EXHIBIT 6.3
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MOTOROLA & CHARTERED CONFIDENTIAL PROPRIETARY
REDACTED FOR CONFIDENTIALITY
CONFIDENTIAL TREATMENT REQUESTED:
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The asterisked portions of this document have been
omitted and filed separately with the Commission
PATENT LICENSE AGREEMENT
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THIS AGREEMENT is effective as of the 1st day of July, 2003 by and between
Motorola, Inc., a Delaware corporation having an office at 0000 X. Xxxxxxxxx
Xxxx, Xxxxxxxxxx, Xxxxxxxx X.X.X. 00000, (hereinafter called "MOTOROLA"), and
Chartered Semiconductor Manufacturing Ltd., a corporation of Singapore having an
office at 00 Xxxxxxxxx Xxxxxxxxxx Xxxx X Xxxxxx 0, Xxxxxxxxx 000000 (hereinafter
called "CHARTERED").
WHEREAS, MOTOROLA owns and has, or may have, rights in various patents issued,
and applications for patents pending, in various countries of the world as to
which CHARTERED desires to acquire licenses as hereinafter provided, and
WHEREAS, CHARTERED owns and has, or may have, rights in various patents issued,
and applications for patents pending, in various countries of the world as to
which MOTOROLA desires to acquire licenses as hereinafter provided, and
WHEREAS, CHARTERED and MOTOROLA are engaged in continuing research, development
and engineering in regard to LICENSED PRODUCTS (as hereinafter defined) and have
programs for the patenting of inventions resulting therefrom,
NOW THEREFORE, in consideration of the mutual covenants and conditions
hereinafter set forth, it is agreed as follows:
Section 1 DEFINITIONS
The capitalized terms used herein shall have the definitions assigned to them in
this Section 1, and shall include the singular as well as the plural.
1.1 SUBSIDIARY means a corporation, company, or other entity more than fifty
percent-(50%) of whose outstanding shares or securities (representing the right
to vote for the election of directors or other managing authority) are, now or
hereafter, owned or controlled, directly or indirectly by a party hereto, but
such corporation, company, or other entity shall be deemed to be a SUBSIDIARY
only so long as such ownership or control exists.
1.2 AUTHORIZED ENTITY means an entity authorized to manufacture products using
a Logic Process Technology (as defined in the TECHNOLOGY TRANSFER AGREEMENT)
pursuant to Section 5.7.2 of the TECHNOLOGY TRANSFER AGREEMENT.
1.3 SEMICONDUCTIVE MATERIAL means any material whose conductivity is
intermediate to that of metals and insulators at room temperature and whose
conductivity,
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over some temperature range, increases with increases in temperature. Such
material shall include but not be limited to refined products, reaction
products, reduced products, mixtures and compounds.
1.4 INTEGRATED CIRCUIT STRUCTURE means an integral unit consisting primarily of
a plurality of active and/or passive circuit elements associated on, or in, a
unitary body of SEMICONDUCTIVE MATERIAL, whether or not said body consists of a
single SEMICONDUCTIVE MATERIAL or of a multiplicity of such materials, and
whether or not said body includes one or more layers or other regions
(constituting substantially less than the whole of said body) of a material or
materials that are of a type other than SEMICONDUCTIVE MATERIAL, for performing
electrical or electronic functions and, if provided therewith, such unit
includes housing and/or supporting means therefor.
1.5 SEMICONDUCTOR ELEMENT means a device other than an INTEGRATED CIRCUIT
STRUCTURE consisting primarily of a body of SEMICONDUCTIVE MATERIAL having a
plurality of electrodes associated therewith, whether or not said body consists
of a single SEMICONDUCTIVE MATERIAL or of a multiplicity of such materials, and
whether or not said body includes one or more layers or other regions
(constituting substantially less than the whole of said body) of a material or
materials which are of a type other than SEMICONDUCTIVE MATERIAL and, if
provided therewith, such device includes housing and/or supporting means
therefor.
1.6 MANUFACTURING APPARATUS means as to each party hereto, any instrumentality
or aggregate of instrumentalities primarily designed for use in the fabrication
of that party's LICENSED PRODUCTS (as hereinafter defined).
1.7 CIRCUIT means a combination of one or more INTEGRATED CIRCUIT STRUCTURES,
and/or one or more SEMICONDUCTOR ELEMENTS, with a plurality of active and/or
passive elements for generating, receiving, transmitting, storing, transforming
or acting in response to an electrical signal.
1.8 MICROPROCESSOR means one or more INTEGRATED CIRCUIT STRUCTURES that is
capable of performing the function of executing temporarily or permanently
stored program instructions or microinstructions, including registers, control
logic, decision logic, and input-output circuitry appropriately coupled to
interconnections which may include internal buses such as data buses, address
buses, or control buses; and which may also have included on said INTEGRATED
CIRCUIT STRUCTURES, memory, clocks, input-output interface circuitry, or other
electronic functions ordinarily associated with or connected to central
processing units.
