Exhibit 2.3
INTELLECTUAL PROPERTY
ASSIGNMENT AND LICENSE AGREEMENT
THIS INTELLECTUAL PROPERTY ASSIGNMENT AND LICENSE AGREEMENT ("Agreement"),
dated as of this day of December, 1997, is made by and between Raytheon
Company, a Delaware corporation having a place of business at Lexington,
Massachusetts (hereinafter "Raytheon") and Raytheon Semiconductor, Inc., a
Delaware corporation having a place of business at Mountain View, California
(hereinafter "Company").
WHEREAS, Company is engaged in the manufacture and sale of silicon
semiconductor devices at its facilities in Mountain View and San Diego
California which business is the same business previously conducted by the
Semiconductor Division of Raytheon in said locations during the period from
January 1, 1995 to the incorporation of the Company (the "Semiconductor Division
Business");
WHEREAS, Raytheon and Company are parties to an Acquisition Agreement dated
November 25, 1997, as amended on December , 1997, which provides for the
sale of Company to ▇▇▇▇▇▇▇▇▇ Semiconductor Company, Inc. (the "Purchase
Agreement");
WHEREAS, Raytheon owns certain other Intellectual Property rights used in
the Semiconductor Business which are to be assigned and transferred to Company
and licensed back to Raytheon;
WHEREAS, Raytheon owns various Intellectual Property rights used exclusively
in the Semiconductor Division Business which are to be assigned and transferred
to the Company;
WHEREAS, Raytheon owns certain other Intellectual Property rights used in
the Semiconductor Division Business which are to be licensed to Company;
WHEREAS, Company and Raytheon wish to provide for the above referenced
assignments and licenses under the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the mutual covenants contained herein
and other good and valuable consideration, the parties hereby agree as follows:
1. DEFINITIONS OF TERMS USED IN THIS AGREEMENT
As used herein the following terms shall have the following respective
meanings:
1.1 "COMPANY PATENTS" means Patents which (a) at Closing are owned by Raytheon
or were developed by a Raytheon employee or consultant and are assignable to
Raytheon, (b) are used or have been used exclusively by the Semiconductor
Division Business and (c) are used or have been used in the manufacture,
design development, and/or sale of silicon semiconductor devices.
1.2 "COMPANY INVENTION DISCLOSURES" means Invention Disclosures which (a) at
Closing are owned by Raytheon or were developed by a Raytheon employee or
consultant and are
assignable to Raytheon, (b) are used or have been used exclusively
by the Semiconductor Division Business and (c) are used or have been used
in the manufacture, design development, and/or sale of silicon
semiconductor devices.
1.3 "COMPANY TRADEMARKS" means Trademarks which (a) at Closing are owned by
Raytheon, (b) are used or have been used exclusively by the Semiconductor
Division Business and (c) are used or have been used in the manufacture,
design development, and/or sale of silicon semiconductor devices.
1.4 "COMPANY COPYRIGHTS" means Copyrights which (a) at Closing are owned by
Raytheon or were developed by a Raytheon employee or consultant and are
assignable to Raytheon, (b) are used exclusively by the Semiconductor
Division Business and (c) are used or have been used in the manufacture,
design development, and/or sale of silicon semiconductor devices.
1.5 "COMPANY MASK WORKS" means Mask Works which (a) at Closing are owned by
Raytheon or were developed by a Raytheon employee or consultant and are
assignable to Raytheon, (b) are used exclusively by the Semiconductor
Division Business and (c) are used or have been used in the manufacture,
design, development, and/or sale of silicon semiconductor devices.
1.6 "COMPANY KNOW-HOW" means Know-How which (a) at Closing is owned by Raytheon,
(b) is used or has been used exclusively by the Semiconductor Division
Business and (c) is used or has been used in the manufacture, design,
development, and/or sale of silicon semiconductor devices..
1.7 "COMPANY IP" means Company Patents, Company Invention Disclosures, Company
Trademarks, Company Copyrights, Company Mask Works and Company Know-How.
1.8 "RAYTHEON PATENTS" means the Patents, other than Company Patents, which at
Closing are owned by Raytheon and are used in the manufacture, design
development, and/or sale of silicon semiconductor devices.
