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 covenants contained in this Agreement, the parties
hereby agree as follows:
1. DEFINITIONS
1.1. "Affiliates" 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. "ASIC" or "ASSP" means an Integrated Circuit designed for specific
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applications.
1.3. "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.
1.4. "Closing Date" means the date of the closing of MIPS's initial public
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offering.
1.5. "CPU" means an Integrated Circuit or portion thereof that constitutes
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a processor designed, capable, and intended to function as the
primary, or general processing
unit of the overall system within which the CPU is contained or is not
otherwise dedicated to the primary function of a subsystem.
1.6. "Integrated Circuit" shall mean an integral unit comprising one or
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more active and/or passive circuit elements formed at least in part of
semiconductor material and associated on, or in, one substrate
comprising the first level of packaging for such elements or more than
one such substrate formed in a monolithic structure which comprises at
least the first level of packaging and is indivisible into separately
packaged products; such unit forming or contributing to the formation
of a circuit for performing electrical or electronic functions;
provided, however, such unit shall not mean a printed circuit board on
which such unit is attached.
1.7. "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, software, technical information, data,
plans, drawings, and blue prints (collectively "Trade Secrets")
whether arising under the laws of the United States or any other
state, country or jurisdiction.
1.8. "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.
1.9. "MIPS Field of Use" means any MIPS ISA or any CPU, ASSP or ASIC which
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implements (under license from MIPS) the MIPS ISA that is
substantially compatible with the MIPS ISA.
1.10. "MIPS ISA" shall mean an instruction set architecture for a MIPS
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Processor Design first developed by, for, or licensed to MIPS
including without limitation the MIPS I, MIPS II, MIPS III, MIPS IV,
MIPS V and successor instruction set architectures or extensions
thereto. For purposes of this Agreement, any copy of a pre-existing
proprietary SGI and Cray instruction sets or APIs including but not
limited to SGI's graphics APIs and Cray ISAs shall not be considered
within the definition of any future MIPS ISA.
1.11. "MIPS Processor Know-How" means the know-how listed on Exhibit E.
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1.12. "MIPS Patents" means the Patents listed on Exhibit A.
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1.13. "MIPS Processor Design" means only that component of a CPU, ASSP or
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ASIC that is designed by, for or under license from MIPS for
executing the MIPS ISA.
1.14. "MIPS Tools" means the Tools listed on Exhibit D.
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1.15. "Non-Patent IP Rights" means Trade Secrets, Maskworks, and
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Copyrights.
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1.16. "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").
1.17. "SGI Compiler & Software Technology" means the know-how listed on
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Exhibit F.
1.18. "SGI Compiler & Software Patents" means the Patents listed on
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Exhibit F.
1.19. "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.
1.20. "SGI Designed Products" means products based on designs owned by, or
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developed by, for or with substantial participation by SGI or its
Affiliates.
1.21. "SGI Exclusive Field of Use" means the field of use outside the MIPS
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Field of Use and a workstation, server, minicomputer or
supercomputer.
1.22. "SGI Group" means SGI and its Affiliates.
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1.23. "SGI Processor Know-How" means the know-how listed on Exhibit B.
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1.24. "SGI Processor Patents" means the Patents listed on Exhibit B.
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1.25. "SGI Shipping Products" means SGI's MIPS ISA-based products
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commercially released or for which development is substantially
complete.
1.26. "SGI Tools" means the Tools listed on Exhibit C.
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1.27. "SGI Tool Patents" means the Patents listed on Exhibit C.
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1.28. "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
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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:
. MIPS Patents (as listed on Exhibit A);
. MIPS Processor Know-How (as listed on Exhibit E); and
. 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:
(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 the rights granted in Sections 2.2(a) and 2.2(b)
to third parties only in connection with SGI Designed
Products.