1.9 INPUT-OUTPUT ADAPTOR means one or more INTEGRATED CIRCUIT STRUCTURES which
are adapted to provide an interface between a MICROPROCESSOR and any
instrumentality or aggregate of instrumentalities adapted to compute, classify,
process, transmit, receive, retrieve, originate, switch, store, display,
manifest, measure, detect, record, reproduce, handle, or utilize any form of
information, intelligence or data for business,
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scientific, control or other purposes, but shall not include such
instrumentality or aggregate of instrumentalities, per se.
1.10 SYSTEM means one or more CIRCUITS whether or not combined with one or more
active and/or passive elements for performing electrical or electronic
functions, whether or not a housing and/or supporting means for said circuitry
is included.
1.11 ELECTRICAL METHOD means a method or steps for using CIRCUITS or SYSTEMS,
whether or not combined with one or more active and/or passive elements, for
performing electrical or electronic functions.
1.12 MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR means a MOTOROLA existing business
unit: (i) now consisting of a Networking & Computing Systems Group, a
Semiconductor Components Group, a Transportation Systems Group, a Wireless
Subscriber Systems Group, and an Imaging and Entertainment Systems organization,
(ii) having major manufacturing facilities located in Phoenix, Mesa, Chandler
and Tempe, Arizona; Austin, Texas; Raleigh, North Carolina; Irvine, California;
Toulouse, France; Aizu and Sendai, Japan; Tianjin, China; Xxxx Xxxxxxxx xxx
Xxxxx Xxxxxxxxxxx, Xxxxxxxx; Guadalajara, Mexico; and Seremban, Malaysia; and
(iii) making and/or developing products falling within the definition of
LICENSED PRODUCTS (as hereinafter defined). This definition of the MOTOROLA
SEMICONDUCTOR PRODUCTS SECTOR also includes the predecessor MOTOROLA business
unit of said groups taken singularly or in combination and/or said organization
and any MOTOROLA future business unit acquired or derived from, by separation or
merger, irrespective of appellation, said groups taken singularly or in
combination and/or said organization.
1.13 MOTOROLA PATENTS means all classes or types of patents, utility models,
design patents and applications for the aforementioned of all countries of the
world which, prior to the date of expiration or termination of this Agreement
are:
(i) issued, published or filed, and which arise out of inventions made
solely by one or more employees of the MOTOROLA SEMICONDUCTOR PRODUCTS
SECTOR, or
(ii) are controlled by the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR:
and under which and to the extent to which and subject to the conditions under
which the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR may have, as of the EFFECTIVE
DATE of this Agreement, or may thereafter during the term of this Agreement
acquire, the right to grant licenses or rights of the scope granted herein
without the payment of royalties or other consideration to third persons, except
for payments to third persons (a) for inventions made by said third persons
while engaged by MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR, and (b) as
consideration for the control of such patents, utility models, design patents
and applications. In no event shall the term MOTOROLA PATENTS
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include or encompass patents on inventions made by employees of MOTOROLA while
in the employ of groups or operations of MOTOROLA other than the MOTOROLA
SEMICONDUCTOR PRODUCTS SECTOR, except in accordance with Section 3.
1.14 CHARTERED PATENTS means all classes or types of patents, utility models,
design patents and applications for the aforementioned of all countries of the
world which, prior to the date of expiration or termination of this Agreement
are:
(i) issued, published or filed, and which arise out of inventions made
solely by one or more employees of CHARTERED, or
(ii) are controlled by CHARTERED;
and under which and to the extent to which and subject to the conditions under
which CHARTERED may have, as of the EFFECTIVE DATE of this Agreement, or may
thereafter during the term of this Agreement acquire, the right to grant
licenses or rights of the scope granted herein without the payment of royalties
or other consideration to third persons, except for payments to third persons
(a) for inventions made by said third persons while engaged by CHARTERED and (b)
as consideration for the acquisition of such patents, utility models, design
patents and applications.
1.15 CHARTERED COMMUNICATIONS PATENTS means CHARTERED PATENTS that cover in
whole or in part, wired or wireless communication products or infrastructure
equipment such as cellular base stations and switching equipment used in
cellular systems and equipment to enable cellular communications.
1.16 PROCESS AND STRUCTURE PATENT means a MOTOROLA PATENT or CHARTERED PATENT,
as the case may be, which claims a process for manufacturing a SEMICONDUCTOR
ELEMENT or INTEGRATED CIRCUIT STRUCTURE or which claims the arrangement or
interrelationship in or on a semiconductor substrate of regions, layers,
electrodes, or contacts thereof and which is not a CIRCUIT PATENT.
1.17 CIRCUIT PATENT means a MOTOROLA PATENT or CHARTERED PATENT, as the case may
be, which claims a CIRCUIT or an ELECTRICAL METHOD.
