EXHIBIT 10.5
TECHNOLOGY AGREEMENT
This Technology Agreement ("Agreement") is made, entered into, and to be
effective as of the Closing Date (as defined below) ("Effective Date") by and
between Silicon Graphics, Inc., a Delaware corporation ("SGI") and MIPS
Technologies, Inc., a Delaware corporation ("MIPS").
RECITALS
WHEREAS, the Board of Directors of Silicon Graphics has determined that it
is in the best interests of Silicon Graphics and its shareholders to separate
the MIPS Business from Silicon Graphics' other operations;
WHEREAS, as part of the foregoing, SGI and MIPS have entered into a
Separation Agreement of even date herewith (the "Separation Agreement");
WHEREAS the parties desire to enter into this ancillary agreement pursuant
to which SGI will assign and license certain intellectual property to MIPS, and
MIPS will license back certain rights to SGI.
NOW, THEREFORE, in consideration of the foregoing premises and the mutual
agreements, provisions and convenants contained in this Agreement, the parties
hereby agree as follows:
1. DEFINITIONS
1.1. "Affiliates" means shall mean any corporation or other entity that is
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directly or indirectly controlling, controlled by or under common
control with a party. For the purpose of this definition, "control"
shall mean the direct or indirect ownership of more than fifty percent
(50%) of the capital stock of the subject entity entitled to vote in
the election of directors (or, in the case of an entity that is not a
corporation, interests entitled to vote in the election of the
corresponding managing authority). For the purposes of this
Agreement, the term "Affiliate" shall not include MIPS where the term
Affiliates is used in connection with a period of time after the
Closing Date.
1.2. "Capture Period" means the period starting on the Closing Date and
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ending on the later of (i) three years from the Closing Date, or (ii)
the date when SGI's owns less than 50% of the capital stock of MIPS.
1.3. "Closing Date" means the date of the closing of MIPS's initial public
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offering.
1.4. "Intellectual Property Rights" means (i) all Patents; (ii) all
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copyrights in both published works and unpublished works, all
registrations and applications therefor and all associated moral
rights (collectively "Copyrights"); (iii) all rights in mask works
(collectively "Maskworks"); and (iv) all know-how, trade secrets,
confidential information, customer lists, software, technical
information, data, process technology, plans, drawings, and blue
prints (collectively "Trade Secrets") whether arising under the laws
of the United States or any other state, country or jurisdiction.
1.5. "MIPS Capture Period Patents" means all patents and patent
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applications filed by MIPS that have a first effective filing date
during the Capture Period.
1.6. "MIPS Field of Use" means any CPU, ASSP and ASIC which implements
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under license from MIPS, the MIPS ISA or derivative thereof that is
substantially compatible with the MIPS ISA.
1.7. "MIPS ISA" shall mean the instruction set architectures for MIPS
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Processor Components first developed by, for or with substantial
participation by MIPS including without limitation the MIPS I, MIPS
II, MIPS III, MIPS IV, MIPS V and successor instruction set
architectures or extensions thereto.
1.8. "MIPS Processor Know-How" means the know-how listed on Exhibit E.
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1.9. "MIPS Patents" means the Patents listed on Exhibit A.
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1.10. "MIPS Processor Components" means a component of a processor within
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the MIPS Field of Use designed by, for, or with substantial
participation by MIPS.
1.11. "MIPS Tools" means the Tools listed on Exhibit D.
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1.12. "Non-Patent IP Rights" means Trade Secrets, Maskworks, and
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Copyrights.
1.13. "Patents" means all classes or types of patents, utility models and
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design patents (including, without limitation, originals, divisions,
continuations, continuations-in-part, extensions or reissues), patent
applications and disclosures for these classes or types of patent
rights in all countries of the world (collectively "Patent Rights").
1.14. "SGI Compiler & Software Technology" means the know-how listed on
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Exhibit F.
1.15. "SGI Compiler & Software Patents" means the Patents listed on
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Exhibit F.
1.16. "SGI Capture Period Patents" only those patents and patent
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applications filed by SGI that have a first effective filing date
during the Capture Period and constitute inventions arising from
improvements to the technology listed on Exhibit G.