1.9 "RAYTHEON COPYRIGHTS" means Copyrights, other than Company Copyrights, which
at Closing are owned by Raytheon and are used in the manufacture, design
development, and/or sale of silicon semiconductor devices.
1.10 "RAYTHEON MASK WORKS" means Mask Works, other than Company Mask Works,
which at Closing are owned by Raytheon and are used in the manufacture,
design, development, and/or sale of silicon semiconductor devices.
1.11 "RAYTHEON LICENSED KNOW-HOW" means Know-How, other than Company Know-How,
which at Closing is owned by Raytheon and is used in the manufacture,
design development, and/or sale of silicon semiconductor devices.
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1.12 "RAYTHEON RESTRICTED LICENSED KNOW-HOW" means Raytheon Licensed Know-How
which is either (a) disclosed in written or other tangible form with
appropriate markings indicating its confidential status or (b) disclosed
orally, if identified as confidential by Raytheon at the time of initial
disclosure and thereafter summarized and confirmed in written or other
tangible form by Raytheon with appropriate markings indicating its
confidential status, which summary must be provided to Company within
thirty (30) days of the initial disclosure. Raytheon Restricted Licensed
Know-How shall not include information which (a) is developed by the
Company independently of receipt from Raytheon; (b) is or becomes publicly
known other than through the fault or negligence of the Company or of any
party receiving the subject information from Company; or (c) is rightfully
obtained by Company free of confidentiality restrictions from a third party
having the lawful right to disclose same and who did not receive such
information directly or indirectly from Raytheon.
1.13 "RAYTHEON NON-RESTRICTED LICENSED KNOW-HOW" means Raytheon Licensed
Know-How other than Raytheon Restricted Licensed Know-How.
1.14 "LICENSED PRODUCTS" means silicon semiconductor devices.
1.15 Capitalized terms used but not defined herein shall have the meanings given
them in the Purchase Agreement.
2. ASSIGNMENT BY RAYTHEON
2.1 COMPANY IP--Subject to Sections 2.4, 3.6, 3.7 and 4.5 below, Raytheon
hereby assigns and transfers to Company all right, title and interest of
Raytheon to and under the Company IP, including the right to ▇▇▇ for pre-
Closing infringement by any party other than an Affiliate of Raytheon.
2.2 DOCUMENTATION--Raytheon 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 in Company, and/or to perfect or confirm
Company's rights in, any and all right, title and interest in, to and under
any of the Company IP.
2.3 PRE-EXISTING RIGHTS--Company acknowledges that the Company IP assigned
pursuant to this Agreement may be subject to certain pre-existing rights or
licenses which may have previously been granted to, or acquired by, the
United States Government or other third parties. Any such pre-existing
rights and licenses which affect the Semiconductor Division Business as
conducted by Raytheon as of the Closing Date are listed in Schedule 3.5(c)
of the Purchase Agreement.
2.4 TRADEMARKS--Except as otherwise set forth in Section 5.7 of the Purchase
Agreement, no Trademarks are being licensed or sublicensed pursuant to this
Agreement.
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3. LICENSES AND SUBLICENSES
3.1 RAYTHEON PATENTS, RAYTHEON COPYRIGHTS AND RAYTHEON MASK WORKS--Except as
provided in Section 5.7 of the Purchase Agreement with respect to the use of
names and marks, Raytheon grants to Company a non-exclusive, worldwide,
royalty free, fully paid-up, non-transferable (except as provided in Section
3.4 and 3.5 below) license under the Raytheon Patents, Raytheon Copyrights,
and Raytheon Mask Works to use, sell, offer for sale, have sold, import,
export, make and have made Licensed Products, provided, however, Raytheon
shall not grant any license to a third party under the Raytheon Patents,
Raytheon Copyrights or Raytheon Mask Works, to use, sell, offer for sale,
have sold, import, export, make or have made Licensed Products unless such
third party license is part of a cross-licensing agreement entered into in
settlement of a bona fide infringement claim of one or more of the third
party's Patents, Copyrights or Mask Works made against Raytheon, Affiliates
of Raytheon, their successors in interest and/or their customers, agents and
distributors in connection with any product manufactured or sold by Raytheon
or any Affiliate of Raytheon, or any service provided by Raytheon or any
Affiliate of Raytheon, and except as necessary to settle any infringement
claim which is subject to Section 5.11 of the Purchase Agreement. The
aforementioned right to license the Raytheon Patents is limited to
settlement of a patent infringement suit. The aforementioned right to
license the Raytheon Copyrights is limited to settlement of a Copyright
infringement suit. The aforementioned right to license the Raytheon Mask
Works is limited to settlement of a Mask Work infringement suit.
