EXHIBIT 10.58
NVIDIA/E&S CONFIDENTIAL
THIS EXHIBIT CONTAINS CONFIDENTIAL INFORMATION WHICH HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A
CONFIDENTIAL TREATMENT REQUEST UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED. THE CONFIDENTIAL INFORMATION ON PAGES 1, 2, 5, AND 7 HAS
BEEN REPLACED WITH BRACKETS.
PATENT CROSS LICENSE AGREEMENT
BETWEEN
NVIDIA CORPORATION
AND
XXXXX AND XXXXXXXXXX COMPUTER CORPORATION
This Patent Cross License Agreement ("AGREEMENT") is entered into as of October
15, 2001 ("EFFECTIVE DATE") by and between NVIDIA CORPORATION, a Delaware
corporation, having an office at 0000 Xxx Xxxxx Xxxxxxxxxx, Xxxxx Xxxxx, XX
00000, X.X.X. ("NVIDIA") and XXXXX AND XXXXXXXXXX COMPUTER CORPORATION, a Utah
corporation, having an office at 000 Xxxxx Xxxxx, Xxxx Xxxx Xxxx, XX 00000,
X.X.X. ("E&S").
IN CONSIDERATION OF THE MUTUAL COVENANTS AND PROMISES CONTAINED HEREIN, THE
PARTIES AGREE AS FOLLOWS:
1. DEFINITIONS
1.1. "CAPTURE PERIOD" shall mean (subject to Section 3.9) any time on or
prior to the [ ] anniversary of the Effective Date.
1.2. "CHANGE OF CONTROL" shall mean a transaction or a series of related
transactions in which (i) more than fifty percent (50%) of the
outstanding shares or securities entitled to vote for the election
of directors of a party become owned or controlled, directly or
indirectly, by one or more related persons or entities, (ii) a party
transfers all or substantially all of its business and assets,
whether by sale, assignment, merger or otherwise, to another person
or entity, (iii) a party files or commences a petition or case
seeking reorganization, readjustment or arrangement of its business
or files or commences any other petition or case under any law
relating to bankruptcy or insolvency, or (iv) a party has filed or
commenced against it a petition or case under any law relating to
bankruptcy or insolvency, which petition or case is not dismissed
within ninety (90) days after the date of its filing or
commencement.
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NVIDIA/E&S CONFIDENTIAL
1.3. "E&S LICENSED PRODUCTS" shall mean (subject to the provisions of
Section 3.8) any goods and services sold by E&S as E&S' own product
(as further defined in Section 3.4) and not on behalf of another.
1.4. "E&S PATENTS" shall mean all Patents that at any time during the
term of this Agreement are owned or controlled by E&S or any of its
Subsidiaries or to which such entities have the right to grant
licenses, to the extent that E&S or any of its Subsidiaries has the
right to grant licenses within and of the scope set forth herein
without the requirement to pay consideration to any third party
(other than employees of the applicable party) for the grant of a
license under this Agreement.
1.5. "SPECIFIED FIELD OF USE" shall mean Sales of no more than [ ] units
in the aggregate in any calendar year that are primarily designed
for use in (a) [ ] used for [ ] and [ ] or [ ] of [ ], or [ ]; (b) [
] for [ ] and other features; (c) [ ] for use in [ ] and [ ] for the
[ ]; (d) software and components designed for use in such [ ] or for
use in [ ] or other [ ]; and (e) [ ] (essentially [ ]) for [ ] and [
], or [ ] or [ ]. Notwithstanding anything to the contrary in the
preceding sentence, the "Specified Field of Use" shall not include
any [ ] or [ ], or [ ] unless included as a component of a system
defined in (a) through (e) above.
1.6. "LICENSED PRODUCTS" shall mean Nvidia Licensed Products or E&S
Licensed Products as applicable.
1.7. "NVIDIA LICENSED PRODUCTS" shall mean any goods and services sold by
Nvidia as Nvidia's own product (as further defined in Section 3.4)
and not on behalf of another.
1.8. "NVIDIA PATENTS" shall mean all Patents that at any time during the
term of this Agreement are owned or controlled by Nvidia or any of
its Subsidiaries or to which such entities have the right to grant
licenses, to the extent that Nvidia or any of its Subsidiaries has
the right to grant licenses within and of the scope set forth herein
without the requirement to pay consideration to any third party
(other than employees of the applicable party) for the grant of a
license under this Agreement.
