1
EXHIBIT 10.23
TECHNOLOGY LICENSE AND
TECHNICAL ASSISTANCE AGREEMENT
BETWEEN
TOSHIBA CORPORATION
AND
TESSERA, INC.
FOR
mBGA PACKAGE
Toshiba/Tessera confidential
2
TECHNOLOGY LICENSE AND TECHNICAL ASSISTANCE AGREEMENT FOR mBGA PACKAGE
This Agreement is made and entered into as Aug 29, 2000 ("Effective Date") by
and between Toshiba Corporation, a Japanese corporation with a principal place
of business at 1-1, Xxxxxxxx 0-xxxxx, Xxxxxx-xx, Xxxxx 000-0000, Xxxxx,
("Toshiba"), and Tessera, Inc. a corporation organized under the laws of
Delaware, with a principal place of business at 0000 Xxxxxxx Xxxxx, Xxx Xxxx, XX
00000 X.X.X. ("Tessera").
WHEREAS, TOSHIBA has been engaged in the design, manufacture and sale of a
certain package for semiconductor integrated circuit; and
WHEREAS, Tessera desires to obtain from Toshiba, and Toshiba is willing to
furnish and grant the right to provide to Tessera Licensee (as hereinafter
defined), certain technical information for the manufacture of a certain package
for semiconductor integrated circuit, in accordance with the terms and
conditions hereinafter set forth; and
WHEREAS, Toshiba and Licensee each represents that it is fully authorized to
deal generally with and to make an agreement respecting the subject matter
hereof;
NOW, THEREFORE, in consideration of the mutual covenants and premises contained
herein, the parties agree as follows:
ARTICLE 1. PRIOR AGREEMENT
Toshiba and Tessera have entered into a TCC License Agreement, dated April 1,
1999 ("Tessera/Toshiba TCC License Agreement"), under which Tessera licensed
Tessera Patents to Toshiba relating to a type of integrated circuit package
called the Tessera Compliant Chip ("TCC"), and the terms of that Tessera/Toshiba
TCC License Agreement are incorporated herein by reference. Capitalized terms
used in this Agreement but not defined herein shall have the meanings stated in
the Tessera/Toshiba TCC License Agreement. If a conflict arises between a term
or provision in this Agreement and one in the Tessera/Toshiba TCC License
Agreement, the term or provision in this Agreement shall prevail.
Toshiba/Tessera Confidential
1
3
ARTICLE 2. DEFINITIONS
The following terms whether used in singular or plural form shall have the
following meanings for purposes of this Agreement:
2.1 "mBGA" shall mean a type of TCC where the contact-bearing surface of the IC
device faces towards the external electrical terminals and electrical
connections between IC contacts on the IC device and the electrical terminals on
the package substrate are partly formed by bonding wires.
2.2 "Contract Product" shall mean the mBGA listed in Exhibit 1 attached
hereto.
2.3 "Toshiba Technical Information" shall mean the documentation listed in
Exhibit 2 containing technical and engineering information, know-how,
trade-secrets, proprietary information, and data concerning the manufacture of
Contract Product, which documentation is contained in the authorized files of
Toshiba and is commercially in use by Toshiba.
It is understood, however, that, Technical Information does not include
the following information and data:
(i) cost and marketing information;
(ii) information and data related to mBGA which is under development;
(iii) information and data specifically for the manufacture of
individual component materials and component parts of Contract products;
(iv) information and data specifically for the manufacture of machines,
apparatus, dies, jigs, and tools used in manufacturing mBGA;
(v) information and data which Toshiba does not have a right to disclose
or disclose of which require the payment of compensation to a third
party; and
(vi)information and data which is not owned by Semiconductor Company
inside Toshiba or any other division or organization succeeding thereto.
Toshiba/Tessera Confidential
2
4
2.4 "Toshiba Patents" shall mean those patents(including utility models)
and patent applications of any country of the world (a) owned or
controlled by Toshiba at any time prior to the expiration or termination
of this Agreement, (b) under which Toshiba has or may acquire the right
to grant a license without incurring obligation or payment of
compensation to any third party, and (c) covering inventions relating to
the manufacture or assembly of mBGA.