3.2 RAYTHEON RESTRICTED LICENSED KNOW-HOW--Raytheon grants to Company a
non-exclusive, worldwide, royalty free, fully paid-up, non-transferable
(except as provided in Sections 3.4 and 3.5 below) license under Raytheon
Restricted Licensed Know-How to use, sell, offer for sale, have sold,
import, export, make and have made Licensed Products, provided, however,
Raytheon will not for a period of ten (10) years from the Closing Date grant
a license to any third party under Raytheon Restricted Licensed Know-How to
use, sell, offer for sale, have sold, import, export, make or have made
Licensed Products.
3.3 RAYTHEON NON-RESTRICTED LICENSED KNOW-HOW--Raytheon grants to Company a
non-exclusive, royalty free, fully paid-up, license under Raytheon
Non-Restricted Licensed Know-How, provided, however, Raytheon will not for a
period of ten (10) years from the Closing Date grant a license to any third
party under Raytheon Non-Restricted Licensed Know-How to use, sell, offer
for sale, have sold, import, export, make or have made Licensed Products.
3.4 SUBLICENSING--The licenses granted to Company under Sections 3.1, 3.2, and
3.3 above include the right to grant sublicenses to third parties, provided
that any such sublicensee agrees in writing to be bound by all applicable
provisions of this Agreement in the same way as and to the extent to which
Company is bound.
3.5 TRANSFERABILITY--The licenses granted to Company under Sections 3.1 and 3.2
above are not transferable by Company except in the case of a
reorganization, merger or transfer in
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which the Semiconductor Division Business is sold or transferred
by the Company to a third party, or to an Affiliate.
3.6 LICENSE TO RAYTHEON. Company hereby grants to Raytheon and Affiliates of
Raytheon, a nonexclusive, irrevocable, worldwide, royalty free, fully
paid-up, nontransferable (except as otherwise provided below or in Section
5.6 of this Agreement) license, including the right to sublicense, under (i)
the patents listed in Exhibit 1 hereto, including any other patents (such as
reissues or foreign counterparts) derived therefrom; (ii) the patent
applications listed in Exhibit 1 hereto, including all continuation,
continuation-in-part, divisional, reissue and similar applications which are
derived from any of the aforementioned patent applications, and (iii) any
patents issuing from the patent applications which are the subject of
subpart (ii) above, to make, have made, use, sell, offer for sale,
distribute, export and import products which are not Licensed Products
and to perform or have performed services which do not involve the
development or manufacture of Licensed Products, including the
right to reproduce and distribute copyrighted material and to make
derivative works therefrom as necessary in connection with the exercise of
the license in this Section 3.6. However, Raytheon and Affiliates of
Raytheon are also licensed on the same basis described above in this Section
3.6 to make, have made, use, sell, offer for sale, distribute, export and
import products which are either systems or subassemblies of systems and
which are claimed in Company IP listed in Exhibit 1 (including the right to
perform related services in connection with such products on the same basis
described above in this Section 3.6) wherein the system or subassembly
incorporates one or more Licensed Products if, and only if, the Licensed
Products (i.e., silicon semiconductor devices) (i) are purchased from
Company or any Affiliate of Company (as defined in the Purchase Agreement)
or (ii) are not available to Raytheon and Affiliates of Raytheon from
Company or an Affiliate of Company in required quantities and under
reasonable and competitive terms and conditions; and provided, however, that
the system or subassembly were not manufactured, sold or under development
by or for Company or the Semiconductor Division Business on or prior to the
Closing Date. The rights and licenses granted under Section 3.6 are not
assignable except as otherwise provided in Section 5.6 of this Agreement, or
to any successor in interest (whether by sale, merger, consolidation or
otherwise) to all or substantially all of the business to which the license
applies.