1.9. "PATENT PURCHASE AND LICENSE AGREEMENT" shall mean the Patent
Purchase and License Agreement entered into by E&S and Nvidia
Subsidiary, Nvidia International Inc., concurrently with this
Agreement.
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1.10. "PATENTS" shall mean all classes or types of patents, utility models
and design patents (including, without limitation, originals,
divisions, continuations, continuations-in-part, extensions or
reissues), and applications for these classes or types of patent
rights in all countries of the world that have or are entitled to
claim the benefit of a first effective filing date during the
Capture Period, including but not limited to the patents that are
the subject of the Patent Purchase and License Agreement.
1.11. "SALES" shall mean the sale, leasing, license, or other disposition
of E&S Licensed Products, including any such sale, leasing, license,
or other disposition by E&S Subsidiaries (and any former Subsidiary
to which the benefits of the licenses granted under this Agreement
are extended pursuant to Section 3.5).
1.12. "SUBSIDIARY" shall mean any corporation, partnership or other
entity, now or hereafter: (i) more than fifty percent (50%) of whose
outstanding shares or securities entitled to vote for the election
of directors or similar managing authority is directly or indirectly
owned or controlled by a party hereto; or (ii) that does not have
outstanding shares or securities but more than fifty percent (50%)
of whose ownership interest representing the right to make the
decisions for such entity is directly or indirectly owned or
controlled by a party hereto; provided, however, that in each case
such corporation, partnership or other entity shall be deemed to be
a Subsidiary only so long as such ownership or control exists and is
more than fifty percent (50%).
2. MUTUAL RELEASES
2.1. BY NVIDIA. Nvidia, on behalf of itself and its Subsidiaries, hereby
releases, acquits and forever discharges E&S, its Subsidiaries that
are Subsidiaries on the Effective Date, and its and their
distributors and customers, direct and indirect, from any and all
claims or liability for infringement of any Nvidia Patents that
arose prior to the Effective Date of this Agreement, to the extent
such infringement would have been licensed under the license granted
to E&S hereunder if such license had been in existence at the time
of such infringing activity.
2.2. BY E&S. E&S, on behalf of itself and its Subsidiaries, hereby
releases, acquits and forever discharges Nvidia, its Subsidiaries
that are Subsidiaries on the Effective Date, and its and their
distributors and customers, direct and indirect, from any and all
claims or liability for infringement of any E&S Patents that arose
prior to the Effective Date of this Agreement, to the extent such
infringement would have been licensed under the license granted to
Nvidia hereunder if such license had been in existence at the time
of such infringing activity.
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3. GRANT OF RIGHTS
3.1. NVIDIA LICENSE TO E&S. Subject to the terms and conditions of this
Agreement, Nvidia hereby grants to E&S and to its Subsidiaries a
non-exclusive, non-transferable, royalty-free, worldwide license,
without the right to sublicense, under Nvidia Patents to:
(a) make, have made (subject to Section 3.3 below), use, import, and
directly or indirectly sell, offer to sell and otherwise dispose
of E&S Licensed Products; and
(b) make, have made, use and/or import any equipment and practice any
method or process for use in the manufacture of E&S Licensed
Products.
3.2. E&S LICENSE TO NVIDIA. Subject to the terms and conditions of this
Agreement, E&S hereby grants to Nvidia and to its Subsidiaries a
non-exclusive, non-transferable, royalty-free, worldwide license,
without the right to sublicense, under E&S Patents to:
(a) make, have made (subject to Section 3.3), use, import, and
directly or indirectly sell, offer to sell and otherwise dispose
of Nvidia Licensed Products; and
(b) make, have made, use and/or import any equipment and practice any
method or process for use in the manufacture of Nvidia Licensed
Products.
3.3. HAVE MADE RIGHTS.
(a) Each party's rights to have Licensed Products manufactured for it
by third parties under the licenses granted under Sections 3.1
and 3.2 above shall apply only when the specifications (other
than library tools and standard cells) of the product to be
manufactured by such third party ("Foundered Product") are
furnished by (as between the licensed party under this Agreement
and the third party manufacturer) the licensed party.
