EX-10.23 2 dex1023.htm DEVELOPMENT AND LICENSE AGREEMENT ***Text Omitted and Filed Separately with the Securities and Exchange Commission. Confidential Treatment Requested Under 17 C.F.R. Sections 200.80(b)(4) and 230.406 DEVELOPMENT AND LICENSE AGREEMENT
Exhibit 10.23
***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
DEVELOPMENT AND LICENSE AGREEMENT
This Development and License Agreement (the “Agreement”), effective as of September 15, 2002 (the “Effective Date”), is entered into by and between RF Magic, Inc., a Delaware corporation having a place of business at 00000 Xxxxxxx Xxxxx, 0xx Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000-0000, U.S.A. (“RFM”) and STMicroelectronics N.V., with its registered office at WTC Schiphol Airport, Xxxxxxxx Xxxxxxxxx 000, 0000 XX Xxxxxxxx Airport, Amsterdam, the Netherlands, acting through its Swiss Branch located at 39, Xxxxxx xx Xxxxx xxx Xxxxxx, 0000 Xxxx-xxx-Xxxxxx, Geneva, Switzerland (“ST”).
Recitals
Articles
1. | DEFINITIONS. |
1.1 “Affiliates” shall mean a corporation or other legal entity controlling, controlled by, or under common control, now or hereafter, directly or indirectly, with ST, provided that such entity shall be considered an Affiliate only for the time during which such control exists. For purposes of this definition “control” shall mean ownership or control, either directly or indirectly, of greater than fifty percent (50%) of the voting rights of such entity.
1.2 “Customers” means customers of ST.
1.3 “Development Plan” means the development plan for the Product as set forth in Exhibit A.
1.4 “Development Schedule” means the development schedule for the Product as set forth in Exhibit B.
1.5 “Evaluation Circuit Design” means the circuit board design developed by RFM pursuant to this Agreement for use in evaluating the functionality of Products.
***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
1.6 “Evaluation Software” means the software developed by RFM pursuant to this Agreement to evaluate the functionality of Products relative to the Specifications, in object code only.
1.7 “Exclusive Period” has the meaning set forth in Exhibit D.
1.8 “First Commercial Production Date” means has the meaning set forth in Exhibit D.
1.9 “IC Design” means the integrated circuit design developed by RFM pursuant to this Agreement for a radio frequency integrated circuit […***…].
1.10 “IC Design File” means the […***…] database file containing the IC Design information necessary to manufacture the Mask Tooling Set.
1.11 “Intellectual Property Rights” means any and all (by whatever name or term known or designated) tangible and intangible and now known or hereafter existing (a) rights associated with works of authorship, including but not limited to copyrights, moral rights and mask-works, (b) rights in and relating to the protection of trademarks, service marks, trade names and goodwill, (c) rights in and relating to the protection of trade secrets and confidential information, (d) patents, designs, algorithms and other industrial property rights and rights associated therewith, (e) other intellectual and industrial property and proprietary rights (of every kind and nature however designated) relating to intangible property that are analogous to any of the foregoing rights, whether arising by operation of law, contract, license or otherwise, and (f) registrations, applications, renewals, extensions, continuations, divisions or reissues thereof now or hereafter in force throughout the world (including without limitation rights in any of the foregoing).
1.12 “Manufacturing Test Circuit Design” means the circuit board design developed by the RFM pursuant to this Agreement, in accordance with the Development Plan, to test the functionality of Product upon completion of the manufacturing and assembly of the Product.
1.13 “Manufacturing Test Software” means the software developed by RFM pursuant to this Agreement, and in accordance with the Development Plan, that is used to confirm functionality of the Products during final testing in the Product manufacturing process, in object code.
1.14 “Mask Tooling Set” means the collection of masks used to manufacture the layers of Products, or any portion of a Product.
1.15 “Product” means a radio frequency integrated circuit Manufactured by ST (or on behalf of ST pursuant to Section 4.1(B)) that conforms to the IC Design.
1.16 “Reference Design” means the system level circuit board design, including […***…], developed by ST pursuant to this Agreement to demonstrate the functionality of the Products.
