EXHIBIT 2.15
INTELLECTUAL PROPERTY AGREEMENT
THIS INTELLECTUAL PROPERTY AGREEMENT (this "Agreement") is made as of the
13th day of August, 1999, among Xxxxxx Corporation ("Xxxxxx"), a Delaware
corporation, Xxxxxx Semiconductor Patents, Inc., a Delaware corporation
("HSPI"), and INTERSIL holding corporation, a Delaware corporation ("Parent").
WHEREAS, Xxxxxx, intersil corporation, a Delaware corporation ("Buyer"),
and Parent have entered into an Amended and Restated Master Transaction
Agreement dated as of June 2, 1999 (the "Master Agreement"), which provides for
the sale by Sellers (as defined in Exhibit A to the Master Agreement) and the
purchase by Buyer of certain of the assets used in the operations of the
Business (as defined in Exhibit A to the Master Agreement);
WHEREAS, certain of such assets constituting, and rights relating to,
intellectual property constitute an important component of the Business; and
WHEREAS, in connection with the transactions contemplated by the Master
Agreement, Buyer desires to acquire, or to acquire the right to use, certain of
the intellectual property, licenses, software, and technology of the Business,
and Xxxxxx has agreed to transfer or otherwise make available to Buyer such
intellectual property, licenses, software, and technology;
NOW, THEREFORE, in consideration of the mutual promises contained herein
and in the Master Agreement, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereto
agree as follows:
1. Definitions and Rules of Construction. Exhibit A to the Master Agreement
is incorporated herein by reference.
2. Representations and Warranties of Xxxxxx. Xxxxxx represents and warrants
to Buyer as hereinafter set forth:
(a) To the Sellers' IP Knowledge, with the exception of Transition
Services Software and the Software and Technology listed in Schedule 2(a),
all of the Software and Technology, including that covered by Software
Licenses, material to the operation of the Business by the Business
Entities is made available to Buyer through the provisions of the
Transaction Documents.
(b) To the Sellers' IP Knowledge, Schedule 2(b) lists all registered
Copyrights and applications therefor which are specific to the Business.
(c) To the Sellers' IP Knowledge, Schedule 2(c) lists all Maskwork
Rights for current and proposed Products.
(d) To the Sellers' IP Knowledge, Schedule 2(d) lists all threatened
or pending third-party suits or notices thereof, all written or oral claims
or notices to which the Business Entities, or any one or more of them, is a
party or recipient, or potential suits or claim of which Sellers are aware
and which (i) relate to License Agreements or Software Licenses, or (ii)
involve any claim by a third party that the manufacture, sale or use of any
product or process in connection with the Business infringes any copyright,
maskwork, or patent of a third party or involves the misappropriation of
any software, technology or trade secret of a third party.
(e) To the Sellers' IP Knowledge, except as set forth on Schedule
2(e), the Business Entities have not given any indemnification for
infringement of Intellectual Property as to any Products, equipment,
materials or supplies designed, manufactured, produced, used or sold by the
Business, except for indemnifications (i) granted in the ordinary course of
business in connection with the sale of Products and (ii) in the License
Agreements.
3. Buyer's Rights in Intangible Property.
(a) Sellers hereby assign to the Buyer their entire ownership, right,
title and interest in and to Intangible Property Rights Type 1. Upon
written request of Buyer, Sellers will, at Sellers' expense, use
commercially reasonable efforts to confirm and, to the extent appropriate,
to record the aforesaid assignment of such Intangible Property Rights
Type 1.
(b) Sellers hereby grant to Buyer a royalty-free, non-exclusive,
worldwide license to make, have made, use and sell Products under the
Intangible Property Rights Type 2, including the right, subject to any and
all pre-existing licenses granted by Sellers, to sublicense Software Type 2
and Technology Type 2 in connection with either (i) the sale of any part of
the Business by Buyer, or (ii) in connection with (x) technology licensing
activities pertaining to Products by Buyer with third parties, (y) custom
designing Products using the Business' CAD tools, or (z) supporting
customer foundry needs. Such transfer and sublicensing of Software Type 2
and Technology Type 2 is subject to the obligations of confidentiality set
forth in Section 12.
4. Transfer of Tangible Software and Technology.
(a) Sellers acknowledge and confirm that all of their ownership,
right, title and interest in and to Software Type 1 and Technology Type 1
is vested in Buyer. Certain of such Software Type 1 and Technology Type 1
may not presently reside in the Transferred Facilities. Upon the written
request of Buyer, and to the extent practical, Sellers will use
commercially reasonable efforts to deliver, or cause to be delivered, all
such non-resident Software Type 1 and Technology Type 1 to the Buyer or to
the appropriate location in the Transferred Facilities.
