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Exhibit 10.41
EXECUTION COPY
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Intellectual Property Assignment and License Agreement ("Agreement") is
made and entered into this 13th day of April, 1999 (the "Closing Date") by and
between Samsung Electronics Co., Ltd., corporation organized under the laws of
the Republic of Korea ("Samsung") and Xxxxxxxxx Korea Semiconductor, Ltd., a
corporation organized under the laws of the Republic of Korea ("Fairchild").
Either Samsung or Fairchild may be referred to herein as a "Party" or together
as the "Parties," as the case may require. Unless otherwise defined herein,
capitalized terms used herein shall have the meaning ascribed to such term in
the business transfer agreement, dated as of December 20, 1998 (the "Business
Transfer Agreement"), by and between Samsung and Xxxxxxxxx Semiconductor
Corporation.
RECITALS
WHEREAS, Samsung and Xxxxxxxxx Semiconductor Corporation have entered
into the Business Transfer Agreement pursuant to which Fairchild will acquire
all of the Conveyed Assets and assume all of the Assumed Liabilities upon the
terms and conditions set forth in the Business Transfer Agreement; and
WHEREAS, pursuant to the Business Transfer Agreement, Samsung has
agreed to assign or license (as the case may be) to Fairchild certain
intellectual property used in or related to the operation of the Business; and
WHEREAS, the execution and delivery of this Agreement is required by
the Business Transfer Agreement and is a condition to closing of the
transactions contemplated thereunder.
NOW, THEREFORE, in consideration of the promises and the mutual
covenants and undertakings contained herein, the Parties hereto, intending to be
legally bound hereby, do agree as follows:
1. DEFINITIONS
Capitalized terms herein shall have the meanings given them in the
Business Transfer Agreement unless otherwise defined herein or as set forth
below.
1.1 "Confidential Information" means (i) all proprietary
information of Samsung which is not publicly known and is in the
possession of, or disclosed by Samsung to, Fairchild or a
representative of Fairchild and relating to Samsung's business,
including but not limited to Samsung's Intellectual Property and
proprietary business information and (ii) all proprietary information
of Fairchild which is not publicly known and is in the possession of,
or disclosed by Fairchild to, Samsung or a representative of Samsung
and relating to Xxxxxxxxx'x business, including but not limited to
Xxxxxxxxx'x Intellectual Property and proprietary business information.
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1.2 "Intellectual Property" means Patents, Invention
Disclosures, Maskworks (regardless of registration), Copyrights and
Know-How (but expressly excluding for purposes of this definition,
Trademarks).
1.3 "Licensed Technology" means any Samsung Licensed IP and
Third-Party Licensed IP other than Samsung Trademarks, which on the
Closing Date Samsung owns or under which Samsung has a right to grant a
License without obligation or accounting to others. Licensed Technology
does not include any Intellectual Property which Fairchild is permitted
to use for the limited use in the multimedia products described in the
Foundry Sale Agreement and does not include any Intellectual Property
related to the Third Party Foundry Products.
1.4 "Fairchild Licensed IP" means all rights to Intellectual
Property licensed by Fairchild to Samsung pursuant to Section 3 hereof
1.5 "Samsung Trademark" means any Trademarks owned or
controlled by Samsung used with or embedded on the Business Products,
or such manuals, boxes, packages or other printed materials associated
therewith.
1.6 "Third Party Foundry Product" means any products
manufactured by Samsung at Bucheon Facility prior to the Closing Date
for a customer not Affiliated with Samsung based on such customer's
proprietary design, mask set, process, specification or other technical
data under a foundry services agreement set forth in Schedule 1.6
hereto.
2. LICENSE GRANT TO FAIRCHILD
2.1 LICENSED TECHNOLOGY
(a) As of the Closing Date and subject to the terms and
conditions of this Agreement, Samsung hereby grants
to Fairchild a perpetual, worldwide, paid-up,
royalty-free, non-exclusive, non-transferable,
personal license under the Licensed Technology to use
in connection with the Business or to design,
develop, make, have made, use, offer for sale,
import, package, sell or modify any Business Product
or Derivative Product. Fairchild shall have no right
to sublicense the Licensed Technology.
(b) The license granted herein this Section 2.1 under any
Licensed Technology which is not owned by Samsung
shall be limited for the life of Samsung's existing
license relating to each such Licensed Technology.
(c) If during the two year period following the Closing,
Samsung becomes aware of or Fairchild brings to the
attention of Samsung, any Licensed Technology not
disclosed to Fairchild under the Business Transfer
Agreement as of the Closing, then such Licensed
Technology shall be
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licensed to Fairchild pursuant to Section 3.5(h) of
the Business Transfer Agreement.
