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
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
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
offering.
1.4. "Intellectual Property Rights" means (i) all Patents; (ii) all
copyrights in both published works and unpublished works, all registrations and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
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
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
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.
1.9. "MIPS Patents" means the Patents listed on Exhibit A.
1.10. "MIPS Processor Components" means a component of a processor within
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.
1.12. "Non-Patent IP Rights" means Trade Secrets, Maskworks, and
Copyrights.
1.13. "Patents" means all classes or types of patents, utility models and
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
Exhibit F.
1.15. "SGI Compiler & Software Patents" means the Patents listed on
Exhibit F.
1.16. "SGI Capture Period Patents" only those patents and patent
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 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 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
Field of Use.
1.19. "SGI Field of Use" means standalone desktop computers, workstations,
servers, mainframes, and minicomputers.
1.20. "SGI Group" means SGI and its Affiliates.
1.21. "SGI Processor Know-How" means the know-how listed on Exhibit B.
1.22. "SGI Processor Patents" mean the Patents listed on Exhibit B.
1.23. "SGI Tools" means the Tools listed on Exhibit C.
1.24. "SGI Tool Patents" means the Patents listed on Exhibit C.
1.25. "Sole SGI Tools" means the Tools listed on Exhibit C.1.
1.26. "Tools" means architectural verification tools, architectural
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
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
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:
(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-
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
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
non-exclusive, royalty-free, fully-paid, worldwide license, within the MIPS
Field of 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,
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 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:
(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
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
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
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-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
practice any method or process in the manufacture of MIPS Processor Components.
4.3. Improvements to SGI Tools and MIPS ISA.
4.3.1. License. MIPS hereby grants to the SGI Group, a non-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 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
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
construed as:
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
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
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 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
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
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
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 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
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
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
7.2.1 Termination for Bankruptcy. Either party may terminate this 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
(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 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
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
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.
8.2.1. MIPS. Except where SGI's sale of MIPS capital stock to a 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 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 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
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
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.
10. GENERAL
10.1. All Other Technology. The parties agree that the technical 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
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
certain technology licensed or assigned hereunder is subject to regulation by
agencies of 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: /s/ Xxxx X. Xxxxxxxx By: /s/ Xxxxxxx X. Xxxxx
---------------------------- ----------------------------
Name: Xxxx X. Xxxxxxxx Name: Xxxxxxx X. Xxxxx
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Print or Type Print or Type
Title: Chief Executive Title: Senior Vice President-
Officer and President Corporate Operations
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Date: Date:
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EXHIBIT A
MIPS PATENTS
Certain patents currently owned by SGI that are related to the MIPS ISA and MIPS
architecture and which are assigned to MIPS hereunder.
EXHIBIT B
SGI PROCESSOR KNOW-HOW AND SGI PROCESSOR PATENTS
SGI Processor Patents
Certain patents owned by SGI that are related to the MIPS ISA and MIPS
architecture which are licensed to MIPS hereunder.
SGI Processor Know-How
Certain know-how related to the MIPS ISA and MIPS architecture which are
licensed to MIPS hereunder.
EXHIBIT C
SGI TOOLS AND SGI 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 are
licensed to MIPS hereunder under a sole license.
C.2 SGI Tools
Certain architectural verification tools, architectural modeling tools, design
verification tools, and operating system tools owned by SGI which are
licensed to MIPS hereunder under a non-exclusive license.
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 are licensed to MIPS hereunder under a non-exclusive
license.
EXHIBIT D
MIPS TOOLS
Certain architectural verification tools, architectural modeling tools,
design verification tools, and operating system tools currently owned by SGI
which are assigned to MIPS hereunder. The list also identifies 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.
EXHIBIT E
MIPS MICROPROCESSOR KNOW-HOW
Certain know-how related to the MIPS ISA and MIPS architecture currently owned
by SGI which is assigned to MIPS hereunder.
EXHIBIT F
SGI COMPILER & SOFTWARE TECHNOLOGY
AND SGI COMPILER & SOFTWARE PATENTS
SGI Compiler & Software Technology
Certain compiler software and tools, and other software owned by SGI which are
licensed to MIPS hereunder.
SGI Compiler & Software Patents
Certain patents owned by SGI relating to compiler technology which are
licensed to MIPS hereunder.
EXHIBIT G
SGI CAPTURE PERIOD PATENTS
Certain technology to which improvements may be made by SGI, in its sole
discretion.