1.17. "SGI Designed Products" means products based on designs developed
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by, for or with substantial participation by SGI or its Affiliates
which (i) do not substantially implement a MIPS ISA other than in
connection with a MIPS R10K processor
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implementation or enhanced derivatives thereof, or (ii) are in the
SGI Field of Use.
1.18. "SGI Exclusive Field of Use" means the field of use outside the MIPS
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Field of Use.
1.19. "SGI Field of Use" means standalone desktop computers, workstations,
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servers, mainframes, and minicomputers.
1.20. "SGI Group" means SGI and its Affiliates.
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1.21. "SGI Processor Know-How" means the know-how listed on Exhibit B.
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1.22. "SGI Processor Patents" mean the Patents listed on Exhibit B.
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1.23. "SGI Tools" means the Tools listed on Exhibit C.
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1.24. "SGI Tool Patents" means the Patents listed on Exhibit C.
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1.25. "Sole SGI Tools" means the Tools listed on Exhibit C.1.
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1.26. "Tools" means architectural verification tools, architectural
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modeling tools, design verification tools, and operating system
tools. Tools do not include Compiler & Software Technology.
2. MIPS TECHNOLOGY
2.1. Assignment to MIPS. SGI hereby sells, conveys, assigns and transfers
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to MIPS, and MIPS hereby accepts, all of SGI's right, title and
interest in and to the intellectual property and materials listed
below ("Assigned IP") together with all ancillary rights thereto,
including without limitation, the right to xxx and recover damages for
past, present and future infringements and to fully and entirely stand
in the place of SGI in all matters related thereto. Upon MIPS's
reasonable request, SGI agrees to take further action and to execute
such additional documents (at MIPS's expense) as may be necessary to
perfect MIPS's title in and to the Assigned IP. Assigned IP
specifically includes and is limited to:
o MIPS Patents (as listed on Exhibit A);
o MIPS Processor Know-How (as listed on Exhibit E); and
o MIPS Tools (as listed on Exhibit D).
2.2. Processor Technology License to SGI. MIPS hereby grants to the SGI
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Group, a non-exclusive, royalty-free, fully-paid, worldwide license,
under MIPS's Intellectual Property Rights in the MIPS Patents (as
listed on Exhibit A) and MIPS Processor Know-How (as listed on Exhibit
E) to:
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(a) make, have made, use, import, sell and otherwise dispose of
products, and practice any method or process in the
manufacture of products;
(b) use, modify, distribute, reproduce, display, and perform any
copyrighted or copyrightable work or Maskwork;
(c) sublicense such rights to third parties only in connection
with SGI Designed Products.
(d) In addition, the license set forth in this Section 2.2 shall
be an exclusive license within the SGI Exclusive Field of
Use, subject to any licenses granted by MIPS prior to the
Effective Date of this Agreement. This license shall be
reduced to a non-exclusive license only in the event the SGI
Group: (i) ceases to license, market, sell or otherwise
dispose of products that infringe, or practice any method or
process that infringes, any MIPS Patent or MIPS Processor
Know-How, and (ii) ceases to use the MIPS Processor Know-
How.
2.3. Tools License to SGI. MIPS hereby grants to the SGI Group, a non-
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exclusive, royalty-free, fully-paid, worldwide license, under MIPS's
Non-Patent IP Rights in the MIPS Tools (as listed on Exhibit D) to:
(a) make, have made, use, import, sell and otherwise dispose of
products, and practice any method or process in the
manufacture of products; and
(b) use, modify, distribute, reproduce, display, and perform any
copyrighted or copyrightable work.
(c) except for those Tools identified in Exhibit D as "Not
Sublicensable," sublicense the rights set forth in this
Section 2.3 to third parties in binary code format; provided
that those Tools that are identified on Exhibit D as "Source
Code Sublicensable" may be licensed by the SGI Group in
source code format.
2.4. Right to Retain Information. For the purposes of enjoying the rights
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granted under this Xxxxxxx 0, XXX shall have the right to retain
copies of all materials included in and associated with the Assigned
IP.