2.2 SOFTWARE
(a) As of the Closing Date and subject to the terms and
conditions of this Agreement, Samsung hereby grants
to Fairchild a worldwide, paid-up, royalty-free,
non-exclusive, non-transferable personal license to
use home-grown software exclusively designed by
Samsung ("Home-Grown Software") for which Samsung has
full right to sublicense without obtaining the
consent of, or paying consideration to any third
party for any part of such Home-Grown Software, to
use in connection with the Business or to design,
develop, make, have made, use, offer for sale,
import, package, sell or modify any Business Product
or Derivative Product. Fairchild shall have no right
to sublicense such Home-Grown Software.
(b) As of the Closing Date and subject to the terms and
conditions of this Agreement, Samsung hereby grants
to Fairchild a worldwide, paid-up, royalty-free,
non-exclusive, non-transferable personal license to
use the SAP R/3 software, to use in connection with
the Business or to design, develop, make, have made,
use, offer for sale, import, package, sell or modify
any Business Product or Derivative Product for the
life of Samsung's existing license relating to SAP
R/3 software. Fairchild shall have no right to
sublicense SAP R/3 software.
(c) As of the Closing Date and subject to the terms and
conditions of this Agreement, Samsung hereby agrees,
at its sole cost and expense and bearing the costs of
all transfer fees, to transfer to Fairchild, software
licenses relating to commercial off-the-shelf
software which is used by Samsung in connection with
the Business pursuant to company wide license
agreements; provided, however, that the on-going,
costs and expenses related to such software accrued
after the Closing Date will be borne solely by
Fairchild. Further, Samsung shall use its reasonable
Efforts to provide cost-free transfers to Fairchild
of other software licenses used in connection with
the Business.
2.3 LIMITATION
Notwithstanding any provisions under this Section 2,
the Licensed Technology will be permitted to be used
so long as the use does not compete with Samsung
directly or indirectly.
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3. LICENSE GRANT TO SAMSUNG
As of the Closing Date and subject to the terms and conditions of this
Agreement, Fairchild hereby grants to Samsung a perpetual, worldwide,
paid-up, royalty-free, nonexclusive, non-transferable, personal license
under the Assigned Technology to use and exploit any Assigned
Technology, and to retain copies of any tangible items and related
technical information of or concerning such Assigned Technology, to the
extent any such rights, items and/or information are necessary for (i)
the fulfillment of Samsung's contractual obligations to any third
parties pursuant to the existing agreements or arrangements made prior
to the Closing, (ii) the prosecution, defense, and/or settlement of any
claims or actions arising in connection with any agreements or the
conduct, activities, products or services of businesses prior to the
Closing Date; provided that, in no event, may Samsung enter into any
settlement or take any action which limits or otherwise compromises the
right, title and interests of Fairchild or any transferee or assignee
of the Conveyed Assets or rights of Fairchild or any assignee of
Fairchild, under any licenses granted by Samsung to Fairchild, or (iii)
the operation of Samsung's business activities other than activities of
the Business. Notwithstanding the foregoing, nothing in this Section 4
shall be interpreted to allow Samsung to directly or indirectly,
compete with the Business as set forth in the covenant not to compete
in Section 5.13(a) of the Business Transfer Agreement.
4. COVENANT NOT TO XXX
(a) Samsung agrees and covenants to the extent it has the right to
do so, that neither Samsung nor its Affiliates shall assert
against Fairchild, any right of Samsung or its Affiliates in
Licensed Technology with respect to the manufacture, use or
sale of Business Products or Derivative Products by Fairchild.
(b) Fairchild agrees and covenants to the extent it has the right
to do so, that neither Fairchild nor its Affiliates shall
assert against Samsung, any right of Fairchild or its
Affiliates in any Fairchild Licensed IP with respect to the
use or exploitation of such Fairchild Licensed IP by Samsung
contemplated by Section 4 hereof.
5. NO IMPLIED LICENSES
Except for the licenses expressly granted in this Agreement, neither
Party grants to the other Party by implication, estoppel or otherwise
any license or other right to any of its Intellectual Property. In
addition, neither Party grants any license, release or other right
expressly, by implication, by estoppel or otherwise to any third party.