2.5 "Technical Assistance" shall mean technical discussions, lectures, guidance
and/or technical training given by Toshiba's personnel to technically qualified
personnel of Tessera at Toshiba's facilities in Japan or Tessera's facility in
the United States, concerning Technical Information furnished to Tessera and the
manufacture of Contract Product.
2.6 "Tessera Licensee" shall mean a party with which Tessera has entered into
TCC License Agreement as of the conclusion of this Agreement or a party with
which Tessera will enter into TCC License Agreement after the conclusion of this
Agreement.
2.7 "TCC License Agreement" shall mean an agreement to be executed between
Tessera and Tessera Licensee, the basic terms and conditions of which is
substantially same as those of Tessera/Toshiba TCC License Agreement.
2.8 "Tessera Technical Information" means technical and engineering information,
know-how, trade-secrets, proprietary information, and data concerning the
design, manufacture and assembly of TCC packages, which information is contained
in the authorized files of Tessera.
ARTICLE 3. TECHNICAL ASSISTANCE
3.1. (i) Toshiba shall furnish to Tessera, on a nonexclusive basis, one set
of the Technical Information relating to Contract Product within sixty
(60) days after the Effective Date of this Agreement.
(ii) Toshiba shall furnish to Tessera, on a nonexclusive and semi-annual
basis, one copy of amendments or improvements made by Toshiba to
original Technical information furnished to Tessera hereunder during the
five-year period from the Effective Date of this Agreement,
(iii) Toshiba shall make good faith reasonable efforts to furnish to
Tessera, on a nonexclusive
Toshiba/Tessera Confidential
3
5
and semi-annual basis, one copy of information on the registered Toshiba
Patents, if any, during the five-year period from the Effective Date of
this Agreement."
(iv) Technical Information to be furnished to Tessera hereunder shall be
prepared by Toshiba in English and in metric system measurements.
3.2 Each party shall appoint a Technical Coordinator soon after the Effective
Date hereof and immediately notify the other party thereof, who is responsible
for the coordination, implementation and supervision of all technical actions to
be taken under this Agreement, including but not limited to transmittal and
receipt of any technical information hereunder. The Technical Coordinators shall
meet on a semi-annual basis to discuss improvements in the Toshiba Technical
Information and Patents, if any.
3.3 In order for Tessera to better understand the Technical Information to be
furnished hereunder, Toshiba shall provide Tessera with Technical Assistance at
Toshiba's facility in Japan in accordance with the schedule to be agreed upon
by both parties and up to the number of Tessera man-days to be agreed upon by
both parties.
3.4 In addition to the Technical Assistance specified in the preceding Article
3.3, upon request of Tessera, Toshiba agrees to consider in good faith providing
Tessera with additional Technical Assistance during the five-year-period from
the Effective Date of this Agreement, subject to reasonable availability of
Toshiba's engineers and payment by Tessera to Toshiba at the rate of [*] U.S.
dollars (U.S.$[*]) per man-day of Toshiba's engineer who is to provide such
Technical Assistance at Toshiba's facility hereunder.
3.5 In order to assist Tessera in better understanding Technical Information
furnished to Tessera hereunder, Toshiba shall, upon the written request of
Tessera made during the term of this Agreement, provide Tessera with technical
response or correspondence answering the questions raised by Tessera. Provided,
however, that Tessera shall pay to Toshiba the actual cost incurred by Toshiba
in connection with such response or correspondence, and that in the event such
cost seems to be not small, Toshiba shall notify Tessera in advance of the
estimated amount of such costs.
3.6 It is understood that Technical Assistance is to be provided basically at
Toshiba's facilities in Japan, provided, however, that in the event that Tessera
requests Toshiba to dispatch Toshiba's personnel to Tessera's facilities in
order to provide the Technical Assistance due to unavoidable
Toshiba/Tessera Confidential
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
4
6
reason, Toshiba agrees to consider in good faith providing Tessera with such
Technical Assistance during the five-year-period from the Effective Date of this
Agreement, subject to reasonable availability of Toshiba's engineers and payment
by Tessera to Toshiba at the rate of [*] U.S. dollars (U.S.$[*]) per man-day of
Toshiba's engineer who is to provide such Technical Assistance at Tessera's
facilities hereunder.