4. CONFIDENTIALITY
4.1 GENERAL COMPANY--Subject to the conditions set forth herein, Company agrees
to hold in confidence and not to divulge, in whole or in part, to any third
party (except in confidence to those of its employees and agents who require
knowledge of the same and except as otherwise provided below) any Raytheon
Restricted Licensed Know-How (including information contained in unpublished
patent applications or patent disclosures) disclosed to it pursuant to and
in accordance with this Agreement, and further agrees not to use any such
Raytheon Restricted Licensed Know-How except for the purposes expressly
authorized under Section 3.2 above. Company's obligations hereunder with
regard to any such Raytheon Restricted Licensed Know-How shall in any event
expire ten (10) years from the date of receipt.
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4.2
4.2.1 Raytheon shall, and shall use reasonable efforts to cause its Affiliates
and their respective directors, officers, employees, agents and
representatives ("Raytheon Representatives") to, hold in strict confidence
and not to use any Company Know-How in its possession or control except as
otherwise provided below. Notwithstanding the foregoing, Raytheon and
Raytheon Representatives may use and disclose such information for audit,
accounting and tax purposes, and for purposes of fulfilling disclosure and
reporting obligations but only to the extent as in the opinion of
Raytheon's counsel is required by law or regulation and also for such
other purposes as may be expressly authorized by this Agreement or by
the Acquisition Agreement.
4.2.2 Raytheon shall not, and shall use reasonable efforts to cause the Raytheon
Representatives not to, release or otherwise disclose such Company Know-
How to any third party except Raytheon Representatives who have a need to
know such and except as necessary for the purposes authorized above
provided that any such authorized recipient shall be bound by appropriate
obligations of confidentiality which are consistent with those contained
in this Section 4.2 except that provided in the case of disclosure
required by law or regulation the disclosure may be made pursuant to
the protection afforded to confidential information under the applicable
law or regulation.
4.2.3 Raytheon shall, and shall use reasonable efforts to cause the Raytheon
Representatives, to protect any such Company Know-How to prevent
the unauthorized use, disclosure, or publication of such Company
Know-How. The restrictions set forth above in this Section 4.2 shall
not apply (a) to the extent that disclosure is compelled by judicial or
administrative process, or in the opinion of Raytheon's counsel, by
other requirements of law, or (b) to any information which Raytheon can
show was (i) publicly available prior to the Closing Date or thereafter
becomes publicly available without any violation of this Agreement on
the part of Raytheon or the Raytheon Representatives or (ii) became
available to Raytheon or to any Raytheon Representative from a Person
other than Company, who, to the best of Raytheon's knowledge, was not
subject to any continuing legally binding obligation to Company to keep
such information confidential, (iii) was disclosed to others without
restriction by Company or by any party who received such Company
Know-How from Company, or (iv) was independently developed by any
Raytheon Representative without use of or reliance on Company Know-How.
4.2.4 Raytheon's obligation under this Section 4.2 shall in any event expire ten
years from the Closing Date. Raytheon's obligations under this Section 4.2
with respect to the protection of Company Know-How shall be to use the
same degree of care, but no less than reasonable care, to prevent the
unauthorized use or disclosure of such Company Know-How as it uses with
respect to the protection of its own information of like importance, and
in no event shall Raytheon or Raytheon Representatives be liable for (i)
inadvertent disclosure provided that the aforementioned degree of care has
been used and provided that, upon discovery of any such inadvertent
disclosure, Raytheon shall endeavor to prevent any further inadvertent
disclosure or (ii) for any special, indirect, consequential, incidental,
multiple or punitive damages.
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4.3 COMPELLED DISCLOSURE--Should the Company be faced with legal action or a
requirement under Government regulations to disclose Raytheon Restricted
Licensed Know-How which is subject to the confidentiality obligations under
Section 4.1 above, the Company shall forthwith notify Raytheon, and, upon
the request and at the expense of Raytheon, shall cooperate with the
Raytheon in contesting such a disclosure. Except in connection with failure
to discharge responsibilities set forth in the preceding sentence, neither
party shall be liable in damages for any disclosures legally required
pursuant to judicial action or Government regulations.
