EXHIBIT 10.40
INTELLECTUAL PROPERTY AGREEMENT
between
TEXAS INSTRUMENTS INCORPORATED,
as Purchaser
and
▇▇▇▇▇▇ CORPORATION,
▇▇▇▇▇▇ ADVANCED TECHNOLOGY (MALAYSIA) SDN. BHD
and
▇▇▇▇▇▇ SOUTHWEST PROPERTIES, INC.,
as Seller
TABLE OF CONTENTS
Page
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I. DEFINITIONS............................................................2
II. ASSIGNMENT.............................................................2
2.1. Logic Business Intellectual Property.............................2
2.2. Documentation....................................................2
III. GRANT OF LICENSE.......................................................2
3.1. Patents..........................................................2
3.2. Know-How.........................................................2
3.3. Copyrights.......................................................2
3.4. Mask Works.......................................................3
3.5. Trademarks.......................................................3
3.6. Third Party Intellectual Property................................3
3.7. Sublicense.......................................................3
3.8. Quality Control..................................................4
3.9. Identification of Patents After Closing Date.....................4
3.10. Grant-Back License for Supply Agreements.........................4
IV. TECHNOLOGY TRANSFER....................................................4
4.1. Sufficient Transfer..............................................4
(a) Identified Parts ...........................................5
(b) Identified Processes .......................................5
(c) Component Testing Software and Hardware and
Associated Documentation ...................................5
(d) Logic Product Software .....................................5
(e) Technical Data .............................................5
(f) Books and Records ..........................................5
4.2. Support..........................................................6
V. REPRESENTATIONS AND WARRANTIES.........................................6
5.1. Conflict.........................................................6
5.2. Ownership........................................................6
5.3. No Infringement by Seller........................................6
5.4. No Infringement by Third Party...................................7
5.5. Effective Transfer of Necessary Rights...........................7
VI. MISCELLANEOUS PROVISIONS...............................................7
6.1. Cooperation......................................................7
6.2. No Obligation....................................................7
6.3. Notices..........................................................8
6.4. Expenses.........................................................9
6.5. Successors and Assigns...........................................9
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6.6. Waiver...........................................................9
6.7. Entire Agreement; Disclosure Schedules...........................9
6.8. Amendments, Supplements, Etc.....................................9
6.9. Rights of the Parties............................................9
6.10. Further Assurances...............................................9
6.11. Applicable Law..................................................10
6.12. Execution in Counterparts.......................................10
6.13. Titles and Headings.............................................10
6.14. Invalid Provisions..............................................10
6.15. Attorneys' Fees.................................................10
EXHIBIT A DEFINITIONS.....................................................13
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INTELLECTUAL PROPERTY AGREEMENT
This INTELLECTUAL PROPERTY AGREEMENT (this "Agreement") is made and
entered into as of December 3, 1998, by and between Texas Instruments
Incorporated, a Delaware corporation ("Purchaser"), and ▇▇▇▇▇▇ Corporation, a
Delaware corporation, acting through its Semiconductor Sector ("▇▇▇▇▇▇"), ▇▇▇▇▇▇
Advanced Technology. (Malaysia) Sdn. Bhd, a Malaysian corporation ("HAT") and
▇▇▇▇▇▇ Southwest Properties, Inc., a Delaware corporation ("HSP") (collectively,
"Seller").
RECITALS:
WHEREAS, among other businesses, Seller presently conducts the business
(the "Commercial Logic Business") of manufacturing, marketing and selling
commercial digital logic integrated circuits, listed by part number on Schedule
6.9(a) attached to the Commercial Asset Purchase Agreement defined hereafter
(the "Commercial Logic Products");
WHEREAS, Seller desires to sell and Purchaser desires to purchase Seller's
right to manufacture, market and sell the Commercial Logic Products and certain
assets, rights and properties of Seller used or useful in connection with the
Commercial Logic Business, all on the terms and subject to the conditions set
forth in an Asset Purchase Agreement dated October 23, 1998 (the "Commercial
Asset Purchase Agreement");
WHEREAS, Seller also presently conducts the business (the "Military Logic
Business") of manufacturing, marketing and selling military digital logic
integrated circuits, listed by part number on Schedule 6.9(a) attached to the
Military Asset Purchase Agreement defined hereafter (the "Military Logic
Products");
WHEREAS, Seller also desires to sell and Purchaser also desires to
purchase Seller's right to manufacture, market and sell the Military Logic
Products and certain assets, rights and properties of Seller used or useful in
connection with the Military Logic Business, all on the terms and subject to the
conditions set forth in an Asset Purchase Agreement dated October 23, 1998 (the
"Military Asset Purchase Agreement");
WHEREAS, Seller owns or controls and has or may have various Intellectual
Property rights which relate to or are utilized in the conduct of the Commercial
Logic Business and the Military Logic Business and manufacture, marketing and
sale of the Commercial Logic Products and Military Logic Products, and which
Purchaser desires to acquire by assignment or utilize under license; and
WHEREAS, Seller wishes to grant ownership or licenses to Purchaser under
the various Intellectual Property rights owned or controlled by Seller;
NOW, THEREFORE, in consideration of the mutual covenants, representations,
warranties and agreements herein contained, and other good and valuable
consideration, the parties hereby agree as follows:
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I. DEFINITIONS
As used in this Agreement, unless the context otherwise requires,
capitalized terms defined in this Agreement shall have the meanings set forth on
Exhibit A hereto. Capitalized terms used but not defined herein have the
meanings given them in the respective applicable Commercial Asset Purchase
Agreement or Military Asset Purchase Agreement.