(b) Upon written request, the licensed party shall inform the other
party whether, and if so to what extent, any manufacturer
identified by the other party is manufacturing products for the
licensed party pursuant to the "have made" rights licensed
hereunder.
3.4. FOUNDRY RIGHTS. The parties understand, acknowledge and agree that
the licenses granted hereunder are intended to cover only the
products of the two parties to this Agreement and their
Subsidiaries, and are not intended to cover foundry activities that
either party may undertake on behalf of third parties. Therefore,
for the licenses granted in Sections 3.1 and 3.2, the definition of
Licensed Products of a party hereto shall exclude products
(including without limitation Applications
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Specific Integrated Circuits ("ASICs")) manufactured on behalf of a
third party from designs received in a substantially completed form
from a third party for resale to or on behalf of that party. The
limitations on the definition of Licensed Products set forth in this
Section 3.4 shall not apply to manufacturing methods and processes as
licensed hereunder pursuant to Sections 3.1 (b) and 3.2 (b).
3.5. LICENSES AND SUBSIDIARIES.
(a) Except as provided below, this Agreement shall extend to and be
binding upon all of each party's Subsidiaries, and the parties
shall ensure that all such Subsidiaries are bound by the terms of
this Agreement. Upon written request by a party, the other party
will give it written notice to identify any Subsidiary to which a
license has been extended.
(b) The extension of license rights to a Subsidiary shall apply only
(i) during the time period when such a business entity meets all
requirements of a Subsidiary and (ii) in the case of one but only
one Subsidiary per party during the term of this Agreement, after
such entity ceases to be a Subsidiary, if such former Subsidiary
has so elected pursuant to the provisions of Section 3.5(c), but
only as to E&S Licensed Products or Nvidia Licensed Products, as
the case may be, of such former Subsidiary that (A) were, as of
the date such entity ceased to be a Subsidiary, in production and
shipped as commercial products or (B) were, as of the date such
entity ceased to be a Subsidiary, under development and are
placed in production and shipped as commercial products of such
entity within [ ] thereafter (collectively "Covered Products"),
and any improvements or derivatives of Covered Products; provided
that in the case of such former Subsidiary of E&S, Covered
Products shall be limited to Covered Products within the
Specified Field of Use.
(c) If a Subsidiary of a party that owns or controls any Patents at
any time during the term of this Agreement that are licensed to
the other party hereunder ceases to be a Subsidiary, the licenses
granted to the other party and its Subsidiaries hereunder under
such Patents having an effective filing date on or prior to the
date such Subsidiary ceases to be a Subsidiary shall continue
even after such entity ceases to be a Subsidiary for the life of
all such Patents. If a Subsidiary of a party ceases to be a
Subsidiary, in the case of one but only one Subsidiary per party
during the term of this Agreement, such Subsidiary may elect to
retain benefits of the licenses granted hereunder, subject to the
limitations set forth in Section 3.5(b), by written notice of
such election to the other party given at or prior to the time it
ceases to be a Subsidiary, and in the event of such election all
Patents owned or controlled by such former Subsidiary or any of
its Subsidiaries at any time during the term of this Agreement
shall be subject
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to and included within the licenses granted to the other party
and its Subsidiaries under this Agreement.
(d) Each party agrees to take all steps that are reasonable under the
circumstances so that Patents covering inventions that are made
solely by one or more of its and/or its Subsidiaries' employees
and contractors for which substantially all of the funding is
provided by it and/or its Subsidiaries, are included among the
Patents licensed by it hereunder.
3.6. COVENANTS NOT TO XXX.
(a) Nvidia covenants and agrees for itself and on behalf of its
Subsidiaries, that neither Nvidia nor any of its Subsidiaries
shall commence, maintain, prosecute or voluntarily aid in any
action at law, equity or any other proceeding against users,
customers and distributors of E&S Licensed Products based in
whole or in part on any claim of infringement of any Nvidia
Patent arising out of the use, promotion, sale, offer for sale,
importation or other distribution or transfer of E&S Licensed
Products, either alone or in combination with other products;
provided, however, that such covenant shall not apply to any
product or portion thereof not provided by E&S that itself
infringes an Nvidia Patent.