4.4 PERMITTED DISCLOSURES--Notwithstanding anything in the foregoing to the
contrary, the Company may disclose Raytheon Restricted Licensed Know-How
information or Raytheon Non-Restricted Licensed Know-How information to (i)
third parties such as vendors, contractors, customers, auditors, insurers,
counsel and the like as necessary in the ordinary course of business in
connection with the exercise of the Company's rights under this Agreement,
(ii) sublicensees or transferees pursuant to Sections 3.4 and 3.5, or (iii)
third party manufacturers, provided that, in each case, such parties are
subject to appropriate written obligations of confidentiality at least as
restrictive as those contained herein.
4.5 CLASSIFIED INFORMATION--Company acknowledges that Raytheon Licensed Know-How
and other Intellectual Property to be disclosed to Company pursuant to this
Agreement and/or the Purchase Agreement may be considered as Classified
Information by the United States Government and nothing in this Agreement or
in the Purchase Agreement shall require Raytheon to disclose Classified
Information to Company until such time as Company has received necessary
clearances from the Unites States Government to receive same.
5. MISCELLANEOUS PROVISIONS
5.1 PATENT COOPERATION--Raytheon agrees to make its employees reasonably
available to Company, at the Company's expense, to assist and otherwise
reasonably cooperate in the prosecution of all pending patent applications
included within the Company Patents and in the preparation and prosecution
of patent applications based on the Company Invention Disclosures, to
execute any and all oaths, declarations, assignments, affidavits and any
other papers in connection therewith necessary to perfect Company's rights
therein, and to cooperate in the defense of the validity of the Company
Patents. Such assistance and cooperation includes, but is not limited to,
communicating to the Company, or to its successors, assigns and legal
representatives, any facts known to the employee respecting the Invention
and testifying in any legal proceedings, signing all lawful papers,
executing divisionals, continuations, reissues and substitute applications
and making all lawful oaths.
5.2 GOVERNING LAW--The interpretation and construction of this Agreement and all
amendments hereof and waivers and consents hereunder shall, to the extent
the particular subject matter is controlled by state law, be governed by
and be construed in accordance with the substantive law of the Commonwealth
of Massachusetts without regard to the conflicts of laws principles
thereof, except that the United States Federal law shall govern any
particular subject matter controlled thereby.
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5.3 AMENDMENT OF AGREEMENT--No oral explanation or oral information be either
party hereto or its representatives shall alter the meaning or
interpretation of this Agreement. Except as otherwise expressly incorporated
herein by reference, all prior proposals and/or understandings, either
verbal or written, with regard to the subject matter of this Agreement are
hereby canceled and this Agreement constitutes the entire agreement between
the parties with regard to the subject matter hereof. No modification,
alteration, addition or change in the terms hereof shall be binding on
either party other than as set forth on or subsequent to the date hereof in
a written documents signed by a duly authorized representative of the party
to be bound thereby.
5.4 NOTICES--All notices, requests and other communications to any party
hereunder given or required to be given under this Agreement shall be
effective only if in writing and delivered personally or mailed by first
class registered or certified mail, postage prepaid, return receipt
requested, addressed to the respective addresses of the parties as follows:
IF TO RAYTHEON: IF TO COMPANY:
Raytheon Company Raytheon Semiconductor, Inc.
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ c/o Fairchild Semiconductor Corporation
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Mail Stop 01-00
Attention: Director of Licensing ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: General Counsel
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
or such other address as such party may hereafter specify in writing to the
other party for the purpose by notice to the other party, provided that if
time is of the essence, the communication shall be simultaneously sent by
telecopier to the telecopy number set forth above.
5.5 NO WAIVER--Failure of a party to insist upon strict adherence to any term of
this Agreement on any occasion shall not be considered a waiver or deprive
that party of the right to insist later on adherence thereto, or thereafter
to insist upon strict adherence to that term or any other term of this
Agreement. Any waiver must be in writing in order to be effective.