3.7 (i) All expenses including travel and living expenses incurred by
Toshiba's engineers in relation to the Technical Assistance provided for
in this Article 3 shall be borne and paid by Tessera to Toshiba. All
expenses and salaries of Tessera's technical people in relation to the
Technical Assistance provided for in this Article 3 shall be borne by
Tessera.
(ii) Technical Assistance under the Article 3.6 shall be provided by
Toshiba at Tessera's facility in U.S.A. in accordance with the terms and
conditions of Exhibit 4 hereof.
(iii) In the event that any interpreter is needed for the performance of
Technical Assistance hereunder, any cost necessary for such interpreter
shall be borne by Tessera.
3.8 Tessera shall pay to Toshiba in U.S. dollars the Technical Assistance fees
and expenses incurred by Toshiba's personnel under Articles 3.3 through 3.6 by
telegraphic transfer to the same bank account and in the same manner as set
forth in Article 6.6 within thirty (30) days after receipt of Toshiba's invoice.
3.9 Tessera shall deliver to Toshiba free of charge during the five-year-period
from the Effective Date of this Agreement technical information relating to
improvements, enhancements and modifications made by Tessera to the Technical
Information delivered by Toshiba to Tessera hereunder.
3.10 Tessera ensures that its engineers shall comply with the safety, security
and all other applicable laws, regulations, practices, and specific instructions
or directions to be made by Toshiba while Tessera's engineers are in Toshiba's
premises. Tessera shall indemnify and hold Toshiba harmless from any claims
arising out of any injuries, losses, damages or liabilities caused by Tessera's
engineers in connection with implementation of the Technical Assistance
hereunder.
Toshiba/Tessera Confidential
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
5
7
3.11 Toshiba shall provide to Tessera one copy of information relating to
simulation models and results for the Contract Product pursuant to the paragraph
3.1.(i) hereof on the condition that Toshiba has had such information at that
time.
3.12 Toshiba shall use good faith reasonable efforts to assist Tessera in
locating a supplier to provide Tessera with prototype manufacturing and
demonstration services at favorable prices.
3.13 Toshiba will make public the relationship with Tessera set forth in this
Agreement, including cooperating on joint press releases and other promotion and
media-related activity. Further, both parties agree to position the relationship
positively to customers, analysts, the media, and in all public forums, although
the specific terms of this agreement will remain confidential.
ARTICLE 4. OWNERSHIP
Except as provided herein, all titles and interests to any technical information
that are delivered by Toshiba hereunder, including Technical Information, and
all intellectual property rights incorporated therein and/or resulting there
from shall at all times remain with Toshiba.
ARTICLE 5. RIGHTS AND LICENSES
5.1. Toshiba hereby grants to Tessera a non-exclusive and non-transferable right
to grant to Tessera licensee during the term of this Agreement a non-exclusive
and non-transferable sublicense under Toshiba's Patents, to manufacture and have
manufactured mBGA, and to use, sell or otherwise dispose of such mBGA in all
countries of the world. Tessera shall have the right under the Toshiba Patents
and Technical Information to make, use, and sell test vehicle and prototypes for
the sublicensing business granted to Tessera hereunder. Provided, however, that
Tessera's preceding right shall be exercised by Tessera only at the time when
Tessera shall exercise its right provided for Articles 5.2 and 5.3 hereof and
subject to the Article 5.6 hereof.
5.2 Toshiba hereby grants to Tessera an exclusive and non-transferable right to
grant to Tessera Licensee during the term of this Agreement a non-exclusive and
non-transferable sublicense to use the Technical Information delivered to
Tessera hereunder, in Tessera Licensee's manufacturing mBGA in all countries of
the world. Toshiba agrees not to disclose the Toshiba Technical
Toshiba/Tessera Confidential
6
8
Information to any other party, except to the corporations as provided for in
the paragraph 5.5 hereof.
5.3 Toshiba hereby grants to Tessera during the term of this Agreement an
exclusive and nontransferable right to provide Tessera Licensee with the
Technical Information delivered to Tessera hereunder and the technical
assistance in order to assist Tessera Licensee in better understanding such
Technical Information.
5.4 Tessera shall make a good faith reasonable effort to standardize the mBGA
TCC and broaden its market acceptance and Tessera shall make its best efforts to
license, market and promote the mBGA package and related technology.
