Video Processor Design License Agreement
Exhibit 10.02
***CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS
BEEN FILED WITH THE SECURITIES EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
This Video Processor Design License Agreement (the “Agreement”) is made and entered into as of
the Effective Date set forth on the signature page below, by and between Silicon Image, Inc., a
Delaware corporation, with its principal place of business at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇., ▇▇▇▇▇▇▇▇▇. ▇▇
▇▇▇▇▇ (“SIMG”), and Sunplus Technology Co., Ltd., a Taiwanese corporation with its principal place
of business at 19, Innovation First Road, Hsinchu Science Park, Taiwan 300, R.O.C. (“Sunplus”)
Recitals
Whereas, each party desires to independently develop one or more integrated circuit products:
Whereas, each party desires to grant the other a license to use certain technology,
documentation, and intellectual property rights for various purposes, including the manufacture,
marketing, selling, and distribution of integrated circuit products; and,
Whereas, the parties are entering into that certain Video Processor Development, Marketing,
and Sales Agreement, pursuant to which the parties will be cooperating in the development of
video-processor products (such agreement, the “Partnership Agreement”),
Now, therefore, the parties, in consideration of the mutual rights and obligations set forth
herein, hereby agree as follows:
| 1. | Definitions. |
“Deficient” shall have the meaning set forth in Section 2.4.
“Intellectual Property Rights” means patent rights (including patent applications and
disclosures), continuations, continuations-in-part, rights of priority, copyright rights, moral
rights, mask work rights, trade secret rights, know-how, and any other intellectual property or
proprietary rights recognized in any country or jurisdiction in the world, now or hereafter
existing, and whether or not filed, perfected or recorded.
“SiI8500” means that certain videoprocessor product that, as of the Effective Date, has been
developed, is being developed, or will be developed by Sunplus in accordance with the Partnership
Agreement.
“SIMG Deliverables” means the deliverables set forth and so identified in Exhibit E.
Confidential Information of the Parties
“SIMG Licensed Subject Matter” means any and all SIMG Deliverables, collectively and
individually and in whole and in part and excluding Third Party Components, that have been accepted
by Sunplus in accordance with Section 3.
“Standards Body” means an entity that (i) develops, coordinates, promulgates, revises, amends,
updates, interprets, and/or otherwise maintains a technical standard and (ii) makes available
licenses to such standard on a non-discriminatory basis.
“Sunplus Deliverables” means the deliverables set forth and so identified in Exhibit E.
“Sunplus Licensed Subject Matter” means any and all Sunplus Deliverables, collectively and
individually and in whole and in part and excluding Third Party Components, that have been accepted
by SIMG in accordance with Section 3.
“Support and Maintenance Period” shall have the meaning set forth in Exhibit D.
“Third Party Component” shall have the meaning set forth in Section 2.4.
| 2. | License Grants and Ownership. |
2.1 Sunplus Technology License. Subject to the terms and conditions set forth in Exhibit B,
Sunplus hereby grants SIMG an irrevocable, perpetual, fully paid-up, royalty-free, unrestricted,
worldwide license under all of Sunplus’ Intellectual Property Rights to:
(a) use, modify, reproduce, and copy the Sunplus Licensed Subject Matter in any manner and in
any format, in whole and/or part;
(b) create, prepare, develop, make, have made, reproduce, and use derivative works and/or
improvements of the Sunplus Licensed Subject Matter in any manner and in any format, in whole
and/or part;
(c) offer to sell, sell, import, license, distribute (through one or more tiers of
distribution), and otherwise dispose of, on a stand-alone basis and/or in combination with other
technology(ies) and/or other product(s), the Sunplus Licensed Subject Matter, in whole and/or part
and/or derivative works and/or improvements of the Sunplus Licensed Subject Matter, in whole and/or
part, in each case in any manner and in any format; and,
(d) sublicense the rights set forth in subsections (a) through (d);
provided that such license shall become effective with respect to each portion of the Sunplus
Licensed Subject Matter as of the date of the acceptance by SIMG of the applicable Sunplus
Deliverable(s) in accordance with Section 3. Sunplus acknowledges and agrees that, subject to the
terms and conditions set forth in Exhibit B, the foregoing license shall be construed to provide
SIMG with a license to perform any and all activities involving the Sunplus Licensed Subject Matter
that would otherwise infringe Sunplus’ Intellectual Property Rights worldwide.
Confidential Information of the Parties
2.2 SIMG Technology License. Subject to the terms and conditions set forth in Exhibit B, SIMG
hereby grants Sunplus an irrevocable, perpetual, fully paid-up, royalty-free, unrestricted,
worldwide license under all of SIMG’s Intellectual Property Rights to:
(a) use, modify, reproduce, and copy the SIMG Licensed Subject Matter in any manner and in any
format, in whole and/or part;
(b) create, prepare, develop, make, have made, reproduce, and use derivative works and/or
improvements of the SIMG Licensed Subject Matter in any manner and in any format, in whole and/or
part;
(c) offer to sell, sell, import, license, distribute (through one or more tiers of
distribution), and otherwise dispose of, on a stand-alone basis and/or in combination with other
technology(ies) and/or other product(s), the SIMG Licensed Subject Matter, in whole and/or part
and/or derivative works and/or improvements of the SIMG Licensed Subject Matter, in whole and/or
part, in each case in any manner and in any format; and,
(d) sublicense the rights set forth in subsections (a) through (d);
provided that such license shall become effective with respect to each portion of the SIMG Licensed
Subject Matter as of the date of the acceptance by Sunplus of the applicable SIMG Deliverable(s) in
accordance with Section 3. SIMG acknowledges and agrees that, subject to the terms and conditions
set forth in Exhibit B, the foregoing license shall be construed to provide Sunplus with a license
to perform any and all activities involving the SIMG Licensed Subject Matter that would otherwise
infringe SIMG’s Intellectual Property Rights worldwide.
