EXHIBIT 2.16
PATENT ASSIGNMENT AND SERVICES AGREEMENT
THIS PATENT ASSIGNMENT AND SERVICES AGREEMENT (this "Agreement") is made as
of the 13th day of August, 1999, among ▇▇▇▇▇▇ Corporation ("▇▇▇▇▇▇"), a Delaware
corporation, ▇▇▇▇▇▇ Semiconductor Patents, Inc., a Delaware corporation, and
intersil holding Corporation, a Delaware corporation ("Parent").
WHEREAS, ▇▇▇▇▇▇, intersil Corporation, a Delaware corporation, and Parent
have entered into an Amended and Restated Master Transaction Agreement dated as
of June 2, 1999 (the "Master Agreement"), which provides for the sale by Sellers
(as defined in Exhibit A to the Master Agreement) and the purchase by Buyer of
certain of the assets used in the operations of the Business (as defined in
Exhibit A to the Master Agreement);
WHEREAS, certain assets constituting, and rights relating to, certain
patents constitute an important component of the Business; and
WHEREAS, in connection with the transactions contemplated by the Master
Agreement, Buyer desires to acquire, or to acquire the right to use, certain
patents and inventions of the Business, and ▇▇▇▇▇▇ has agreed to transfer or
otherwise make available to Buyer such patents and inventions;
NOW, THEREFORE, in consideration of the mutual promises contained herein
and in the Master Agreement, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereto
agree as follows:
1. Definitions and Rules of Construction. Exhibit A to the Master Agreement
is incorporated herein by reference.
2. Representations and Warranties of ▇▇▇▇▇▇. ▇▇▇▇▇▇ represents and warrants
to Buyer as hereinafter set forth:
a) To the Sellers' IP Knowledge, Schedule 2(a) lists all Patents Type
1.
b) To the Sellers' IP Knowledge, Schedule 2(b) lists all Invention
Disclosures.
c) Except as set forth on Schedule 2(a) and/or 2(b), respectively, to
the Sellers' IP Knowledge, one or more of the Sellers has good and
transferable title to all Patents Type 1 and Invention Disclosures, subject
to pre-existing license rights, including License Agreements as set forth
in Schedule 2(a) and/or 2(b).
d) Schedules 2(a) and 2(b) list all threatened or pending third party
suits or notices thereof, written or oral claims or notices to which the
Business Entities, or any one or more of them, is a party or recipient, or
potential suits or claims of which Sellers, to Sellers' IP Knowledge, are
aware, and which relate to the validity or enforceability of a Patents
Type 1.
3. Patent Transfers to Buyer. With the exception of the patents listed on
Schedule 3 (the "Retained Patents"), Sellers hereby transfer and assign to Buyer
all of Sellers' right, title and interest in and to Patents Type 1 and Invention
Disclosures, subject to pre-existing license rights, including License
Agreements; provided that Sellers have the exclusive right to grant
non-exclusive licenses, consistent with other license agreements entered into by
Sellers, in Patents Type 1 and Invention Disclosures to Winbond and Macronics
and their Affiliates with which Sellers are presently engaged in patent
infringement litigation.
4. Patent License to Buyer. Sellers hereby grant to Buyer a royalty-free,
worldwide, non-exclusive license under Patents Type 2 and Retained Patents to
make, have made, use, and sell Products, without the right to grant sublicenses.
5. Post-Closing Recording of Transfers Concerning Patents. Patents Type 1
are owned by either ▇▇▇▇▇▇ or ▇▇▇▇▇▇ Semiconductor Patents, Inc. ("HSPI"). The
record owners of Patents Type 1 owned by HSPI include HSPI's predecessors. At
Buyer's request, Sellers will, as soon as practicable, deliver to Buyer, in form
and substance reasonably satisfactory to Buyer, file and record, or cause to be
delivered, filed and recorded, (a) in the United States Patent and Trademark
Office, assignments to Buyer of the United States-issued patents and
applications therefor included in Patents Type 1 that are owned by ▇▇▇▇▇▇, and
(b) in the appropriate offices of foreign jurisdictions, assignments to Buyer,
or one or more of its designated Subsidiaries, of foreign-issued patents and
applications therefor included in Patents Type 1 that are owned by ▇▇▇▇▇▇. Such
assignments shall be in form and substance reasonably satisfactory to Buyer and
its counsel and shall be prepared, delivered, and filed for recordation as soon
as practicable. With respect to Patents and applications therefor owned by HSPI,
upon written request of Buyer, Sellers will provide reasonable assistance to
Buyer in contacting Sellers' predecessors with respect to initiating record
transfers of such Patents and applications. After Sellers' predecessors have
effected record transfers to Sellers, Sellers, upon written request and in the
manner described above, will effect record transfers to Buyer. Buyer shall
promptly reimburse Sellers for all out-of-pocket expenses, and Sellers'
predecessors for all out-of-pocket expenses and reasonable overhead charges, if
any, incurred under this Section 5.