1.18 LICENSED PRODUCTS means any one or more of the following items, whether or
not an item is incorporated in more comprehensive equipment:
1.18.1 SEMICONDUCTIVE MATERIALS;
1.18.2 INTEGRATED CIRCUIT STRUCTURES;
1.18.3 SEMICONDUCTOR ELEMENTS;
1.18.4 CIRCUITS;
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1.18.5 SYSTEMS;
1.18.6 CIRCUITS and SYSTEMS employing an ELECTRICAL METHOD.
1.18.7 MICROPROCESSORS; and
1.18.8 INPUT-OUTPUT ADAPTORS.
1.19 EFFECTIVE DATE means July 1, 2003.
1.20 NET SEMICONDUCTOR SALES of CHARTERED means the gross receipts received by
CHARTERED or the full commercial value realized (as if products were sold on the
open market in an arm's length transaction), whichever is greater, from the sale
of LICENSED PRODUCTS to customers other than Motorola less any taxes, duties,
freight charges, insurance, discounts, credits, commissions paid to third
parties, and returns of LICENSED PRODUCTS.
1.21 *****
1.22 TECHNOLOGY TRANSFER AGREEMENT means the Technology Transfer License
Agreement entered into among the parties hereto and Chartered Silicon Partners
Pte Ltd., and having an effective date of May 20, 1999
1.23 MOTOROLA LOGIC PROCESS TECHNOLOGIES PATENTS means MOTOROLA PATENTS which
cover in whole or in part the methods, processes, and products that fall within
the scope of Sections 5.1 and 5.2 of the TECHNOLOGY TRANSFER AGREEMENT.
Section 2- MUTUAL RELEASES
2.1 MOTOROLA hereby releases, acquits and forever discharges CHARTERED for any
time prior to the EFFECTIVE DATE, from any and all claims or liability for acts
of infringement or alleged infringement of any MOTOROLA PATENTS under which a
license or a right is herein granted by MOTOROLA to or for CHARTERED and which,
if performed after the EFFECTIVE DATE, would have been licensed or permitted
under or pursuant to the terms of this Agreement.
2.2 CHARTERED hereby releases, acquits and forever discharges MOTOROLA for any
time prior to the EFFECTIVE DATE, from any and all claims or liability for acts
of infringement or alleged infringement of any CHARTERED PATENTS under which a
license or a right is herein granted by CHARTERED to or for MOTOROLA and which,
if performed after the EFFECTIVE DATE, would have been licensed or permitted
under or pursuant to the terms of this Agreement.
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Section 3- GRANTS
3.1 CHARTERED hereby grants to MOTOROLA, for the term of this Agreement, a
***** license under CHARTERED PATENTS without the right to sub-license:
3.1.1 to make, test, assemble, have tested or assembled, but not to have made,
LICENSED PRODUCTS and for LICENSED PRODUCTS so made, to import, use, lease,
sell, offer for sale, or otherwise dispose of LICENSED PRODUCTS
(i) that are designed solely or jointly by or for MOTOROLA, or
(ii) that are standard or custom Application Specific Integrated Circuit
(ASIC) products that MOTOROLA manufactures for its customers and that
are designed with libraries or standard cells used by MOTOROLA, or
(iii) that are designed by third parties, provided at least fifty
percent (50%) of such LICENSED PRODUCTS that are designed by third
parties and made by MOTOROLA are leased, sold, offered for sale or
otherwise disposed of by MOTOROLA either internally or to the general
public as part of MOTOROLA's standard advertised portfolio of
products,
and to practice any process or method involved in the manufacture or use
thereof, and
3.1.2 to make, test, assemble, have tested or assembled, use and have made
MANUFACTURING APPARATUS and to practice any process or method involved in the
use thereof.
3.2 CHARTERED hereby grants to MOTOROLA, for the term of this Agreement, a
***** covenant not to assert CHARTERED PATENTS against MOTOROLA as a result of
the purchase, importation, use, lease, resale, offer for sale, or other disposal
of LICENSED PRODUCTS designed solely or jointly by or for a third party and
manufactured by a third party. CHARTERED hereby agrees to extend such covenant
not to assert to customers, distributors, and users of MOTOROLA that purchase,
lease, or otherwise acquire such LICENSED PRODUCTS from MOTOROLA.
3.3 CHARTERED hereby grants to MOTOROLA, for the term of this Agreement, a
***** license under all CHARTERED PATENTS, other than CIRCUIT PATENTS of
CHARTERED, without the right to sub-license, to make, test, assemble, have
tested or assembled, but not to have made, LICENSED PRODUCTS, and for LICENSED
PRODUCTS so made, tested, or assembled, to sell or otherwise dispose of to a
third party such LICENSED PRODUCTS designed solely or jointly by or for that
third party. CHARTERED hereby further grants to MOTOROLA, for the term of this
Agreement, ***** covenant not to assert CIRCUIT PATENTS of CHARTERED against
MOTOROLA for the manufacture, testing, assembly, sale, or other disposal of such
LICENSED PRODUCTS. Such covenant not to
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assert shall not extend to customers of MOTOROLA that purchase or otherwise
acquire such LICENSED PRODUCTS from MOTOROLA.