3. SGI TECHNOLOGY
3.1. Processor Technology License to MIPS. SGI hereby grants to MIPS, a
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non-exclusive, royalty-free, fully-paid, worldwide license, within the
MIPS Field of
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Use, under SGI's Intellectual Property Rights in the SGI Processor
Patents and SGI Processor Know-How (as listed on Exhibit B) to:
(a) make, have made, use, import, sell and otherwise dispose of
MIPS Processor Components, and practice any method or
process in the manufacture of MIPS Processor Components; and
(b) use, modify, distribute, reproduce, display, and perform any
copyrighted or copyrightable work or Maskwork only in
connection with the use, development, manufacture, or
distribution of MIPS Processor Components.
(c) sublicense the rights granted in Section 3.1(a) and 3.1(b)
above to third parties.
3.2. Tools License to MIPS. SGI hereby grants to MIPS, a non-exclusive,
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royalty-free, fully-paid, worldwide license, within the MIPS Field of
Use, under SGI's Intellectual Property Rights in the SGI Tools Patents
and SGI Tools (as listed on Exhibit C) to:
(a) make, have made, use, import, sell and otherwise dispose of
MIPS Processor Components, and practice any method or
process in the manufacture of MIPS Processor Components; and
(b) use, modify, distribute, reproduce, display, and perform any
copyrighted or copyrightable work or Maskwork only in
connection with the use, development, manufacture, or
distribution of MIPS Processor Components.
(c) sublicense to third parties, only in binary format, those
SGI Tools specifically identified in Exhibit C as
"Sublicensable"; provided that those SGI Tools specifically
identified in Exhibit C as "Source Code Licensable" may be
sublicensed by MIPS in source code format.
(d) The above license shall be a sole license with respect to
the Sole SGI Tools, subject to any licenses granted by SGI
prior to the Effective Date of this Agreement. This license
shall be reduced to a non-exclusive license with respect to
any Sole SGI Tool in the event MIPS ceases to license,
market, sell or otherwise dispose of MIPS Processor
Components that use such Sole SGI Tool.
3.3. Compiler & Software Technology License to MIPS. SGI hereby grants to
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MIPS, a non-exclusive, royalty-free, fully-paid, worldwide license,
within the MIPS Field of Use, under SGI's Intellectual Property Rights
in the SGI Compiler & Software Technology and SGI Compiler & Software
Patents (as listed on Exhibit F) to:
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(a) use, modify, and reproduce (for internal use only) the SGI
Compiler & Software Technology only in connection with the
development of MIPS Processor Components;
(b) Under the SGI Compiler & Software Patents to make, have
made, use, import, sell and otherwise dispose of MIPS
Processor Components, and practice any method or process in
the manufacture of MIPS Processor Components; and
(c) MIPS shall have the right to sublicense only that SGI
Compiler & Software Technology and those SGI Compiler &
Software Patents identified in Exhibit F as "Sublicensable"
to third parties. All such sublicenses of SGI Compiler &
Software Technology shall be in binary format only; provided
that that SGI Compiler & Software Technology specifically
identified in Exhibit F as "Source Code Licensable" may be
sublicensed by MIPS in source code format.
3.4. No Foundry Rights. MIPS understands and acknowledges that the
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licenses granted under Sections 3.2 and 3.3 are intended to cover only
MIPS Processor Components and are not intended to cover foundry
activities that MIPS may undertake on behalf of third parties.
3.5. Third Party Rights. MIPS understand that some the technology and
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materials assigned or licensed to MIPS hereunder contains third party
technology. MIPS agrees that: (i) SGI's obligations and MIPS's
licenses under this Section 3 are subject in all cases to any
restrictions, limitations or obligations contained in agreements
entered into between SGI and third parties, (ii) MIPS shall be solely
responsible for obtaining such licenses or consents, (iii) MIPS agrees
that in the event any third party licenses or consents are required,
MIPS will obtain such third party licenses, and MIPS will undertake
all efforts necessary to protect SGI's rights and meet SGI's
obligations under agreements with third parties to the extent such
rights and obligations are affected by this Agreement.