(b) Sellers have granted Buyer in Section 3(b) a royalty-free,
non-exclusive, worldwide license, without the right to sublicense except as
provided in Section 3(b), in and to Software Type 2 and Technology Type 2.
Certain of such Software Type 2 and Technology Type 2 may not presently
reside in the Transferred Facilities. Upon the written request of Buyer,
and to the extent practical, Sellers will use commercially reasonable
efforts to deliver, or cause to be delivered, copies, in executable form
(object code only) of such non-resident Software Type 2 and documentation
(to the extent available in written form on the Closing Date) describing
Technology Type 2 (such delivery to be at Buyer's expense).
(c) Upon written request of Buyer within 90 days after the Closing
Date, Sellers will provide Buyer a copy of the source code for any Software
Type 2 in Sellers' possession and of which Buyer did not have a copy of
prior to the Closing Date. Buyer may make copies of such source code for
its own use and may make modifications or improvements, including
derivative Products, of any Software Type 2 for its own purposes.
(d) If Sellers have not retained copies of any object or source code
for, and documentation of, Software Type 2 or documentation of Technology
Type 2 following the Closing Date, Buyer will use commercially reasonable
efforts to deliver, or cause to be delivered, copies of all such
non-retained object or source code for, and documentation of, Software Type
2 and documentation of Technology Type 2 to Sellers or their designated
Subsidiaries upon Sellers' request, such delivery to be made at Sellers'
expense. With respect to all such copies, in whatever form, now or
hereafter held by or delivered to Sellers, it is agreed that the entire
ownership, right, title and interest in and to such copies is vested in
Sellers.
5. Licensed Software.
(a) With respect to Licensed Software Type 1, Sellers hereby agree, to
the extent that they are able to do so, to use commercially reasonable
efforts to take or to cause others to take, at Buyer's reasonable expense,
all actions necessary to assign, or, if not assignable to sublicense to the
extent they are able to do so, to Buyer the rights to use such Licensed
Software.
(b) With respect to Licensed Software Type 2, Sellers hereby agree, to
the extent they are able to do so, to use commercially reasonable efforts
to take, or cause others to take, at Buyer's reasonable expense, all
actions necessary to sublicense, to the extent they are able to do so, to
Buyer the rights to use such Licensed Software Type 2 to the extent such
Licensed Software Type 2 was used by the Business immediately prior to the
Closing Date.
(c) To the extent that Licensed Software assigned or sublicensed to
Buyer in Section 5(a) or Section 5(b) does not reside in the Transferred
Facilities as of the Closing Date, and to the extent that Sellers have a
right to do so, Sellers will use commercially reasonable efforts to deliver
or cause to be delivered such non-resident Licensed Software, to the extent
assigned or sublicensed, to Buyer promptly at the written request of Buyer
following the Closing Date.
6. Continuing Rights of Sellers.
(a) Subject to Paragraph (b) below, Sellers hereby reserve, and Buyer
hereby grants, to Sellers a royalty-free, worldwide, nonexclusive license
under Intangible Property Rights Type 1, to incorporate the Products and
other products manufactured by Buyer and sold to Sellers into other
products manufactured by Sellers to be sold to third parties under such
Intangible Property Rights Type 1.
(b) For the first five (5) years following the Closing Date, Sellers
shall practice the licenses reserved and granted in this Section 6 and its
rights with respect to Intangible Property Type 2, Software Type 2 and
Technology Type 2 as to which Buyer is granted a non-exclusive license in
Section 3(b) only in manners consistent with the provisions of Section 7.2
of the Master Agreement. After such five (5) year period, such license to,
and rights of, Sellers shall be unrestricted.
7. Post-Closing Recording of Transfers. Upon the written request of Buyer,
Sellers will deliver to Buyer assignments, in form and substance reasonably
satisfactory to Buyer and its counsel, of the Copyright and Maskwork Rights
Registrations and applications therefor listed on Schedules 2(b) and (c) to
allow Buyer to record the transfer of the title to such Copyrights and Maskwork
Rights Registrations and applications therefor (i) in the United States in the
Library of Congress, and (ii) in appropriate offices of foreign jurisdictions.
8. Additional Transfers to Buyer. If it is determined after the Closing
Date that any of the Software, Software Licenses, Technology and Intangible
Property Rights intended to be transferred pursuant to this Agreement was not
transferred, as the sole remedy for such failure to transfer, Sellers agree to
make such transfer, to the extent Sellers had the right to do so as of the
Closing Date, upon discovery of such non-transfer by Sellers or upon the written
request of Buyer.