6. Additional Transfers to Buyer. If it is determined after the Closing
Date that any of the Patents or Invention Disclosures intended to be licensed or
transferred pursuant to this Agreement were not transferred, as the sole remedy
for such failure to transfer, Sellers agree to make such transfer, to the extent
Sellers had the right to do so as of the Closing Date, upon discovery by Sellers
or the written request of Buyer.
7. Reassignment of Patents to Sellers. Buyer agrees that, upon Sellers'
reasonable written request, Buyer and its Subsidiaries shall reassign to Sellers
or their designated Subsidiaries any Patent that does not constitute Patents
Type 1 that may be or may have been inadvertently transferred by Sellers, or one
or more of their Subsidiaries, to Buyer, or one or more of its Subsidiaries.
8. Additional Agreements.
(a) In support of the patenting and utilization of Invention
Disclosures by Buyer or the Transferred Subsidiaries, Sellers agree, upon
the written request of Buyer, to make corresponding assignments to Buyer or
such Subsidiaries as may be appropriate, of its rights and remedies against
the inventors thereof, or any of them, so far as relating to such
unpatented inventions and arising by operation of law, estoppel,
implication or express contract, including, without limitation, those
rights as expressed in contracts between Sellers and present and past
employees and consultants.
(b) Sellers represent that all rights in Patents and in Invention
Disclosures owned or held by Buyer or the Transferred Subsidiaries after
the Closing Date will be subject to the rights and licenses granted to
others in License Agreements in or to such Patents and Invention
Disclosures existing prior to the Closing Date.
(c) If the assignment of any invention or Patent, or the grant of any
non-assertion hereunder, would impose or result in any obligation of
Sellers to make any payments under Applicable Law or by reason of agreement
existing prior to the Closing Date, excepting only as such payment may be
required to be made to a Subsidiary of Sellers, but including any such
payments as may be due upon licensing (but not for Sellers' own use) to
inventors under the laws of any country, then and in such event the
assignment or non-assertion shall be effective as of the Closing Date, but
shall be subsequently rescindable by Sellers unless and until Buyer
undertakes by binding instrument in writing to make such payment in the
place and stead of Sellers. Sellers shall notify Buyer in writing at least
sixty (60) days in advance of any such obligation(s) to make payments which
are within its reasonable knowledge.
(d) Except for the express representations and warranties in this
Agreement or the Master Agreement, no warranty or representation is hereby
given or implied with respect to the validity of any Patent.
(e) Except as otherwise expressly provided herein, no obligation is
hereby assumed by Buyer or Sellers or their Subsidiaries to maintain,
prosecute, enforce or litigate, file, assert, or defend any Patent or
Patent to issue on an Invention Disclosure within the scope of this
Agreement.
(f) The rights transferred or granted to, or retained by, any party
under this Agreement may be transferred or granted to others by such party
together with the business to which such rights pertain, or pro tanto with
a sale of a part of that business; provided that such transfer or grant
shall not diminish or otherwise adversely affect the rights held or
retained by the party hereto not involved in such transfer.
(g) In the event that Buyer shall contemplate or commence any judicial
or administrative proceedings under any Patents Type 1 or Patents to issue
on Invention Disclosures, Sellers shall cooperate with Buyer in respect of
such proceeding or contemplated proceeding. Sellers' cooperation shall
include: providing relevant information and documents that are in Sellers'
possession, and making personnel available on reasonable request for
interview by counsel, and for deposition and trial testimony if reasonably
deemed necessary or desirable. Buyer shall reimburse Sellers for all of
Sellers' expenses.
9. Patent-Related Services.
(a) On or prior to the date hereof, Sellers shall have provided to
Buyer as Schedule 9 to this Agreement a report listing all Patent dockets
and the names of attorneys, law firms or foreign patent agents, as the case
may be, currently assigned to the preparation and prosecution of all
pending patent applications that are Patents Type 1 and all Invention
Disclosures assigned for preparation and filing of patent applications in
the United States and foreign jurisdictions. Such report accurately
identifies (i) all United States applications for Patents Type 1 that have
foreign statutory bar dates (i.e., dates by which foreign or international
patent applications must be filed) (x) between the dates hereof and
September 30, 1999 and (y) on or after October 1, 1999 but before January
1, 2000, but which have not, as of the date hereof, been approved or
rejected by the ▇▇▇▇▇▇ Semiconductor Sector for foreign filing, and (ii)
all maintenance fees (United States and foreign) on Patents Type 1 that are
due (x) between the date hereof and September 30, 1999 and (y) on or after
October 1, 1999 but before January 1, 2000. Sellers agree to cooperate with
Buyer, at Buyer's expense, to transfer such information to a database to be
operated by Buyer.