2.3 Ownership. As between the parties, each party shall own any and all rights, title, and
interest in and to the Licensed Subject Matter that it licenses to the other party and the
Intellectual Property Rights contained therein, and nothing in this Agreement shall be construed to
grant to either party any ownership right or interest, other than the licenses set forth herein, in
or to the Licensed Subject Matter licensed to it by the other party and/or the Intellectual
Property Rights contained therein. Except as expressly set forth in this Agreement, no other rights
or licenses are granted by either party to the other, by implication, estoppel or otherwise.
Notwithstanding the foregoing, to the extent that any new developments and/or inventions are (i)
jointly created by the parties in the performance of the services set forth in Exhibit D, all
Intellectual Property Rights therein shall be jointly owned by the parties, neither party having a
duty to account to the other for the exploitation thereof, and/or (ii) created by either party
alone in the performance of the services set forth in Exhibit D and such developments and/or
inventions relate to the Licensed Subject Matter, all Intellectual Property Rights therein shall be
owned by such party and the other party shall receive a license to such developments and/or
inventions that is coextensive and coterminous with the license its received above to the owner’s
Licensed Subject Matter (i.e., such developments and/or inventions shall be deemed to be Licensed
Subject Matter).
2.4 Third Party Intellectual Property Rights. Exhibit C sets forth a list of the third party
components that are incorporated within and/or intellectual property rights of third parties that
are necessary for the licensed use(s) of each party’s Licensed Subject Matter as delivered to
Confidential Information of the Parties
and accepted by the other party (each, solely to the extent listed in Exhibit C, a “Third
Party Component”). Except as otherwise set forth in Exhibit C, each party is responsible for
obtaining its own licenses to such Third Party Components. Each party shall provide prompt written
notice to the other in the event that such party becomes aware that such list is incomplete and/or
incorrect (“Deficient”), such notice to set forth the manner in which such list is Deficient. In
the event that such list is Deficient as of the Effective Date and either party, at any time,
becomes aware that such list is Deficient, the party responsible for the Deficiency (i.e., the
party whose Licensed Subject Matter incorporates such component and/or requires such rights for its
licensed use(s)) shall, at its sole expense, procure the necessary rights to correct such
Deficiency without amending the list (i.e., the responsible party shall be fully liable for
procuring such rights, at its sole expense, without materially restricting the rights of the other
party hereunder). EXCEPT TO THE EXTENT THAT SUCH DEFICIENCY CONSTITUTES A BREACH OF THE WARRANTIES
SET FORTH IN SECTION 6 (I.E., THE RESPONSIBLE PARTY HAD KNOWLEDGE OF SUCH DEFICIENCY AS OF THE
EFFECTIVE DATE), THE FOREGOING OBLIGATION SHALL BE THE RESPONSIBLE PARTY’S SOLE LIABILITY AND THE
OTHER PARTY’S SOLE REMEDY FOR SUCH DEFICIENCY.
| 2.5 | Injunctive Relief. |
(a) During the five (5) year period following the Effective Date, in the event that either
party is in breach of the licenses set forth in Sections 2.1 and 2.2 and/or any other provision
contained in this Agreement, such party acknowledges and agrees that there may be no adequate
remedy at law for such breach and that the other party (the “Offended Party”) may be entitled, in
addition to money damages, to equitable relief, provided that the Offended Party may only seek such
relief strictly in accordance with the following protocol:
(i) the Offended Party shall provide the allegedly breaching party (the “Accused Party”) with
prompt written notice of the alleged breach (such notice, the “Notice of Alleged Breach”);
(ii) the Accused Party shall have thirty (30) days following its receipt of such Notice of
Alleged Breach to either cure or deny such alleged breach;
(iii) in the event that the Accused Party fails to either cure or deny such alleged breach
within such thirty (30) day period, or if the parties disagree that such breach has occurred,
members of each party’s senior management shall meet within sixty (60) days of the Accused Party
receiving such Notice of Alleged Breach to discuss the alleged breach and negotiate in good faith a
resolution to the alleged breach;
(iv) in the event that the members of each party’s senior management fail to negotiate in good
faith a resolution to the alleged breach within such sixty (60) day period, the parties shall
submit the dispute to mediation by the American Arbitration Association (“AAA”), such mediation to
conclude no later than ninety (90) following the Accused Party’s receipt of such Notice of Alleged
Breach; and,
(v) in the event that the parties fail to resolve the dispute by mediation within such ninety
(90) day period, the Offended Party may file a lawsuit seeking damages and
Confidential Information of the Parties
equitable relief, provided that in no event shall it be entitled to any equitable relief prior
to the rendering of a final judgment upholding the Offended Party’s allegation of such breach
(e.g., it shall not be entitled to preliminary injunctions, temporary restraining orders, etc.).
Each party hereby waives any right it may otherwise have to preliminary equitable relief (e.g.,
preliminary injunctions, temporary restraining orders, etc.) and/or any right it may otherwise have
to seek such preliminary equitable relief, and except to the extent that it strictly complies with
the foregoing protocol during such five (5) year period, each party hereby waives any right it may
otherwise have to equitable relief of any kind and/or any right it may otherwise have to seek such
equitable relief.
(b) As of the fifth anniversary of the Effective Date, in the event that either party is in
breach and/or allegedly in breach of the licenses set forth in this Section 2.1 and 2.2 and/or any
other provision contained in this Agreement, the other party acknowledges and agrees that in no
event shall it be entitled to any equitable relief of any kind (including preliminary equitable
relief, equitable relief rendered after final judgment, injunctions of any kind, and/or any other
prohibitions) that may in any way limit and/or interfere with the other party’s exercise of its
irrevocable licenses set forth in Sections 2.1 and 2.2, and each party hereby waives any right it
may otherwise have to any such equitable relief and/or any right it may otherwise have to seek such
equitable relief.
3. Delivery and Acceptance. The delivery and acceptance of the parties’ respective Deliverables
shall be performed by the parties in accordance with the process and criteria set forth in Exhibit
A.