5.6 SUCCESSORS AND ASSIGNMENT--This Agreement shall inure to the benefit of, and
be binding upon, Raytheon and Company and may not be assigned in whole or in
party by Company, without the prior written consent of Raytheon, and any
such attempted assignment without such consent shall be null and void,
except that this Agreement may be assigned, transferred or sublicensed to
the extent permitted by Sections 3.4 and 3.5 above, provided that the
assignee or sublicensee agrees in writing to be bound by all applicable
provisions of this Agreement in the same way and to the same extent as
Company is bound. Any such assignment by Company shall not relieve Company
of its continuing obligations under Article 4 above. Raytheon shall have the
unrestricted right to assign this Agreement
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to any successor to its business, transferee, or otherwise, subject to the
rights and licenses that have been granted to the Company hereunder.
5.7 NO THIRD PARTY BENEFICIARIES--Nothing herein is intended to, or shall be
construed to, confer upon any Person not a party hereto any rights or
benefits hereunder.
5.8 COUNTERPARTS--This Agreement may be executed in two counterparts, each of
which shall be considered an original, but all of which together shall
constitute the same instrument.
5.9 SEVERABILITY--If any term or provision of this Agreement or the application
thereof to any party hereto or set of circumstances shall, in any
jurisdiction and to any extent, be finally held to be invalid or
unenforceable, such term or provision shall only be ineffective as to such
jurisdiction, and only to the extent of such invalidity or
unenforceability, without invalidating or rendering unenforceable any
other terms or provisions of this Agreement or under any other
circumstances or in any other jurisdiction, and the parties shall
negotiate in good faith a substitute provision which comes as close as
possible to providing the rights and obligations intended to be provided by
the invalidated or unenforceable term or provision, and puts the parties in
a position as nearly comparable as possible to the position they would have
been in but for the finding of invalidity or unenforceability, while
remaining valid and enforceable.
5.10 NO FURTHER REQUIREMENTS--Raytheon shall not be required by anything
contained in this Agreement to file in any country an application, mask
work, registration, copyright or patent, or to secure any mask work
registration, copyright or patent, or once having obtained a mask work
registration, copyright or patent, to maintain the mask work registration,
copyright or patent in force.
5.11 ASSUMPTION OF RISK--Except to the extent otherwise expressly provided to
the contrary in the Purchase Agreement, Company assumes all risk and
liability arising from its use of or reliance on Intellectual Property
rights assigned or licensed to it by Raytheon pursuant to this Agreement.
5.12 NONASSETION. For the period of the Noncompete, Company agrees not to assert
any Company IP against Raytheon, any Affiliate of Raytheon or their
customers or distributors with respect to the performance, use, offer for
sale, import, export, making (including making for Raytheon or an Affiliate
of Raytheon by others on an OEM or subcontract basis) of any product of
Raytheon or an Affiliate of Raytheon which is not a Licensed Product or of
any service of Raytheon or an Affiliate of Raytheon which is not a foundry
service for making Licensed Products, provided, however, that, in addition
to the above and to any rights granted under Section 3.6 above, the Company
shall not assert any Company IP which is listed in Exhibit 1 for the period
of this agreement against Raytheon any Affiliate of Raytheon or their
customers or distributors with respect to the performance, use, offer for
sale, import, export, making (including making for Raytheon or an Affiliate
of Raytheon by others on an OEM or subcontract basis) of any product of
Raytheon or an Affiliate of Raytheon which is not a Licensed Product or of
any service of Raytheon or an Affiliate of Raytheon which is not a foundry
service for making Licensed Products.
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5.13 DISCLAIMER OF WARRANTIES--Raytheon makes no representation, warranty or
indemnification to Company pursuant to this Agreement. All representations,
warranties and indemnifications, if any, made by Raytheon to Company
regarding the subject matter of this Agreement shall be solely as set forth
in the Purchase Agreement and without limiting the general applicability of
the foregoing, nothing in this Agreement shall be construed as:
(i) a warranty or representation by Raytheon or Company as to the
validity or scope of any intellectual property rights;
(ii) a warranty or representation by Raytheon or Company that any
manufacture, sale, lease, import, use or other disposition of
products or services after the Closing Date made pursuant to the
intellectual property rights assigned, licensed or sublicensed
hereunder will be free from infringement of intellectual
property rights of third parties; or
(iii) a requirement of Raytheon or Company to bring or prosecute
actions or suits against third parties for infringement or
misappropriate of any intellectual property rights assigned or
licensed hereunder.