6. CONFIDENTIALITY
Each Party shall protect the other's Confidential Information from
unauthorized dissemination and use with the same degree of care that
such party uses to protect its own
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like information. Neither Party will use the other's Confidential
Information except as permitted by the licenses hereunder or for
purposes other than those necessary to directly further the purposes of
this Agreement. Except as permitted by the licenses hereunder or as
required by law or order of any governmental authority (provided that
such disclosure will be done under reasonable steps to protect
confidentiality, such as a protective order), neither Party will
disclose to any third parties the other's Confidential Information
without the prior written consent of the-other Party. Except as
expressly provided in this Agreement, no ownership or license rights is
granted in any Confidential Information. The Parties' obligations of
confidentiality under this Agreement shall not be construed to limit
either Party's right to independently develop or acquire products
without use of the other Party's Confidential Information. The
confidentiality obligations of the Parties under this Agreement shall
terminate with respect to any specific Confidential Information five
(5) years from the date of receipt thereof.
7. REPRESENTATIONS & WARRANTIES; DISCLAIMERS; INDEMNITY
7.1 REPRESENTATIONS, WARRANTIES & INDEMNITY
(a) Samsung hereby represents and warrants, except as
disclosed in Schedule 3.5 to the Business Transfer
Agreement, that (i) it has the right to make the
license grants provided herein and otherwise to
perform its obligations under this Agreement, and
that such license grants do not violate or conflict
with any agreement to which Samsung is a party or by
which it is bound and (ii) this Agreement has been
duly executed and delivered by Samsung and, assuming
the due execution hereof by Fairchild, this Agreement
constitutes the legal, valid and binding obligation
of Samsung, enforceable in accordance with its terms.
With respect to the licenses to Licensed Technology
granted to Fairchild under this Agreement, Samsung's
representations, warranties and indemnification shall
be construed and governed by and subject to the
provisions of the Business Transfer Agreement,
including but not limited to Sections 3.5, 5.11 and
5.23 of the Business Transfer Agreement.
(b) Fairchild represents and warrants that (i) it has the
full power and authority to enter into this Agreement
and (ii) this Agreement has been duly executed and
delivered by Fairchild and, assuming the due
execution hereof by Samsung, this Agreement
constitutes the legal, valid and binding obligation
of Fairchild, enforceable in accordance with its
terms.
7.2 DISCLAIMERS
EXCEPT AS EXPRESSLY PROVIDED IN THE BUSINESS TRANSFER
AGREEMENT AND IN SECTION 7.1 HEREOF, THE LICENSED TECHNOLOGY
IS PROVIDED "AS IS" WITHOUT ANY REPRESENTATION OR WARRANTY,
AND SAMSUNG DISCLAIMS ANY
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AND ALL FURTHER REPRESENTATIONS AND WARRANTIES, WHETHER
EXPRESS OR IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND
NON-INFRINGEMENT, WITH RESPECT TO THE SUBJECT MATTER OF THIS
AGREEMENT.
8. LIMITATION OF LIABILITIES
(a) Samsung's liability under this Agreement is limited to and
subject to Sections 5. 11 and 5.23 of the Business Transfer
Agreement.
(b) NEITHER PARTY SHALL BE LIABLE FOR ANY INDIRECT, INCIDENTAL,
CONSEQUENTIAL, PUNITIVE OR SPECIAL DAMAGES, EVEN IF SUCH PARTY
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
9. GENERAL
9.1 EFFECTIVE DATE
The Parties' obligations under this Agreement are conditioned
upon the Closing, the occurrence of which is subject to
various conditions set forth in the Business Transfer
Agreement. This Agreement shall become operative if and when
the Closing occurs and shall be null and void if this Closing
does not occur for any reason.
9.2 RELATIONSHIP OF THE PARTIES
This Agreement does not create a fiduciary or agency
relationship between Samsung and Fairchild, each of which
shall be and at all times remain independent companies for all
purposes hereunder. Nothing in this Agreement is intended to
make either Party a general or special agent, joint venturer,
partner or employee of the other for any purpose.
9.3 COUNTERPARTS
This Agreement may be executed in two or more counterparts,
all of which shall be considered one and the same agreement,
and shall become effective when one or more counterparts have
been signed by each of the Parties and delivered to the other
party.
9.4 GOVERNING LAW; CONSENT TO JURISDICTION
This Agreement shall be governed by and construed in
accordance with the laws of the Republic of Korea without
reference to the choice of law principles thereof The Samsung
and Fairchild consent to and hereby submit to the
non-exclusive
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jurisdiction of the Seoul District Court located in the
Republic of Korea in connection with any action, suit or
proceeding arising out of or relating to this Agreement, and
each of the Parties hereto irrevocably waives, to the fullest
extent permitted by law, any objection which it may now or
hereafter have to the laying of the venue of any such
proceeding brought in such a court and any claim that any such
proceeding brought in such a court has been brought in an
inconvenient forum.