4. Support and Maintenance. The parties shall provide support, maintenance, and training services
in accordance with the terms and conditions set forth in Exhibit D.
| 5. | Consideration. |
| 5.1 | Fees. |
(a) In consideration for the delivery of the Sunplus Deliverables and the granting of the
associated licenses, SIMG will pay Sunplus USD 35,000,000 (exclusive of any taxes) in accordance
with the following milestone schedule:
(i) USD 10,000,000 shall be due upon the mutual execution of the Agreement and payable
fourteen (14) days thereafter;
(ii) USD 5,000,000 shall be due upon the completion of Milestone 4 as set forth in the Sunplus
Delivery Schedule contained in Section 1 of Exhibit A (i.e., SIMG’s acknowledgment of the
completion of the delivery by Sunplus of each and every Sunplus Deliverable) and payable sixty (60)
days thereafter;
(iii) USD 7,500,000 shall be due upon the completion of Milestone 5 as set forth in the
Sunplus Delivery Schedule contained in Section 1 of Exhibit A (i.e., the acceptance by SIMG of each
and every Sunplus Deliverable) and payable sixty (60) days thereafter;
Confidential Information of the Parties
(iv) USD 5,000,000 shall be due upon the determination that, in accordance with Section 3.2 of
the Partnership Agreement and using mutually agreed upon procedures, documentation, and
check-lists, the SiI8500 complies with the applicable portions of the unamended Product
Specifications (i.e., as it appears in the Partnership Agreement) and payable sixty (60) days
thereafter; and,
(v) USD 7,500,000 shall be due upon the earlier of (i) the parties’ mutual agreement that, in
accordance with Section 3.4(b) of the Partnership Agreement and using mutually agreed upon
release-to-production procedures, documentation, and check-lists, the SiI8500 complies with the
mutually agreed upon RTP Specifications (as defined in the Partnership Agreement) and payable sixty
(60) days thereafter or (ii) April 1, 2008 and payable sixty (60) days thereafter.
(b) In consideration for the delivery of the SIMG Deliverables and the granting of the
associated license, Sunplus will pay Silicon Image USD 5,000,000 (exclusive of any taxes), such
amount to be due upon the completion of the delivery and acceptance of the SIMG Deliverables in
accordance with Section 3 of the Agreement and payable sixty (60) days thereafter.
(c) In consideration for the fulfillment of Sunplus’ support and maintenance obligations set
forth in Section 4 of the Agreement, SIMG will pay Sunplus USD 5,000,000 (exclusive of any taxes)
over the Support and Maintenance Period. Such amount shall be paid in equal installments on a
quarterly basis over such period. Sunplus shall invoice SIMG for each such installment within the
applicable quarter and SIMG shall pay such installment within sixty (60) days of its receipt of
such invoice.
(d) Except as expressly stated in this Agreement or otherwise mutually agreed in writing, each
party will be solely responsible for and will pay any and all costs and expenses incurred by that
party under this Agreement. Unless expressly provided otherwise in this Agreement (including any
exhibit hereto), all amounts are stated in and are payable only in United States dollars in
accordance with the due dates(s) specified above. Interest will accrue on any delinquent amounts
(not paid by the specified due date) owed by one party to the other at a rate equal to one percent
(1.0%) per month or the maximum rate permitted by applicable law, whichever is lower.
5.2 Term Extension of Strategic Relationship Agreement. The parties will extend the term of
that certain Strategic Relationship Agreement between the parties dated June 28. 2003 (currently
scheduled to expire on June 28, 2007) to June 28, 2008.
6. Warranties.
6.1 By SIMG. SWIG represents and warrants to Sunplus that (i) SIMG has full corporate power
to enter this Agreement and to carry out its obligations hereunder, (ii) to the knowledge of SIMG
at the time of delivery, its Deliverables and work product delivered hereunder to Sunplus do not
infringe any third party Intellectual Property Right, (iii) to the knowledge of SIMG as of the
Effective Date, the list set forth in Section 2.4 and Exhibit C is complete, correct, and not
Deficient (as defined in Section 2.4), (iv) any and all services
Confidential Information of the Parties
provided by it hereunder, including but not limited to any and all support, training, and
maintenance services, shall be provided in a professional and workmanlike manner, such manner to
equal or exceed the industry standard, and (v) the SIMG Licensed Subject Matter shall comply with a
mutually agreed upon technical specification.
6.2 By Sunplus. Sunplus represents and warrants to SIMG that (i) the Sunplus Deliverables
shall comprise, at a minimum, any and all technology and associated documentation included in
and/or necessary to make operable a production version of the SiI8500 (i.e., a version of the
SiI8500 that the parties, in accordance with Section 3.2 of the Partnership Agreement, have
mutually agreed complies with the unamended Product Specifications (i.e., as it appears in the
Partnership Agreement) as supplemented with a mutually agreed upon chip functional specification),
including but not limited to any and all source code, schematics, and deliverables needed for the
design, verification, and implementation of the SiI8500 as well as any and all related microcode,
firmware, development tools, verification environments, emulation platforms and tools that are
incorporated within and/or used by such integrated circuit, (ii) Sunplus has full corporate power
to enter this Agreement and to carry out its obligations hereunder, (iii) to the knowledge of
Sunplus at the time of delivery, its Deliverables and work product delivered hereunder to SIMG do
not infringe any third party Intellectual Property Right, (iv) to the knowledge of Sunplus as of
the Effective Date, the list set forth in Section 2.4 and Exhibit C is complete, correct, and not
Deficient (as defined in Section 2.4), and (v) any and all services provided by it hereunder,
including but not limited to any and all support, training, and maintenance services, shall be
provided in a professional and workmanlike manner, such manner to equal or exceed the industry
standard. In the event that Sunplus breaches the warranty set forth in (i) above, it shall in
addition to all other remedies available to SIMG, immediately deliver to SIMG any and all materials
required to place Sunplus in compliance with such warranty.
6.3 Warranty Disclaimer. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS AGREEMENT, EACH PARTY
HEREBY DISCLAIMS ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION, ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT.