In the event that Tessera cannot achieve the object set forth in this Article
5.4 in a manner and level satisfactory to Toshiba within the [*] ([*]) [*]
period from the Effective Date of this Agreement, Toshiba shall be entitled to
cancel Tessera's exclusive right provided for in the Articles 5.2 and 5.3,
provided, however, that such right remains as an nonexclusive right during the
term of this Agreement.
5.5 Notwithstanding the above, Toshiba shall have the right to directly enter
into the Technical Assistance Agreement with each company described below in
order to transfer the technology relating to the manufacture of mBGA to such
companies;
(1) Xxxxxx Technology Corporation,
(2) Power Technology, Inc.,
(3) Walsin Advanced Electronics, Ltd., Xxxxxx Advanced Electronics, Ltd.
and its successor,
(4) A corporation which is to be used by Toshiba as its subcontractor
for the manufacture of mBGA for the benefit of Toshiba, and
(5) Toshiba's Affiliate.
5.6 Tessera agrees to include a provision in TCC License Agreements covering
mBGA that is substantially similar to the following text: "Licensee grants to
Toshiba a non-exclusive, nontransferable and paid-up license to manufacture,
have manufactured, use, sell, or otherwise dispose of mBGA under Licensee Patent
throughout the world during the term of such Licensee Patent."
5.7 In the event that Tessera has entered into a certain agreement with Tessera
Licensee for the
Toshiba/Tessera Confidential
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
7
9
purpose of providing Technical Information furnished to Tessera
hereunder, Tessera shall notify Toshiba thereof within thirty (30) days of the
conclusion of such agreement. Such notice shall indicate the name of Tessera
Licensee, effective date of agreement and other necessary information.
5.8 Tessera may develop an appropriate brand name for the mBGA technology and
may file for appropriate trademarks, which will be owned by Tessera, but will be
licensed to Toshiba, Toshiba Affiliate, and the three corporations provided for
the paragraph 5.5 free of charge for its use in the promotion and sale of its
mBGA packages.
ARTICLE 6. COMPENSATION
6.1 In addition to the reimbursements and payments elsewhere provided for
herein, Tessera agrees to make the following payments to Toshiba as compensation
for Technical Information and Technical Assistance furnished to Tessera and the
rights and licenses granted to Tessera hereunder: Tessera shall pay a royalty to
Toshiba based on the following percentages of royalties received by Tessera from
Tessera Licensees, including Toshiba, for their manufacture of mBGA TCCs using
Toshiba Patents and/or Technical Information: [*] percent ([*]%) of royalties
received by Tessera for each Tessera Licensee's cumulative manufacture of mBGA
TCC units up to [*] mBGA TCC packages, [*] percent ([*]%) of royalties received
for quantities between [*] mBGA TCC packages, and [*] percent ([*]%) of
royalties received for quantities exceeding [*] mBGA TCC packages.
6.2 Royalties under Article 6.1 shall be paid semiannually within sixty (60)
days after the end of June and December of Tessera's each fiscal year, or within
sixty (60) days after termination of this Agreement pursuant to Articles 10.2 or
10.3
6.3 All payments hereunder by Tessera to Toshiba shall be made without deduction
of any present or future tax, assessment or other governmental charge imposed
upon or as a result of such payments by the U.S.A (or any political subdivision
or taxing authority thereof or therein), and such taxes, assessments or charges,
if any, shall be borne and paid by Tessera, provided, however, that income taxes
or taxes of a similar nature (including withholding taxes) levied on such
payments by tax or other governmental authorities of the U.S.A and paid by
Tessera shall be deductible from the payments due to Toshiba if (a) such taxes
are allowable as a credit against taxes levied on Toshiba by the tax authorities
of Japan and (b) Toshiba notifies Tessera in writing when it believes there to
Toshiba/Tessera Confidential
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
8
10
exist such creditable amounts. Tessera shall send to Toshiba all certificates or
other verification on such tax payments as may be required by Toshiba or the tax
authorities of Japan as soon as practicable after such payment is made.
6.4 Tessera shall submit to Toshiba at each time of payment of royalty under
Article 6.1. and 6.2 hereof, a certified written statement signed by an
authorized officer of Tessera (as shown in Exhibit 3) specifying all royalties
received from each Tessera Licensee for mBGA packages and containing the
information sufficient to determine the royalties due Toshiba for the applicable
payment period.
