1
TESSERA CONFIDENTIAL
EXHIBIT 10.34
FIRST LICENSE ADDENDUM
TO THE TCC LICENSE AGREEMENT
This "First Addendum" is entered into as of the last signature date of this
First Addendum, shown below, (hereinafter "First Addendum Effective Date")
between TESSERA INC., a corporation organized under the laws of Delaware having
a principal place of business at 0000 Xxxxxxx Xxxxx, Xxx Xxxx, XX 00000
("Tessera") and INTEGRATED PACKAGING ASSEMBLY CORPORATION, a corporation
organized under the laws of Delaware, having a principal place of business at
0000 Xxx Xxxxxxx Xxxx, Xxx Xxxx, XX 00000-0000 ("Licensee") and modifies the TCC
License Agreement entered into by and between the parties having an Effective
Date of April 23, 1998 (hereinafter "Agreement"), with reference to the
following:
SCOPE
WHEREAS, Tessera and Licensee desire to clarify the "License Fee Option" section
of the Agreement (Paragraph III.A.) to recognize the tasks previously performed
and to further define the tasks to be performed and to reduce Licensee's
financial risk;
The Parties Hereto Agree:
I. SUPPLEMENT TO THE AGREEMENT. This First Addendum merely supplements certain
provisions of the Agreement. All provisions contained within the Agreement are
therefore incorporated herein. In the event any of the provisions of the
Agreement and this First Addendum conflict, the provisions contained in this
First Addendum shall supersede the conflicting provisions in the Agreement.
II. LICENSE FEE OPTION. This Paragraph II replaces and supercedes Paragraph
III.A. of the Agreement.
A. Fee Option. As consideration for the licenses and the assembly rights
and privileges of section II.A. of the Agreement, Licensee shall perform the
package development services, technology transfer and training of Tessera's
personnel called for in Paragraph VI.A. of the Agreement within [*] of the
Effective Date of the Agreement in exchange for and in lieu of payment of
Tessera's standard TCC Assembly License Fee of [*] US Dollars ($US[*]) for such
licenses and assembly rights and privileges ("Standard License Fee").
B. Fee Reduction. The Parties agree that as of the First Addendum
Effective Date, Licensee has performed substantial work towards meeting the
goals under Paragraph VI.A. of the Agreement. In consideration of such work,
Tessera agrees to recognize [*] US Dollars (US$[*]) of the Standard License Fee
as effectively paid. Portions of the remaining [*] US Dollar (US$[*]) License
Fee amount shall be recognized as the Parties hereto mutually agree each
"Milestone" (as defined in the chart below) has been satisfied:
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
Page 1 of 3
2
TESSERA CONFIDENTIAL
--------------------------------------------------------------------------------------------
MILESTONES RECOGNIZED LICENSE FEE
AMOUNTS
--------------------------------------------------------------------------------------------
Mutually agreed upon material set, including substrate material, US$[*]
die attach material, over-mold encapsulant material and solder
ball material.*
* The material set is for package qualification purposes and
does not mean the materials, per se, are covered under the
Tessera Patents licensed to Licensee.
--------------------------------------------------------------------------------------------
Package characterization using the above agreed upon set of US$[*]
materials using a matrix (not to exceed 4) of die sizes. The
characterization tests are to be mutually agreed upon between
Tessera and Licensee.
--------------------------------------------------------------------------------------------
Reliability testing of F-(mu)BGA packages in order to meet US$[*]
mutually agreed upon reliability requirements using the
mutually agreed upon materials set and a mutually agreed upon
set of tests. JEDEC moisture level to be separately agreed upon
by the parties.
--------------------------------------------------------------------------------------------
A transfer package to be given to Tessera which includes: US$[*]
- Listing of the mutually agreed upon material set;
- Results of the package characterization and qualification
milestones set forth above.
- Training materials explaining the process so any company
experienced in modern IC assembly could repeat the work
and obtain the same results.
- The other requirements as set forth in Paragraph VI A of
the Agreement.
--------------------------------------------------------------------------------------------
Notwithstanding, Tessera and Licensee shall consult regularly with each
other concerning Licensee's Milestone progress and schedule attainment, and if
Licensee is unable to reasonably meet its obligations under this First Addendum
and Paragraph VI.A. (of the Agreement) within three (3) years of the Effective
Date of the Agreement, the parties agree that Licensee shall have the following
options: 1) Licensee may elect to pay Tessera any remaining portion of the
Standard TCC Assembly License Fee yet unrecognized at that time in order for
Licensee to continue to enjoy the licenses and assembly rights and privileges of
section II. A. of the Agreement (plus interest at [*]% per annum accrued from
the Effective Date of the Agreement) on a mutually agreeable schedule not to
exceed two (2) additional years in duration; or 2) Licensee may elect to cancel
any of Licensee's remaining obligations to provide development and training
services called for in Paragraph VI.A. and thereby terminate any licenses,
rights and privileges (including any right to receive technology transfer and
training from Tessera) under this First Addendum and under the Agreement, while
understanding and agreeing that Licensee's obligations to grant Tessera the
rights and privileges in Paragraph VII. shall remain in full force and effect.
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
Page 2 of 3
3
TESSERA CONFIDENTIAL
III. MISCELLANEOUS
A. Entire Understanding. This First Addendum embodies the entire
understanding between the parties relating to the subject matter hereof, whether
written or oral, and there are no prior representations, warranties or
agreements (except those specifically set forth in the Agreement) between the
parties not contained in this First Addendum. Any amendment or modification of
any provision of this First Addendum must be in writing, dated and signed by
both parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this First
Addendum as of the date last shown below.
For TESSERA INC.: For INTEGRATED PACKAGING
ASSEMBLY CORPORATION:
By: /s/ XXXXX XXXXXXXXXX By: /s/ XXXXXXX XXXXXXXXX
-------------------------- -------------------------------------
Name: Xxxxx XxXxxxxxxx Name: Xxxxxxx Xxxxxxxxx
----------------------- -----------------------------------
Title: President & CEO Title: President & CEO
----------------------- ----------------------------------
Date: April 26, 2000 Date: 26 April 2000
------------------------ -----------------------------------
Page 3 of 3