II. ASSIGNMENT
2.1. Logic Business Intellectual Property. Seller agrees to assign and
transfer on the Closing Date, and hereby assigns and transfers (effective on the
Closing Date) to Purchaser, all right, title and interest of Seller in and to
the Logic Business Intellectual Property included in the items listed on the
Asset Purchase Agreement Schedules 2.1(e), 2.1(f) and 2.1(g) and all other Logic
Business Intellectual Property, together with any and all of the goodwill of the
business in connection with which the Trademarks hereby assigned are used; all
right, title and interest in any and all pending applications for registration
or other protection of the same (including, without limitation, any and all
right to claim priority in connection therewith); and all rights and causes of
action to ▇▇▇, enforce or recover for past, present or future infringement,
misappropriation, dilution, unfair competition, false designation of origin or
the like of the Intellectual Property assigned hereby.
2.2. Documentation. At and after the Closing Date, each party hereto will
execute and deliver any deeds, bills of sale, assignments or assurances and take
and do any other actions and things reasonably necessary to vest, perfect or
confirm of record or otherwise, in the other party, any and all right, title and
interest in, to and under any of the rights, properties or assets of the party
acquired or to be acquired by the other party as a result of, or in connection
with, this Agreement.
III. GRANT OF LICENSE
3.1. Patents. Seller grants to Purchaser an irrevocable, perpetual,
world-wide, fully paid and royalty-free non-exclusive license under all
Invention Disclosures and Patents included in Seller Intellectual Property at
the Closing Date, to engage in the Logic Business and to make, use, sell, offer
for sale, export and import Logic Products.
3.2. Know-How. Seller grants to Purchaser an irrevocable, perpetual,
world-wide, fully-paid and royalty-free exclusive license under all Know-How
included in Seller Intellectual Property at the Closing Date, and used by Seller
in the Logic Business, to make, use, sell, offer for sale, export and import
Logic Products and other products in the Field of Use.
3.3. Copyrights. Seller grants to Purchaser an irrevocable, perpetual,
world-wide, fully-paid and royalty-free license under all Copyrights included in
Seller Intellectual Property at the Closing Date, to copy and reproduce, create
adaptive and derivative works, publicly distribute copies and reproductions,
publicly display or perform, and otherwise utilize the Copyrights in the use,
sell, offer for sale, export and import of Logic Products. Such license
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shall be subject to pre-existing rights granted to third parties, but otherwise
shall be exclusive in the Field of Use, and non-exclusive otherwise.
3.4. Mask Works. Seller grants to Purchaser an irrevocable, perpetual,
world-wide, fully-paid and royalty-free license under all Mask Works included in
Seller Intellectual Property at the Closing Date, to reproduce a Mask Work by
any means, to import or distribute a semiconductor chip product in which a Mask
Work is embodied or to induce or cause others to do any of the foregoing, for
Logic Products. Such license shall be subject to pre-existing rights granted to
third parties, but otherwise shall be exclusive in the Field of Use, and
non-exclusive otherwise.
3.5. Trademarks. Seller grants to Purchaser an irrevocable, world-wide,
fully-paid and royalty-free license to use Trademarks included in Seller
Intellectual Property and previously used by Seller in connection with Logic
Products. Such license shall be for a transitional period of two (2) years from
the Closing Date or, if longer than two (2) years, until all inventory and
work-in-progress displaying Seller's Trademarks, in existence at the Closing
Date, is exhausted. Thereupon such license and such rights will terminate. Such
license shall be subject to preexisting rights granted to third parties, but
otherwise shall be exclusive in the Field of Use, and non-exclusive otherwise.