3.4 CHARTERED hereby grants to MOTOROLA, for the term of this Agreement, a
***** license under CIRCUIT PATENTS of CHARTERED, without the right to
sub-license, to have made LICENSED PRODUCTS designed solely or jointly by or for
MOTOROLA, and to import, use, lease, sell, offer for sale, or otherwise dispose
of such LICENSED PRODUCTS. CHARTERED hereby further grants to MOTOROLA, for the
term of this Agreement, ***** covenant not to assert any other CHARTERED PATENTS
which do not constitute CIRCUIT PATENTS against MOTOROLA for having such
LICENSED PRODUCTS made. CHARTERED hereby agrees to extend such covenant not to
assert to customers, distributors, and users that purchase or otherwise acquire
such LICENSED PRODUCTS from MOTOROLA.
3.5 CHARTERED hereby grants MOTOROLA, for the term of this Agreement, a *****
license under CHARTERED COMMUNICATIONS PATENTS, without the right to
sub-license, to make, have made, test, assemble, have tested or assembled,
import, use, lease, sell, offer for sale, or otherwise dispose of products that
infringe the CHARTERED COMMUNICATIONS PATENTS.
3.6 MOTOROLA hereby grants to CHARTERED, for the term of this Agreement, a
***** license under MOTOROLA PATENTS without the right to sub-license:
3.6.1 to make, test, assemble, and have tested or assembled, but not to have
made, LICENSED PRODUCTS, and for LICENSED PRODUCTS so made, to import, use,
lease, sell, offer for sale, or otherwise dispose of LICENSED PRODUCTS
(i) that are designed solely or jointly by or for CHARTERED, or
(ii) that are standard or custom Application Specific Integrated Circuit
(ASIC) products that CHARTERED manufactures for its customers and that
are designed with libraries or standard cells used by CHARTERED, or
(iii) that are designed by third parties, provided at least fifty
percent (50%) of such LICENSED PRODUCTS that are designed by third
parties and made by CHARTERED are leased, sold, offered for sale or
otherwise disposed of by CHARTERED either internally or to the general
public as part of CHARTERED standard advertised portfolio of products,
and to practice any process or method involved in the manufacture or
use thereof, and
3.6.2 to make, test, assemble, have tested or assembled, use and have made
MANUFACTURING APPARATUS and to practice any process or method involved in the
use thereof.
3.7 MOTOROLA hereby grants to CHARTERED, for the term of this Agreement, a
***** covenant not to assert MOTOROLA PATENTS against CHARTERED as a result of
the purchase, importation, use, lease, resale, offer for sale, or other disposal
of LICENSED PRODUCTS designed solely or jointly by or for a third
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party and manufactured by a third party. MOTOROLA hereby agrees to extend such
covenant not to assert to customers, distributors, and users of CHARTERED that
purchase, lease, or otherwise acquire such LICENSED PRODUCTS from CHARTERED.
3.8 MOTOROLA hereby grants to CHARTERED, for the term of this Agreement, a
***** license under all MOTOROLA PATENTS, other than CIRCUIT PATENTS of
MOTOROLA, without the right to sub-license, to make, test, assemble, have tested
or assembled, but not to have made, LICENSED PRODUCTS, and for LICENSED PRODUCTS
so made, tested, or assembled, to sell or otherwise dispose of to a third party
such LICENSED PRODUCTS designed solely or jointly by or for that third party.
MOTOROLA hereby further grants to CHARTERED, for the term of this Agreement, a
***** covenant not to assert CIRCUIT PATENTS of MOTOROLA against CHARTERED for
the manufacture, testing, assembly, sale, or other disposal of such LICENSED
PRODUCTS. Such covenant not to assert shall not extend to customers of CHARTERED
that purchase or otherwise acquire such LICENSED PRODUCTS from CHARTERED.
3.9 MOTOROLA hereby grants to CHARTERED, for the term of this Agreement, a
***** license under CIRCUIT PATENTS of MOTOROLA, without the right to
sub-license, to have made LICENSED PRODUCTS designed solely or jointly by or for
CHARTERED and to import, use, lease, sell, offer for sale, or otherwise dispose
of such LICENSED PRODUCTS. MOTOROLA hereby further grants to CHARTERED, for the
term of this Agreement, a ***** covenant not to assert any other MOTOROLA
PATENTS which do not constitute CIRCUIT PATENTS against CHARTERED for having
such LICENSED PRODUCTS made. MOTOROLA hereby agrees to extend such covenant not
to assert to customers, distributors, and users that purchase or otherwise
acquire such LICENSED PRODUCTS from CHARTERED.
