EXHIBIT 10.14
SECOND AMENDMENT
TO
TECHNOLOGY LICENSE AGREEMENT AND SUPPLY AGREEMENT
This Second Amendment to Technology License Agreement and Supply
Agreement ("Agreement"), is entered into as of the 17th day of February, 1995,
by and between Ramtron International Corporation, a Delaware corporation, having
its principal offices at 0000 Xxxxxxx Xxxxx, Xxxxxxxx Xxxxxxx, Xxxxxxxx 00000
("Ramtron") and Racom Systems, Inc., a Delaware corporation, having its
principal offices at 0000 Xxxxxxxxx Xxxxx Xxxxxxxxx, Xxxxxxxxx, Xxxxxxxx 00000
("Licensee" or "Racom," as appropriate).
RECITALS
A. Ramtron and Licensee have entered into that certain Supply Agreement
dated October 23, 1991 ("Supply Agreement") and that certain
Technology License Agreement dated October 23, 1991 ("License
Agreement") whereby Ramtron has agreed to license certain of its
ferroelectric technology to Racom and to supply Racom with certain
products incorporating such technology.
B. Ramtron and Licensee amended certain provisions of the Supply
Agreement and License Agreement pursuant to an amendment entitled
"Amendment to Technology License Agreement and Supply Agreement" dated
March 31, 1994 ("Amendment").
C. Ramtron and Licensee have entered into that certain Memorandum of
Understanding dated February 2, 1995 ("MOU") and now desire to further
amend the Supply Agreement and License Agreement in accordance with
the provisions of the MOU all as set forth in this Agreement.
NOW, THEREFORE, in consideration of the promises and mutual covenants
herein contained, and for other good and valuable consideration the receipt and
sufficiency of which are hereby acknowledged, the parties hereto hereby agree as
follows:
AGREEMENT
ARTICLE ONE
AMENDMENTS TO LICENSE AGREEMENT
1.1 Section 2.1(b) of the License Agreement shall be modified in its
entirety as set forth below:
(b) Except as provided in subparagraph (j) below, Ramtron and its
Affiliates hereby agree, through the end of the year 2005, not to
further license the Ferroelectric Technology to any party for use
in Ferroelectric RF/ID Products. Ramtron's agreement to refrain
from such further licenses shall be contingent upon Licensee's
satisfaction of its obligations described in Section 2.1 (g) below.
Beginning January 1, 2006, Ramtron shall be free to further license
the Ferroelectric Technology for any purpose and in Ramtron's sole
discretion.
1.2 Section 2.1(d) of the License Agreement shall be modified in its
entirety as set forth below:
(d) Notwithstanding Section 2.1(b), Ramtron and Licensee
acknowledge that there is no restriction imposed upon Seiko Epson
Corporation ("Seiko") or Deutsche ITT Industries GMBH ("ITT")
pursuant to the licenses granted by Ramtron to such parties to
exploit the Ferroelectric Technology under License Agreements dated
2 March, 1989, and 1 June, 1988, respectively. The parties
acknowledge and understand that Ramtron may have no power or
authority to prevent either Seiko or ITT from developing or selling
Ferroelectric RF/ID Products. Accordingly, the parties agree that
in the event that either Seiko or ITT develop or sell Ferroelectric
RF/ID Products during the term of this Agreement, Ramtron shall be
under no obligation to compensate Licensee in any way whatsoever as
a result of such event.
1.3 Section 2.1(e) of the License Agreement shall be modified in its
entirety as follows:
(e) Neither Ramtron nor any affiliate or licensee of Ramtron or its
Affiliates shall manufacture, sell, lease or distribute either
Ferroelectric RF/ID Products or semiconductor components that
Ramtron "knows" are
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intended to Monolithically Incorporate RF/ID Products and the
Ferroelectric Technology to any company other than Licensee; nor
shall it directly enter into the RF/ID Product business except
pursuant to its ownership interest in Licensee. As used herein,
"knows" shall mean the actual knowledge of Ramtron or any Affiliate
of Ramtron and Ramtron shall have no obligation to make affirmative
inquiry of any persons other than Ramtron's employees and
employee's of Ramtron's Affiliates regarding the intended use of
any such Ferroelectric RF/ID Products or semiconductor components
that it manufactures, sells, leases or distributes.
Notwithstanding the above, Ramtron may sell Ferroelectric RF/ID
Products to any party without restriction after December 31, 2005,
unless Ramtron and Licensee agree to extend this date. Ramtron's
agreement to refrain from such sales of Ferroelectric RF/ID
Products during such time periods shall be contingent upon
Licensee's satisfaction of its obligations described in
Section 2.1(g) below.
1.4 Section 2.1(g) shall be modified in its entirety as set forth below:
(g) Notwithstanding the provisions of Sections 2.1(b) or 2.1(e)
above, in the event that Licensee does not purchase from Ramtron or
its licensees at least fifty percent (50%) of the annual quantities
of units set forth below for any given year and fails to do so
within one hundred twenty (120) days after being notified by
Ramtron of such deficiency, then, effective on the expiration of
such one hundred twenty (120) day period, the provisions of
Sections 2.1(b) and 2.1(e) hereof and any other restriction or
prohibition on the license of Ferroelectric Technology or sale of
Ferroelectric RF/ID Products by Ramtron to any third party, shall
be null and void and from such date forward Ramtron shall not be
subject to any restriction, penalty or prohibition against or
arising from the sale of such products by Ramtron to any third
party. The parties agree that the units comprising the annual
purchase milestones set forth below must be supplied by Ramtron or
its licensees.