(b) Sellers have paid, or authorized payment at Sellers' expense, of
the maintenance fees referred to in Section 9(a)(ii) that are due between
the date hereof and September 30, 1999. Buyer shall be responsible for all
maintenance fees (United States and foreign) on Patents Type 1 that are due
on or after October 1, 1999.
(c) Sellers have notified the attorneys, law firms and foreign patent
agents identified on the list referred to in Section 9(a) of the
transactions contemplated by the Master Agreement and this Agreement,
including the assignment hereunder to Buyer to all Patents Type 1 and
Invention Disclosures.
(d) Effective upon the Closing Date, Buyer shall be responsible for
the preparation and prosecution of all Patents Type 1 and Invention
Disclosures with Governmental Authorities in the United States.
(e) Upon the written request of Buyer and at Buyer's expense, Sellers
will, through their foreign patent agents, provide communications to, and
receive communications from, foreign Governmental Authorities regarding
authorizations, patent filings and prosecution responses for a period of up
to ninety (90) days after the Closing Date.
(f) Buyer hereby grants to Sellers a power of attorney to act on
behalf of Buyer and to direct attorneys and agents on behalf of Buyer with
respect to preparation, filing, prosecution and maintenance, as the case
may be, for Patents Type 1 and Invention Disclosures for a period of ninety
(90) days after the Closing Date to the extent necessary or appropriate to
carry out the transition activities contemplated by this Section 9. This
power of attorney may be implemented by any of the patent counsel of ▇▇▇▇▇▇
Corporation or through the attorneys, law firms and foreign patent agents
retained by Seller including those persons or law firms expressly
identified on the list referred to in Section 9(a) such that those persons
and law firms are authorized to rely upon this power of attorney. Unless
there is insufficient time, prior to exercising a Power of Attorney, the
Buyer shall be given the opportunity to comment on any pending action and
such comments must be accepted by the Person exercising the Power of
Attorney.
(g) Except as expressly provided in this Section 9, all patent
application filing costs, all prosecution costs for pending applications
and all maintenance costs for the Patents Type 1 and Invention Disclosures
shall be borne by Sellers if due or incurred prior to the Closing Date, and
shall be borne by Buyer if incurred after the Closing Date.
10. Assignment of Retained Patents. On the third anniversary of the Closing
Date, Sellers shall transfer and assign to Buyer all of Sellers' right title and
interest in and to the Retained Patents referred to in Section 3; provided that
if any of the Retained Patents are the subject of litigation at that time, then
such Retained Patents shall not be transferred or assigned until the conclusion
of such litigation either by settlement or a final, nonappealable judgment; and
provided further that, if at the time any Retained Patents are assigned to Buyer
there exists any binding obligations on the part of third parties to make
royalty or other payments with respect to such Retained Patents, then the right
to receive such payments shall be retained by Sellers.
11. Confidentiality.
a) For a period of three years following the Closing, as to Patents
Type 1 and Invention Disclosures transferred and assigned hereunder,
Sellers and their Subsidiaries shall, and, as to Patents Type 2 and related
information Buyer and its Subsidiaries shall, (i) maintain the
confidentiality of, and (ii) not divulge, to any person, entity or
governmental agency, any confidential or proprietary information concerning
the Patent Applications and Invention Disclosures and related information
except with the prior written consent of the owner thereof or to the extent
that such information is required to be divulged by legal process;
provided, however, that Buyer, Sellers and their Subsidiaries shall not be
subject to the obligation of confidentiality for information that (x)
otherwise becomes lawfully available after the Closing Date on a
nonconfidential basis from a third party who is not under an obligation of
confidentiality to the other party or its Subsidiaries or (y) is or becomes
generally available to the public without breach of this Agreement or (z)
is inadvertently disclosed despite the exercise of care as set forth in
Section 11(b) below and despite reasonable efforts to mitigate the effect
thereof.
b) Each of the parties, in carrying out its obligations of
confidentiality set forth in this Section 11, shall follow those
procedures, and observe that standard of care, that such party follows and
observes with respect to its other confidential information and proprietary
data that is not the subject matter of this Agreement.
12. Survival. The representations and warranties of Sellers set forth in
this Agreement, including the Schedules hereto, shall survive until the fifth
anniversary of the Closing Date.
13. Agreement Conventions. Exhibit B to the Master Agreement is
incorporated herein by reference.
IN WITNESS WHEREOF, the parties each have caused this Agreement to be duly
executed by a duly authorized officer and delivered in its name and on its
behalf, all as of the day and year first above written.
▇▇▇▇▇▇ CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Vice President
▇▇▇▇▇▇ SEMICONDUCTOR PATENTS, INC.
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Vice President
INTERSIL HOLDING CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: CEO
SCHEDULES
2(a) List of Patents Type 1
2(b) List of Invention Disclosures
3 List of Retained Patents