(b) E&S covenants and agrees for itself and on behalf of its
Subsidiaries, that neither E&S nor any of its Subsidiaries shall
commence, maintain, prosecute or voluntarily aid in any action at
law, equity or any other proceeding against users, customers and
distributors of Nvidia Licensed Products based in whole or in
part on any claim of infringement of any E&S Patent arising out
of the use, promotion, sale, offer for sale, importation or other
distribution or transfer of Nvidia Licensed Products, either
alone or in combination with other products; provided, however,
that such covenant shall not apply to any product or portion
thereof not provided by Nvidia that itself infringes an E&S
Patent.
3.7. FULL RIGHTS.
(a) In the event that neither a party nor any of its Subsidiaries has
the right to grant a license under any particular patent right of
the scope set forth herein, then the license granted herein under
such Patent shall be of the broadest scope within the scope set
forth herein which the licensing party or any of its Subsidiaries
has the right to grant.
(b) Notwithstanding anything to the contrary contained herein, in the
event that either party or any of its Subsidiaries obtains rights
to any Patents that would be included within the Patents licensed
hereunder but for the fact that such a license would require the
party granting such license to make payments to a third party
(other than employees or contractors of the
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applicable party, its Subsidiaries, or employees or contractors
thereof), such Patents shall be included within the Nvidia
Patents or the E&S Patents, as the case may be, if the party to
whom such Patents would be licensed under this Agreement agrees
in a separate written agreement to be bound by, and protect such
grantor against, those payment obligations.
3.8. CHANGE OF CONTROL. In the event that E&S undergoes a Change of
Control, the definition of E&S Licensed Product shall automatically
be limited to and deemed amended to include only those E&S Licensed
Products that are within the Specified Field of Use.
3.9. MATERIAL BREACH. In the event that a party hereto commits a material
breach of this Agreement and does not correct such breach within
[ ] after receiving written notice complaining thereof
from the other party hereto, the Capture Period in Section 1.1 that
applies to licensed Patents that are owned or controlled by the party
providing such written notice shall automatically [ ]
the date on which a party that [ ] of this [ ]
thereof under [ ], but the Capture Period in Section 1.1 that
applies to licensed Patents that are owned or controlled by the party
that commits any such material breach shall remain unaffected.
3.10. MUTUAL ASSISTANCE.
(a) If either party (the "defendant party") is sued or threatened
with suit for patent infringement by a third party, the other
party (the "assisting party") will, upon request and at the sole
expense of the defendant party, assist the defendant party by
making available prior art or other information reasonably
available to such party relevant to the validity of such
infringement claim. Nothing in this Section 3.10 shall obligate
the assisting party to (i) provide information or materials to
the defendant party that, in the opinion of the assisting party,
would waive the attorney client privilege, constitutes attorney
work product, or contains trade secret or confidential
information of any third party to whom such party owes an
obligation of confidentiality, or (ii) commit resources that
would interfere unreasonably with its business. The defendant
party shall bear the costs, and reimburse the assisting party for
any reasonable costs (including the time of its employees)
incurred by the assisting party, in providing such information,
including any such reasonable costs incurred in connection with
depositions or other participation by the assisting party or its
employees in the proceedings.
(b) Unless otherwise agreed in writing by the assisting party, the
defendant party shall use the information provided by the
assisting party under Section 3.10(a) solely for purposes of
defense against the infringement claim, and shall maintain such
information in strict confidence and
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disclose such information solely (i) to its counsel, experts
retained by its counsel in connection with defense of the claim,
and employees with a need to know such information in connection
with the defense of the claim, subject in each case to written
confidentiality agreements, and (ii) upon at least ten (10) days
prior advance notice to the assisting party, in connection with
court proceedings, subject to confidentiality provisions embodied
in a court-entered protective order.
3.11. NO OTHER RIGHTS. No other rights are granted hereunder, by
implication, estoppel or otherwise, except as expressly provided
herein. Specifically, except as expressly provided in this Section 3,
nothing in the licenses granted hereunder or otherwise contained in
this Agreement shall expressly or by implication, estoppel or
otherwise give either party any right to license the other party's
Patents to others.