7. Indemnification and Patent Cooperation.
7.1 Intellectual Property Indemnification. For the seven (7) year period following the
Effective Date, each party will, at its expense, defend, indemnify and hold the other party
harmless from and against any liability, cost or expense (including reasonable attorneys’ fees and
court costs) arising out of or resulting from any claim, suit or other proceeding in which it is
alleged that the Licensed Subject Matter, in whole or part and excluding the Third Party
Components, licensed hereunder to such other party infringes any Intellectual Property Rights of
any third party, provided that the foregoing obligation shall be deemed null and void with respect
to any Intellectual Property Rights of third party Standards Bodies established after the Effective
Date. As a condition of such defense and indemnification, the indemnified party will provide the
indemnifying party with prompt written notice of the claim and permit the indemnifying party to
control the defense, settlement, adjustment or compromise of any such claim. The indemnifying party
will have no obligations under this Section 7.1 to the extent that any such claim, suit or other
proceeding arises from (i) modifications to the Licensed Subject Matter that were not
Confidential Information of the Parties
developed by or at the direction of the indemnifying party, (ii) use of the Licensed Subject
Matter in combination with technology, software, data or equipment not provided by the indemnifying
party, if the infringement would not have occurred but for such combination, or (iii) use of the
Licensed Subject Matter after notice of any alleged or actual infringement from the indemnifying
party or any appropriate authority. In the event that during such seven (7) year period, either
party’s use of the Licensed Subject Matter licensed to it by the other party is, or in its opinion
is likely to be, enjoined due to the type of claim specified in this Section 7.1, then the other
party, at its sole option and expense, may (i) procure for the licensed party a license to continue
using the Licensed Subject Matter in accordance with the terms of this Agreement, or (ii) modify
the allegedly infringing item to avoid the infringement, without materially impairing the
functionality of the Licensed Subject Matter.
7.2 Breach of Warranty. Each party hereby agrees to indemnify and hold harmless the other
party, its officers, directors, employees from any and all claims, losses, liabilities, damages,
expenses, and costs (including attorneys’ fees and court costs) arising from any and all breaches
by it of the warranties set forth in Section 6.
7.3 Sole Remedy. THE FOREGOING, IN ADDITION TO THE REMEDIES SET FORTH IN SECTIONS 2.4 AND
6.2, ARE EACH PARTY’S SOLE AND EXCLUSIVE OBLIGATIONS, AND THE OTHER PARTY’S SOLE AND EXCLUSIVE
REMEDIES, WITH RESPECT TO A BREACH OF ITS WARRANTIES SET FORTH IN SECTION 6 AND/OR INFRINGEMENT OR
MISAPPROPRIATION OF INTELLECTUAL PROPERTY RIGHTS OF ANY KIND.
7.4 Patent Cooperation. In the event that during the seven (7) year period following the
Effective Date one or more third party(s) (each a “Claimant”) claims or files suit and/or initiates
any other proceeding against either party (the “Defendant”) in which it alleges that the Licensed
Subject Matter, excluding the Third Party Components, licensed hereunder from the other party (the
“Licensor”) infringes one or more patents owned by or exclusively licensed to Claimant, then
Defendant shall notify Licensor in writing of the identity of Claimant and the substance of the
allegation of infringement or of the proceeding initiated against Defendant. The parties shall then
work in good faith to determine whether there is a basis for forming a good faith belief that the
Claimant is infringing one or more of Licensor’s patents (“Licensor’s Patents”). In the event that
the parties disagree that there is a basis for forming such a belief, the parties shall submit the
matter to a third party arbiter mutually agreed upon by the parties (e.g., a respected and
qualified law firm) in order to make such a determination. In the event that the parties agree in
writing that there is a basis for forming such a belief or if such third party arbiter determines
in writing that there is a basis for forming such a belief, Defendant shall have the option, upon
written notice to Licensor, to institute a lawsuit against the Claimant for infringement of the
Licensor Patents at its own expense, in which event Defendant will be entitled to control such
lawsuit and to receive one hundred percent (100%) of any damages, settlement or other monies
(including royalties) recovered as a result of such lawsuit, provided however, that (i) neither
party shall settle such lawsuit without the advance written consent of the other party to the terms
of the settlement, which consent will not be unreasonably withheld, (ii) neither party shall have
the right to grant Claimant a license or covenant not to ▇▇▇ under the Licensor Patents, but
Licensor shall do so to the extent a license or covenant not to ▇▇▇ forms a term of a settlement to
which the parties have consented, and (iii) Licensor may elect to have
Confidential Information of the Parties
counsel of its own choosing participate at Licensor’s expense in such lawsuit and may at its
option elect to assume control over any portion of the lawsuit involving a challenge to the
validity of any of the Licensor Patents, Licensor agrees to join as a plaintiff in any lawsuit
instituted by Defendant in accordance with this Section 7.4 to the extent required to secure
jurisdiction for such lawsuit. Notwithstanding the foregoing, in no event shall Licensor be
compelled under this Section 7.4 to (i) breach any covenants-not-to-▇▇▇ that it has agreed upon in
writing with Claimant prior to the date of such claim, suit, or other proceeding and/or (ii)
materially damage any significant business relationship that it has established with Claimant prior
to the date of such claim, suit, or other proceeding, provided that Licensor shall bear the burden
of proving the existence of either or both of the foregoing exceptions. Furthermore, as of the date
Licensor receives notice from Defendant of such claim, suit, or other proceeding, it shall not for
the duration of any determinations and/or legal actions occurring under this Section 7,4 grant
Claimant a license to and/or under the Licensor’s Patents and/or assign one or more of the
Licensor’s Patents to Claimant without the express written consent of Defendant.
8. Confidential Information.
8.1 Definition. “Confidential Information” means (i) the source code portions of the other
party’s Deliverables and/or Licensed Subject Matter, and (ii) any business or technical information
of Sunplus or SIMG, including without limitation any information relating to Sunplus’ or SIMG’s
product plans, designs; costs, product prices and names, finances, marketing plans, business
opportunities, personnel, research, development or know-how that is designated in writing by the
disclosing party as “confidential” or “proprietary” at the time of disclosure or, if orally
disclosed, is reduced to writing by the disclosing party within thirty (30) days of such
disclosure.