1.17 “RFM Materials” means the Evaluation Circuit Designs, Evaluation Software, Specifications, IC Designs, IC Design Files, Manufacturing, Test Circuit Designs and Manufacturing Test Software.
1.18 “Satellite Single Tuner” means a device that enables the selection and frequency conversion of […***…].
1.19 “Specifications” means the specifications set forth in Exhibit C.
1.20 “ST Deliverables” means the demodulator software drivers needed to develop the Evaluation Software and Evaluation Circuit Design.
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
1.21 “ST Existing RF Product” has the meaning set forth in Exhibit D.
2. | SCOPE OF AGREEMENT. |
Prior to any exercise of any rights (including, without limitation, license rights) by an Affiliate, ST shall (a) cause such Affiliate to agree to be bound by all the terms of this Agreement to the same extent as ST is bound, and (b) provide RFM with notice of the name and legal address of each Affiliate to be included within the scope of this Agreement. ST unconditionally guarantees performance by each Affiliate of all of the obligations hereunder to the same extent ST is bound to perform under this Agreement, without prejudice to RFM’s right to seek injunctive relief for breach of this Agreement directly against such Affiliate if RFM so elects.
3. | DEVELOPMENT. |
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
4. | LICENSES. |
(B) Manufacturing. Subject to the terms and conditions of this Agreement, RFM grants to ST and its Affiliates (subject to Article 2 above) a nontransferable (subject to Section 14.3), nonsublicenseable, nonexclusive license, under RFM’s Intellectual Property Rights in and to the IC Designs, IC Design Files, Mask Tooling Sets, Manufacturing Test Circuit Designs and Manufacturing Test Software, to: (i) make and have made the Products solely for sale to Customers pursuant to this Agreement (ii) use and reproduce the IC Design Files to manufacture and have manufactured the Mask Tooling Sets solely for use in accordance with this Agreement; (iii) use the Mask Tooling Sets to manufacture and have manufactured Products solely for sale, either on a standalone basis or bundled with other ST semiconductor products, to Customers solely in accordance with this Agreement, (iv) use the Manufacturing Test Circuit Designs solely to test the functionality of Products manufactured in accordance with this Agreement, and (v) use and reproduce the Manufacturing Test Software solely to test the functionality of Products manufactured in accordance with this Agreement.
(C) Sales by ST. Subject to the terms and conditions of this Agreement, RFM grants to ST and its Affiliates (subject to Article 2 above) a nontransferable (subject to Section 14.3), nonsublicenseable, nonexclusive license, under RFM’s Intellectual Property Rights in and to IC Design and IC Design File, to offer for sale, sell, and import Products, either on a standalone basis or bundled with other ST semiconductor products, solely in accordance with this Agreement.
4.2 Exclusivity and Sales Requirements.
(A) During the Exclusive Period, RFM shall not (i) sell Products, or (ii) authorize any third party to sell and/or distribute Products.
(B) For the purposes of clarification, upon the expiration or termination of the Exclusive Period, RFM may sell or appoint third parties to sell radio frequency integrated circuits that conform to the Specifications; and/or (b) buy Products from ST under the Supply Terms (as defined below). During the […***…] period immediately following the Effective Date, the parties shall negotiate in good faith the certain supply terms for ST’s supply of Product to RFM (“Supply Terms”) including, without limitation, the following terms: pricing, process qualification, order acceptance, lead times, order rescheduling, order cancellation, delivery, late deliveries, allocation, Product acceptance, ST warranties, ST support, process changes and process discontinuance.
4.4 Subject to the terms and conditions of this Agreement, ST grants to RFM a non-exclusive, revocable (only upon expiration or termination of the Agreement), non-transferable, limited, license,
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
without the right to sublicense, to solely and only use ST Deliverables to develop the Evaluation Software and Evaluation Circuit Design and provide warranty and other support for the Products. RFM may terminate the foregoing license upon written notice to ST. RFM may not transfer the foregoing license without ST’s prior written consent, such consent not to be unreasonably withheld or delayed. RFM’s (an any Acquirer’s) nonperformance of its obligations to develop and deliver the Evaluation Software and Evaluation Circuit Design and to provide warranty and other support for the Products under this Agreement shall be excused if and to the extent such RFM (or Acquirer’s) nonperformance relates to ST’s refusal to transfer the foregoing license upon request. ST shall deliver or has already delivered the ST Deliverables to RFM.
