EXHIBIT 10.29
LICENSE AGREEMENT
BETWEEN
GateField Corporation, Fremont, California, USA
- hereinafter referred to as "GATEFIELD" -
AND
Siemens Aktiengesellschaft, Berlin and Munchen, Germany
- hereinafter referred to as "Siemens" -
- GateField and Siemens hereinafter referred to as the "Parties" -
PREAMBLE
WHEREAS, GateField has developed a technology for field programmable
semiconductor products based on flash technology:
WHEREAS, Siemens is engaged in the development, production, commercialization
and worldwide marketing of semiconductor products;
WHEREAS, Siemens wishes to acquire certain rights and licenses under
GateField's technology:
NOW THEREFORE, the Parties agree as follows:
ARTICLE 1 - DEFINITIONS
For the purpose of this Agreement, the terms set forth in this Article 1 are
defined to mean the following:
1.1 "Documentation": The Know-how in recorded form (e.g. on paper or other
data carriers) including but not limited to the documents listed in Annex
1 hereto.
1.2 "Equipment": Hardware systems as listed in Annex 1 hereto.
1.3 "GateField Standard ProASIC Products": Standard programmable ASIC
(ProASIC) product, defined and developed by GateField, based on
GateField's proprietary switch and architecture.
1.4 "Improvements": All improvements and/or modifications of the Know-how
and the Software Tools, which GateField develops and/or acquires
ownership of during the term of this Agreement.
License Agreement GateField/Siemens 1
1.5 "Know how": Methods, techniques, process flows, designs. architectures,
structures, specifications for Equipment, design methodologies, circuits,
techniques to prepare masks, design models and test programs related to
GateField's Field Programmable Gate Array (FPGA) technology and which may
be transferred by GateField without restriction.
1.6 "Patents": All patents, patent applications, utility models, mask works
and design patents related to GateField's FPGA technology and which may
be transferred by GateField without restriction.
1.7 "Software Tools": Software programs owned by GateField in source and
object code form as listed in Annex 1 hereto.
1.8 "Subsidiary": A corporation, company or other entity
- where 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, or
- which does not have outstanding shares or securities, as may be the
case in a partnership, joint venture or unincorporated association,
but more than fifty percent (50%) of whose ownership interest
representing the right to make the decisions for such corporation,
company or other entity is, now or hereafter, owned or controlled,
directly or indirectly, by a Party hereto.
1.9 "Technology Integration Services": Technical services to be rendered by
GateField in order to adapt and integrate (i) its ProASIC technology to
Siemens' standard 0.25micron CMOS Flash process and process flow (ii) the
Software Tools to work within Siemens' design environment.
1.10 "Updated Documentation": The Improvements in recorded form (e.g. on
paper or other date carriers).
ARTICLE 2 - SUPPLY OF DOCUMENTATION, SOFTWARE AND EQUIPMENT
2. 1 GateField shall supply Siemens with the Documentation and the Software
Tools within 30 days following the Effective Date. If the Know-how is
not entirely documented at Effective Date, GateField shall promptly
complete the Documentation and deliver such completed Documentation to
Siemens.
2.2 During the term of this Agreement, GateField shall currently inform
Siemens on GateField's Improvements and supply Siemens with the Updated
Documentation without undue delay.
2.3 GateField shall supply Siemens with the Equipment within 30 days
following the Effective Date.
2.4 GateField is prepared to sell Equipment upon fair and reasonable
conditions to the customers of Siemens and its Subsidiaries.
License Agreement GateField/Siemens 2
ARTICLE 3 - TECHNOLOGY INTEGRATION SERVICES
3.1 GateField shall perform Technology Integration Services according to the
contents and time schedule of Annex 1.
3.2 Siemens will without undue delay provide GateField with technical
information Siemens deems necessary for GateField to develop GateField
Standard ProASIC Products manufactured at Siemens' fabs and for the
performance of Technology Integration Services by GateField. GateField's
use of such technical information is restricted to the performance of the
above mentioned purpose.
ARTICLE 4 - RIGHTS AND LICENSES
GateField hereby grants to Siemens and its Subsidiaries the unlimited,
worldwide, non-transferable and non-exclusive right and license to freely use,
but not to sublicense, the Know-how, Improvements, Software, Patents,
Documentation and Updated Documentation in any way they see fit, except for
GateField Standard ProASIC Products.