4. FUTURE TECHNOLOGY
4.1. MIPS Capture Period Patents. MIPS hereby grants to the SGI Group, a
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non-exclusive, royalty-free, fully-paid, worldwide license, including
the right to sublicense, under the MIPS Capture Period Patents to
make, have made, use, import, sell and otherwise dispose of SGI
Designed Products, and practice any method or process in the
manufacture of SGI Designed Products.
4.2. SGI Capture Period Patents. SGI hereby grants to MIPS, a non-
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exclusive, royalty-free, fully-paid, worldwide license, including the
right to sublicense, within the MIPS Field of Use, under the SGI
Capture Period Patents to make, have made, use, import, sell and
otherwise dispose of MIPS Processor Components, and
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practice any method or process in the manufacture of MIPS Processor
Components.
4.3. Improvements to SGI Tools and MIPS ISA.
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4.3.1. License. MIPS hereby grants to the SGI Group, a non-
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exclusive, royalty-free, fully-paid, worldwide license under
MIPS's Non-Patent IP Rights to any improvements or other
changes made by MIPS to the SGI Tools licensed to MIPS, the
SGI Compiler & Software Technology, or to the MIPS ISA ("MIPS
Improvements") during the Capture Period, including the right
to:
(i) make, have made, use, import, sell and otherwise
dispose of products, and practice any method or process
in the manufacture of products; and
(ii) to use, modify, distribute, reproduce, display, and
perform any copyrighted or copyrightable work.
4.3.2. Conditions. Any licenses granted pursuant to Section 4.3.1
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and any obligation to provide materials relating to MIPS
Improvements shall be subject to any third party obligations
of MIPS with respect to any such MIPS Improvements. MIPS shall
deliver all MIPS Improvements to SGI when MIPS makes such MIPS
Improvements generally available to MIPS customers and
licensees or upon SGI's reasonable written request provided
that SGI may request MIPS Improvements no more once in any six
(6) month period. MIPS shall deliver the applicable changes to
software source code and any reasonably available supporting
documentation.
4.3.3. Additional License. Upon the SGI Group's request, MIPS shall
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license to the SGI Group under commercially favorable terms,
any MIPS Improvements or other MIPS technology or designs it
makes available to its customers or third parties, not already
licensed hereunder. MIPS shall deliver all such technology
when MIPS makes such it generally available to MIPS customers
and licensees or upon SGI's reasonable written request
provided that SGI may make such request no more once in any
six (6) month period. MIPS shall deliver the applicable
changes to software source code and any reasonably available
supporting documentation.
5. DISCLAIMER
5.1. No Implications. Nothing contained in this Agreement shall be
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construed as:
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5.1.1. A representation or warranty by either of the parties to this
Agreement as to the validity, enforceability or scope of any
class or type of Intellectual Property Rights;
5.1.2. A warranty or representation that anything made, used sold or
otherwise disposed of under any assignment or license set
forth in this Agreement is or will be free from infringement
of any third party Intellectual Property Rights other than
those which are assigned or licensed hereunder;
5.1.3. Except as explicitly set forth in Section 9, an agreement to
bring or prosecute or any grant of a right to bring or
prosecute actions or suits against third parties for
infringement;
5.1.4. Requiring either party to obtain the right to license to the
other, third party technology contained in any know-how,
software or other materials licensed, assigned or provided
hereunder. The parties agree that the receiving party shall be
solely responsible for obtaining any necessary third party
licenses;
5.1.5. Except as expressly set forth herein, requiring a party to
furnish or disclose technical information, know-how,
improvements, support or other information or assistance to
the other party; or
5.1.6. Conferring by implication, estoppel or otherwise, upon either
party licensed hereunder, any license or other right under any
Intellectual Property Rights except the assignments, licenses
and rights expressly granted hereunder regardless of whether
such Intellectual Property Rights are dominant or subordinate
to the rights granted hereunder.