4.5 Except as necessary to exercise the license rights granted in Section 4.4, RFM shall not itself, or through any agent, or third party; (a) sell, lease, license, sublicense or in any way have third parties use the ST Deliverables; (b) decompile, disassemble, reverse engineer, or attempt to derive source code, as applicable, from the ST Deliverables, in whole or in part, except to the extent such restriction is prohibited by applicable law and not waiveable thereunder; (c) modify or create derivative works from the ST Deliverables; or (d) use the ST Deliverables to provide processing services to third parties or otherwise use the ST Deliverables on a service bureau basis. Except as expressly granted in Section 4.4 above, ST grants to RFM no license, by implication, estoppel, or otherwise to the ST Deliverables.
5. | SALES ACTIVITIES AND CUSTOMER SUPPORT. |
5.2 Product Support. ST shall have the responsibility for supporting all Products distributed under this Agreement. ST shall ensure that all Customer questions regarding the use or operation of Products are initially addressed to and answered by ST. Unless otherwise agreed in writing by RFM, ST shall not represent to any third party that RFM is available to answer questions received directly from any Customer. Without limiting the foregoing, ST also shall be responsible for (x) providing sufficient information to RFM for RFM to duplicate any reported error related to the design in the Products; and (y) providing reasonably cooperation and full information between the parties in the furnishing of support for the Products.
6. | MASK TOOLING SET. |
6.1 Manufacture. ST shall manufacture, at its own expense, the Mask Tooling Sets.
7. | PROPRIETARY RIGHTS. |
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
shall own all Intellectual Property Rights in and to the Mask Tooling Sets. Provided, however, that RFM’s ownership of the Evaluation Software shall not be deemed to give RFM any ownership in any ST Deliverables including the Intellectual Property Rights therein, even though such ST Deliverables may be used with the Evaluation Software or the Evaluation Circuit Design.
7.2 ST. Subject to Section 7.1, ST shall own all of right, title and interest in and to the Reference Design, including any Intellectual Property Rights therein.
8. | ROYALTIES AND PAYMENT. |
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
8.7 Product Pricing. ST must list Products as a separate line item on all ST price lists and any purchase orders or invoices related to Products. For the avoidance of doubt, RFM acknowledges and agrees that no royalty shall be due to […***…]. No royalty will accrue for […***…].
9. | TERM AND TERMINATION. |
9.4 Effect of Termination or Expiration.
(A) Return of Materials. Within thirty (30) calendar days after the expiration or termination of this Agreement (subject only to any ST right to fulfill purchase orders pursuant to Section 9.4(B), and in such case, upon expiration of such rights), each party will return all Confidential Information of the other party in its possession or control for shipment or, upon the other party’s request, destroy such information. Within thirty (30) calendar days of a written request by the other party, an officer of each party shall certify to the other party that all copies of Confidential Information of the other party received hereunder have been returned or destroyed pursuant to this Section 9.4(A).
9.5 Survival. Notwithstanding any expiration or termination of this Agreement, all payment obligations incurred prior to expiration or termination shall survive, and the following provisions shall survive: 1 (Definitions), 2 (Scope of Agreement), 4.3 (ST License Restrictions), 6.2 (Mask Proprietary Rights), 7 (Proprietary Rights), 8 (Royalties and Payment), 9.4 (Effect of Termination), 9.5 (Survival), 10.3 (Disclaimer), 11 (Indemnification), 12 (Confidentiality), 13 (Limitation of Liability) and 14 (Miscellaneous). In addition, if RFM terminates this Agreement pursuant to Section 9.2, Section 4.1 shall survive solely as necessary for ST to exercise its rights under Section 9.4(B). All other rights and licenses granted hereunder will cause upon expiration or termination.