ARTICLE 5 - STOCK TRANSFER AND STOCK WARRANT
5.1 In consideration for the payments to be made by Siemens under Article 6
GateField shall transfer upon Siemens' request and without further
payment of Siemens 500,000 shares of its common stock to Siemens.
Siemens may request this transfer of stock within a term of three years
from Effective Date upon serving written notice to GateField.
5.2 GateField grants to Siemens a stock warrant for the purchase of 9.9 % of
its outstanding shares of GateField's common stock at Effective Date for
an exercise price equal to 80 % of the Market Price of GateField's common
stock on the trading day immediately prior to the date of exercise,
subject to a minimum exercise price of 1.00 $ per share. Market Price is
defined as the last trade price for common stock as reported by Nasdaq.
This stock warrant is subject to approval of GateField's stockholders at
their May 1998 annual meeting. In the event that Siemens interest is
decreased to less than 9.9 % by future equity offerings, Siemens will
have the right to increase the stock warrant for additional shares at the
same conditions as the equity offering such that Siemens would be able to
maintain its 9.9 % interest in GateField. Siemens may exercise this
stock warrant within a term of five years from Effective Date upon
serving written notice to GateField. The stock warrant may be exercised
at the earliest as follows: For the first 1/3 of the shares after 6
months from Effective Date: for an additional 1/3 after 12 months from
Effective Date; and for the final 1/3 after 18 months from Effective
Date.
ARTICLE 6 - CONSIDERATION
In consideration for the supply of the Equipment, Documentation and Updated
Documentation under Article 2, the performance of Technology Integration
Services under Article 3.1, the rights and licenses
License Agreement GateField/Siemens 3
granted under Articles 4, the shares offered to Siemens under Article 5.1, as
well as the stock warrant granted under Article 5.2 Siemens shall pay to
GateField an amount of $ 3.250.000 (in words: US dollars three million two
hundred and fifty thousand) in three installments of:
- an amount of 1.500.000 $ (in words: one million five hundred thousand US
dollars) within 30 days following Effective Date; and
- an amount of 1.000.000 $ (in words: one million US dollars) within 30
days following delivery of the Equipment, Documentation and Software
Tools to Siemens; and
- an amount of 750.000 $ (in words: seven hundred and fifty thousand US
dollars ) within 30 days following the completion of the Technical
Integration Services.
The value of the license to use the Software Tools for purposes of this
Agreement is 250.000 $ (in words: two hundred and fifty thousand US dollars)
ARTICLE 7 - TAXES
7.1 Any and all taxes, charges and/or other duties (hereinafter "Taxes")
imposed on GateField with respect to any payments to be made by Siemens
to GateField under Article 6 of this Agreement, shall be borne and paid
by GateField. If required by the laws of Germany, Siemens may deduct
Taxes imposed in Germany on GateField with respect to such payments from
the payments and pay such Taxes, on behalf of GateField. To the extent
Siemens has so deducted and paid Taxes on behalf of GateField, Siemens
shall, if so requested by GateField, submit to GateField official tax
receipts issued by the German tax authorities and evidencing the payment
by Siemens of Taxes in Germany on behalf of GateField.
7.2 To the extent the Double Taxation Convention between Germany and the
United States of America entities GateField to claim a reduction of or an
exemption from Taxes imposed on and to be paid by GateField according to
the laws of Germany, Siemens shall use reasonable efforts to support
GateField in obtaining a tax reduction/exemption certificate (or the
like) from the German tax authorities, if so required by the
aforementioned Double Taxation Convention and/or German tax law to
validate the aforementioned claim for tax reduction/exemption. As long
as Siemens has not received copy of such tax reduction/exemption
certificate from GateField, the regulations of Section 7.1 shall apply.
ARTICLE 8 - FUTURE COOPERATION AND SILICON FOUNDRY AGREEMENT
The Parties intend to extend their technical cooperation and to conclude
a silicon foundry agreement as outlined in the Letter of Intent concluded
at on July 17, 1997.
License Agreement GateField/Siemens 4
ARTICLE 9 - EMERGENCY MANUFACTURING RIGHT
In case that GateField discontinues the manufacture of GateField Standard
ProASIC Products and Equipment or does not fulfill its delivery
obligations within 60 days after receipt of written notice of default.