Notwithstanding the foregoing, the parties agree that Purchaser shall have the
right, perpetually, to use all product specific identification numbers and
configurations used by Seller in connection with the Logic Products.
Purchaser shall not acquire under the terms of this Agreement any title or
interest in the name "▇▇▇▇▇▇" or "▇▇▇▇▇▇ Semiconductor" or Seller's monograms,
logos, trademarks, or any variations or combinations thereof that have any
application beyond the Logic Business. Purchaser, however, shall be entitled to
(i) market and sell without alteration all Logic Product Inventory acquired
hereunder and all Logic Products acquired under the terms of the Supply
Agreement (as hereinafter defined), which the parties acknowledge shall bear
Seller's package designation, (ii) continue to use, in connection with the
manufacture, marketing and sale of Logic Products, all materials and supplies
acquired hereunder and shall not be obligated to overstamp or otherwise alter
such materials prior to use and (iii) otherwise use the above referenced Seller
names and marks in accordance with the terms of the licenses granted in this
Article III.
3.6. Third Party Intellectual Property. To the extent not otherwise
assigned or transferred above, Seller grants to Purchaser a sublicense under any
such Third Party Logic Business Intellectual Property at the Closing Date,
subject to Purchaser's right to refuse such license, to make, use, sell, offer
for sale, export and import Logic Products. Such license shall be irrevocable,
perpetual, world-wide, fully-paid and royalty-free, exclusive in the Field of
Use and non-exclusive otherwise, to the full extent permissible, or else be on
the best other terms available under the license between Seller and the third
party, except that any Patents sublicensed hereunder shall be licensed only on a
non-exclusive basis.
3.7. Sublicense. With respect to the assets assigned in Article II herein
and the licenses granted in Sections 3.1 through 3.5, and to the full extent
permissible under Section 3.6, above, the assignment and license to Purchaser
hereunder includes, without limitation:
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(a) the right to have Seller or a third party make Logic Products
either in finished or semi-finished form (by way of example, semi-finished form"
includes (1) semiconductor wafers at any stage of their manufacture, (2) foundry
services and (3) assembly) for offer for sale, sale, use, lease, import or other
disposition directly or indirectly by Purchaser or under the trademark, trade
name, or other commercial indicia of Purchaser.
(b) the right to sublicense to any Affiliate of Purchaser.
(c) the right to assign or transfer the license by Purchaser to a
third party in connection with a merger or sale in which a third party acquires
substantially all or a major portion of the Logic Business assets acquired from
Seller hereunder.
3.8. Quality Control. To the extent the Seller Trademarks are used on or
in connection with the manufacture, sale, performance or service of Logic
Products manufactured, used, performed or sold as of the Closing Date
(hereinafter referred to as the "Trademarked Products"), Purchaser shall
manufacture, distribute, and sell the Trademarked Products in accordance with
applicable minimum quality standards used immediately preceding the Closing
Date.
3.9. Identification of Patents After Closing Date. If, subsequent to the
Closing Date, either party identifies any Patents or Mask Works Rights which are
Logic Business Intellectual Property that are not specifically identified in
this Agreement and for which Seller is obligated under Section 2.1 herein to
assign rights therein to Purchaser, then upon notice thereof Seller shall
promptly inform Purchaser of all relevant information in Seller's possession
and, at the request of Purchaser, Seller shall cooperate in execution and
delivery of assignment documentation and take and do any other actions and
things reasonably necessary to vest, perfect or confirm of record or otherwise
in Purchaser any and all right, title and interest in said Patents or Mask Works
Rights. The obligations of Seller under this Section 3.9 shall be Purchaser's
sole remedy for any failure to identity or assign Patents or Mask Works Rights
which are Logic Business Intellectual Property.
3.10. Grant-Back License for Supply Agreements. Purchaser grants to Seller
a fully-paid and royalty-free non-exclusive license under Logic Business
Intellectual Property acquired by Seller under Article II and under Seller
Intellectual Property licensed exclusively under Article III, for the duration
of and to the extent necessary for Seller to fulfill its obligations to
Purchaser under the agreements by and between Seller and Purchaser dated October
23, 1998, for the supply by Seller of Commercial Logic Products and Military
Logic Products to Purchaser (the "Commercial Supply Agreement" and "Military
Supply Agreement").