5.2. No Warranties. EACH PARTY HEREBY DISCLAIMS ANY EXPRESS OR IMPLIED
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WARRANTIES WITH RESPECT TO THE INTELLECTUAL PROPERTY RIGHTS OR RELATED
MATERIALS LICENSED HEREUNDER, INCLUDING WITHOUT LIMITATION THE
WARRANTIES OF MERCHANTABILITY, NONINFRINGEMENT OR FITNESS FOR A
PARTICULAR PURPOSE.
6. CONFIDENTIALITY
6.1. Obligation. MIPS and SGI each acknowledges that by reason of its
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relationship with the other party, it has and will have access to
certain information and materials that is confidential and of
substantial value to the other party ("Confidential Information"),
which value would be impaired if such information were disclosed to
third parties. Each party agrees that, except as specifically
authorized hereunder, it will not use in any way for its own account
or the account of any third party, nor disclose to any third party,
any such Confidential Information, and will take every reasonable
precaution to protect the
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confidentiality of such information which shall in no event be less
than the industry standard and shall include: entering into non-
disclosure agreements with third parties prior to disclosing any
Confidential Information that the other party grants permission to
disclose, entering into employment agreements with all employees
requiring employees to protect Confidential Information, providing to
employees access to Confidential Information on a need to know basis
only, password protect servers and files that contain Confidential
Information, restricting access to confidential information by third
parties (including contractors), storing Confidential Information in
locked files or rooms. Upon request by a party, the other party will
advise the requesting party whether or not it considers any particular
information or materials to be Confidential Information.
6.2. Transfer of Information. MIPS acknowledges that (i) all technical
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information, know-how, software, or other materials (excluding non-
technical business materials) transferred by MIPS from SGI are listed
on Exhibits to this Agreement, (ii) information in electronic format
was transferred to clean servers and only information set forth in
Exhibits to this Agreement or otherwise authorized in writing by an
SGI officer was transferred to such servers, and (iii) MIPS has no
access to the SGI Group's servers as of the Closing Date or as
mutually agreed. MIPS agrees to promptly return or destroy all copies
of any unauthorized SGI Confidential Information in its possession or
control. MIPS agrees that SGI, during the Capture Period, shall have
the right to audit MIPS's servers, files, and premises to ensure
compliance with this Section 6. In the event SGI discovers
unauthorized use of SGI Confidential Information, MIPS shall pay the
cost of the audit and shall use its best efforts to correct such
unauthorized use, including without limitation, obtaining a license to
use such information, destroying or returning such information, and
ceasing to license or distribute products or materials that contain
such information.
6.3. Exceptions. The foregoing restrictions will not apply to information
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that (i) has become publicly known through no wrongful act of the
receiving party; (ii) has been rightfully received from a third party
authorized to make such disclosure without restriction; (iii) has been
independently developed by the receiving party after the Closing Date
of this Agreement; (iv) has been approved for release by written
authorization of the disclosing party, or (v) is required by law or
regulation to be disclosed; provided, however, that the receiving has
provided written notice to the disclosing party promptly to enable
disclosing party to seek a protective order or otherwise prevent
disclosure of Confidential Information.
6.4. Term. The obligations of each party pursuant to this Section 6 with
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respect to Confidential Information shall continue in full force and
effect for a period of ten (10) years after the Effective Date of this
Agreement; provided that if the disclosing party requests an
additional ten (10) year period for maintaining the confidentiality of
any specified Confidential Information, the obligations under
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this Section 6 shall continue with respect to such Confidential
Information for an additional ten (10) years.
6.5. Injunctive Relief. Each party acknowledges that any breach of any of
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its obligations under this Section 6 may cause irreparable harm and
significant injury to the disclosing party to an extent that may be
extremely difficult to measure. Accordingly, the receiving party
agrees that the disclosing party will have, in addition to any other
rights or remedies available to it at law or in equity, the right to
seek injunctive relief to enjoin any breach of this Section 6.