5.14 In the event that any third party infringes the Raytheon Patents, Raytheon
Copyrights or Raytheon Mask Works in connection with Licensed Products and
such infringement is on a commercial scale which causes detriment to
Company's business, Raytheon shall give good faith consideration to any
request from Company that Company be permitted to take action against such
infringement provided that Raytheon does not, in its sole discretion,
believe that such action is inconsistent with, or detrimental to,
Raytheon's business interests. In the event that Raytheon elects to
permit Company to take such action, Raytheon shall permit an action to
be brought in its name to the extent required to bring the action and
Raytheon shall have a right to participate in such action insofar as
Raytheon has an interest and Company will not enter into any settlement
agreement relating to the Raytheon Patents, Raytheon Copyrights and
Raytheon Mask Works which would jeopardize the scope or validity of the
Raytheon Patents, Raytheon Copyrights or Raytheon Mask Works without the
express written consent of Raytheon.
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IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed by its duly authorized representatives:
RAYTHEON COMPANY RAYTHEON SEMICONDUCTOR, INC.
BY:___________________________ BY:____________________________
Title: Title:
IP Assignment Agreement
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EXHIBIT 1 TO THE INTELLECTUAL PROPERTY
ASSIGNMENT AND LICENSE AGREEMENT
SUBJECT PRIORITY
CASE CNTRY STATUS INVENTOR(S) CODE TITLE DATE PATENT EXP DATE
----- ----- ------- --------------- ------- ------------------------- -------- -------- --------
34990 62 4 VINN 2 621 AUTO-ZERO AMP JE1990 161166
36017 91 4 ▇▇▇ D 620 LOGIC LEVEL COMPENSATOR MY0393 56094
36017 92 4 KONDO A 620 LOGIC LEVEL COMPENSATOR MY0393 56094
36017 93 4 ▇▇▇▇▇▇ S 620 LOGIC LEVEL COMPENSATOR MY0393 56094
36288 91 4 ▇▇▇▇▇▇ D 620 PROGRAMMABLE FILTERS JL1894
36288 92 4 BEZZAM I 620 PROGRAMMABLE FILTERS JL1894 DE0197
36716 20 4 ▇▇▇▇▇▇ 3 620 DC-DC CONV CONTROLLER JE2497 86108808
36716 91 4 ▇▇▇▇▇▇ S 620 DC-DC CONV CONTROLLER JE2696 672487 OC2597
36716 92 4 ▇▇▇▇ T 620 DC-DC CONV CONTROLLER JE2696 672487 OC2597
36716 93 4 LOMBARD B 620 DC-DC CONV CONTROLLER JE2696 672487 OC2597
36718 91 4 ▇▇▇▇ D 620 ADAPTIVE NOTCH FILTER MY1496 649148 JE2697
36718 92 4 ▇▇▇▇▇ J 620 ADAPTIVE NOTCH FILTER MY1496 649148
36789 91 4 STOICHITA I 620 LARGE SWING DOWN SE3096 727818
CONVERTER
36865 91 ▇ ▇▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇...