4. EFFECTIVE DATE, TERM AND TERMINATION
4.1. TERM. This Agreement and the rights and licenses granted hereunder
shall become effective on the Effective Date, and shall continue in
effect until the expiration of the last to expire of the licensed
Patents, unless and to the extent terminated by a party pursuant to
Section 4.2.
4.2. TERMINATION RIGHTS. A party may terminate the rights and licenses
granted to the other party and its Subsidiaries under this Agreement
upon sixty (60) days written notice of termination to the other party
given at any time upon or after the appointment of a receiver for all
or substantially all of the other party's property or the making of an
assignment for the benefit of its creditors under any law relating to
bankruptcy or insolvency, or the institution of any proceedings for
the liquidation or winding up of the other party's business or for the
termination of its corporate charter. In the event of a termination
under this Section 4.2, the rights and licenses granted under this
Agreement to the other party and its Subsidiaries shall terminate as
to Patents having an effective filing date on or after the date of
such termination, but shall continue as to Patents having an effective
filing date before the date of such termination solely for Covered
Products and any improvements or derivatives thereof, provided that in
the case of E&S and its Subsidiaries such Covered Products shall be
limited to Covered Products within the Specified Field of Use, and the
rights and licenses granted under this Agreement to the terminating
party and its Subsidiaries shall survive such termination, subject to
continued compliance with the terms and conditions of this Agreement.
4.3. SURVIVAL. The provisions of Sections 1, 2, 3.11, 4.2, 4.3, 5 and 6
will survive any termination or expiration of this Agreement.
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5. DISCLAIMERS
5.1. DISCLAIMER. Nothing contained in this Agreement shall be construed as:
(a) a warranty or representation by either of the parties to this
Agreement as to the validity, enforceability or scope of any
Patent;
(b) a warranty or representation that any manufacture, sale, lease,
use or other disposition of Licensed Products hereunder will be
free from infringement of any third party patents other than
those under which licenses have been granted hereunder;
(c) an agreement to bring or prosecute actions or suits against third
parties for infringement or conferring any right to bring or
prosecute actions or suits against third parties for
infringement;
(d) conferring any right to use in advertising, publicity, or
otherwise, any trademark, trade name or names, or any
contraction, abbreviation or simulation thereof, of either party;
(e) conferring by implication, estoppel or otherwise, upon any party
licensed hereunder, any license or other right under any patent,
copyright, mask work, trade secret, trademark or other
intellectual property right except the licenses and rights
expressly granted hereunder; or
(f) an obligation to furnish any technical information or know-how
except as expressly provided herein.
5.2. NO IMPLIED WARRANTIES. EACH PARTY HEREBY DISCLAIMS ANY IMPLIED
WARRANTIES WITH RESPECT TO THE PATENTS LICENSED HEREUNDER, INCLUDING
WITHOUT LIMITATION, THE WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE.
5.3. LIMITATION OF LIABILITY. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO
THE OTHER FOR SPECIAL, INDIRECT, CONSEQUENTIAL OR PUNITIVE DAMAGES
ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO LOST
BUSINESS, REVENUES OR PROFITS AND WORK STOPPAGES OR DELAYS, EVEN IF
THAT PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
6. MISCELLANEOUS PROVISIONS
6.1. AUTHORITY. Each of the parties hereto represents and warrants that it
has the right to grant the other the licenses granted hereunder.
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6.2. AGREEMENT ASSIGNMENT. This Agreement is personal to the parties, and
the Agreement and any rights or obligations hereunder are not
assignable without the prior written consent of the other party, which
consent may be withheld at the sole discretion of such other party,
except (subject to the provisions of Section 3.8) in connection with
the transfer of all, or substantially all of its business and assets
whether by sale, change in ownership, merger, acquisition or
otherwise. The provisions of this Section 6.2 shall not be construed
as a waiver by either party of its rights under applicable law to
prohibit or restrict the assignment of this Agreement and the licenses
granted hereunder, nor constitute a consent to the assumption or
assignment of this Agreement or any of the licenses granted hereunder
except as expressly provided and limited by Sections 3.8 and 6.2 of
this Agreement. Any attempted assignment in derogation of the
foregoing shall be null and void. The Agreement shall be binding upon
and inure to the benefit of the parties and their permitted successors
and assigns.