7. TERM AND TERMINATION
7.1. Term. This Agreement and the rights and licenses granted hereunder
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shall become effective on the Effective Date and shall continue in
effect, unless terminated as provided below, until the latter of: (i)
expiration, revocation, invalidation or abandonment of the last Patent
licensed hereunder, or (ii) the parties cease to use the Non-Patent IP
Rights.
7.2. Termination
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7.2.1 Termination for Bankruptcy. Either party may terminate this
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Agreement effective immediately and without liability upon written
notice to the other party if any one of the following event occurs:
(a) he other party files a voluntary petition in bankruptcy or
otherwise seeks protection seeks protection under any law
for the protection of debtors;
(b) A proceeding is instituted against the other party under any
provision of any bankruptcy laws which is not dismissed
within ninety (90) days;
(c) Any adjudication that the other party is bankrupt or
insolvent;
(d) A court assumes jurisdiction of all or a substantial portion
of the assets of the other party under a reorganization law;
(e) A trustee or receiver is appointed by a court for all or a
substantial portion of the assets of the other party;
(f) The other party becomes insolvent, ceases or suspends
business;
(g) The other party makes an assignment of the majority of its
assets for the benefit of its creditor; or
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(h) The other party admits in writing its inability to pay its
debts as they become due.
7.2.2. Termination for Breach. If MIPS materially breaches any
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material term or condition of this Agreement, then upon forty-
five (45) days written notice to MIPS specifying the default
("Notice of Default"), SGI may terminate or suspend this
Agreement, without liability, unless the default reasonably
requires more than forty-five (45) days to correct and MIPS has
begun substantial corrective actions to remedy the default and
is diligently pursuing such actions, in which event, MIPS shall
have so much time as is reasonably necessary to cure such
default.
7.3. Effect of Termination. (a) In the event of termination pursuant to
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Section 7.2 above, the party terminating the Agreement pursuant to
Section 7.2 above shall retain all licenses and rights granted to it
under this Agreement for the term of the Agreement, and all licenses
granted to the other party shall terminate subject to any sublicenses
previously granted, and (b) the following sections shall survive any
termination or expiration of the Agreement: Sections 2.1, 2.4, 5, 6,
7, 8, 9 and 10.
8. ASSIGNMENT AND CHANGE OF CONTROL
8.1. Assignment. This Agreement is personal to MIPS and the Agreement or
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any right or obligation under it may not be assigned by MIPS without
the prior written consent of SGI (except for a Change of Control as
defined below). SGI may freely assign this Agreement provided that in
such case, the licenses granted to SGI under Section 2.2 above shall
be limited to the SGI Field of Use unless otherwise agreed to by MIPS
in writing. Any purported assignment, except as explicitly permitted
herein, shall be deemed a breach of this Agreement and shall be null
and void. This Agreement shall be binding upon and inure to the
benefit of the parties and their permitted successors and assigns.
8.2. Change of Control.
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8.2.1. MIPS. Except where SGI's sale of MIPS capital stock to a
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third party results in a Change of Control, in the event more
than fifty (50%) of the outstanding shares or securities
(representing the right to vote for the election of directors
or other managing authority) of MIPS becomes owned or
controlled directly or indirectly by a third party ("Change of
Control"), MIPS shall promptly give notice to SGI of such
Change of Control. Upon such Change of Control the licenses
granted to MIPS pursuant to Section 3 above shall immediately
terminate except that in the event after such Change of
Control, MIPS is kept by the acquirer as an intact and
independent business unit recognizable as the same business
unit that existed prior to the Change of Control, then: (i)
MIPS's licenses shall be restricted to the MIPS business unit
only and not the acquirer's
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other business units, and (ii) SGI's licenses under Section 4
above shall be limited to Patents obtained or filed, and
improvements developed, by MIPS only and not the acquirer's
other business units. If MIPS is not maintained as a
independent business unit as set forth above then: (i) SGI's
licenses under Section 4 above shall apply to all Patents
obtained or filed, and improvements developed, by the acquirer
or any of its business units, and (ii) MIPS license will
terminate, provided that in the event there is a pre-existing
license agreement between SGI and the acquirer, the licenses
shall continue within the scope of such preexisting licenses
subject to the payment of any royalties due SGI under such pre-
existing agreement.