9. Reassignment or Return to Sellers. Buyer agrees that, upon Sellers'
reasonable request, and at Sellers' reasonable expense, Buyer and its
Subsidiaries shall reassign or return, as the case may be, to Sellers any
Software, Technology, Software Licenses or Intangible Property Rights that may
reside in the Transferred Facilities as of the Closing Date but are not,
pursuant to the Transaction Agreements, transferred, assigned, licensed or
sublicensed to Buyer, or that may have been inadvertently transferred or
delivered by Sellers to Buyer but should not have been so transferred or
delivered.
10. Assistance With Respect to Technology. Upon written request, Sellers or
Buyer, as the case may be, will provide reasonable engineering or technical
support not existing within the Business, at the cost of the requesting party.
Such costs shall be determined on a basis consistent with the determination of
costs under the Transition Services Agreement.
11. Effect of Agreement. No license rights under Patents, Trademarks or
trade names are granted or implied by this Agreement.
12. Confidentiality.
(a) Following the Closing, as to Technology Type 1 and Software Type 1
transferred and assigned hereunder, Sellers, and as to Technology Type 2
and Software Type 2, Buyer, shall (i) maintain the confidentiality of, and
(ii) not divulge, to any Person, all confidential or proprietary
information, except with the prior written consent of the other party or to
the extent that such information is required to be divulged by legal
process or as it may have otherwise become public information without
breach of this Agreement; provided, however, that Buyer, Sellers and their
Subsidiaries shall not be subject to the obligation of confidentiality for
information that (x) otherwise becomes lawfully available after the Closing
Date on a non-confidential basis from a third party who is not under an
obligation of confidentiality to the other party, (y) is or becomes
generally available to the public without breach of this Agreement, or (z)
is disclosed by a party having such obligation more than ten (10) years
after Closing.
(b) Each of the parties, in carrying out its obligations of
confidentiality set forth in this Section 12, shall follow those
procedures, and observe that standard of care, that such party follows and
observes with respect to its own confidential information and proprietary
data that is not the subject matter of this Agreement but which is of
similar importance. However, any inadvertent disclosure, despite the
exercise of such a standard of care, shall not constitute a breach of this
Section 12.
13. Survival. The representations and warranties of Sellers in this
Agreement, including the Schedules hereto, shall survive until the fifth
anniversary of the Closing Date.
14. Indemnification.
(a) Xxxxxx shall indemnify, defend and hold harmless Buyer Indemnitees
against Losses due to, based upon, arising out of or relating to the
following matters:
(i) Claims of infringement, misappropriation or other breaches of
Patents, Intellectual Property or Intangible Property Rights owned by
third parties ("Infringement Claims") due to, based upon, arising out
of or related to the Business prior to the Closing Date that, pursuant
to Section 2(d) of the Patent Assignment and Services Agreement,
Section 2(d) of the Intellectual Property Agreement or other related
provisions of the IP Transfer Agreements, either (x) are listed on the
schedules to the IP Agreements or, (y) under the terms of the IP
Agreements, should have been listed on the schedules to the IP
Agreements and were not so listed;
(ii) Infringement Claims that third parties would not have been
entitled to assert against Buyer Indemnitees had one or more of the
License Agreements entered into by Business Entities, including, but
not limited to, those listed on Schedules 4-8 to the License
Assignment Agreement been assigned to Buyer on the Closing Date,
subject to the following limitations:
(w) Such indemnification, defense and hold harmless under Section 14
(a)(ii) shall apply only to (A) Infringement Claims asserted
within 36 months after the Closing Date and (B) to the extent
such Infringement Claims are based on Products in existence on
the Closing Date, or Products modified subsequent to the Closing
Date, provided that such modification does not give rise to the
infringement, and provided further that, with respect to any
modified Product, Buyer shall provide sufficient information to
Xxxxxx, including confidential and proprietary information
subject to a reasonable confidentiality undertaking by Xxxxxx, to
establish that such modification did not give rise to any such
infringement;
(x) Buyer and Parent shall make available Intellectual Property, in
existence on the Closing Date (plus any Intellectual Property
arising from Invention Disclosures transferred to Buyer or
Parent, as the case may be, on the Closing Date) as a defense to,
for assertion as counterclaims against, and in connection with
any settlement of, such Infringement Claim without cost to
Xxxxxx. Any such settlement shall be for the shorter of (i) the
remaining life of any Intellectual Property that is asserted
against Buyer Indemnitees with particularity, identifying claim
elements against the accused Product, or (ii) the length of the
License Agreement (including surviving rights) entered into by a
Business Entity prior to the Closing Date that licensed such
Intellectual Property to such Business Entity;
(y) Xxxxxx shall not be required to indemnify Buyer Indemnitees with
respect to any Infringement Claim referred to in this Section
14(a)(ii) unless the aggregate amount of Losses related to such
Infringement Claims against Buyer Indemnitees has exceeded
$1,000,000, and then Buyer Indemnitees shall be entitled to
recover Losses on such claim in excess of such amount, provided,
however, that Xxxxxx' aggregate maximum liability to Buyer
Indemnitees under this Section 14(a)(ii) shall not exceed
$16,500,000, with Xxxxxx being obligated to indemnify Buyer
Indemnitees against all Losses in the aggregate covered by this
Section 14(a)(ii) between $1,000,000 and $10,000,000, and 50% of
such Losses in excess of $10,000,000 until such Losses exceed
$25,000,000. Any amounts paid under this Section 14(a)(ii) shall
not reduce Xxxxxx' liability under Article 13 of the Master
Agreement referred to in Section 13.2(b) thereof.