6.3. PATENT ASSIGNMENTS. Neither party nor its Subsidiaries shall assign or
transfer any of its licensed Patents unless such assignment is made
subject to the terms and conditions of this Agreement. Any attempted
assignment in derogation of the foregoing shall be null and void.
6.4. NOTICE. All notices required or permitted to be given hereunder shall
be in writing and shall be delivered by hand, or if dispatched by
prepaid air courier or by registered or certified airmail, postage
prepaid, addressed as follows:
If to Nvidia: If to E&S:
------------ ---------
Nvidia Corporation Xxxxx and Xxxxxxxxxx Computer Corp.
2701 San Xxxxx Expressway 000 Xxxxx Xxxxx
Xxxxx Xxxxx, XX 00000 Xxxx Xxxx Xxxx, XX 00000
Xxxxxx Xxxxxx xx Xxxxxxx Xxxxxx Xxxxxx of America
Attn.: Chief Patent Counsel Attn: Chief Financial Officer
Such notices shall be deemed to have been served when received by
addressee or, if delivery is not accomplished by reason of some fault
of the addressee, when tendered for delivery. Either party may give
written notice of a change of address and, after notice of such change
has been received, any notice or request shall thereafter be given to
such party as above provided at such changed address.
6.5. CONSTRUCTION; NO RULE OF STRICT CONSTRUCTION. Regardless of which
party may have drafted this Agreement, no rule of strict construction
shall be applied against either party. The headings contained in this
Agreement are for convenience of reference only, shall not be deemed
to be a part of this Agreement and shall not be referred to in
connection with the construction or interpretation of this Agreement.
As used in this Agreement, the words "include" and "including," and
variations
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thereof, shall not be deemed to be terms of limitation, but rather
shall be deemed to be followed by the words "without limitation."
Except as otherwise indicated, all references in this Agreement to
"Sections" are intended to refer to Sections of this Agreement.
6.6. SEVERABILITY. If any provision of this Agreement is determined by a
court to be unenforceable, the parties shall deem the provision to be
modified to the extent necessary to allow it to be enforced to the
extent permitted by law, or if it cannot be modified, the provision
will be severed and deleted from this Agreement, and the remainder of
the Agreement will continue in effect.
6.7. TAXES. Each party shall be responsible for the payment of its own tax
liability arising from this transaction. The parties intend that this
Agreement constitutes a nontaxable exchange of like kind intangible
personal property pursuant to the rules of Section 1031 of the
Internal Revenue Code of 1986, as amended. The parties agree to report
this transaction consistent with nontaxable treatment in all tax
returns, reports and filings.
6.8. ENTIRE AGREEMENT. This Agreement embodies the entire understanding of
the parties with respect to the subject matter hereof, and merges all
prior and contemporaneous discussions between them, and neither of the
parties shall be bound by any conditions, definitions, warranties,
understandings, or representations with respect to the subject matter
hereof other than as expressly provided herein; provided that nothing
in this Agreement shall modify or supersede the terms, conditions,
warranties, representations or other provisions of the Patent Purchase
and License Agreement. No oral explanation or oral information by
either party hereto shall alter the meaning or interpretation of this
Agreement.
6.9. MODIFICATION; WAIVER. No modification or amendment to this Agreement,
nor any waiver of any rights, will be effective unless assented to in
writing by the party to be charged, and the waiver of any breach or
default will not constitute a waiver of any other right hereunder or
any subsequent breach or default.
6.10.GOVERNING LAW. This Agreement and matters connected with the
performance thereof shall be construed, interpreted, applied and
governed in all respects in accordance with the laws of the United
States of America and the State of California, without reference to
conflict of laws principles.
6.11.JURISDICTION; VENUE. E&S and Nvidia agree that all disputes and
litigation regarding this Agreement and matters connected with its
performance shall be subject to the exclusive jurisdiction of the
United States District Court for the Northern District of California,
if such court has personal and subject matter jurisdiction of the
litigation, or if not the courts of the State of California located in
the County of Santa Xxxxx. Each party to this Agreement: (i) expressly
and irrevocably consents and submits to the jurisdiction of such
courts in connection
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with any such legal proceeding; (ii) agrees that such courts shall be
deemed to be a convenient forum; and (iii) agrees not to assert (by
way of motion, as a defense or otherwise), in any such legal
proceeding commenced in such courts, any claim that such party is not
subject personally to the jurisdiction of such courts, that such legal
proceeding has been brought in an inconvenient forum, that the venue
of such proceeding is improper or that this Agreement or the subject
matter of this Agreement may not be enforced in or by such courts.