8.2.2. SGI. In the event more than fifty (50%) of the outstanding
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shares or securities (representing the right to vote for the
election of directors or other managing authority) of SGI
becomes owned or controlled directly or indirectly by a third
party the licenses granted to SGI pursuant to Section 2.2 above
shall be limited to use only within the SGI Field of Use.
8.3. MIPS understands that SGI may divest some or all of its assets in the
future; and MIPS agrees to grant such new entity a non-exclusive
license similar in scope and on similar terms and conditions upon
SGI's written request.
9. INFRINGEMENT ACTIONS
9.1. Infringement Actions within SGI's Field of Use. For so long as the
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licenses granted to SGI under the MIPS Patents under Section 2.2 above
remain exclusive, MIPS agrees that SGI can bring suit, without MIPS's
consent, against any third party infringing the MIPS Patents within
the SGI Exclusive Field of Use. MIPS agrees, at SGI's expense, to
make available at reasonable times and under appropriate conditions
all relevant personnel, records, papers, information, samples,
specimens and other similar materials in its possession. MIPS agrees
to provide, at SGI's expense, all cooperation reasonably necessary or
useful to allow SGI to litigate or settle such suit, including without
limitation, becoming party to the suit.
9.2. Request to Bring Suit. In the event a Party reasonably believes that
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a third party infringes one or more of the patents licensed to it
pursuant to this Agreement, it may request that the other party
("Patent Owner") bring an infringement action against such third party
infringer. Upon receiving such request, the Patent Owner shall use
its reasonable efforts to file such claim unless the Patent Owner can
demonstrate that it is not commercially reasonable for it to do so.
The requesting party shall reimburse Patent Owner for all costs and
expenses associated with filing, litigating and settling such claim.
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10. GENERAL
10.1. All Other Technology. The parties agree that the technical
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materials and Intellectual Property Rights assigned or licensed to
MIPS are limited to those expressly provided for hereunder. All other
technology, materials and information (excluding non-technical
business materials) under SGI's control shall, as between the
parties, be owned exclusively by SGI, and MIPS shall have no rights
or interest in such technology, materials and information unless
expressly provided in the Trademark Agreement or the Separation
Agreement. MIPS shall not remove any tangible materials embodying
such Intellectual Property Rights or information from SGI's premises
other than those listed on the Exhibits attached to this Agreement.
10.2. Confidentiality of Agreement. Each party agrees that the terms and
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conditions of this Agreement shall be treated as confidential
information and that neither party will disclose the terms or
conditions to any third party without the prior written consent of
the other party, provided, however, that each party may disclose the
terms and conditions of this Agreement, to the extent necessary:
(a) as required by any court or other governmental body;
(b) as otherwise required by law;
(c) to legal counsel of the parties, accountants, and other
professional advisors;
(d) in confidence, to banks, investors and other financing sources
and their advisors;
(e) in connection with the enforcement of this Agreement or rights
under this Agreement; or
(f) in confidence, in connection with an actual or prospective merger
or acquisition or similar transaction
With respect to disclosure required by a court order, the disclosing party
shall provide prior notification of such impending disclosure to the non-
disclosing party. All reasonable efforts to preserve the confidentiality of the
terms of this Agreement shall be expended by the disclosing party in complying
with such an order, including obtaining a protective order to the extent
reasonably possible. The parties shall cooperate in preparing and releasing an
announcement or other form of publicity, if any, relating to this Agreement.
10.3. Export Controls. Each party understands and acknowledges that
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certain technology licensed or assigned hereunder is subject to
regulation by agencies of
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the U.S. government, including the U.S. Department of Commerce, which
prohibit export or diversion of certain products and technology to
certain countries. Each party warrants that it will comply in all
respects with the export restrictions applicable to any materials or
technology provided hereunder and will otherwise comply with the
Export Administration Regulations or other United States laws and
regulations in effect from time to time.