Siemens may claim that GateField (i) makes available free of charge the
technical information of GateField (including software programs)
necessary to manufacture and test Equipment, (ii) enables Siemens to
manufacture and test Equipment in Siemens' own facilities or to have it
manufactured and/or tested and (iii) grants Siemens the necessary user/
utilization rights under the technical information and intellectual
property rights of GateField which are owned by GateField including the
right to grant sub-licenses to third parties ("Emergency Manufacturing
Right").
ARTICLE 10 - WARRANTY AND LIABILITY
10.1 GateField shall correct at its own cost all errors of the Software Tools,
Documentation and Updated Documentation without undue delay after receipt
of a written notice by Siemens specifying the error and thereafter shall
supply Siemens with a corrected version of the deficient Software tools,
Documentation and/or Updated Documentation within a commercially
reasonable time consistent with standard release practices.
10.2 GateField represents and warrants:
- that it is not aware that the use of the licensed Know-how and
Software Tools by Siemens does infringe any third party's
intellectual property rights;
- that the Equipment supplied hereunder is free from defects in material
and workmanship and that it will repair or replace all deficient
Equipment without undue delay pursuant to GateField Terms and
Conditions of Sale, a copy of which is attached to this Agreement
as Annex 2.
10.3 Neither Party shall be held liable by the other Party for any indirect,
incidental or consequential damages including loss of profit and/or loss
of savings, regardless whether the claim is based on breach of contract,
breach of warranty, tort or any other cause of action. This shall not
apply in cases of gross negligence and intent.
ARTICLE 11 - CONFIDENTIALITY
11.1 The Parties undertake to keep secret - even after termination of this
Agreement - with respect to third Parties except its Subsidiaries any
information furnished hereunder, which is marked "Confidential" or
similarly legended (hereinafter all together referred to as "Confidential
Information") and to use the same degree of care to avoid disclosure to
any third Party as the Parties use with respect to their own information
of like importance which is to be kept confidential. The Parties shall
limit internal access to such information to its and its Subsidiaries'
officers or employees who have a need to know such information for the
purpose of this
License Agreement GateField/Siemens 5
Agreement.
11.2 The Parties further agree that they will only use the Confidential
Information supplied under this Agreement for the purposes set forth in
this Agreement.
11.3 Prior to disclosure of any Confidential Information to their officers or
employees, the Parties shall inform them of their duties of
confidentiality and if there does not exist a written general
confidentiality agreement (e.g. as part of the employment agreement)
shall obtain from such persons written confidentiality commitments in
terms no loss onerous than Sections 11.1 and 11.2 above.
11.4 The obligation as per Section 11.1 above shall not apply to any
information which:
a) is already in the public domain or becomes available to the public
through no breach of this Agreement by a Party;
b) was rightfully in the receiving Party's possession without obligation
of confidentiality prior to receipt from the disclosing Party as
proven by the written records of the receiving Party;
c) can he proved to have been rightfully received by the receiving Party
from a third Party without obligation of confidentiality;
d) is hereafter independently developed by the receiving Party as proved
by its written records;
e) is required to be disclosed in order to comply with a judicial order
or degree.
11.5 This Section 11 shall survive any expiration of this Agreement for a
period of 5 years.
ARTICLE 12 - EFFECTIVE DATE, TERM, TERMINATION
12.1 This Agreement shall enter into force after being signed by both Parties
hereto (Effective Date). The Parties agree to review this Agreement by
June 30th 1999 for the purposes of extending it for a longer period of
time.
12.2 This Agreement shall continue in effect until December 31, 2000.
12.3 Articles 3, 4, 5, 9, 10, 11, 13, 14 shall survive the expiration of this
Agreement.
ARTICLE 13 - ARBITRATION
13.1 All disputes arising out of or in connection with this Agreement or from
agreements regarding its performance including any question regarding
their existence, validity or termination, shall be settled under the
Rules of Arbitration of the International Chamber of Commerce, Paris
(Rules) by
License Agreement GateField/Siemens 6
three arbitrators appointed in accordance with the said Rules.
13.2 The place of arbitration shall be Geneva, Switzerland. The procedural
law of this place shall apply, where the Rules are silent.
13.3 The language to be used in the arbitration proceeding shall be English.
ARTICLE 14 - APPLICABLE LAW
All disputes shall be settled in accordance with the provisions of this
Agreement and all other agreements regarding its performance, otherwise in
accordance with the substantive law in force in Switzerland, without reference
to its conflict of laws provisions.