IV. TECHNOLOGY TRANSFER
4.1. Sufficient Transfer. Seller agrees to promptly, at its expense, but
in no event later than sixty (60) days after Closing Date, transfer to Purchaser
any and all information in written or electronic format and materials, in the
physical possession or control of Seller and reasonably necessary and sufficient
to carry on the business of manufacturing, marketing and selling the Logic
Products by Seller and in no event less than necessary to carry on such business
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in a commercially reasonable manner, including without limitation putting
Purchaser in possession of the following:
(a) Identified Parts -- everything needed by Seller to manufacture,
market and sell the parts identified in Schedule 6.9(a) of the Asset Purchase
Agreement.
(b) Identified Processes -- everything needed by Seller to perform
all semiconductor manufacturing processes used by Seller to manufacture Logic
Products on the Closing Date, through back-end assembly, testing and packaging,
including but not limited to the following processes: CD4000; BiCMOS FCT;
HC/HCT; and AC/ACT.
(c) Component Testing Software and Hardware and Associated
Documentation -- all component software test programs used in the Logic
Business, associated probe cards and final test fixtures (including diagrams
thereof, other associated documentation, and testing hardware and software
identified on Asset Purchase Agreement Schedule 2.1(e) herein) used in the
design and manufacture of the Logic Products, except to the extent unavailable
after diligent search and attempt to locate the same;
(d) Logic Product Software -- all design, development, application
and technical support software and associated documentation (including product
software identified on Asset Purchase Agreement Schedule 2.1(f) herein) used in
the design and manufacture of the Logic Products, except to the extent
unavailable after diligent search and attempt to locate the same;
(e) Technical Data -- all technical information used in the Logic
Business (whether in written or electronic format) or relating to the Logic
Products or to the manufacture, marketing and sale thereof, including the
information identified on Asset Purchase Agreement Schedule 2.1(g) herein and
further including, without limitation, except to the extent unavailable after
diligent search and attempt to locate the same: test flows for probe and final
test, yield data by device for wafer fab and final test, Logic Product data
books or data sheets, outstanding specification waivers, outstanding product
change notices, special current customer requirements, specific flow for current
customers, characterization packets and electrical data logs, process and
assembly qualification data, ESD data, all device revisions, all die revisions,
die size, fabrication processes, layout rules for each technology, layout data
by device, process parameter limits for each technology, process history data
for each technology, process recipe modifications by device, mount and bond
diagrams by device, quality reliability data and to the extent available,
verification rules, schematics by device, SPICE models, materials list of
packages, assembly diagrams and masks;
(f) Books and Records -- all books and records of the Logic Business
relating to product engineering, research and development, and manufacture,
marketing and sale of Logic Products, including, without limitation, customer
lists, backlog information, distributor resale data, internal price books,
delivery performance information, and all outstanding Logic Product price
quotes, except to the extent unavailable after diligent search and attempt to
locate the same.
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If, subsequent to the Closing Date, either party identifies any
information or materials which have not been delivered to Purchaser as required
under this Agreement, then upon notice thereof Seller shall promptly undertake
all reasonable steps to effect such delivery.
4.2. Support. Seller agrees to provide Purchaser after Closing Date
reasonable support to put Purchaser in a position to carry on the business of
manufacturing, marketing and selling the Logic Products at least to the extent
carried on by Seller and in no event less than in a commercially reasonable
manner, including without limitation training as requested by Purchaser or
Purchaser's employees and further demonstrations or explanations regarding any
of the materials or information referred to in Section 4.1. Such support shall
include the services of four Seller engineers and four Seller marketing
specialists to assist Purchaser during the six month period following the
Closing Date, on a full time basis during the first two months of such period
and thereafter on a part time basis as required by Purchaser. The foregoing
services will be provided to Purchaser without charge. Such services will be
provided at the locations designated by Purchaser. Seller will defray all travel
costs associated with such services, up to $50,000 in the aggregate. Purchaser
will reimburse Seller for all additional travel costs incurred at the request of
Purchaser, based on actual expenditures for coach airfare and standard business
accommodations and meals. Any support services requested by Purchaser in
addition to the foregoing shall be provided by Seller at an hourly rate of
$50.00 per hour per Seller employee, but not to exceed a day rate per employee
of $400.00.
V. REPRESENTATIONS AND WARRANTIES
5.1. Conflict. These representations and warranties are in addition to and
not in lieu of all representations and warranties set forth in the Asset
Purchase Agreement.
5.2. Ownership. Seller owns or has the right to license the Testing
Hardware and Software, the Product Software, the Technical Data and all other
intellectual property rights to be conveyed or licensed to Purchaser pursuant to
this Agreement and the Asset Purchase Agreement (collectively referred to as
"Proprietary Rights") and has the rights to sell, assign, transfer, license and
deliver, as applicable, such Proprietary Rights to Purchaser as contemplated
herein.