8.2 Exclusions. Confidential Information will not include information that: (i) is in or
enters the public domain other than through the fault of the receiving party; (ii) was demonstrably
in possession of the receiving party prior to first receiving it from the disclosing party; (iii)
is developed by the receiving party independently without use of or access to Confidential
Information of the disclosing party; (iv) is obtained by the receiving party from a third party
without restriction on disclosure and without breach of a nondisclosure obligation; or (v) is
disclosed with the prior written consent of the disclosing party.
8.3 Use and Disclosure Restrictions. Each party will use the other party’s Confidential
Information only as reasonably required to exercise its rights and perform its obligations under
this Agreement. For a period of seven (7) years from the Effective Date (the “Confidentiality
Period”) and except as otherwise set forth herein, each party will refrain from disclosing the
other party’s Confidential Information to any third party except to employees and consultants as is
reasonably required in connection with the exercise of its rights and obligations under this
Agreement (and only subject to binding use and disclosure restrictions at least as protective as
those set forth herein executed in writing by such employees and consultants). During the
Confidentiality Period, each party will take all reasonable measures to maintain the
confidentiality of all such Confidential Information, but not less than the measures it uses for
its Confidential Information of similar importance. However, each party may disclose Confidential
Information of the other party: (i) pursuant to the order or requirement of a court, administrative
agency, or other governmental body, provided that the party subject to such order gives
Confidential Information of the Parties
reasonable notice to the other party to contest such order or requirement; and (ii) on a
confidential basis to legal or financial advisors. Notwithstanding anything to the contrary in this
Agreement, Sunplus acknowledges and agrees that it consents to and will not contest SIMG’s
disclosure of the existence and specific terms and conditions of this Agreement to the United
States Securities and Exchange Commission (SEC) in association with SIMG’s filing of an 8-K report
of unscheduled material events with the SEC.
8.4 Residuals. Each party agrees that notwithstanding anything to the contrary contained
herein, nothing in this Agreement shall limit or restrict the other party from using and/or
implementing in the ordinary course of its business any and all Residuals provided, derived and/or
developed in whole or in part by or on behalf of such other party, and. except as provided by the
party’s pre-existing and/or independently developed Intellectual Property Rights, such other party
shall not be limited or restricted with respect to any such Residuals. For purposes of this
Agreement, “Residuals” means ideas, concepts, or technology contained in information retained in
the unaided memory of a party’s employees with access to the Confidential Information of the other
party, but does not include any such ideas, concepts, or technology deliberately memorized.
9. Limitations of Liability.
9.1 EXCLUSION OF DAMAGES. EXCEPT FOR WILLFUL AND INTENTIONAL BREACHES OF SECTIONS 6 AND/OR 8
AND/OR DAMAGES ARISING FROM WILLFULLY AND INTENTIONALLY OMITTING AN APPLICABLE STANDARDS BODY
AND/OR ASSOCIATED STANDARD FROM THE LIST OF THIRD PARTY COMPONENTS SET FORTH IN EXHIBIT C, IN NO
EVENT WILL EITHER PARTY BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY
CONTRACT, STRICT LIABILITY, NEGLIGENCE OR OTHER LEGAL OR EQUITABLE THEORY FOR ANY SPECIAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES OR LOST PROFITS, OR COST OF PROCUREMENT OF SUBSTITUTE GOODS OR
SERVICES, EVEN IF INFORMED IN ADVANCE OF THE POSSIBILITY OF SUCH DAMAGES.
9.2 TOTAL LIABILITY. EXCEPT FOR (I) THE INDEMNIFICATION OBLIGATIONS SET FORTH IN SECTION 7.2
TO THE EXTENT THAT SUCH OBLIGATIONS ARISE FROM WILLFUL AND INTENTIONAL BREACHES OF THE WARRANTIES
SET FORTH IN SECTION 6: (II) DAMAGES ARISING FROM WILLFUL AND INTENTIONAL BREACHES OF SECTIONS 2
(INCLUDING BUT NOT LIMITED TO SECTION 2.5), 6, AND 8; AND, (III) INDEMNIFICATION OBLIGATIONS AND/OR
DAMAGES ARISING FROM WILLFULLY AND INTENTIONALLY OMITTING AN APPLICABLE STANDARDS BODY AND/OR
ASSOCIATED STANDARD FROM THE LIST OF THIRD PARTY COMPONENTS SET FORTH IN EXHIBIT C: OVER, BEYOND,
AND IN ADDITION TO ANY AND ALL PAYMENT OBLIGATIONS HEREUNDER, IN NO
Confidential Information of the Parties
***CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS BEEN
FILED WITH THE SECURITIES EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
EVENT WILL A GIVEN PARTY’S TOTAL LIABILITY UNDER OR ARISING OUT OF THIS AGREEMENT EXCEED THE
AMOUNTS RECEIVED BY IT HEREUNDER, PROVIDED THAT SUNPLUS’ TOTAL LIABILITY UNDER OR ARISING OUT OF
SECTION 7.1 SHALL EXCEED [***] DOLLARS (USD [***]).
9.3 BASIS OF BARGAIN. THE LIMITATIONS OF LIABILITY SET FORTH IN THIS SECTION WERE AND ARE AN
EXPRESS PART OF THE BARGAIN BETWEEN THE PARTIES AND WERE THE BASIS FOR THE DETERMINATION OF THE
FEES SET FORTH HEREIN.
10. Term and Termination.
10.1 Term. This Agreement will commence on the Effective Date and will continue in full force
and effect until terminated in accordance with the terms of this Agreement.
10.2 Termination for Cause. Each party will have the right to terminate this Agreement if:
(i) the other party breaches any material term or condition of this Agreement and fails to cure
such breach within thirty (30) days after written notice; (ii) the other party becomes the subject
of a voluntary petition in bankruptcy or any voluntary proceeding relating to insolvency,
receivership, liquidation, or composition for the benefit of creditors; or (iii) the other party
becomes the subject of an involuntary petition in bankruptcy or any Involuntary proceeding relating
to insolvency, receivership, liquidation, or composition for the benefit of creditors, if such
petition or proceeding is not dismissed within sixty (60) days of filing.
10.3 Nonexclusive Remedy. Termination of this Agreement by either party will be a
nonexclusive remedy for breach and will be without prejudice to any other right or remedy of such
party.