10. | LIMITED WARRANTIES AND DISCLAIMER. |
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
11. | INDEMNIFICATION. |
11.1 Subject to Section 11.3 and the terms of this Agreement, RFM shall indemnify and hold ST and ST’s Affiliates, (hereafter referred as “ST Indemnities”) harmless against and shall pay all damages fully awarded by a court of competent jurisdiction, including reasonable attorneys’ fees, resulting from any suit, complaint, demand, action by a third party against ST Indemnities to the extent such suit, complaint, demand, or action alleges that the RFM Materials infringe the Intellectual Property Rights of a third party (“ST Infringement Claim”), provided that: (i) ST gives written notice to RFM within ten (10) business days after receipt of written notice of such ST Infringement Claim (provided that ST’s failure to provide such notice will relieve RFM of its indemnification obligations only if and to the extent that such failure prejudices RFM’s ability to defend the ST Infringement Claim), (ii) ST allows RFM at its expense through attorneys of its own choice, to exclusively defend and/or control the defense of any ST Infringement Claim, and (iii) upon RFM request, ST shall provide full information, cooperation, and assistance in such investigation and defense, and is reimbursed by RFM for all the reasonable costs incurred in collaborating in such investigation and defense, including trial and any appeals. ST may also participate, at its option and at its own expense, in such defense. No settlement of a ST Infringement Claim that involves a remedy other than payment of money by RFM shall be agreed to and entered into without the consent of ST, whose consent shall not be unreasonably withheld or delayed.
11.3 RFM shall have no liability under Section 11.1 for any claim of infringement based on (i) modification of the RFM Materials other than by RFM, (ii) use of other than the current version of the RFM Materials despite the fact that RFM has offered to ST a modification or replacement of the RFM Materials and granted to ST a reasonable period of time to implement such new version of the RFM Materials in the applicable Products, (iii) the combination or use of the RFM Materials furnished hereunder with materials not furnished or authorized in writing by RFM if such infringement would have been avoided by use of the Indemnified Materials alone, or (iv) the use of the RFM Materials in violation of the licenses granted by RFM in Section 4.1 above.
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
11.4 Subject to Section 11.5 and the terms of this Agreement, ST shall indemnify and hold RFM harmless against and shall pay all damages finally awarded by a court of competent jurisdiction, including reasonable attorneys’ fees, to the extent resulting from: (A) act that would be excluded from RFM’s indemnity obligations pursuant to subsections (i), (ii), (iii) and/or (iv) of Section 11.3 above, or (B) any suit, complaint. demand, action by a third party against RFM alleging that the ST Deliverables infringe the Intellectual Property Rights of a third party, provided that: (i) RFM gives written notice to ST within ten (10) business days after receipt of written notice of a claim (provided that RFM’s failure to provide such notice will relieve ST of its indemnification obligations only if and to the extent that such failure prejudices ST’s ability to defend the claim); (ii) RFM allows ST at its expense through attorneys of its own choice, to exclusively defend and/or control the defense of the claim; and RFM shall provide full information. cooperation, and assistance in such investigation and defense, and is reimbursed by ST for all the reasonable costs incurred in collaborating in such investigation and defense, including trial and any appeals, provided that such RFM may also participate, at its option and at its own expense, in such defense.
11.5 ST shall have no liability under Section 11.4 for any claim of infringement based on (i) modification of ST Deliverables other than by ST; (ii) use of other than the current version of the ST Deliverables despite the fact that ST has offered to RFM a modification or replacement of the ST Deliverables and granted to RFM a reasonable period of time to implement use of such ST Deliverables pi scant to this Agreement, (iii) the combination or use of the ST Deliverables with or other materials if such infringement would have been avoided by use of the ST Deliverables alone, or (iv) the use of the ST Deliverables in violation of the license granted by ST in Section 4.4 above.
11.6 Exclusive Remedy. THE FOREGOING PROVISIONS OF THIS ARTICLE 11 STATE THE ENTIRE LIABILITY AND OBLIGATIONS OF EACH PARTY, AND THE SOLE AND EXCLUSIVE REMEDY OF THE OTHER PARTY, WITH RESPECT TO ANY ACTUAL OR ALLEGED INFRINGEMENT OF ANY PATENT, COPYRIGHT, MASK WORK RIGHT, TRADEMARK, TRADE SECRET OR OTHER INTELLECTUAL PROPERTY RIGHT OR BREACH OF ANY INTELLECTUAL PROPERTY NON-INFRINGEMENT WARRANTY.