ARTICLE 15 - MISCELLANEOUS
15.1 This Agreement cannot be modified except by written instrument signed by
both Parties. This requirement of written form can only be waived in
writing.
15.2 Communications between GateField and Siemens shall be given by mail or
facsimile, to the following addresses of the Parties:
If to GateField to: If to Siemens to:
------------------- -----------------
GateField Corporation Siemens Aktiengesellschaft
00000 Xxxxxxx Xxxxxxx Semiconductor Group
Xxxxxxx, XX 00000 Xx. Xxxxx Xxxxx
USA Xxxxxxxxxxxx 00
Attention: Xx. Xxxxx X. Xxxxxxxx I)-81671 Munchen
Fax 000-000-0000 fax: *00-00-00000000
15.3 No right or interest in this Agreement shall be assigned or transferred
to any third party by either Siemens or GateField without first obtaining
written consent from the other Party, which consent shall not be
unreasonably withheld.
15.4 If any provision contained in this Agreement is or becomes ineffective or
is held to be invalid by a competent authority or court having final
jurisdiction thereover, all other provisions of this Agreement shall
remain in full force and effect and there shall be substituted for the
said invalid provision a valid provision having an economic effect as
similar as possible to the original provision.
License Agreement GateField/Siemens 7
15.5 This Agreement constitutes the entire understanding and agreement between
the Parties hereto with respect to the subject matter hereof and shall
supersede and cancel all previous agreements, negotiations and
commitments, either oral or written, relating hereto.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE CAUSED THIS AGREEMENT TO BE EXECUTED
IN DUPLICATE BY THEIR RESPECTIVE DULY AUTHORIZED REPRESENTATIVES:
DATE: DATE:
------------------------------ ----------------------------
----------------------------------- ---------------------------------
SIEMENS AKTIENGESELLSCHAFT GATEFIELD CORPORATION
License Agreement GateField/Siemens 8
ANNEX 1
1. GATEFIELD DELIVERABLES
- Technology information for Siemens C6F-1 Process
Layout, netlist, special runsets and simulation results for
- switch
- cell
- architecture
- circuits/circuit design
demonstration/examples of the above for existing technologies (0.5micron m)
Process flow
- Libraries
- Datasheet/books for 0.5micron, 0.6micron drawn (or 0.35micron m version)
with timing information
- Available application notes
- Synopsys 3.5a (or newer version)
- Vital Library for VSS
- Verilog Library
- ASICMaster
- Tools (incl. documentation) for netlist optimization
- Tools (incl. documentation) for placement and routing
- Tools for timing extraction in conjunction with other logic blocks
- Tools/methodology for master generation/chip design
- ASICmaker
- 6 consoles (hardware) for device programming for serial ports
- Tool kit/software for programming
- Testing
- Methodology/Hardware for "low cost" testing
- Tool/methodology for test pattern generation before and after
programming
- GateField FPGAs
License Agreement GateField/Siemens 9
- different FPGAs samples (5 each) for all GateField Standard ProASIC
Products currently released for production in different sizes in a
0.5micron m (0.6 micron drawn) (or smaller)
- Support
- Local application support (10 man month technology support;
8 man month circuit implementation support).
2. TECHNOLOGY INTEGRATION SERVICES
GateField will dedicate key engineers to help accelerate the implementation of
GateField's ProASIC technology into Siemens' 0.25u CMOS Flash process
development. For this purpose, GateField will
- make engineers available at Siemens process development site
- provide test chip / test structure databases
- design and provide a memory
- contribute with device analysis and measurement
- provide the results of testing the memory chip
- provide the results of failure analysis on the memory chip
- provide any other useful test results
GateField will make the necessary adaptations to provide a seamless integration
into Siemens process technology as well as Siemens design and development
environment. The following areas will be addressed:
- call design
- architecture
chip design
- design and programming software technology
- test technology and infrastructure
- compatibility with Siemens system tools
- common technology files
- common layer definitions
- common schematic definitions
- compatibility with Siemens system design schema
- compatible layer usage
- compatible power bussing
License Agreement GateField/Siemens 10
- compatibility with Siemens system design tool
- languages
- simulation libraries
- EDA tools
License Agreement GateField/Siemens 11