10.4 No Damages for Termination. Neither party will be liable to the other for damages of any
type solely as a result of terminating this Agreement in accordance with its terms.
10.5 Survival. Upon termination or expiration of this Agreement for any reason, Sections 1,
2.1 through 2.3, 2.5, 6, 7, 8, 9, 10.3 through 10.5, and 11 will survive.
11. Miscellaneous.
11.1 Governing Law and Disputes. This Agreement will be governed by and construed in
accordance with the laws of the State of California without regard to or application of conflicts
of law rules or principles, and expressly excluding the United Nations Convention on Contracts for
the International Sale of Goods. Any legal action arising under this Agreement will
Confidential Information of the Parties
be brought solely in the federal or state courts of the Northern District of California, and
both parties hereby irrevocably consent to the exclusive jurisdiction and venue thereof.
11.2 Compliance with Laws. Each party agrees to comply in all material respects with all
applicable laws, rules, and regulations in connection with its activities under this Agreement.
11.3 Export Administration Act and Related Laws. Each party shall be responsible for being
knowledgeable as to all laws, regulations, and requirements regarding the export, re-export,
transfer, diversion, release and/or import of the Licensed Subject Matter and any other items
(whether tangible or intangible, including without limitation commodities, software, technology,
and technical data) that such party may receive or access under this Agreement, including without
limitation the Deliverables. Each party, at its cost, agrees to conduct all activities and
obligations under this Agreement in conformity with such laws, regulations and requirements. In
addition, each party understands and agrees that the Licensed Subject Matter and Deliverables shall
not, in the absence of authorization by United States and local law and regulations, as required,
be used by or exported or re-exported to (i) any United States sanctioned or embargoed country, or
to foreign nationals or residents of such countries; or (ii) any person, entity, organization or
other party identified on the United States Department of Commerce’s Denied Persons or Entity
Lists, the United States Department of Treasury’s Specially Designated Nationals or Blocked Persons
Lists, or the Department of State’s Debarred Parties List, as published and revised from time to
time; (iii) any party engaged in nuclear, chemical/biological weapons or missile proliferation
activities; or (iv) any party for use in the design, development, or production of rocket systems
or unmanned air vehicles. Each party warrants and represents that it is not (i) a person, entity,
organization or other party identified on the United States Department of Commerce’s Denied Persons
or Entity List, the United States Department of Treasury’s Specially Designated Nationals or
Blocked Persons Lists, or the Department of State’s Debarred Parties List, as published and revised
from time to time.
11.4 Severability. If for any reason a court of competent jurisdiction finds any provision of
this Agreement invalid or unenforceable, that provision of the Agreement will be enforced to the
maximum extent permissible and the other provisions of this Agreement will remain in full force and
effect.
11.5 Assignment. Except as explicitly set forth herein, neither party may assign its rights
or delegate its obligations under this Agreement, in whole or in part, without the other’s prior
written consent. Any attempted assignment or delegation, including by operation of law, without
such consent, will be void and constitute a material breach of this Agreement. Subject to the
foregoing. the rights and obligations of the parties will bind and inure to the benefit of the
parties’ respective successors and permitted assigns. Notwithstanding the’ foregoing, each party
may assign this Agreement in its entirety without such consent (i) to the controlling or merged
entity the event that such party experiences a change of control, (ii) to the purchaser in the
event of a sale of all or substantially all of such party’s assets, and/or (in) to the purchaser
upon the sale of a business unit, division, and/or product line(s) associated with this Agreement,
where “control” means the power, whether through the ownership of stock, by contract, or otherwise,
to elect or appoint 50% or more of the members of the board of directors of an entity or, in the
Confidential Information of the Parties
absence of a board of directors, 50% or more of the persons constituting a governing body of
such entity exercising similar functions.
11.6 Waiver and Modification. Failure by either party to enforce any provision of this
Agreement will not be deemed a waiver of future enforcement of that or any other provision. Any
waiver, amendment or other modification of any provision of this Agreement will be effective only
if in writing and signed by duly authorized representatives of the parties.
11.7 Notices. All notices, consents and other communications required or permitted to be
given under this Agreement will be in writing and delivered by confirmed facsimile transmission, by
courier or overnight delivery service, or by certified mail, and in each instance will be deemed
given upon receipt. All notices, consents and communications will be sent to the addresses set
forth below or to such other address as may be specified by either party to the other in accordance
with this section.
To Sunplus:
|
To SIMG: | |
Sunplus Technology Co., Ltd.
|
Silicon Image, Inc. | |
19, Innovation First Road,
|
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇. | |
Hsinchu Science Park,
|
Sunnyvale, California 94085 | |
▇▇▇▇▇▇ ▇▇▇, ▇.▇.▇.
|
Attn: Legal Counsel | |
Attn: Legal Department |
11.8 Relationship of Parties. The parties to this Agreement are independent contractors and
this Agreement will not establish any relationship of partnership, joint venture, employment,
franchise, or agency between the parties. Neither party will have the power to bind the other or
incur obligations on the other’s behalf without the other’s prior written consent.
11.9 No Third Party Beneficiaries. Unless otherwise expressly provided, no provisions of this
Agreement are intended or will be construed to confer upon or give to any person or entity other
than SIMG and Sunplus any rights, remedies or other benefits under or by reason of this Agreement.
11.10 Entire Agreement. This Agreement and its Exhibits are the complete and exclusive
agreement between the parties with respect to the subject matter hereof, superseding and replacing
any and all prior and contemporaneous agreements, communications, and understandings (both written
and oral) regarding such subject matter, In the event of a conflict between this Agreement and its
Exhibits, the Agreement shall supersede the Exhibits to the extent of such conflict.
11.11 Counterparts. This Agreement may be executed in counterparts, each of which will be
deemed an original, but both of which together will constitute one and the same instrument.