(d) The rights provided under Sections 2.2(a), 2.2(b) and 2.2(c)
above shall not extend to the sale or manufacture of
"Separately Licensed Products" except to the extent such
products are sold or manufactured pursuant to a pre-existing
license to SGI, pursuant to a separate license from MIPS, or
pursuant to a license granted by MIPS to a MIPS partner or
MIPS licensee. MIPS agrees to license or make available
through a MIPS partner or MIPS licensee such license to SGI
under terms as favorable as those offered to any other MIPS
customer, partner or licensee (including payment of
royalties, if any) for similar scope of license. For the
purposes of this Agreement, "Separately Licensed Products"
means: Integrated Circuits or processor cores that
implement and are compatible with the MIPS ISA, and are
designed to function as a CPU (this excludes by way of
example products which may include a MIPS co-processor, but
which must have a separate processor to serve as the primary
processor for the overall system, including graphics ASICs
or co-processors, video compression ASICs, I/O and network
ASICs), and excluding those Integrated Circuits and
processor cores that are: Integrated Circuits which
implement a MIPS ISA: (i) in connection with the MIPS R10K
or R12K processor implementations or enhanced derivatives
thereof, (ii) designed for products within workstations,
servers, minicomputers or supercomputers, or (iii) are SGI
Shipping Products as of the
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Closing Date. SGI shall cooperate with MIPS to determine the
volume of MIPS ISA-based products sold by SGI.
(e) 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;
(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," or "sublicensable in binary form only,"
sublicense the rights set forth in this Section 2.3 to third
parties in binary code or 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 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 Designs and practice any method or process in
the manufacture of MIPS Processor Designs;
(b) use, modify, distribute, reproduce, display, and perform any
copyrighted or copyrightable work or Maskwork only in
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connection with the use, development, manufacture, or
distribution of MIPS Processor Designs; and
(c) sublicense the rights granted in Sections 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 ISA-based products, and practice any method or process
in the manufacture of MIPS ISA-based products;
(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 ISA-based products; and
(c) sublicense the rights granted in Sections 3.2 (a) and 3.2
(b) 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.
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:
(a) use, modify, and reproduce (for internal use only) the SGI
Compiler & Software Technology only in connection with the
development of MIPS Processor Design;
(b) Under the SGI Compiler & Software Patents to make, have
made, use, import, sell and otherwise dispose of MIPS
Processor Design ,and practice any method or process in the
manufacture of MIPS Processor Design; 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
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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 Designs and are not intended to cover foundry
activities that MIPS may undertake on behalf of third parties.
3.5. Third Party Rights. MIPS understands that some the technology and
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materials assigned or licensed to MIPS hereunder contain 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, provided,
however, that upon request by MIPS, SGI shall cooperate with MIPS in
obtaining such licenses or consents, as appropriate, (iii) MIPS agrees
that in the event any third party licenses or consents are required,
MIPS will obtain such third party licenses or will not use such third
party technology or SGI technology into which such third party
technology is integrated, and (iv) 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 Designs, and practice any method
or process in the manufacture of MIPS Processor Designs. Upon
request, SGI will consider in its sole discretion, making available to
MIPS a license under the SGI Capture Period Patents to the extent SGI
makes available such licenses to others.
4.3. Improvements to SGI Tools and MIPS ISA.
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4.3.1. License to MIPS Improvements to SGI Technology. MIPS hereby
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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 and the SGI Compiler &
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Software Technology ("MIPS Improvements to SGI Technology")
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. License to MIPS ISA Improvements. MIPS hereby grants to the
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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 MIPS ISA
("MIPS ISA Improvements "), with the exception that SGI shall
be required to pay any fees due to a third party which MIPS
may be required to pay in conjunction with such a license,
during the Capture Period, including the right to:
(i) 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; and
(ii) to use, modify, distribute, reproduce, display, and
perform any copyrighted or copyrightable work only in
connection with the use, development, manufacture, or
distribution of SGI Designed Products.
4.3.3. Conditions. Any licenses granted pursuant to Section 4.3.1
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and any obligation to provide materials relating to MIPS
Improvements to SGI Technology or MIPS ISA Improvements shall
be subject to any third party obligations of MIPS with respect
to same. MIPS shall deliver all MIPS ISA Improvements to SGI
when MIPS makes such MIPS ISA Improvements generally available
to MIPS customers and licensees, and shall deliver any MIPS
Improvements to SGI Technology and any MIPS ISA Improvements
upon SGI's reasonable written request provided that SGI may
request MIPS Improvements to SGI Technology and the MIPS ISA
Improvements no more than once in any six (6) month period.
MIPS shall deliver the applicable changes to software source
code and any reasonably available supporting documentation.
4.4. Additional License. Upon the SGI Group's request, MIPS shall license
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to the SGI Group under terms as favorable as those offered to any
other MIPS customer, partner or licensee (including payment of
royalties, if any) for similar scope of license, any MIPS
Improvements to SGI Technology, MIPS ISA Improvements or other MIPS
technology or designs it makes available to its customers or third
parties, not already licensed hereunder.