5.3. No Infringement by Seller.
(a) Except as noted in Subsection 5.3(b) herein, to the actual
knowledge of Seller, the Proprietary Rights do not conflict with or infringe,
and no one has asserted to Seller that such rights conflict with or infringe,
any proprietary rights owned, possessed or used by any third party. There are no
claims, disputes, actions, proceedings, suits or appeals pending against Seller
with respect to any Proprietary Rights, and to the knowledge of Seller, none has
been threatened against Seller. Except as noted in Subsection 5.3(b) herein, to
the actual knowledge of Seller, there are no facts or alleged facts which would
reasonably serve as a basis for any claim that Seller does not have the right to
use, free of any rights or claims of others, all Proprietary Rights in the
design, development, manufacture, use, sale and other disposition of any or all
of the Products and services presently being used, furnished or sold in the
conduct of the Logic Business as it is now being conducted.
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(b) Beginning in 1989 Seller received notices regarding alleged
infringement and future infringement relating to patents and patent applications
for which ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ is a named inventor. Purchaser acknowledges this
matter as described in the letter to ▇▇. ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq., dated January
14, 1998 (a copy of which Purchaser acknowledges having received including an
Exhibit A) and the complaint filed by the Lemelson Medical, Education & Research
Foundation, Limited Partnership in U.S. District Court, District of Arizona on
July 31, 1998, naming multiple defendants including Purchaser. As of the date of
this Agreement this matter remains unresolved.
5.4. No Infringement by Third Party. To the actual knowledge of Seller,
the Proprietary Rights transferred or exclusively licensed to Purchaser herein
are not infringed by any third party, and Seller has not asserted against any
third party that such rights are infringed by any third party. There are no
claims, disputes, actions, proceedings, suits or appeals pending against a third
party by Seller with respect to those rights.
5.5. Effective Transfer of Necessary Rights. Pursuant to the Asset
Purchase Agreement and the documents, instruments and agreements contemplated
thereby, Seller will either (i) license the Proprietary Rights or (ii) transfer
good title to the Proprietary Rights to Purchaser. The Proprietary Rights sold
or licensed to Purchaser pursuant to the Asset Purchase Agreement and the
documents, instruments and agreements contemplated thereby, including but not
limited to this Agreement, will transfer all necessary Intellectual Property
rights which Seller has the right and authority to transfer to Purchaser to
conduct the Logic Business, at least to the extent carried on by Seller
immediately prior to the Closing Date, with the mutual understanding that
conduct of the Logic Business by Purchaser may require that Purchaser utilize in
conjunction therewith the intellectual property rights, business organization
and capabilities presently in Purchaser's possession.
VI. MISCELLANEOUS PROVISIONS
6.1. Cooperation. Seller agrees to make its employees reasonably available
to the Purchaser to reasonably assist and otherwise reasonably cooperate in the
preparation and prosecution of all Logic Business Patents, Logic Business
Trademarks, Logic Business Copyrights, Logic Business Mask Works and Logic
Business Invention Disclosures and to execute any and all applications,
assignments, affidavits, and any other papers in connection therewith to perfect
Purchaser's rights in any country. Such assistance and cooperation includes, but
is not limited to communicating relevant facts and enabling contact with
relevant employees and cooperating in testifying in any legal proceedings,
signing all lawful papers, executing all divisional, continuations, reissues and
substitute applications, making all lawful oaths, and generally doing everything
reasonable to aid Purchaser, its successors, assigns and nominees to pursue and
enforce protection in all countries.
6.2. No Obligation. Nothing in this Agreement shall require Purchaser to
pursue or continue to pursue in any country any patent or invention registration
or the like, or trademark, copyright or mask work registration, or any similar
protection; nor to enforce the same against infringements or the like; nor to
maintain in force any current or subsequently obtained patent or invention
registration, or trademark, copyright or mask work registration, or the like.
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6.3. Notices. All notices and other communications required or permitted
hereunder will be in writing and, unless otherwise provided in this Agreement,
will be deemed to have been duly given when delivered in person or when
dispatched by electronic facsimile transfer (confirmed in writing by mail
simultaneously dispatched) or one business day after having been dispatched by a
nationally recognized overnight courier service to the appropriate party at the
address specified below:
(a) If to Seller, to:
▇▇▇▇▇▇ Semiconductor
▇.▇. ▇▇▇ ▇▇▇, ▇/▇ ▇▇-▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Esquire
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
with a copy to:
▇▇▇▇▇▇ Corporation
▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇, M/S 119 CHQ
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇, Esquire
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
(b) If to Purchaser, to:
Texas Instruments Incorporated
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇/▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
- or -
▇.▇. ▇▇▇ ▇▇▇▇▇▇, ▇/▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
with a copy to:
Texas Instruments Incorporated
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇/▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
- or -
▇.▇. ▇▇▇ ▇▇▇▇▇▇, ▇/▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Esq.