3.10 MOTOROLA hereby grants to CHARTERED, for the term of this Agreement, a
*****, covenant not to assert MOTOROLA PATENTS against CHARTERED for having
LICENSED PRODUCTS made by Silicon Manufacturing Partners Pte Ltd. (SMP).
MOTOROLA hereby agrees to extend such covenant not to assert to customers,
distributors, and users, with the exception of Agere Systems Inc., that purchase
or otherwise acquire such LICENSED PRODUCTS from CHARTERED. The rights granted
under this Section 3.10 shall extend only to a percentage of the output of the
SMP manufacturing facilities to which CHARTERED is entitled to purchase (and
shall not apply to that percentage to which Agere Systems Inc. is entitled to
purchase) as such percentages may be agreed from time to time.
3.11 Notwithstanding the provisions of Sections 3.6 - 3.10, in no event shall
the license granted to CHARTERED and its SUBSIDIARIES include the right to make,
have made, use, or sell any *****. However, CHARTERED and its SUBSIDIARIES shall
have the right, subject to all copyright and mask work rights owned or
controlled by MOTOROLA and subject to the above limitations of this Section, to
develop, manufacture, and sell original designs of products performing
substantially the same functions as any *****.
3.12 During the term of this Agreement and except as provided for under Section
3.10 with
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respect to Agere Systems Inc., MOTOROLA agrees not to make any claim of
infringement against the customers, distributors, and users of LICENSED
PRODUCTS, based upon any claim of any MOTOROLA PATENT under which such LICENSED
PRODUCTS are licensed hereunder, for the use of any LICENSED PRODUCTS which are
made, imported, sold, leased or otherwise disposed of by CHARTERED.
3.13 During the term of this Agreement, CHARTERED agrees not to make any claim
of infringement against the customers, distributors, and users of LICENSED
PRODUCTS, based upon any claim of any CHARTERED PATENT under which such LICENSED
PRODUCTS are licensed hereunder, for the use of any LICENSED PRODUCTS which are
made, imported, sold, leased or otherwise disposed of by MOTOROLA.
3.14 In addition to the licenses and covenants granted in Sections 3.6 - 3.13
above, MOTOROLA covenants not to xxx CHARTERED, CHARTERED SUBSIDIARIES, OR
AUTHORIZED ENTITIES under any MOTOROLA LOGIC PROCESS TECHNOLOGIES PATENTS for
the manufacture, testing, assembly, sale, or other distribution of any LICENSED
PRODUCT for which MOTOROLA has received royalties under the TECHNOLOGY TRANSFER
AGREEMENT. MOTOROLA hereby agrees to extend such covenant not to assert to
customers, distributors, and users of CHARTERED, CHARTERED SUBSIDIARIES, OR
AUTHORIZED ENTITIES that purchase, lease, or otherwise acquire products for
which MOTOROLA has received royalties under the TECHNOLOGY TRANSFER AGREEMENT.
3.15 MOTOROLA shall have the right to extend the provisions of Sections 2.2,
3.1- 3.4, and 3.13, respectively, to any MOTOROLA SUBSIDIARY if such SUBSIDIARY
consents to extend the definition of MOTOROLA PATENTS in Section 1.13 to include
inventions made solely by employees of that SUBSIDIARY and provided that written
notice is given to CHARTERED of such extension to and consent by such
SUBSIDIARY.
3.16 CHARTERED shall have the right to extend the provisions of Sections 2.1 and
3.6-3.12, respectively, to any CHARTERED SUBSIDIARY if such SUBSIDIARY consents
to extend the definition of CHARTERED PATENTS in Section 1.14 to include
inventions made solely by employees of that SUBSIDIARY and provided that written
notice is given to MOTOROLA of such extension to and consent by such SUBSIDIARY.
3.17 No licenses under any copyrights or mask work rights of either MOTOROLA or
CHARTERED are granted under this Agreement.
Section 4- PAYMENTS
4.1 In partial consideration of the release under Section 2 and for the rights
and license granted by MOTOROLA under Section 3, for the term of the Agreement,
CHARTERED agrees to pay MOTOROLA the following payments:
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4.1.1 The amount of ***** for all LICENSED PRODUCTS manufactured, imported,
offered for sale, sold, used or otherwise disposed of prior to July 1, 2003.
CHARTERED shall pay MOTOROLA half of this amount by no later than September 15,
2003 and the other half by no later than December 15, 2003.
4.1.2 For each calendar year commencing on January 1, 2003, the amount of
payment is equal to ***** of that year's NET SEMICONDUCTOR SALES (NSS) of
CHARTERED excluding sales of products for which MOTOROLA receives royalties or
rebates under Section 7 of the TECHNOLOGY TRANSFER AGREEMENT. Notwithstanding
the above no royalty shall be due on sales prior to July 1, 2003 other than that
called for by Section 4.1.1.
4.2 The payment for each year after December 31, 2002 is due by June 30 of the
year subsequent to the year for which payment is being made.
