE DATE and shall be paid to NATIONAL as follows:
k) An initial payment of ** U.S. dollars within five days of the
Effective Date of this agreement.
l) An additional payment of ** U.S. dollars within one year of the
EFFECTIVE DATE;
m) An additional payment of ** U.S. dollars within two years of
the EFFECTIVE DATE; and
n) An additional payment of ** U.S. dollars within three years of
the EFFECTIVE DATE, and.
o) An additional payment of ** U.S. dollars within four years of
the EFFECTIVE DATE, and.
p) An additional payment of ** U.S. dollars within five years of
the EFFECTIVE DATE, and.
q) An additional payment of ** U.S. dollars within six years of
the EFFECTIVE DATE, and.
r) An additional payment of ** U.S. dollars within seven years of
the EFFECTIVE DATE, and.
s) An additional payment of ** U.S. dollars within eight years of
the EFFECTIVE DATE, and.
t) An additional payment of ** U.S. dollars within nine years of
the EFFECTIVE DATE.
3.2 Such payments shall be made via telegraphic transfer of immediately
available funds in United States Dollars to the account of NATIONAL as
follows:
Beneficiary Name: National Semiconductor Corporation
Bank Account: **
Bank Name: **
Bank Location: **
Bank ABA No.: **
Page-42
3.3 Any payment once made pursuant to this Agreement shall not be refundable
for any reason.
3.4 After the expiration of a ten (10) day grace period on the due date for
any payment, "COMPANY ONE" shall be liable for interest on any overdue
payment required to be made pursuant to Article 5, which interest shall
be paid with any such overdue payment. The interest on any overdue
payment shall be calculated commencing on the date such payment became
due, using an annual rate which is the lesser of ten percent (10%) or one
percentage point higher than the prime interest rate as quoted by the
head office of Citibank N.A., New York, USA (or the successor of Citibank
N.A. at that time or an equivalent institute) at the close of banking on
such date, or on the first business day thereafter if such date falls on
a non-business day. If such interest rate exceeds the maximum legal rate
in the jurisdiction where a claim therefore is being asserted, the
interest rate shall be reduced to such maximum legal rate.
3.5 All taxes imposed as a result of the existence of this Agreement or the
performance hereunder shall be paid by the party required to do so by
applicable law.
Article IV - EFFECTIVE DATE AND TERM
4.1 Agreement shall become effective on the EFFECTIVE DATE and shall remain
in force until the expiration of the last patent.
4.2 In the event of a material breach of this Agreement by either party, if
such breach is not corrected within sixty (60) days after written notice
thereof is received by the party in breach, this Agreement may be
terminated forthwith by written notice to that effect from the
complaining party. The licenses and covenants granted hereunder to the
party in breach and its SUBSIDIARIES shall automatically terminate as of
the date of such termination of this Agreement.
4.3 In the event of termination of this Agreement by one party pursuant to
Section 4.1, the licenses and covenants granted hereunder to or for the
benefit of such party and its SUBSIDIARIES shall survive such termination
and shall extend for the full TERM, as the case may be, but the licenses
granted to or for the benefit of the other party and its SUBSIDIARIES
shall terminate as of the date of termination takes effect.
Notwithstanding the foregoing, if the "other party" is a SUBSIDIARY, the
termination will be only as to that SUBSIDIARY. If the "other party" is
NATIONAL or "COMPANY ONE", the termination will also affect all
SUBSIDIARIES of the terminated party.
Article V - ASSIGNMENT
5.1 This Agreement and the rights granted therein are not assignable or
otherwise transferable.
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Article VI - MISCELLANEOUS PROVISIONS
6.1 Nothing contained in this Agreement shall be construed as:
a) a warranty or representation by either party as to the validity or
scope of any of its PATENTS;
b) a warranty or representation by either party that any manufacture,
sale, use, or other disposition of products by the other party has
been or will be free from infringement of any patents, utility
models, and/or design patents;
c) an agreement by either party to bring or prosecute actions or suits
against third parties for infringement, or conferring any right to
the other party to bring or prosecute actions or suits against third
parties for infringement;
d) conferring any right to the other party to use in advertising,
publicity, or otherwise, any trademark, trade name or names of either
party, or any contraction, abbreviation or simulation thereof;
e) conferring by implication, estoppel or otherwise, upon either party,
any license or other right under any class or type of patent, utility
model, or design patent except for the rights expressly granted
hereunder; or
f) an obligation to furnish any technical information or know-how.
6.2 The parties shall keep the terms of this Agreement confidential and shall
not now or hereafter divulge the terms of this Agreement or any part
thereof to any third party except to SUBSIDIARIES of the parties;
a) with the prior written consent of the other party;
b) to any governmental body having jurisdiction and specifically
requiring such disclosure;
c) in response to a valid subpoena or as otherwise may be required by
law; or
d) to a party's accountants or legal counsel, subject to guarantees of
confidentiality and/or privilege;
provided, however, that prior to any such disclosure pursuant to
paragraphs (c) and/or (d) hereof, the party seeking disclosure shall
notify the other party and take all reasonable actions in an effort to
minimize the nature and extent of such disclosure.
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6.3 All notices required or permitted to be given hereunder shall be in
writing and be deemed to have been given when sent by facsimile and
confirmed by sending the same notice via an internationally recognized
express courier service addressed as follows:
If to NATIONAL: General Counsel and Secretary
National Semiconductor Corporation
Mail Stop 16-135
2900 Semiconductor Drive
X.X. Xxx 00000
Xxxxx Xxxxx, Xxxxxxxxxx 00000-0000
Facsimile No.: 0-000-000-0000
If to "COMPANY ONE":
Either party may at any time give written notice of a change of its
address to the other party.
6.4 This Agreement and matters connected with the performance thereof shall
be interpreted and construed in all respects in accordance with the laws
of the State of California (U.S.A.), without reference to those
provisions regarding conflict of laws. The parties further consent to
personal jurisdiction in State of California and agree that any and all
legal actions related to or arising from this Agreement shall be brought
in the State of California.
6.5 Neither party shall issue any press release concerning this Agreement
unless mutually agreed upon by both parties.
6.6 The terms and conditions herein contained shall supersede all previous
communications, oral or written, between the parties hereto with respect
to the subject matter hereof, and no agreement or understanding varying,
modifying, or extending the same, nor any subsequent course of dealing or
conduct of the parties, shall be binding upon either party hereto unless
in writing and signed by a duly authorized officer or representative of
each party hereto.
6.7 This Agreement sets forth the entire agreement and understanding between
the parties as to the subject matter hereof and merges all prior
discussions between them. Neither of the parties shall be bound by any
warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or in a writing
signed with or subsequent to execution hereof by an authorized
representative of the party to be bound thereby.
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6.8 California Civil Code Section 1542 Waiver. Each Party represents and
warrants to the other that it has been informed of, has read, is familiar
with, understands, and does hereby expressly waive all rights that it has
or may have under section 1542 of the California Civil Code, which
provides: A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS 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.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed
below by their respective duly authorized officers.
NATIONAL SEMICONDUCTOR "COMPANY ONE", INC.
CORPORATION
------------------------------ -------------------------------
By: Xxxx Xxxxx By: ---------------------------
Title: Sr. Vice President & Title: ------------------------
General Counsel
Date: -------------------- Date: -------------------------
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