Facsimile No.: (▇▇▇) ▇▇▇-▇▇▇▇
or to such other address or addresses as any such party may from time to time
designate as to itself by like notice.
8
6.4. Expenses. Except as otherwise expressly provided herein, each party
hereto will pay any expenses incurred by it incident to this Agreement and in
preparing to consummate and consummating the transactions provided for herein.
6.5. Successors and Assigns. This Agreement will be binding upon and inure
to the benefit of the parties hereto and their respective successors and
permitted assigns, and shall be assignable or delegable by either party without
the prior written consent of the other party; provided, however, that upon
notice to Seller, Purchaser may assign or delegate any or all of their rights or
obligations under this Agreement to any Affiliate thereof or to any Person that
directly or indirectly acquires, after the Closing, all or substantially all of
the assets or voting stock of Purchaser.
6.6. Waiver. Purchaser may, by written notice to Seller, and Seller may,
by written notice to Purchaser, (a) extend the time for performance of any of
the obligations of the other party under this Agreement, (b) waive any
inaccuracies in the representations or warranties of the other party contained
in this Agreement, (c) waive compliance with any of the conditions or covenants
of the other party contained in this Agreement, or (d) waive or modify
performance of any of the obligations of the other party under this Agreement;
provided, however, that no such party may, without the prior written consent of
the other parties, make or grant such extension of time, waiver of inaccuracies
or compliance or waiver or modification of performance with respect to its
representations, warranties, conditions or covenants hereunder. Except as
provided in the immediately preceding sentence, no action taken pursuant to this
Agreement will be deemed to constitute a waiver of compliance with any
representations, warranties, conditions or covenants contained in this Agreement
and will not operate or be construed as a waiver of any subsequent breach,
whether of a similar or dissimilar nature.
6.7. Entire Agreement; Disclosure Schedules. This Agreement, which
includes the schedules and exhibits hereto, supersedes any other agreement,
whether written or oral, that may have been made or entered into by any party
relating to the matters contemplated hereby and constitutes the entire agreement
by and among the parties hereto, except as otherwise set forth in the Asset
Purchase Agreement which shall control in the event of any conflict herewith.
6.8. Amendments, Supplements, Etc. This Agreement may be amended or
supplemented at any time by additional written agreements as may mutually be
determined by Purchaser and Seller to be necessary, desirable or expedient to
further the purposes of this Agreement or to clarity the intention of the
parties.
6.9. Rights of the Parties. Nothing expressed or implied in this Agreement
is intended or will be construed to confer upon or give any Person other than
the parties hereto or their assigns any rights or remedies under or by reason of
this Agreement or any transaction contemplated hereby.
6.10. Further Assurances. From time to time, as and when requested by any
party hereto, the other party will execute and deliver, or cause to be executed
and delivered, all such documents and instruments, make such other deliveries
and take such other actions as may be reasonably necessary to consummate the
transactions contemplated by this Agreement.
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6.11. Applicable Law. This Agreement and the legal relations among the
parties hereto will be governed by and construed in accordance with the rules
and substantive Laws of the State of Florida, United States of America, without
regard to conflicts of law provisions thereof.
6.12. Execution in Counterparts. This Agreement may be executed in two or
more counterparts, each of which will be deemed an original, but all of which
together will constitute one and the same agreement.
6.13. Titles and Headings. Titles and headings to Sections herein are
inserted for convenience of reference only, and are not intended to be a part of
or to affect the meaning or interpretation of this Agreement.
6.14. Invalid Provisions. If any provision of this Agreement is held to be
illegal, invalid, or unenforceable under any present or future Law, and if the
rights or obligations under this Agreement of Seller on the one hand and
Purchaser on the other hand will not be materially and adversely affected
thereby, (a) such provision will be fully severable; (b) this Agreement will be
construed and enforced as if such illegal, invalid, or unenforceable provision
had never comprised a part hereof; (c) the remaining provisions of this
Agreement will remain in full force and effect and will not be affected by the
illegal, invalid, or unenforceable provision or by its severance from this
Agreement; and (d) in lieu of such illegal, invalid, or unenforceable provision,
there will be added automatically as a part of this Agreement a legal, valid,
and enforceable provision as similar in terms to such illegal, invalid, or
unenforceable provision as may be possible, or if such addition is not possible
the parties will negotiate in good faith a reasonable provision.