6.5. Tessera agrees to keep true and accurate records, files and books of
account containing all the data necessary for the full computation and
verification of the royalty to be paid to Toshiba for mBGA and the information
to be given in the statement herein provided for, and also to permit the same to
be examined from time to time by Toshiba to the extent necessary for verifying
the royalty due and payable hereunder, but not more frequently than once per
year. Such examination shall be made at the expense of Toshiba by a person
appointed by Toshiba.
6.6 All payments by Tessera to Toshiba under this Agreement shall be made in
U.S. dollar by telegraphic transfer to Toshiba's account at the Sakura Bank
Ltd., Head Office in Tokyo, Japan; No.0000000 or to any other account designated
by Toshiba to Tessera in writing.
ARTICLE 7. WARRANTY AND LIMITATION OF LIABILITY
7.1 Nothing contained in this Agreement shall be construed as:
(a) an agreement to bring or prosecute actions or suits against third
parties for infringement of intellectual property rights or any other right, or
conferring any right to bring or prosecute actions or suits against third
parties for infringement of intellectual property rights or any other right;
(b) a warranty or representation that any technical information
transferred to Tessera and/or Tessera Licensee hereunder, or the manufacture,
use, sale or other disposal of any TCC by Tessera or Tessera Licensee using such
technical information, will be free from infringement of patents or any other
intellectual property rights of any third party;
Toshiba/Tessera Confidential
9
11
(c) conferring the other party any right to use in advertising,
publicity or otherwise any trademark, trade name or names, any contraction,
abbreviation or simulations thereof of either party;
(d) conferring the other party, by implication, estoppel or otherwise,
any license or other right, except for the licenses and rights expressly granted
hereunder; and
(e) an obligation to furnish any technical information or know-how
except as otherwise specifically provided herein.
7.2 Neither party makes any warranty, express or implied, including implied
warranties of merchantability and fitness for a particular purpose with respect
to any technical information or technical assistance delivered to the other
party and/or a Tessera Licensee hereunder or any products manufactured by such
Tessera Licensee using such information. Tessera agrees to defend, indemnify and
hold Toshiba harmless from and against any and all damages, liabilities, costs
and expenses (including reasonable attorney's fees and expenses) arising out of
or related to Tessera's use of Toshiba Technical Assistance, Technical
Information and license or right provided by Toshiba. Likewise, Toshiba agrees
to defend, indemnify and hold Tessera harmless from and against any and all
damages, liabilities, costs and expenses (including reasonable attorney's fees
and expenses) arising out of or related to Toshiba's use of Tessera Technical
Information.
7.3 EXCEPT AS EXPRESSLY PROVIDED HEREIN, NEITHER PARTY MAKES ANY WARRANTIES,
EXPRESSED OR IMPLIED, INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE. IN NO EVENT SHALL EITHER
PARTY BE LIABLE FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT OR INCIDENTAL DAMAGES
INCLUDING, BUT NOT LIMITED TO LOST PROFITS OR OTHER COMMERCIAL LOSS, ARISING IN
ANY WAY OUT OF THIS AGREEMENT OR BASED ON TORT, NEGLIGENCE, PRODUCT LIABILITY,
OR OTHERWISE, AND WHETHER OR NOT ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
ARTICLE 8. CONFIDENTIALITY
8.1 "Proprietary Information" shall mean any information disclosed by one party
to the other
Toshiba/Tessera Confidential
10
12
party, which is in written, graphic, machine-readable or other
tangible form and is marked "Proprietary", "Confidential" or in some other
manner to indicate its confidential nature. Proprietary Information shall
specifically include the Toshiba Technical Information and Tessera Technical
Information delivered hereunder. Proprietary Information may also include oral
information disclosed by one party to the other party pursuant to this
Agreement, provided that such information is designated as confidential at the
time of disclosure and is reduced to writing by the disclosing party within
thirty (30) days from its oral disclosure, and such writing is marked in a
manner to indicate its confidential nature and delivered to the receiving party.
8.2 During the five-year period following receipt of Proprietary Information
from the other party hereunder, each party shall keep such Proprietary
Information in confidence and shall not disclose such information to any third
party without the prior written consent of the other party. Neither party shall
use the other party's Proprietary Information for purposes other than those
necessary to directly further the purposes of this Agreement and access to such
other party's information shall be restricted to those employees with a need to
know hereunder.