THE REMAINDER OF THIS PAGE INTENTIONALLY LEFT BLANK
WHEREOF, the parties have caused this Agreement to be executed as of February 5, 2007
(“Effective Date”) by their duly authorized representatives.
| Silicon Image, Inc. | Sunplus Technology Co., Ltd. | |||||
By:
|
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇ | By: | /s/ Chou-▇▇▇▇ ▇▇▇▇▇ | |||
Name:
|
▇▇▇▇▇ ▇▇▇▇▇▇ | Name: | Chou-▇▇▇▇ ▇▇▇▇▇ | |||
Title:
|
CEO | Title: | CEO | |||
Date Signed:
|
2/5/07 | Date Signed: | 2/6/07 | |||
Exhibit A
Delivery and Acceptance of Sunplus Deliverables
1. Delivery and Acceptance Schedule.
Sunplus Delivery Schedule
| Milestone | ||||
| Number | Date | Milestone | ||
1
|
2/5/07 | Effective Date | ||
2
|
2/19/07 | delivery by Sunplus of preliminary Deliverables (SiI8500) (as of 2/10/07) source versions of the following: RTL, test bench, implementation, and software drivers, as well as any associated documents) | ||
3
|
5/5/07 | delivery by Sunplus of all Deliverables | ||
4
|
5/19/07(or conclusion of Extension Period) | confirmation by SIMG that all Deliverables received | ||
5
|
n/a | confirmation by SIMG that all Deliverables comply with Acceptance Criteria |
Acceptance Protocol for Sunplus Deliverables:
1. Upon the delivery of the Sunplus Deliverables in accordance with Milestone 3, SIMG shall
determine, in its sole discretion, which shall not unreasonably be withheld or delayed,
whether all such Deliverables have been received. In order to complete such determination in
a timely manner, Sunplus shall upon SIMG’s request dispatch the appropriate engineers to
SIMG facilities for purposes of supporting SIMG in such determination. In the event that
SIMG determines that all Deliverables have not been received, it shall notify Sunplus of the
incomplete delivery. Sunplus shall then use good faith efforts to complete the delivery and
SIMG shall then have two additional weeks (the “Extension Period”) to determine, in its sole
discretion, which shall not unreasonably be withheld or delayed; whether all such
Deliverables have been received. This process shall repeat and continue until SIMG has
determined that all such Deliverables have been received and Milestone 4 has been completed.
In the event that SIMG fails to provide such a notice by May 19, 2007 or fails to provide
such a notice by the end of a given Extension Period, the Deliverables shall be deemed
completely received and Milestone 4 completed.
2. Upon the delivery of the Sunplus Deliverables in accordance with Milestone 3, SIMG shall
determine, in its sole discretion, which shall not unreasonably be withheld or delayed,
whether all such Deliverables comply with the Acceptance Criteria set forth below. In the
event that SIMG determines that all Deliverables do not comply with the
Confidential Information of the Parties
Acceptance Criteria, it shall provide a list to Sunplus of those Deliverables that comply
with the Acceptance Criteria (and are therefore accepted) and those Deliverables that do not
comply with the Acceptance Criteria. Sunplus shall then use good faith efforts to correct
and/or complete the non-complying Deliverables such that they comply with the Acceptance
Criteria and redeliver such Deliverables to SIMG. SIMG shall then determine, in its sole
discretion, which shall not unreasonably be withheld or delayed, whether all such
Deliverables comply with the Acceptance Criteria. This process shall repeat and continue
until SIMG has determined that all Deliverables comply with the Acceptance Criteria and
Milestone 5 has been completed.
SIMG Delivery Schedule and Acceptance Protocol for SIMG Deliverables: To be negotiated in
good faith by the parties.
2. Acceptance Criteria.
(a) Acceptance Criteria for Sunplus Deliverables.
(a) SIMG shall review the Sunplus Deliverables to confirm receipt of each
Deliverable set forth in Exhibit E.
(b) SIMG shall test each Deliverable to determine whether such Deliverable complies
with the amended Product Specification as it appears in the Partnership Agreement)
as supplemented with a mutually agreed upon product functional specification, such
testing to include but not be limited to internal simulation, complete emulation,
system validation of the hardware Deliverables and with respect to software
Deliverables, whether such Deliverables have been ported, tested and
hardware-software co-verified as needed to go to meet the foregoing specification.
(c) SIMG shall review all documentation Deliverables to determine whether such
Deliverables comply the documentation criteria set forth in Exhibit E.
(b) Acceptance Criteria for SIMG Deliverables. To be negotiated in good faith by the parties.
-16-
***CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS BEEN
FILED WITH THE SECURITIES EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
Exhibit B
License Restrictions
A. RESTRICTIONS ON LICENSE GRANT TO SIMG (SECTION 2.1)
| 1. | YEARS 1-7 |
(a) For the seven (7) year period following the Effective Date and subject to the [***]
guidelines set forth in Section A.4 below (the “[***] Guidelines”), SIMG’s rights set forth
in Sections 2.1 (a) through (c) of the Agreement may be exercised only in connection with
any one or more of the following: (i) one or more integrated circuit designs and/or circuit
board designs containing the Sunplus Licensed Subject Matter, (ii) one or more finished
and/or unfinished integrated circuits and/or circuit boards containing the Sunplus Licensed
Subject Matter, and/or (iii) one or more finished and/or unfinished documents containing the
Sunplus Licensed Subject Matter (the materials in (i)-(iii) collectively, the “Permitted
Materials”). [***] For the avoidance of doubt, such rights, shall include but not be
limited to designing, developing, and/or manufacturing such integrated circuits and/or
circuit boards, providing technical support related to such designs and integrated circuits
and/or circuit boards to one or more third party entities, making and/or manufacturing such
integrated circuits and/or circuit boards and/or having one or more third parties make
and/or manufacture such integrated circuits and/or circuit boards, and marketing,
distributing through one or more tiers, and/or selling such integrated circuits and/or
circuit boards.