6.15. Attorneys' Fees. If any action at law or in equity is necessary to
enforce or interpret the terms of this Agreement, the prevailing party shall be
entitled to recover in such action its reasonable attorneys' fees, costs and
necessary disbursements in addition to any other relief to which it may be
entitled.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
day and year first above written.
TEXAS INSTRUMENTS INCORPORATED
By: /S/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
----------------------------------------
Name: ▇▇▇▇▇ ▇▇▇▇▇▇▇
Title: Vice President--Texas Instruments,
Manager
▇▇▇▇▇▇ CORPORATION
By: /S/ ▇▇▇ ▇▇▇▇
----------------------------------------
Name: ▇▇▇ ▇▇▇▇
Title: General Manager
▇▇▇▇▇▇ ADVANCED TECHNOLOGY (MALAYSIA)
SDN. BHD.
By: /S/ ▇▇▇▇▇ ▇. ▇▇▇▇
----------------------------------------
Name: ▇▇▇▇▇ ▇. ▇▇▇▇
Title: Director
▇▇▇▇▇▇ SOUTHWEST PROPERTIES CORP.
By: /S/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
----------------------------------------
Name: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
Title: Vice President
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EXHIBIT A
DEFINITIONS
"Affiliate" shall mean with respect to any Person, any other person who,
directly or indirectly, controls, is controlled by, or is under common control
with that Person.
"Agreement" shall mean this Intellectual Property Agreement as defined in
the preamble to this Agreement.
"Asset Purchase Agreement" (1) if the parties close on both the Commercial
Asset Purchase Agreement and the Military Asset Purchase Agreement, means both
the Commercial Asset Purchase Agreement and the Military Asset Purchase
Agreement, or either of them, as in the context is appropriate, or, (2) if the
parties close on only the Commercial Asset Purchase Agreement, means the
Commercial Asset Purchase Agreement.
"Closing Date" means the Closing Date as defined in the respective
applicable Commercial Asset Purchase Agreement or Military Asset Purchase
Agreement.
"Commercial Asset Purchase Agreement" shall mean the Asset Purchase
Agreement dated October 23, 1998, by and between Purchaser and Seller, executed
contemporaneously herewith, relating to the Commercial Logic Business and
Commercial Logic Products, as defined in the recitals to this Agreement.
"Commercial Logic Business" means the business conducted by Seller of
manufacturing, marketing and selling commercial but not military and not
radiation hardened digital logic integrated circuits
"Commercial Logic Products" means the commercial digital logic integrated
circuits products manufactured, marketed or sold directly or indirectly by
Seller in the Commercial Logic Business and listed by part number on Schedule
6.9(a) of the Commercial Asset Purchase Agreement.
"Commercial Supply Agreement" shall mean the Supply Agreement dated
__________, 1998, by and between Purchaser and Seller, executed
contemporaneously herewith, relating to the supply by Seller of Commercial Logic
Products to Purchaser, as defined in Section 3.10.
"Copyrights" means all rights associated with works of authorship,
including moral rights, registered and unregistered copyrights, registrations
and applications therefor, in all media, throughout the world.
"Field of Use" (1) if the parties close on both the Commercial Asset
Purchase Agreement and the Military Asset Purchase Agreement, means (a) any
digital logic integrated circuit manufactured by any of the CD4000, BiCMOS FCT,
HC/HCT and AC/ACT processes; and (b) any of the products identified by part
numbers listed on Schedules 6.9(a) of the Commercial Asset Purchase Agreement or
the Military Asset Purchase Agreement and manufactured by any process; or, (2)
if the parties close on only the Commercial Asset Purchase Agreement, means (a)
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any commercial digital logic integrated circuit manufactured by any of the
CD4000, BiCMOS FCT, HC/HCT and AC/ACT processes; and (1)) any of the products
identified by part numbers listed on Schedule 6.9(a) of the Commercial Asset
Purchase Agreement and manufactured by any process.
"Intellectual Property" means Patents, Trademarks, Know-How, Copyrights
and Mask Works.
"Know-How" means know-how, technology, inventions disclosed in Invention
Disclosures, trade secrets, technical information, software and source code and
documentation therefor, notebooks, drawings, and (with respect to semiconductor
devices) mask works and application specific software.