8.3 Each party shall not disclose the terms and conditions of this Agreement to
any third party, but the existence of this Agreement may be disclosed by either
party.
8.4 The confidentiality obligations provided in Articles 8.2 and 8.3 shall not
apply to:
(a) any information, which is already known to the receiving party at
the time of disclosure by the other party;
(b) any information, which is or becomes publicly known through no fault
of the receiving party;
(c) any information which is rightfully received by the receiving party
from a third party after the time of disclosure without any restriction or
breach of this Agreement;
(d) any information, which is provided by the disclosing party to a
third party without restriction on disclosure;
(e) any information, which is independently developed by the receiving
party;
Toshiba/Tessera Confidential
11
13
(f) any information or any terms and conditions of this Agreement which
is approved for release by written authorization of the other party; or
(g) any information or any terms and conditions of this Agreement which
is required to be disclosed by the order of a governmental agency, legislative
body or a court of competent jurisdiction, provided that the required party
shall give the other party prompt notice of such request so that the other party
has sufficient opportunity to defend against, limit or protect such disclosure.
8.5 Each party acknowledges that any unauthorized dissemination or
misappropriation of the other's Proprietary Information transferred to the other
hereunder will constitute a material breach of this Agreement and would cause
irreparable injury to the disclosing party, for which monetary damages would not
be an adequate remedy and the disclosing party shall be entitled to equitable
relief (i.e. injunctive relief) in addition to any remedies it may have
hereunder or at law.
8.6 It is agreed that Tessera shall not have any right to have access to, and
Tessera ensures that its employees shall not have access to, any technical
information or data of Toshiba, which are not specifically authorized under this
Agreement, and that no right or license is granted to Tessera with respect to
said technical information or data.
ARTICLE 9. EXPORT CONTROL
Neither party shall export or re-export, directly or indirectly, any technical
information disclosed hereunder or direct product thereof to any destination
prohibited or restricted by the export control regulations of Japan and U.S.,
without the prior authorization from the appropriate governmental authorities.
Tessera hereby certifies that Tessera will not use any technical information
supplied by Toshiba hereunder for any purpose to develop or manufacture nuclear,
chemical, biological weapons or missiles (hereinafter "Weapons of Mass
Destruction"). Tessera further certifies that it will not sell any products
manufactured using any technical information supplied by Toshiba hereunder to
any party if it has actual knowledge that the end-user of such products will use
them for the development and/or manufacture of Weapons of Mass Destruction.
ARTICLE 10. TERM AND TERMINATION
Toshiba/Tessera Confidential
12
14
10.1 Except as provided elsewhere in this Article 10, this Agreement shall
become effective on the Effective Date hereof, and shall continue in effect so
long as the Tessera/Toshiba TCC License Agreement remains in force and effect,
unless earlier terminated as hereinafter provided in this Agreement.
10.2 If either party commits a material breach with respect to any of its
obligations under this Agreement, and such breach is not cured within sixty (60)
days after receipt of a written notice from the other party specifying the
material breach, then the other party may terminate this Agreement forthwith by
sending a written notice of termination to the breaching party. Termination of
this Agreement pursuant to this Article 10.2 shall not relieve the breaching
party from any liability arising from any breach of this Agreement and such
termination shall be without prejudice to any other rights and remedies of
non-breaching party provided at law or in equity, in addition to the rights and
remedies set forth in this Agreement.
10.3 Either party shall have the right to terminate forthwith this Agreement by
giving notice to the other party in the event that: (i) the other party becomes
the subject of a voluntary or involuntary petition in bankruptcy or any
proceeding relating to insolvency, or composition for the benefit of creditors,
if that petition or proceeding is not dismissed within sixty (60) days after
filing, (ii) the institution of any proceedings for the liquidation or winding
up of the other party's business or for the termination of the other party's
corporate charter, or (iii) the other party is merged into, or a majority
interest in equity of the other party or a majority of the other party's assets
are transferred to, a third party.
10.4 Upon expiration of this Agreement, all rights and licenses granted to and
the obligations undertaken by each party hereunder shall terminate, except for
each party's rights and licenses to use any technical information that has been
transferred to such party by the other party and which such party then possesses
on or before the date of expiration of this Agreement.