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5. DISCLAIMER
5.1. No Implications. Nothing contained in this Agreement shall be
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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
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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
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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, where
appropriate based on the nature of the Confidential Information,
password protect servers that contain Confidential Information,
restricting access to Confidential Information by third parties
(including contractors) unless they have a need to know and they have
entered into appropriate non-disclosure agreement. 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 and will be transferred to MIPS in
accordance with the methodology set forth in Exhibit H as agreed to by
the parties, and (ii) 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 period starting at the Closing Date and ending when SGI's
owns less than 50% of the capital stock of MIPS, shall have the right
to audit (through auditors approved by MIPS) MIPS's servers, files,
and premises to ensure compliance with this Section 6. In the event
SGI discovers material 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
party 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.
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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 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 events occurs:
(a) the 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;
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(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.
7.2.1. Termination for Breach. If MIPS materially breaches any
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material term or condition of this Agreement, or SGI breaches
its obligation to pay royalties under a license granted by
MIPS under this Agreement, then upon forty-five (45) days
written notice to the breaching party specifying the default
("Notice of Default"), the non-breaching party may terminate
or suspend this Agreement, without liability, unless the
default reasonably requires more than forty-five (45) days to
correct and the breaching party has begun substantial
corrective actions to remedy the default and is diligently
pursuing such actions, in which event, the breaching party
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 in the event of a MIPS Change
of Control as defined below). SGI may freely assign this Agreement
pursuant to the provisions of Sections 8.3 and 8.4 below or
inconnection with the sale or transfer of a substantial portion of its
business, provided that, except for SGI Shipping Products as of the
date of the assignment, as to the assignee, the licenses in Sections
2.2, 2.3 and 4.3 shall be modified such that any MIPS-ISA based
products shall be subject to a royalty-bearing license on MIPS'
standard terms, Sections 2.2(e) and 4.4 shall terminate, and Section
7.2.1 shall be modified to be reciprocal. 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. MIPS Change of Control. Except where SGI's sale or other disposition
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of MIPS capital stock to a third party results in a Change of Control,
in the event more than fifty percent (50%) of the outstanding shares
or securities (representing the right to vote for the election of
directors or other managing authority) of MIPS
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becomes owned or controlled directly or indirectly by a third party
("MIPS Change of Control"), MIPS shall promptly give notice to SGI of
such MIPS Change of Control. Upon such MIPS Change of Control the
licenses granted to MIPS pursuant to Section 3 above shall immediately
terminate except that in the event after such MIPS 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
MIPS 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.
8.3. SGI Change of Control. In the event more than fifty percent (50%) of
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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
("SGI Change of Control") and SGI owns less than 50% of the
outstanding shares or securities (representing the right to vote for
the election of directors or other managing authority) of MIPS at the
date of such SGI Change in Control, the licenses granted to SGI
pursuant to Sections 2.2, 2.3, and 4.3, above shall be modified such
that any MIPS-ISA based products shall be subject to a royalty-bearing
license on MIPS' standard terms, except for SGI Shipping Products as
of the date of the SGI Change of Control. In addition, Section 2.2
(e) and Section 4.4 shall terminate and Section 7.2.1 shall be
modified to be reciprocal. If SGI owns more than 50% of the
outstanding shares or securities (representing the right to vote for
the election of directors or other managing authority) of MIPS at the
date of such SGI Change in Control, the provisions of this Section 8.3
will become effective at such time as the acquirer owns less than 50%
of such an interest in MIPS.
8.4. SGI's Divestitures. MIPS understands that SGI may divest some or all
------------------
of its business operations in the future; and MIPS agrees to grant
such new entity a non-exclusive license substantially similar in scope
to the licenses granted in Sections 2.2 (a), (b), and (c), 2.3, and
4.3 above, on similar terms and conditions, upon SGI's written
request, provided however, that the licenses shall become royalty
bearing for any MIPS ISA-based products and the license shall apply
only to the SGI Shipping Products at the date of such divestiture.
9. INFRINGEMENT ACTIONS
9.1. Infringement Actions. For so long as the license granted to SGI
--------------------
under Section 2.2(e) remains exclusive, MIPS agrees that SGI can bring
suit, without MIPS's consent, and SGI agrees that MIPS can bring suit,
without SGI's consent against any third party infringing the MIPS
Patents within the SGI Exclusive Field of Use. Each party agrees, at
the other's expense, to make available at reasonable times and under
appropriate conditions all relevant personnel, records, papers,
13
information, samples, specimens and other similar materials in its
possession that are reasonably necessary to allow SGI or MIPSto
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.