"Logic Business" (1) if the parties close on both the Commercial Asset
Purchase Agreement and the Military Asset Purchase Agreement, means the business
conducted by Seller of manufacturing, marketing and selling commercial and
military but not radiation hardened digital logic integrated circuits; or, (2)
if the parties close on only the Commercial Asset Purchase Agreement, means the
business conducted by Seller of manufacturing, marketing and selling commercial
but not military or radiation hardened digital logic integrated circuits;
"Logic Business Intellectual Property" (1) if the parties close on both
the Commercial Asset Purchase Agreement and the Military Asset Purchase
Agreement, means that portion of Seller Intellectual Property which relates
directly to and is used exclusively in the Logic Business or Logic Products; or,
(2) if the parties close on only the Commercial Asset Purchase Agreement, means
that portion of Seller Intellectual Property which relates directly to and is
used exclusively in the Commercial Logic Business or Commercial Logic Products.
"Logic Products" (1) if the parties close on both the Commercial Asset
Purchase Agreement and the Military Asset Purchase Agreement, means the
commercial and military digital logic integrated circuits products manufactured,
marketed or sold directly or indirectly by Seller in the Logic Business and
listed by part number on Schedules 6.9(a) of the Commercial Asset Purchase
Agreement or the Military Asset Purchase Agreement; or, (2) if the parties close
on only the Commercial Asset Purchase Agreement, means the commercial digital
logic integrated circuits products manufactured, marketed or sold directly or
indirectly by Seller in the Commercial Logic Business and listed by part number
on Schedule 6.9(a) of the Commercial Asset Purchase Agreement.
"Mask Works" means all registered or unregistered mask work rights, mask
work registrations and mask work applications, throughout the world.
"Military Asset Purchase Agreement" shall mean the Asset Purchase
Agreement dated October 23, 1998, by and between Purchaser and Seller, executed
contemporaneously herewith, relating to the Military Logic Business and Military
Logic Products, as defined in the recitals to this Agreement.
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"Military Logic Business" means the business conducted by Seller of
manufacturing, marketing and selling Military but not commercial and not
radiation hardened digital logic integrated circuits.
"Military Logic Products" means the Military digital logic integrated
circuits products manufactured, marketed or sold directly or indirectly by
Seller in the Military Logic Business and listed by part number on Schedule
6.9(a) of the Military Asset Purchase Agreement.
"Military Supply Agreement" shall mean the Supply Agreement dated
_________, 1998, by and between Purchaser and Seller executed contemporaneously
herewith, relating to the supply by Seller of Military Logic Products to
Purchaser, as defined in Section 3.10.
"Patents" means patents, utility models and all similar government grants
of rights to inventions, and all applications and related rights therefor
(including any and all divisions, continuations, continuations in-part,
reissues, renewals, reexaminations and extensions thereof), throughout the
world.
"Person" has the same meaning as defined in the Asset Purchase Agreement.
"Proprietary Rights" shall have the meaning ascribed to such term in
Section 5.2 of this Agreement.
"Purchaser" shall have the meaning ascribed to such term in the preamble
to this Agreement.
"Seller" shall have the meaning ascribed to such term in the preamble to
this Agreement.
"Seller Intellectual Property" means (a) all Intellectual Property owned
or controlled by Seller or an Affiliate of which Seller owns a majority or
controlling interest; and (b) all Intellectual Property owned or controlled by a
third party and licensed to Seller or an Affiliate of which Seller owns a
majority or controlling interest and which Intellectual Property includes a
right of assignment transfer or sublicense that gives a right to assign or
transfer to, or sublicense Purchaser.
"Seller Products" means all products and services that are being
manufactured or performed by Seller at any time, other than Logic Business
Products that are being manufactured or performed by Seller as of the Closing
Date.
"Technical Data" shall have the meaning ascribed to such term in Section
4.1(e) of this Agreement.
"Third Party Logic Business Intellectual Property" means Intellectual
Property owned or controlled by a third party and licensed to Seller, or an
Affiliate of which Seller owns a majority or controlling interest, under an
exclusive license which provides Seller a right of assignment or transfer or
sublicense that gives a right to assign or transfer or sublicense Purchaser and
which relates exclusively to the Logic Business or Logic Products, or is used or
held for use exclusively in the Logic Business.
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"Trademarks" means all registered and unregistered trademarks, service
marks, trade names, symbols, labels, packages, configuration of goods, words,
slogans, phrases, numerals, or devices or combinations thereof, capable of
distinguishing goods or services from goods or services of others, and all
registrations and applications therefore, now existing or hereafter filed,
throughout the world.
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