12. | CONFIDENTIALITY. |
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
EXCEPT FOR ANY BREACH OF SECTION 4.3 OR 12, IN NO EVENT SHALL ST’S CUMULATIVE LIABILITY ARISING OUT OF THIS AGREEMENT EXCEED […***…].
EXCEPT FOR ANY BREACH OF SECTION 4.3 OR 12, IN NO EVENT SHALL RFM’S CUMULATIVE LIABILITY ARISING OUT OF THIS AGREEMENT EXCEED […***…].
THE FOREGOING LIMITATIONS IN THIS ARTICLE 13 SHALL APPLY NOTWITHSTANDING THE FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY STATED IN THIS AGREEMENT.
14. | MISCELLANEOUS. |
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
In the event of an Acquisition by an Acquirer that is a […***…] company that has a closing date before […***…], ST would have the option to terminate this Agreement upon written notice to RFM within […***…]; provided that any such termination would only take effect […***…] (“Option”). If ST exercises the Option, Section 5.1 would terminate; provided, however, that during the Exclusive Period, ST would not, without RFM’s prior written consent, sell or otherwise distribute, whether directly or indirectly, any products that in the parties’ reasonable judgment compete with the Products.
14.4 Governing Law. This Agreement shall be governed, construed and enforced in accordance with the laws of the State of New York and the United States of America, without reference to conflict of laws principles and without regard to the United Nations Convention on Contracts for the International Sales of Goods.
14.5 Dispute. The parties shall attempt in good faith to resolve any dispute or claim arising out of or in connection with this Agreement or the performance, breach or termination thereof (“Dispute”). Any Dispute not resolved by mutual agreement pursuant to the foregoing sentence within a period of sixty (60) days after the date of delivery of first written notice of the Dispute from one party to the other party describing the Dispute in reasonable detail will be submitted by the parties to binding arbitration before an arbitral tribunal consisting of three arbitrators appointed in accordance with the Rules of Arbitration of the International Chamber of Commerce (ICC). The arbitration tribunal, including all staff, all witnesses, and any permitted attending non-parties, shall be legally bound by agreements and/or orders to prevent disclosure of any information which may be disclosed to them in connection with arbitration proceedings conducted under this Section 14.5. The arbitration shall take place in the city of New York, New York, United States of America in the English language and according to the Rules of Arbitration of the ICC. The arbitrators shall apply the laws of the State of New York and the United States of America, without reference to conflict of laws principles, to the merits of the dispute and in all cases shall decide in accordance with the terms of this Agreement. The arbitral decision and award shall be final and binding. The arbitral decision and award shall be final and binding and shall deal with the questions of costs of arbitration an all matters related thereto. Any costs, fees or taxes involved in enforcing the award shall be fully assessed against and paid by the party resisting enforcement of the award. Notwithstanding the foregoing, either party may apply to any court of competent jurisdiction for injunctive relief without breach of this arbitration provision. Judgment on the award rendered by the arbitrators may be entered in any court having jurisdiction thereof.
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
obligation or responsibility on behalf of the other. ST shall not purport to take on any obligation or responsibility, or make any representations, warranties, guarantees or endorsements to anyone, on behalf of RFM including, without limitation, relating to Products.