9.5 ENTIRE AGREEMENT
This Agreement (including agreements incorporated herein),
Business Transfer Agreement, the Confidentiality Agreement and
the Schedules and Exhibits hereto contain the entire agreement
between the Parties with respect to the subject matter hereof
and there are no agreements, understandings, representations
or warranties between the Parties other than those set forth
or referred to herein.
9.6 NO THIRD-PARTY BENEFICIARIES
Nothing in this Agreement, express or implied, is intended to
or shall confer on any Person other than the Parties hereto
and their respective successors or assigns any rights
(including third-party beneficiary rights), remedies,
obligations or liabilities under or by reason of this
Agreement. This Agreement shall not provide third parties with
any remedy, claim, liability, reimbursement, cause of action
or other right in excess of those existing without reference
to the terms of this Agreement.
9.7 INTERPRETATION; ABSENCE OF PRESUMPTION
(a) For the purposes hereof, (i) words in the singular
shall be held to include the plural and vice versa
and words of one gender shall be held to include the
other gender as the context requires, (ii) the terms
"hereof," "herein," and "herewith" and words of
similar import shall, unless otherwise stated, be
construed to refer to this Agreement as a whole
(including all of the Schedules hereto) and not to
any particular provision of this Agreement, and
Article, Section, paragraph and Schedule references
are to the Articles, Sections, paragraphs and
Schedules to this Agreement unless otherwise
specified, (iii) the word "including" and words of
similar import when used in this Agreement means
"including, without limitation," unless the context
otherwise requires or unless otherwise specified,
(iv) the word "or" shall not be exclusive, (v)
provisions shall apply, when appropriate, to
successive events and transactions, and (vi) all
references to any period of days shall be deemed to
be to the relevant number of calendar days.
(b) This Agreement shall be construed without regard to
any presumption or rule requiring construction or
interpretation against the Party drafting or causing
any instrument to be drafted.
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9.8 FORCE MAJEURE
A Party shall not be liable for a failure or delay in the
performance of any of its obligations under this Agreement
where such failure or delay is the result of conditions beyond
the control of said Party, such as fire, flood, or other
natural disaster, act of God, war, embargo, riot, labor
dispute, or the intervention of any government authority,
providing that the Party failing in or delaying its
performance immediately notifies the other Party of its
inability to perform and states the reason for such inability.
9.9 PUBLICITY
Neither Party shall, without the approval of the other Party,
make any press release or other public announcement concerning
the terms of the transactions contemplated by this Agreement,
except as and to the extent that any such Party shall be so
obligated by law or pursuant to a lawful request of a
government agency.
9.10 FURTHER ASSURANCES
Each Party shall cooperate and take such action as may be
reasonably requested by another Party in order to carry out
the provisions and purposes of this Agreement and the
transactions contemplated hereby.
9.11 EXPORT CONTROL
The Parties shall comply with any and all export regulations
and rules now in effect or as may be issued from time to time
by the Office of Export Administration of the United States
Department of Commerce, Korean governmental authority, or any
other governmental authority which has jurisdiction relating
to the export of technology.
9.12 NOTICES
All notices hereunder shall be sufficiently given for all
purposes hereunder if in writing and delivered personally,
sent by documented overnight delivery service or, to the
extent receipt is confirmed, telecopy, telex or other
electronic transmission service to the appropriate address or
number as set forth below.
Notices to Samsung shall be addressed to:
Samsung Electronics Co., Ltd.
Samsung Main Xxxxxxxx
000, 0-Xx, Xxxxxxxx-Xx, Xxxxx-Xx
Xxxxx, Xxxxx
Attention: Director, Legal Department
Telecopy No.: 000-000-0000
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With a copy to:
Xxx, Xxx & Xxx
Hankook Tire Xxxx. 000-00
Xxxxxx-Xxxx, Xxxxxxx-Xx
Xxxxx 000-000, Xxxxx
Attention: Kap-You Xxx
Telecopy No.: 000-0000-0000
or at such other address and to the attention of such other
Person as Samsung may designate by written notice to
Fairchild.
Notices to Fairchild shall be addressed to:
Xxxxxxxxx Korea Semiconductor, Ltd.
00-0, Xxxxxx-Xxxx, Xxxxx-Xx.