10.5 In case of termination by one party pursuant to Article 10.2 or 10.3 above,
all rights and licenses granted to the other party hereunder shall immediately
terminate, and the other party shall destroy or, at the notifying party's
request, return to the notifying party all technical information received from
the notifying party; provided, however, that if the terminating party is
Toshiba, the rights of Tessera Licensees granted hereunder prior to such
termination shall survive subject to the payment of royalties by Tessera
hereunder. All rights and licenses granted to the notifying party shall survive
such termination, subject to compensation payments, if any, pursuant to the
terms of
Toshiba/Tessera Confidential
13
15
this Agreement.
10.6 Notwithstanding any provisions of this Agreement, the provisions of
Articles 4, 6, 7, 8, 9, and 10 shall survive any termination or expiration of
this Agreement.
10.7 Except as otherwise provided herein above, all rights and licenses granted
hereunder shall immediately terminate upon expiration or termination of this
Agreement.
10.8 In the event that Tessera falls into the situation provided for the
subparagraph (i), (ii), or (iii) of the paragraph 10.3, and Toshiba cannot
terminate this Agreement against its will under any applicable laws of the U.S.,
Tessera's exclusive right provided for in the paragraph 5.2 and 5.3 hereof
shall be changed into Tessera's non-exclusive right.
ARTICLE 11. TESSERA LICENSEE'S COMPLIANCE
In the event that Tessera shall provide Tessera Licensee with the Technical
Information furnished hereunder pursuant to the Article 5.3, Tessera shall take
necessary contractual steps so that Tessera may cause Tessera Licensee to comply
with provisions similar to Articles 8 (Confidentiality), 9 (Export Control) and
10 (Term and Termination) hereof.
ARTICLE 12. GENERAL PROVISIONS
12.1 All notices and communications required or permitted to be given hereunder
shall be in writing in the English language and shall be by facsimile
transmission, delivered personally or mailed, and shall be effective when
received.
12.2 All such notices and communications shall be addressed to the following or
to such address as either party may designate in writing:
If to Toshiba:
[general contract matters]
Toshiba Corporation
0-0, Xxxxxxxx, 0-xxxxx
Xxxxxx-xx, Xxxxx 000-0000, Xxxxx
Facsimile No.: (03) 5444 - 9342
Attention: General Manager
Legal Affairs and Contracts Division
Semiconductor Company
Toshiba/Tessera Confidential
14
16
[technical matters]
Toshiba Corporation
000, Xxxxxxxxxxxxx-xxx, Xxxxxxxxx, Xxx-Xxxx,
000-0000, Xxxxx
Facsimile No.:(045)890-2792
Attention: Senior Manager
Memory Packaging Engineering Department
Yokkaichi Operations
If to Tessera: Tessera, Inc.
0000 Xxxxxxx Xx.
Xxx Xxxx, Xxxxxxxxxx 00000
Facsimile No.: 000-000-0000
Attn.: Chief Executive Officer
IN WITNESS THEREOF, the parties have executed this Agreement as of the date
herein below set forth.
TOSHIBA CORPORATION TESSERA, INC.
BY: /s/ XXXXXX XXXXXXX BY: /s/ XXXXX XxXXXXXXXX
------------------------------- --------------------------------
NAME: XXXXXX XXXXXXX NAME: XXXXX XxXXXXXXXX
----------------------------- ------------------------------
TITLE: V.P. Memory Division TITLE: CEO
---------------------------- -----------------------------
DATE: AUGUST 29, 2000 DATE: AUGUST 29, 2000
----------------------------- ------------------------------
Toshiba/Tessera Confidential
15
17
EXHIBIT 1
CONTRACT PRODUCT
(1) 128M RDRAM (0.2 [Greek mu]) TC 59RM716MB
(2) 256M RDRAM(0.1752 [Greek mu])
Model Name is to be decided upon the commencement of its commercial
production at the first quarter of 2001
(3) other mBGA which Toshiba will commence the commercial production thereof
during the period starting from the completion of the supply of
Technical Information relating to the above two kinds of Contract
Product through the time when four years will pass from the Effective
Date of this Agreement.
Technical Information relating to such other mBGA to be furnished by Toshiba
shall be limited To Such Technical Information as are different from those
which Toshiba has furnished before.