ANNUAL PURCHASE MILESTONES (000'S)
1994 1995 1996 1997-2005
---- ---- ---- ---------
System Products Units 43 960 3940 12,615
Component Products Units -- 240 5720 26,820
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For purposes of this Section 2.1(g) and Section 2.1 of the
Supply Agreement, as amended, "System Products" shall mean
evaluation systems including, without limitation the
DSS 1000, finished controllers including, without limitation
the RFC 1000 and finished transponders including, without
limitation, the RFM 256CC, and "Component Products" shall
mean chips, COB transponder assemblies, and board/module
level controllers.
1.5 A new Section 2.1(j) shall be added to the License Agreement as set
forth below:
(i) The parties acknowledge that Ramtron has begun discussions with
Toshiba Corporation ("Toshiba") concerning the possible license by
Ramtron of the Ferroelectric Technology to Toshiba.
Notwithstanding the provisions of Section 2.1(b), the parties
acknowledge and agree that Ramtron shall be entitled, in its sole
discretion, to complete such discussions and to finalize a license
arrangement with Toshiba by the end of 1995 for the Ferroelectric
Technology and such license may allow Toshiba to use such
Ferroelectric Technology in the manufacture and sale of
Ferroelectric RF/ID Products commencing January 1, 1999.
1.6 The first sentence of Section 6.5 of the License Agreement shall be
modified in its entirety and a new second sentence to such Section shall
be added both as set forth below:
Ramtron shall, at its own expense, indemnify and hold harmless Licensee
from and against any cost, liability, loss or expense arising from the
actual or alleged infringement by Licensee of any patent, trademark,
copyright or other intellectual property of any third party provided
that: (i) such alleged infringement is attributable solely to the
Ferroelectric Technology and does not arise from the use of such
Ferroelectric Technology as part of or in combination with any other
devices or parts; (ii) such alleged infringement does not arise from any
portion or aspect of a Ferroelectric RF/ID Product that was designed or
specified by Licensee or any consultant to or representative of Licensee
(other than Ramtron); (iii) Licensee gives Ramtron immediate notice in
writing of any such suit or permits Ramtron, through counsel of its
choice, to answer the charge of infringement and defend such suit; (iv)
such cost, liability, loss or expense does not result from Licensee's
failure to promptly cease use of the Ferroelectric Technology and sale,
lease, and distribution of Ferroelectric RF/ID Products after
notification by Ramtron in accordance with Section 6.4 above; and (v)
Licensee gives Ramtron all the needed information, assistance, and
authority, at Ramtron's expense, to enable Ramtron to defend
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such suit if Ramtron chooses to do so. In the event Ramtron does not
elect to assert the defense of any such suit, Licensee, at its sole
discretion and expense, shall have the right to assert such defense.
1.7 All other provisions of the License Agreement shall remain in full force
and effect.
ARTICLE TWO
AMENDMENTS TO SUPPLY AGREEMENT
2.1 The first paragraph of Section 2.1 of the Supply Agreement shall be
modified in its entirety as set forth below:
2.1 Products. Subject to the terms and conditions hereof, at
Racom's request, Ramtron shall sell to Racom and make timely
delivery of, and Racom shall purchase from Ramtron and take
delivery of, Products in an amount sufficient to satisfy up
to: (i) one hundred percent (100%) of Racom's requirements
therefor for calendar years 1994 and 1995 and (ii) fifty
percent (50%) of Racom's requirements therefor for calendar
years 1996-2005; provided, however, that in no event shall
Ramtron be required to supply to Racom more than twenty
million (20,000,000) units (assuming maximum possible die of
3000 per 6 inch wafer) of the Products in any given year,
unless Ramtron agrees to do so in its sole and absolute
discretion.
2.2 Section 9.1 of the Supply Agreement shall be modified in its entirety as
set forth below:
9.1 Term. This Agreement shall become effective on the date
signed by both parties and shall continue in effect until
December 31, 2005 unless sooner terminated in accordance with
the terms of this Agreement.
2.6 All other provisions of the Supply agreement shall remain in full force
and effect.
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ARTICLE THREE
OTHER AGREEMENTS
3.1 As consideration for the modifications to the License Agreement and
Supply Agreement set forth herein, Racom has paid to Ramtron the sum of
US$400,000 concurrent with the execution of the MOU, has delivered to
Ramtron One Million shares of Racom common stock, par value $0.01, valued
at US$3.00 per share, concurrent with the execution of this Agreement,
and shall pay to Ramtron the sum of US$600,000 on or before March 31,
1995.
3.2 This Agreement may be executed simultaneously in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first set forth above.
RACOM SYSTEMS, INC.
/s/ [ILLEGIBLE]
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RAMTRON INTERNATIONAL CORPORATION
/s/ [ILLEGIBLE], CEO
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