4.2.1 For example, the payment for 2003 is due on June 30, 2004.
4.3 Any payment hereunder which shall be delayed beyond the due date shall be
subject to an interest charge of ***** per month on the unpaid balance payable
in United States currency until paid. The foregoing payment of interest shall
not affect MOTOROLA's right to terminate in accordance with Section 6.
4.4 Payments hereunder are to be made to MOTOROLA's New York City account at
CITIBANK 00000000, 1 Citicorp Center, 000 Xxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000.
Notice of payments shall be sent by CHARTERED to MOTOROLA's address in Section
7.13.1.
4.5 MOTOROLA shall bear all taxes imposed on it with respect to the payments
of this Section, provided, however, that if so required by applicable law,
CHARTERED shall withhold the amount of taxes levied by the Government of
Singapore on payments to be made by CHARTERED pursuant to this Agreement, and
shall promptly make payment of the withheld amount to the appropriate tax
authorities of the Government of Singapore and shall transmit to MOTOROLA
official tax receipts or other evidence issued by said appropriate tax
authorities sufficient to enable MOTOROLA to support a claim for United States
tax credit in respect to such withheld taxes so paid by CHARTERED.
4.6 In the event and at such time that CHARTERED acquires or is acquired by,
directly or indirectly, at any time during the term of this Agreement, another
existing operation or operations or a part or parts thereof which manufactures
products within the definition of LICENSED PRODUCTS but not previously licensed
under the MOTOROLA PATENTS, where such operation or operations together with all
previous acquisitions of nonlicensed production after the date of this Agreement
have, as measured in fair market value at the times of acquisition, an aggregate
annual gross production of LICENSED PRODUCTS used, sold, or otherwise put into
use totaling more than ***** of covered sales under this Agreement ("ADDITIONAL
COVERED SALES"), then CHARTERED agrees to notify MOTOROLA
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promptly of any such acquisitions and the parties hereto will consider extending
this license to such operation, operations, or parts thereof and will negotiate
the terms of such an extension of this license as it may apply to such existing
operation, provided that any royalty rate other than that set forth in section
4.1.2 shall apply only to the ADDITIONAL COVERED SALES.
Section 5- PATENTS NOT WHOLLY OWNED BY A PARTY HERETO
5.1 A patent relating to the subject matter of this Agreement may not only come
within the definition of Sections 1.13 and 1. 14, but may also be a patent on an
invention covering LICENSED PRODUCTS made by an employee or employees of the
MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR or CHARTERED whether or not such employee
or employees work under the direction or sponsorship of a third party not owned
or controlled by MOTOROLA or CHARTERED, as the case may be, and which such
patent is owned in whole or in part by such third party.
5.2 It is hereby provided that any patent coming within the provisions of
Section 5.1 shall be included within the definition of MOTOROLA PATENTS or
CHARTERED PATENTS only to the extent that such third party consents to such
inclusion with no obligation upon the grantor of licenses or rights hereunder to
pay royalties to such third party.
5.3 If one party to this Agreement or any of its SUBSIDIARIES is charged with
infringement by any third party with respect to a patent as provided in Section
5.1, or is sued for infringement of such a patent, the other party to this
Agreement will make its best effort to assist said one party in securing a
release for said one party, which release may include the grant by said one
party of comparably valued rights to said third party under said one party's
patents (MOTOROLA PATENTS or CHARTERED PATENTS). Such release shall dispose of
such charge of infringement or such suit. If said other party of this Agreement
fails to secure such release, said other party hereby agrees to indemnify said
one party up to a reasonable amount to be negotiated, incurred as a result of
such charge or such suit, and said other party will pay such reasonable amount
to said one party upon written notice thereof to said other party by said one
party.
5.4 In the event said other party fails to indemnify said one party as
provided in Section 5.3, then said one party may terminate the license and the
other rights granted to or for the benefit of the other party. The license and
the other rights granted by said other party in Section 3, however, shall
continue for the term of the Agreement. Any obligations under this Agreement to
make future payments to said one party by said other party shall also terminate
as of the date of said written notice specified in this Section 5.
Section 6 - TERM ,TERMINATION, AND ASSIGNABILITY
6.1 The term of this Agreement shall be from the EFFECTIVE DATE until July 1,
2008, unless earlier terminated as elsewhere provided in this Agreement.
6.2 In the event of any breach of this Agreement by either party hereto
(including CHARTERED's obligation to make payments under Section 4), if such
breach is not
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corrected within forty-five (45) days after written notice describing such
breach, this Agreement may be terminated forthwith by further written notice to
that effect from the party noticing the breach.
6.3 Either party hereto shall also have the right to terminate this Agreement
forthwith by giving written notice of termination to the other party at any
time, upon or after:
6.3.1 the filing by such other party of a petition in bankruptcy or insolvency;
or
6.3.2 any adjudication that such other party is bankrupt or insolvent; or
6.3.3 the filing by such other party of any legal action or document seeking
reorganization, readjustment or arrangement of its business under any law
relating to bankruptcy or insolvency; or
6.3.4 the appointment of a receiver for all or substantially all of the property
of such other party; or
6.3.5 the making by such other party of any assignment for the benefit of
creditors; or
6.3.6 the institution of any proceedings for the liquidation or winding up of
such other party's business or for the termination of its corporate charter.