▇▇▇▇▇ 91 4 ZHANG M ET AL CMOS RAIL-TO-RAIL
INPUT/OUT
36918 91 4 ▇▇▇▇▇▇ S 620 DUAL ADJ VOLTAGE MY0597
REGULATOR
36919 91 4 ▇▇▇▇▇▇ D 620 PROGRAMMABLE ACTIVE MY0597
FILTER
36919 92 4 BEZZAM I 620 PROGRAMMABLE ACTIVE MY0597
FILTER
31839 24 7 CATE 2 630 ANALOG MULTIPLIER MR1279 1113160 NO2498
31839 91 7 CATE T 630 ANALOG MULTIPLIER AP0778 4247789 JA2798
31839 92 7 ▇▇▇▇▇▇▇▇ J 630 ANALOG MULTIPLIER AP0778 4247789 JA2798
33055 91 7 ▇▇▇▇ H 640 CURRENT SOURCE DE2881 4437023 MR1301
SUBJECT PRIORITY
CASE CNTRY STATUS INVENTOR(S) CODE TITLE DATE PATENT EXP DATE
----- ----- ------- --------------- ------- ------------------------- -------- -------- --------
33311 91 7 ▇▇▇▇▇ J 621 SLEW-ENHANCED GAIN STAGE DE2388 4902984 FE2007
33311 92 7 VINN C 621 SLEW-ENHANCED GAIN STAGE DE2388 4902984 FE2007
34990 91 7 VINN C 621 AUTO-ZERO AMP JE1989 5061900 OC2908
34990 92 7 SEGARAM P 621 AUTO-ZERO AMP JE1989 5061900 OC2908
35670 91 7 VINN C 620 TRACK AND HOLD CIRCUIT JE2392 5315170 MY2411
35670 92 7 HANG P 620 TRACK AND HOLD CIRCUIT JE2392 5315170 MY2411
35818 91 7 ▇▇▇ D 860 ATE PIN DRIVER MY0393 ▇▇▇▇▇▇▇ DE2711
35818 92 7 KONDO A 860 ATE PIN DRIVER MY0393 ▇▇▇▇▇▇▇ DE2711
35818 93 7 ▇▇▇▇▇▇ S 860 ATE PIN DRIVER MY0393 ▇▇▇▇▇▇▇ DE2711
35861 91 7 VINN C 620 SLOW RATE BOOSTER JA1293 5317281 MY3111
35861 92 7 ▇▇▇▇▇ Y 620 SLOW RATE BOOSTER JA1293 5317281 MY3111
35875 91 7 ▇▇▇▇▇▇ M 630 HIGH RESISTANCE BILAYER AU1793 5494845 FE2713
35875 92 7 ZUBRYCKY Z 630 HIGH RESISTANCE BILAYER AU1793 5494845 FE2713
35919 91 7 TANASE G 626 FUNCTION PROGRAMMABLE PMU JA2693 5414352 MY0912
35968 91 7 ▇▇▇▇▇▇ D 630 METALIZATION PROCESS JL2291 5225040 JL0610
35993 91 7 ▇▇▇▇▇▇ M 620 RECIRCULATING VIDEO A/D FE0394 5389929 FE1412
35993 92 7 HARTULAR A 620 RECIRCULATING VIDEO A/D FE0394 5389929 FE1412
35994 91 7 ▇▇▇▇▇▇▇ W 630 THIN FILM RESISTOR JE2993 5468672 NO2112
36024 91 7 ▇▇▇ D ▇▇▇ ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ OC1811
36024 92 7 KONDO A ▇▇▇ ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ OC1811
36024 93 7 ▇▇▇▇▇▇ S 620 PIN DRIVER AMPLIFIER MY0393 ▇▇▇▇▇▇▇ OC1811
36042 91 7 ▇▇▇▇▇▇ S 620 D/A CONVERTER SWITCH JL1293 5339078 AU1611
36150 91 7 ▇▇▇ D ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ 5486867 JA2313
36150 92 7 ▇▇▇▇▇▇▇▇ F ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ 5486867 JA2313
36150 93 7 LIU W 620 DIGITAL PHASE DETECTOR NO3093 5486867 JA2313
36190 91 7 KARDONTCHIK J ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ 5566204 OC1513
36190 92 ▇ ▇▇▇ ▇ ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ 5566204 OC1513
36190 93 7 GUEDJ J ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ 5566204 OC1513
36717 91 7 ▇▇▇▇ D 620 COMB FILTER ARCHITECTURE JE1396 664032
36192 91 7 KARDONTCHIK J 626 PHASE DELAY CIRCUIT AP0894 5399995 MR2112
36192 92 7 ▇▇▇ S 626 PHASE DELAY CIRCUIT AP0894 5399995 MR2112
36298 91 7 ▇▇▇▇ D 620 DECODER WITH PHASE CNTRL SE0694 5526060 JE1113
36299 91 7 ▇▇▇▇ D 620 CHROMA/LUMA SEPERATOR SE0694 5424784
STATUS CODES COUNTRY CODES
------------- ---------------
4 Pending Applications 20 TAIWAN
7 Issued Patents 24 CANADA
62 JAPAN
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