6.12.CONFIDENTIALITY OF TERMS. The parties hereto shall keep the terms of
this Agreement confidential and shall not now or hereafter divulge
these terms to any third party except:
(a) with the prior written consent of the other party;
(b) if so required by the order or demand of any governmental body
having jurisdiction to call therefor, provided that the
disclosing party uses its best efforts to give the other party
reasonable notice prior to such disclosure and joins or
cooperates in obtaining an appropriate protective order;
(c) only to the extent a party determines such disclosure may be
required by regulation, law or legal process, including to legal
and financial advisors in their capacity of advising a party in
such matters and in disclosure documents required to be filed
with the SEC or under stock exchange rules;
(d) during the course of litigation so long as the disclosure of such
terms and conditions are restricted in the same manner as is the
confidential information of other litigating parties and so long
as: (a) the restrictions are embodied in a court-entered
protective order; and (b) the disclosing party informs the other
party in writing at least ten (10) days in advance of the
disclosure;
(e) in confidence to employees with a need to know, legal counsel,
accountants, banks and financing sources and their advisors
solely in connection with complying with financial transactions;
(f) where the terms disclosed are, through no act or failure to act
on the part of the disclosing party, generally known in the
computer graphics or simulation industry; or
(g) in confidence to employees of the acquiring party with a need to
know, and legal counsel, accountants, banks and financing sources
and their advisors solely in connection with the negotiation and
closing of a transaction involving a Change of Control.
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The parties shall cooperate in preparing and agree to an announcement
or press release relating to this Agreement.
6.13.COMPLIANCE WITH LAWS. Anything contained in this Agreement to the
contrary notwithstanding, the obligations of the parties hereto and of
the Subsidiaries of the parties shall be subject to all laws, present
and future, of any government having jurisdiction over the parties
hereto or the Subsidiaries of the parties.
6.14.FORCE MAJEURE. The parties hereto shall be excused from any failure
to perform any obligation hereunder to the extent such failure is
caused by war, acts of public enemies, strikes or other labor
disturbances, fires, floods, acts of God, or any causes of like or
different kind beyond the control of the parties.
6.15.IMPORT AND EXPORT LAWS. Neither party shall export or re-export
Licensed Products, or any direct product thereof, without first having
obtained the appropriate U.S. or foreign government licenses. In no
event will either party export Licensed Products to any country to
which export is prohibited by the U.S. Each party shall indemnify,
defend and hold the other harmless from and against any claims,
damages or litigation costs resulting from or relating to the
indemnifying party's failure to comply with this Section 6.15.
6.16.SECTION 365(n). For purposes of Section 365(n) of the United States
Bankruptcy Code (the "Code"), this Agreement is an "executory
contract," the Patents are "intellectual property," and the parties
are each a "licensor of a right to intellectual property" within the
meaning of the Code. Notwithstanding any provision contained herein to
the contrary, if a party is under any proceeding under the Code, and
such party as debtor-in-possession or its trustee elects to reject
this Agreement, the other party may, pursuant to Section 365(n)(1) and
(2) of the Code, retain all of its rights hereunder to the maximum
extent permitted by law.
6.17.COUNTERPARTS. This Agreement may be executed in counterparts, each of
which shall constitute an original and all of which, when taken
together, shall constitute one agreement.
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NVIDIA/E&S CONFIDENTIAL
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed and delivered as of the Effective Date.
XXXXX AND XXXXXXXXXX COMPUTER NVIDIA CORPORATION
CORPORATION
By: /s/ Xxxxx X. Xxxxx By: /s/ Xxx-Xxxx Xxxxx
Xxxxx X. Xxxxx Xxx-Xxxx Xxxxx
-------------- --------------
Printed Name Printed Name
President and CEO President and CEO
----------------- -----------------
Title Title
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