6.4 In the event of termination of this Agreement by one party pursuant to
Section 6.2, the licenses and rights granted to or for the benefit of that one
party hereto and its SUBSIDIARIES under MOTOROLA PATENTS or CHARTERED PATENTS,
as the case may be, depending upon who is the party doing the terminating, shall
survive such termination and shall extend for the full term of this Agreement,
but the licenses and rights granted to or for the benefit of the other party
shall terminate as of the date termination takes effect.
6.5 At such time as is mutually agreeable, at the written request of either
party hereto to the other party hereto, but in no event less than six (6) months
prior to the expiration of this Agreement, the parties hereto shall discuss the
possible extension of or the renewal of the term of this Agreement, including
the possible amendment of the provisions thereof. In no event shall a patent
licensed hereunder be excluded from the extension or renewal unless one party
can make a prima facie showing that the other party has (i) misused the
intellectual property rights of the other party, or (ii) engaged in unlawful
business practices, or (iii) engaged in unethical business practices. In the
event that one of these conditions are met and a party intends to exclude from
the extension or renewal any patent that is licensed under this Agreement, such
party shall:
6.5.1 provide written notice to the other party no later than the first meeting
following such written request identifying any patents to be excluded; and
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6.5.2 enter into good faith discussions between responsible business
representatives of the parties concerning possible terms for licensing such
patents.
6.6 The rights or privileges provided for in this Agreement may be assigned or
transferred by either party only with the prior written consent of the other
party and with the authorization or approval of any governmental authority as
then may be required, provided that such written consent is not necessary if a
party assigns or transfers rights and obligations provided for in this Agreement
to a successor in ownership of all or substantially all of the assets of the
assigning party, but such successor, before such assignment or transfer is
effective, shall expressly assume in writing to the other party all of the
rights and obligations of the assigning party to the same extent as if the
successor had signed the Agreement in the first instance.
6.7 The rights or privileges provided for under Section 3 of this Agreement
shall survive the termination or expiration of this Agreement but only for such
products for which MOTOROLA receives a royalty under the TECHNOLOGY TRANSFER
AGREEMENT and products of MOTOROLA covered by the provisions of such TECHNOLOGY
TRANSFER AGREEMENT.
Section 7- MISCELLANEOUS PROVISIONS
7.1 Each of the parties hereto represents and warrants that it has the right
to grant to or for the benefit of the other the rights and licenses granted
hereunder in Sections 2 and 3.
7.2 Nothing contained in this Agreement shall be construed as:
7.2.1 restricting the right of MOTOROLA or any of its SUBSIDIARIES to make, use,
sell, lease or otherwise dispose of any particular product or products not
herein licensed;
7.2.2 restricting the right of CHARTERED or any of its SUBSIDIARIES to make,
use, sell, lease or otherwise dispose of any particular product or products not
herein licensed;
7.2.3 an admission by CHARTERED of, or a warranty or representation by MOTOROLA
as to, the validity and/or scope of the MOTOROLA PATENTS, or a limitation on
CHARTERED to contest, in any proceeding, the validity and/or scope thereof;
7.2.4 an admission by MOTOROLA of, or a warranty or representation by CHARTERED
as to, the validity and/or scope of the CHARTERED PATENTS, or a limitation on
MOTOROLA to contest, in any proceeding, the validity and/or scope thereof;
7.2.5 conferring any license or other right, by implication, estoppel or
otherwise, under any patent application, patent or patent right, except as
herein expressly granted under the MOTOROLA PATENTS, and the CHARTERED PATENTS;
7.2.6 conferring any license or right with respect to any trademark, trade or
brand name, a corporate name of either party or any of their respective
SUBSIDIARIES, or any other name
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or xxxx, or contraction, abbreviation or simulation thereof;
7.2.7 imposing on MOTOROLA any obligation to institute any suit or action for
infringement of any MOTOROLA PATENTS, or to defend any suit or action brought by
a third party which challenges or concerns the validity of any MOTOROLA PATENTS
licensed under this Agreement;
7.2.8 imposing upon CHARTERED any obligation to institute any suit or action
for infringement of any CHARTERED PATENTS, or to defend any suit or action
brought by a third party which challenges or concerns the validity of any
CHARTERED PATENTS licensed under this Agreement;
7.2.9 a warranty or representation by MOTOROLA that any manufacture, use, sale,
lease or other disposition of LICENSED CHARTERED PRODUCTS will be free from
infringement of any patent other than the MOTOROLA PATENTS licensed herein;
7.2.10 a warranty or representation by CHARTERED that any manufacture, use,
sale, lease or other disposition of LICENSED MOTOROLA PRODUCTS will be free from
infringement of any patent other than the CHARTERED PATENTS licensed herein;
7.2.11 imposing on either party any obligation to file any patent application or
to secure any patent or maintain any patent in force; or
7.2.12 an obligation on either party to furnish any manufacturing or technical
information under this Agreement except as the same is specifically provided for
herein.