9.3. Indemnification. MIPS shall indemnify and hold SGI harmless against
---------------
any claim based on infringement by the design furnished by MIPS of a
U.S. trade secret, patent, copyright, maskwork right, trademark or
other proprietary right of a third party, shall defend at its expense
all suits against SGI based upon such a claim, and shall pay costs and
damages awarded against SGI in such suit, provided that SGI shall
notify MIPS promptly in writing of such suit and at MIPS request and
at its expense, is given control of such suit and all reasonably
requested information and assistance for defense of same. SGI shall
have the right to be represented by its own attorney at its own
expense. This indemnity does not extend to any suit based upon an
infringement or alleged infringement of any trade secret, patent,
copyright, maskwork right, trademark or other proprietary rights by
the manufacturing process or modification of the MIPS ISA-based
products made by SGI, the use of the MIPS ISA-based products in
combination with other equipment or software not provided by MIPS, or
a modification or enhancement of the MIPS ISA-based products not made
by MIPS, if such claim would not have occurred but for such
combination, modification or enhancement, any marking, or branding
applied to the MIPS ISA-based products or modification or design of
the MIPS ISA-based products by or at the request of SGI or anything
for which a third party license was required as noted on the Exhibits.
10. GENERAL
10.1. Ownership of 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 and all implementations made
by SGI to the MIPS ISA, or other MIPS technology 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 this Agreement, 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
14
those explicitly listed on the Exhibits attached to this Agreement.
Except for the express licenses granted to SGI under the
Intellectual Property Rights assigned to MIPS hereunder, all rights
thereto shall, as between the parties, be owned exclusively by MIPS
and SGI shall have no rights or interest in such Intellectual
Property Rights except as set forth in the Trademark Agreement or
the Separation Agreement.
10.2. Delivery of Assigned Technology or MIPS Licensed Technology. The
-----------------------------------------------------------
parties agree that MIPS and SGI currently have access to all
technology licensed or assigned to the respective party. As a
result, all such technology is provided on a "as is, where is"
basis, and each party shall have no obligation to locate, assemble,
deliver or otherwise assist the other party in the transfer of such
technology.
10.3. 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.
10.4. Export Controls. Each party understands and acknowledges that
---------------
certain technology licensed or assigned hereunder is subject to
regulation by agencies of
15
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.
10.5. Entire Agreement. This Agreement including the Exhibits and any
----------------
schedules thereto, together with the Separation Agreement and the
Ancillary Agreements (as defined in the Separation Agreement)
constitute the entire understanding of the parties hereto with
respect to the subject matter hereof, superseding all negotiations,
prior discussions and prior agreements and understandings relating to
such subject matter. To the extent that the provisions of this
Agreement are inconsistent with the provisions of the Separation
Agreement or any Ancillary Agreements, the provisions of this
Agreement shall prevail.
10.6. Expenses. All costs incurred in the interpretation, execution,
--------
delivery and implementation of this Agreement and with the
consummation of the transactions contemplated herein shall be paid by
the party incurring the expense. The determination of who has
incurred the expense shall be made by the Chief Financial Officer of
SGI, which determination shall be final and binding upon each of the
parties hereto and not subject to further review for so long as SGI
holds more than fifty percent (50%) of the capital stock of MIPS.
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:__________________________
Name: Xxxx Xxxxxxxx Name:
Title: President and Chief Executive Officer Title:
16
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 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. The list will also specifically identify those SGI Tools that are not
sublicensable by MIPS, and those SGI Tools which may be sublicensed in source
code format by MIPS under MIPS' license to the SGI Tools.
C.2 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.
19
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 by
SGI, and those MIPS Tools which may be sublicensed in source code format by SGI
under SGI's license to the MIPS Tools.
20
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. The list will also specifically identify those technologies that
are not sublicensable by MIPS and those which may be sublicensed in source code
format by MIPS under MIPS' license to the SGI Compiler & Software Technology.
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 patentable improvements made by SGI shall be
licensed to MIPS. The detailed list of such technology will be specifically
agreed to by the parties on or before the Closing Date.
23
EXHIBIT H
METHODOLOGY FOR INFORMATION TRANSFER
The methodology for information transfer will be specifically agreed to by the
parties on or before the Closing Date.
24