Toshiba/Tessera Confidential
16
18
EXHIBIT 2
LICENSEE, TECHNICAL INFORMATION LIST
1. Package Design
1.1 Package Outline Drawings
1.2 Tape Drawing
2. Process Condition
2.1 Assembly Flow Chart including Process Condition
2.2 Qualification Control System Flow Chart
2.3 In-Line Qualification Control Items and Spec.
2.4 Visual Inspection Item and Spec.
2.5 Confirm Items for Setting up New Products and Early Stage
Products
3. Raw Material
3.1 Direct Materials' and Suppliers' List
3.2 Indirect Materials' and Suppliers' List
3.3 Material Spec. and their In-coming Inspection Item and Spec.
4. Assembly Equipment
4.1 Equipment Type and Suppliers' List
4.2 Equipment Spec.
4.3 Equipment Buyoff Conditions
4.4 List of Jigs and Die (Drawings if necessary)
Toshiba/Tessera Confidential
17
19
EXHIBIT 3
ROYALTY REPORT UNDER TECHNOLOGY LICENSE
AND TECHNICAL ASSISTANCE AGREEMENT
REPORTING PERIOD: From ____________________ through ______________
--------------------------------------------------------------------------------
NUMBER OF
mBGA NUMBER OF
PACKAGES BILLABLE PINS ROYALTY RATE ROYALTY (US$)
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
TOTAL ROYALTY REMITTED: US$
------------------------
Toshiba/Tessera Confidential
18
20
EXHIBIT 4
TERMS AND CONDITIONS OF TOSHIBA'S PERSONNEL DISPATCH
1. Period of Technical Assistance
Period of Technical Assistance shall commence on the day of Toshiba's
personnel's arrival in U.S.A. from Japan and end on the day of his
departure to Japan from the U.S.A.
2. Hours of Work
2.1 Working hours of Toshiba's personnel shall be eight (8) hours a day,
five (5) days a week.
2.2 In case Tessera requests Toshiba for overtime work, Toshiba may, with
the consent of Toshiba's representative, comply with such request under
the following conditions.
2.2.1 For overtime work or work on a holiday, Saturday, or Sunday, Tessera
shall submit to Toshiba in advance a request.
2.2.2 Twenty five per cent (25%) of overtime charge shall be added for the
overtime work and one hundred percent (100%) for the work done during
night (between 10:00 PM and 6:00 AM) and work on a holiday, fifty
percent (50%) for the work on Saturday and Sundays, after at least two
days work during the previous week. The amount shall be remitted to
Toshiba together with the reimbursement of Technical Assistance Fee
provided for in Article 2.
3. Reimbursement and Expenses
3.1 Reimbursement for Technical Assistance by Toshiba's personnel shall be
made for the period from the date of arrival in the U.S.A. until the
date of departure from the U.S.A. (including Saturdays, Sundays and
Holidays) by Telegraphic Transfer Remittance to Toshiba's bank account.
Such remittance shall be made in a lump sum within thirty (30) days
following receipt of an invoice therefor from Toshiba.
Toshiba/Tessera Confidential
19
21
3.2 Tessera shall provide, or, where applicable reimburse the cost of the
following facilities to Toshiba's personnel assigned to work in the
U.S.A. pursuant to Article 2 for their travel, accommodation and local
transport;
3.2.1 Round trip full-fare air ticket for economy class from the normal place
of assignment of such personnel to the U.S.A.
3.2.2 Travel by air or air-conditioned economy class train or other means of
transportation to the place of work and back on arrival in the U.S.A.
and while traveling in the U.S.A., on work assignment, cost of travel by
air-conditioned first class train or by air or by other means of
transportation.
3.2.3 While at the Tessera's facilities, single room or equivalent hotel
accommodation. During stay on place other than Tessera's facilities,
suitable hotel accommodation shall be provided.
3.2.4 Transportation facilities to and from the place of residence to work.
3.2.5 Furnished office accommodation, secretarial assistance and support, and
expenses on facsimile, telegram, telex and telephone calls required for
the work.
3.2.6 The first aid medical care shall be provided by Tessera to Toshiba's
personnel in case of accident, injury and illness, but medical insurance
shall be provided by Toshiba for it's personnel.
Toshiba/Tessera Confidential
20