10.4. Other General Terms. The terms and conditions set forth in Sections
-------------------
7, 8.2, 8.3, 8.4, 8.5, 8.6, 8.7, 8.8, 8.9, 8.10, 8.11, 8.12, and 8.13
of the Separation Agreement are hereby incorporated by reference.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement
effective as of the date set forth above.
MIPS Technologies, Inc. Silicon Graphics, Inc.
By:____________________________ By:____________________________
Signature Signature
Name:__________________________ Name:__________________________
Print or Type Print or Type
Title:_________________________ Title:_________________________
Date:__________________________ Date:__________________________
14
EXHIBIT A
MIPS PATENTS
Certain patents currently owned by SGI that are related to the MIPS ISA and MIPS
architecture and which will be assigned to MIPS hereunder. The detailed list of
patents will be specifically agreed to by the parties on or before the Closing
Date.
00
XXXXXXX X
XXX XXXXXXXXX XXXX-XXX XXX XXX PROCESSOR PATENTS
SGI Processor Patents
---------------------
Certain patents owned by SGI that are related to the MIPS ISA and MIPS
architecture which will be licensed to MIPS hereunder. The detailed list of
patents will be specifically agreed to by the parties on or before the Closing
Date.
SGI Processor Know-How
----------------------
Certain know-how related to the MIPS ISA and MIPS architecture which will be
licensed to MIPS hereunder. The detailed list of know-how will be specifically
agreed to by the parties on or before the Closing Date.
00
XXXXXXX X
XXX XXXXX XXX XXX TOOL PATENTS
C.1 Sole SGI Tools
--------------
Certain architectural verification tools, architectural modeling tools, design
verification tools, and operating system tools owned by SGI which will be
licensed to MIPS hereunder under a sole license. The detailed list of Sole SGI
Tools will be specifically agreed to by the parties on or before the Closing
Date.
C.2 SGI Tools
---------
Certain architectural verification tools, architectural modeling tools, design
verification tools, and operating system tools owned by SGI which will be
licensed to MIPS hereunder under a non-exclusive license. The detailed list of
SGI Tools will be specifically agreed to by the parties on or before the Closing
Date.
C.3 SGI Tool Patents
----------------
Certain patents owned by SGI which relate to architectural verification tools,
architectural modeling tools, design verification tools, and operating system
tools, and which will be licensed to MIPS hereunder under a non-exclusive
license. The detailed list of SGI Tool Patents will be specifically agreed to
by the parties on or before the Closing Date.
17
EXHIBIT D
MIPS TOOLS
Certain architectural verification tools, architectural modeling tools, design
verification tools, and operating system tools currently owned by SGI which will
be assigned to MIPS hereunder. The detailed list of MIPS Tools will be
specifically agreed to by the parties on or before the Closing Date. The list
will also specifically identify those MIPS Tools that are not sublicensable, and
those MIPS Tools which may be sublicensed in source code format, by SGI under
SGI's license to the MIPS Tools.
18
EXHIBIT E
MIPS MICROPROCESSOR KNOW-HOW
Certain know-how related to the MIPS ISA and MIPS architecture currently owned
by SGI which will be assigned to MIPS hereunder. The detailed list of know-how
will be specifically agreed to by the parties on or before the Closing Date.
00
XXXXXXX X
XXX COMPILER & SOFTWARE TECHNOLOGY
AND SGI COMPILER & SOFTWARE PATENTS
SGI Compiler & Software Technology
----------------------------------
Certain compiler software and tools, and other software owned by SGI which will
be licensed to MIPS hereunder. The detailed list of SGI Compiler & Software
Technology will be specifically agreed to by the parties on or before the
Closing Date.
SGI Compiler & Software Patents
-------------------------------
Certain patents owned by SGI relating to compiler technology which will be
licensed to MIPS hereunder. The detailed list of SGI Compiler & Software
Patents will be specifically agreed to by the parties on or before the Closing
Date.
00
XXXXXXX X
XXX CAPTURE PERIOD PATENTS
Certain technology to which improvements may be made by SGI, in its sole
discretion. The detailed list of such technology will be specifically agreed to
by the parties on or before the Closing Date.
21