Xxxxxxx, Xxxxxxx-Xx
Xxxxx
Attention: President
Telecopy No.: 0000-000-0000
Xxxxxxxxx Semiconductor Corporation
000 Xxxxxxx Xxxxxx, X.X. 00-00
Xxxxx Xxxxxxxx, Xxxxx 00000
Attention: Xxxxxx X. Xxxxx, Esq., Executive Vice President and
General Counsel
Telecopy No. 0-000-000-0000
with a copy to:
Xxx & Xxxxx
000 Xxxxx-Xxxx, Xxxxxxx-Xx
Xxxxx 000-000, Xxxxx
Attention: Y.J. Ro
Telecopy No.: 000-000-0000
or at such other address and to the attention of such other
Person as Fairchild may designate by written notice to
Samsung.
9.13 ASSIGNMENT
This Agreement shall be binding upon and inure to the benefit
of the Parties hereto and their respective successors and
assigns; provided, however, that no party hereto will assign
its rights or delegate its obligations under this Agreement
without the express prior written consent of each other Party
hereto, except that (i) Fairchild may assign its rights
hereunder as collateral security to any bona fide
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financial institution engaged in acquisition financing in the
ordinary course providing financing to consummate the
transactions contemplated hereby or any bona fide financial
institution engaged in acquisition financing in the ordinary
course through which such financing is refunded, replaced or
refinanced and any of the foregoing financial institutions may
assign such rights in connection with a sale of Fairchild in
the form then being conducted by Fairchild substantially as an
entirety, and (ii) Samsung and Fairchild each may assign its
rights and obligations under this Agreement to any Entity that
succeeds to substantially all of its assets and liabilities.
9.14 HEADINGS; DEFINITIONS
The section and article headings contained in this Agreement
are inserted for convenience of reference only and will not
affect the meaning or interpretation of this Agreement. All
references to Sections or Articles contained herein mean
Sections or Articles of this Agreement unless otherwise
stated.
9.15 AMENDMENT
This Agreement may not be amended, modified, superseded,
canceled, renewed or extended except by a written instrument
signed by the Party to be charged therewith.
9.16 WAIVER; EFFECT OF WAIVER
No provision of this Agreement may be waived except by a
written instrument signed by the party waiving compliance. No
waiver by any party hereto of any of the requirements hereof
or of any of such Party's rights hereunder shall release the
other Parties from full performance of their remaining
obligations stated herein. No failure to exercise or delay in
exercising on the part of any Party hereto any right, power or
privilege of such Party shall operate as a waiver thereof, nor
shall any single or partial exercise of any right, power or
privilege preclude any other or further exercise thereof or
the exercise of any other right, power or privilege by such
Party.
9.17 SPECIFIC PERFORMANCE
The Parties hereto each acknowledge that, in view of the
uniqueness of the subject matter hereof, the Parties hereto
would not have an adequate remedy at law for money damages in
the event that this Agreement were not performed in accordance
with its terms, and therefore agree that the parties hereto
shall be entitled to specific enforcement of the terms hereof
in addition to any other remedy to which the parties hereto
may be entitled at law or in equity.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed on their behalf as of the date first written above.
SAMSUNG ELECTRONICS CO., LTD.
By: /s/ Xxx Xxx
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Name:
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Title:
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XXXXXXXXX KOREA SEMICONDUCTOR, LTD.
BY: /s/ Xxxxxx X. Xxxxxx
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Name: XXXXXX X. XXXXXX
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Title: EXEC. V.P.
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SCHEDULE 1.6 TO INTELLECTUAL PROPERTY AGREEMENT
THIRD PARTY FOUNDRY SERVICES AGREEMENT
Customer: IXYS Corporation (San Xxxx, U.S.A.)
Term: Agreement executed on June 21st, 1995, as amended on March 28th,
1996 and further on March 13th, 1998.
This Agreement as amended is effective until December 31st, 2002.
The term of this agreement may be further extended by the period
to be agreed between Samsung and IXYS. Xxxxxxxxx has agreed to
carve-out this agreement as further extended by Samsung and IXYS
from the non-competition set forth under the Business Transfer
Agreement.
Description: Samsung is required to fabricate and supply MOSFET and IGBT in
wafer form based on certain IXYS manufacturing packages including
IXYS's proprietary mask sets and processes which are different
from those of Samsung for general Business Products.
The Sales of IXYS foundry products are made on the account of
Samsung's ASIC business unit (which is not a part of the power
device business unit to be transferred under the Purchase
Agreement), but some portion of IXYS foundry products is still
fabricated at the Facilities although major portion is fabricated
at Kiheung Plant.
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