(z) Buyer and Parent shall use their Best Efforts to conduct the
Business following the Closing Date in a fashion that will not
encourage the assertion of claims giving rise to indemnity under
this Section 14(a)(ii).
(iii) Infringement Claims due to, based upon, arising out of or
relating to the Business prior to the Closing Date other than those of
Section 14(a)(i) and (ii), subject to the following limitations:
(w) Such indemnification, defense and hold harmless shall be limited
to Xxxxxx paying Buyer Indemnitees for the attorneys' fees
incurred in defending such Indemnification Claim asserted within
36 months after such closing Date as follows: the first $250,000
in the aggregate shall be deducted and Xxxxxx shall thereafter
pay one-half of the legal fees incurred by Business Indemnitees,
such payment not to exceed in the aggregate $2,500,000.
(b) Should Intel Corporation, or anyone claiming under, by or through
Intel Corporation, assert an Infringement Claim with respect to the subject
matter of the X86 agreements dated 1981 and 1987 between Xxxxxx Corporation
and Intel Corporation against Buyer Indemnitees for activities subsequent
to the Closing Date and for a period of 36 months thereafter, Xxxxxx shall
pay the first $3 million of payments including Loss made to such claimant
in respect of such Infringement Claim.
(c) The indemnification provided for in this Section 14 shall not be
subject to the Threshold referred to in Section 13.2(b) of the Master
Agreement.
(d) The parties shall consider, in good faith, settlement of
Infringement Claims within the scope of this Section 14 by the use of other
than monetary consideration, including granting licenses to the third party
under their patents other than the patents assigned to Buyer and Parent
under the IP Agreements. If patents of any party other than such assigned
patents are involved in a settlement, the party contributing such other
patents shall receive reasonable compensation, to be negotiated, from the
other party for the benefit it derives from the settlement, taking into
account the indemnification obligations of Xxxxxx. The parties shall use
their Best Efforts to obtain a license for Buyer Indemnitees for the life
of the Intellectual Property asserted in the Infringement Claim.
(e) Buyer Indemnitees agree that upon their receipt of an Infringement
Claim giving rise to a claim of indemnity under this Section 14, including,
without limitation, receipt by Buyer Indemnitees of any notification,
communication, demand, assertion, claim action, judicial proceedings,
administrative proceedings or other proceeding by any third party, Buyer
Indemnitees will give written notice thereof to Xxxxxx. Except as expressly
provided herein, the indemnification provided for in this Section 14 shall
be subject to the procedures and provisions of Sections 13.4, 13.6 and 13.7
of the Master Agreement.
15. Agreement Conventions. Exhibit B to the Master Agreement is
incorporated herein by reference.
IN WITNESS WHEREOF, the parties each have caused this Agreement to be duly
executed by a duly authorized officer and delivered in its name and on its
behalf, all as of the day and year first above written.
XXXXXX CORPORATION
By: /s/ Xxxxxx X. Xxxxxxx
-----------------------
Name: Xxxxxx X. Xxxxxxx
Title: Vice President
XXXXXX SEMICONDUCTOR PATENTS, INC.
By: /s/ Xxxxxx X. Xxxxxxx
-----------------------
Name: Xxxxxx X. Xxxxxxx
Title: Vice President
INTERSIL HOLDING CORPORATION
By: /s/ Xxxxxxx X. Xxxxxxxx
-------------------------
Name: Xxxxxxx X. Xxxxxxxx
Title: CEO
Schedules to IP Agreement
2(a) Software and Technology Not Transferred or Requiring Third Party Consents
to Transfer
2(b) Registered Copyrights and Applications
2(c) Registered Maskwork Rights and Applications
2(d) Third Party Suits or Claims
2(e) Indemnification for Infringement