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
STMicroeletronics N.V. | RF Magic Inc. | |
00, Xxxxxx xx Xxxxx des Filles | 10182 Xxxxxxx Xxxxx, 0xx Xxxxx | |
0000 Xxxx-xxx-Xxxxxx | Xxx Xxxxx, Xxxxxxxxxx 00000-0000 | |
Geneva, Switzerland | Attention: | |
Attention: General Counsel | ||
With a copy to: | With a copy to | |
STMicroelectronics, Inc. | RF Magic Inc. | |
0000 Xxxxxxxxxxx Xxxxx, XX 2346 | 00000 Xxxxxxx Xxxxx, 0xx Xxxxx | |
Xxxxxxxxxx, Xxxxx 00000 | Xxx Xxxxx, Xxxxxxxxxx 00000-0000 | |
Attention: General Counsel | Attention: |
RF Magic, Inc. | STMicroelectronics N.V. | |||
/s/ Xxxx X. Xxxxx | /s/ Mr. Geyees | |||
Signature | Signature | |||
Xxxx X. Xxxxx | Mr. Geyees | |||
Printed Name | Printed Name | |||
CEO and President | Corporate Vice President | |||
Title | Title | |||
| June 2, 2003 | |||
Date | Date |
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***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
EXHIBIT A
DEVELOPMENT PLAN
[None]
1 |
***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
EXHIBIT B
DEVELOPMENT SCHEDULE
[None]
1 |
***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
EXHIBIT C
SPECIFICATIONS
[…***…]
***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
EXHIBIT D
EXISTING RF PRODUCT, ROYALTIES AND EXCLUSIVE PERIOD
ST EXISTING RF PRODUCT: “ST Existing RF Product” means […***…].
ROYALTIES:
For each Product sold by ST to a third party, ST shall pay RFM the Royalties for such Product.
“Royalties” means, with respect to each Product shipped or otherwise delivered by ST to a third party, the greater of (i) […***…], or (ii) […***…] for such Product.
“Minimum Royalty” means, with respect to each Product, the minimum royalty amount to be paid by ST to RFM, as mutually agreed upon in writing by the parties. Prior to the first shipment of Product by ST to a Customer, the parties shall negotiate in good faith and agree in writing upon the Minimum Royalty. Thereafter, the parties shall negotiate in good faith and agree in writing upon a revised Minimum Royalty prior to, and effective on, […***…]. In the event the parties do not agree on a revised Minimum Royalty prior to […***…] pursuant to the foregoing sentence, […***…].
“Gross Margin” means, with respect to each Product, Gross Sales minus Product Price.
“Product Cost” means, the calendar year price set forth in the table below […***…].
2003 | [...***...] | |
2004 | An amount to be mutually agreed upon by the parties in writing at least […***…], but in no event no less than […***…]. In the event the parties do not agree on an amount pursuant to the preceding sentence, then RFM may, at its option, […***…] upon written notice to ST. | |
2005 and thereafter | With respect to each applicable calendar year, an amount to be mutually agreed upon by the parties in writing at least […***…], but in no event to exceed […***…]. In the event the parties do not agree on an amount pursuant to the preceding sentence, then RFM may, at its option: (i) […***…], or (ii) […***…]. |
“Gross Sales” means, with respect to each Product, the total amount invoiced to third parties for such Product by ST or its Affiliates.
ST and its Affiliates shall use reasonable efforts to maximize Gross Sales for the Products. In the event that ST or its Affiliates sell Products to a third party who also purchases other products or services from ST or its Affiliates, ST shall not, and shall require its Affiliates not to, […***…]. Without limiting the foregoing, ST shall not, and shall require its Affiliates not to, treat Products in such a manner that would […***…].
During the Exclusive Period, if ST in good faith believes, with respect to a particular sale of Products to a Customer, that: (i) […***…]; and (ii) […***…], then ST shall be entitled to request that RFM reduce the effective Minimum Royalty on such Products to ST for such Customer. […***…].
1 | ***Confidential Treatment Requested |
***Text Omitted and Filed Separately
with the Securities and Exchange Commission.
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4)
and 230.406
EXCLUSIVE PERIOD:
“Exclusive Period” means, collectively, the Initial Restriction Period and any Additional Restriction Period.
“Initial Restriction Period” means […***…].
“Additional Restriction Period” means the […***…] period immediately following the expiration of the Initial Restriction Period; provided, however, that ST sells and ships to a third party (other than an Affiliate) at least […***…] units of Products during each […***…] period commencing on […***…] and thereafter upon each […***…] until expiration of such […***…]. For the purposes of clarification, if ST does not ship and sell at least […***…] units of Product in any such […***…].
Notwithstanding any other provision in his Agreement, the Exclusive Period shall immediately and automatically terminate in the event (i) the relationship of the parties under this Agreement for ST and the Affiliates to manufacture and sell the Products is […***…], and (ii) […***…].
2 | ***Confidential Treatment Requested |