7.3 No express or implied waiver by either of the parties to this Agreement
of any breach of any term, condition or obligation of this Agreement by the
other party shall be construed as a waiver of any subsequent breach of that
term, condition or obligation or of any other term, condition or obligation of
this Agreement of the same or of a different nature.
7.4 Anything contained in this Agreement to the contrary notwithstanding, the
obligations of the parties hereto shall be subject to all laws, both present and
future, of any Government having jurisdiction over either party hereto, and to
orders or regulations of any such Government, or any department, agency, or
court thereof, and acts of 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, and the parties hereto shall be excused
from any failure to perform any obligation hereunder to the extent such failure
is caused by any such law, order, regulation, or contingency but only so long as
said law, order, regulation or contingency continues.
7.5 The captions used in this Agreement are for convenience only, and are not
to be used in interpreting the obligations of the parties under this Agreement.
7.6 This Agreement and the performance of the parties hereunder shall be
construed in
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accordance with and governed by the laws of the State of New York.
7.7 This Agreement is in the English language only, which language shall be
controlling in all respects, and all versions hereof in any other language shall
be for accommodation only and shall not be binding upon the parties hereto. All
communications to be made or given pursuant to this Agreement shall be in the
English language.
7.8 This Agreement is the result of negotiation between the parties, which
parties acknowledge that they have been represented by counsel during such
negotiation; accordingly, this Agreement shall not be construed for or against
either party regardless of which party drafted this Agreement or any portion
thereof
7.9 In no event shall either party be liable to the other party by reason of
this Agreement or any breach or termination of this Agreement for any loss of
prospective profits or incidental or special or consequential damages.
7.10 If any term, clause, or provision of this Agreement shall be judged to be
invalid, the validity of any other term, clause, or provision shall not be
affected; and such invalid term, clause or provision shall be deemed deleted
from this Agreement.
7.11 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, and neither of the parties shall be bound by any conditions,
definitions, warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or as duly set forth on
or subsequent to the date hereof in writing and signed by a proper and duly
authorized officer or representative of the party to be bound thereby.
7.12 The parties shall have the right to disclose the existence of this
Agreement. The parties hereto, however, shall keep the terms of this Agreement
confidential and shall not now or hereafter divulge any part thereof to any
third party except:
7.12.1 with the prior written consent of the other party; or
7.12.2 to any governmental body having jurisdiction to request and to read the
same; or 7.12.3 as otherwise may be required by law or legal processes; or
7.12.4 to legal counsel, accountants, and financial advisors representing either
party; or
7.12.5 Notwithstanding the above, no disclosure of this Agreement shall be made
pursuant to Section 7.12.2 or 7.12.3 without the disclosing party first giving
the other party reasonable prior notice of such intended disclosure so as to
allow the other party sufficient time to seek a protective order or otherwise
assure the confidentiality of this Agreement as that other party shall deem
appropriate.
7.12.6 Notwithstanding anything to the contrary herein, the provisions of this
Section
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7.12 shall survive termination of this Agreement and continue in perpetuity.
7.13 All notices required or permitted to be given hereunder shall be in writing
and shall be valid and sufficient if dispatched by registered airmail, postage
prepaid, in any post office in the United States or Singapore, addressed as
follows:
7.13.1 If to MOTOROLA:
Motorola Inc.
0000 Xxxx Xxxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Vice President for
Patents, Trademarks & Licensing
7.13.2 If to CHARTERED:
Chartered Semiconductor Manufacturing Ltd.
00 Xxxxxxxxx Xxxxxxxxxx Xxxx X
Xxxxxx 0
Xxxxxxxxx 000000
Attention: Legal Department
7.13.3 The date of receipt of such a notice shall be the date for the
commencement of the running of the period provided for in such notice, or the
date at which such notice takes effect, as the case may be.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate.
Motorola, Inc. Chartered Semiconductor
Manufacturing Ltd.
/s/ Xxxxxxxx X. Xxxxx /s/ Chia Song Hwee
--------------------- ------------------
By: Xxxxxxxx X. Xxxxx By: Chia Song Hwee
----------------- -------------------------
Title: Senior Vice President and Title: President and CEO
------------------------- ----------------------
Assistant General Counsel
-------------------------
Date 19 September 2003 Date 9 September 2003
----------------- ------------------------
/s/ Xxxxxxx X. Xxxxxxx
----------------------
By: Xxxxxxx X. Xxxxxxx
------------------
Title: Corporate Vice President & Director
Strategy & Marketing
-----------------------------------
Date: 17 September 2003
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