(b) [***]
(c) For the seven (7) year period following the Effective Date and subject to the [***]
Guidelines, SIMG’s right set forth in Section 2.1 (d) to sublicense the rights set forth in
Sections 2.1 (a) through (c) shall be limited to sublicensing such rights to one or more of
its wholly or majority-owned subsidiaries, provided that:
(i) in the event that SIMG sublicenses such rights to one or more of its wholly or
majority-owned subsidiaries, [***], such sublicense shall be (i) limited to the
rights set forth in Sections 2.1 (a) and (b) and (ii) conditioned upon SIMG binding
each such sublicensed entity to contractual obligations of confidentiality with
respect to the Sunplus confidential information and Sunplus Licensed Subject Matter
which are in accordance with the relevant provisions of this Agreement, and;
(ii) in the event that SIMG sublicenses such rights to [***], (ii) conditioned upon
SIMG receiving the prior written approval of Sunplus for each such grant of
sublicense, such approval not to be unreasonably withheld or delayed, and
Confidential Information of the Parties
***CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS BEEN
FILED WITH THE SECURITIES EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
(iii) conditioned upon SIMG binding each such sublicensed subsidiary to contractual
obligations of confidentiality with respect to the Sunplus confidential information
and Sunplus Licensed Subject Matter which are in accordance with the relevant
provisions of this Agreement.
(d) For the seven (7) year period following the Effective Date and subject to the [***]
Guidelines, SIMG’s right set forth in Section 2.1 (d) to sublicense the rights set forth in
Sections 2.1 (d) shall be limited to sublicensing such rights, in part or whole and subject
to the restrictions set forth in this Exhibit B, to one of its wholly or majority-owned
subsidiaries whose sole function, primarily for tax purposes, is to hold and/or manage
certain assets of SIMG, provided that such subsidiary may in turn sublicense such rights,
subject to the applicable restrictions, to one of its wholly or majority-owned subsidiaries
that has been established primarily for tax purposes.
| 2. | YEARS 4-7 |
As of the fourth anniversary of the Effective Date and subject to the [***] Guidelines,
SIMG’ s rights set forth in Sections 2.1 (a) through (c) may be exercised in connection with
any one or more of the following [***]: (i) one or more sample integrated circuit
designs and/or sample circuit board designs containing the Sunplus Licensed Subject Matter,
(ii) one or more finished and/or unfinished sample integrated circuits and/or sample circuit
boards containing the Sunplus Licensed Subject Matter, and/or (iii) one or more finished
and/or unfinished sample documents containing the Sunplus Licensed Subject Matter.
| 3. | YEARS 5-7 |
As of the fifth anniversary of the Effective Date and subject to the [***] Guidelines SIMG’s
rights set forth in Sections 2.1 (a) through (c) may be exercised in connection with any one
or more of the following, [***]: (i) one or more production integrated circuit
designs and/or production circuit board designs containing the Sunplus Licensed Subject
Matter, (ii) one or more finished and/or unfinished production integrated circuits and/or
production circuit boards containing the Sunplus Licensed Subject Matter, and/or (iii) one
or more finished and/or unfinished production documents containing the Sunplus Licensed
Subject Matter.
| 4. | [***] GUIDELINES | |
| [***] |
-18-
Confidential Information of the Parties
| 5. | YEARS 7+ |
As of the seventh anniversary of the Effective Date, the restrictions set forth in this
Exhibit B shall terminate in their entirety and be of no further force and effect, and
SIMG’s license under Section 2.1 shall be unrestricted and unlimited.
| B. | RESTRICTIONS ON LICENSE GRANT TO SUNPLUS (SECTION 2.2) | |
| 1. | YEARS 1-7 |
(a) For the seven (7) year period following the Effective Date, Sunplus’ rights set forth in
Sections 2.1(a) through (c) of the Agreement may be exercised only in connection with any
one or more of the following: (i) incorporating the SIMG Licensed Subject Matter solely in
object code format in one or more finished and/or unfinished consumer products, (ii) using
the SIMG Licensed Subject Matter in source code format subject to SIMG’s prior written
approval of the specific use and specific source code, provided that SIMG shall use good
faith efforts to provide Sunplus with a list of approved source code and authorized uses
within thirty (30) days of the Effective Date, and/or (iii) incorporating the SIMG Licensed
Subject Matter in one or more finished and/or unfinished documents, provided that such
documents do not contain copies, descriptions, or disclosures of the source code versions of
any software contained in the SIMG Licensed Subject Matter.
(b) For the seven (7) year period following the Effective Date, Sunplus’ right set forth in
Section 2.1 (d), to sublicense the rights set forth in Sections 2.1 (a) through (d) shall be
limited to sublicensing the rights set forth in Sections 2.1(a) and (b) to one or more of
its wholly or majority-owned subsidiaries for the sole purpose of having such subsidiaries
design products as permitted in the preceding paragraph containing the SIMG Licensed Subject
Matter provided that (i) Sunplus does not grant to such subsidiaries any license to the SIMG
Licensed Subject Matter for any other purpose, and (ii) each subsidiary is subject to
contractual obligations of confidentiality with respect to the SIMG confidential information
and SIMG Licensed Subject Matter which are in accordance with the relevant provisions of
this Agreement.
| 2. | YEARS 7+ |
As of the seventh anniversary of the Effective Date, the restrictions set forth in this
Exhibit B shall terminate in their entirety and be of no further force and effect, and
Sunplus’ license under Section 2.2 shall be unrestricted and unlimited.
-19-
Confidential Information of the Parties
***CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS BEEN
FILED WITH THE SECURITIES EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
Exhibit C
Third Party Components
SUNPLUS THIRD PARTY COMPONENTS
GENERIC
third-party software and hardware typical to office settings (e.g., Microsoft Word) and/or
members of the general integrated circuit industry
HARDWARE
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
SOFTWARE
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
STANDARDS
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
Confidential Information of the Parties
***CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS BEEN
FILED WITH THE SECURITIES EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
TOOLS
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
SIMG THIRD PARTY COMPONENTS
GENERIC
third party software and hardware typical to office settings (e.g. Microsoft Word) and/or
members of the general integrated circuit industry
HARDWARE
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
SOFTWARE
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
- 21 -
Confidential Information of the Parties
***CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS BEEN
FILED WITH THE SECURITIES EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
STANDARDS
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
-22-
Confidential Information of the Parties
***CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS BEEN
FILED WITH THE SECURITIES EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
TOOLS
| Third Party | Component | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
[***]
|
[***] | |
-23-
Exhibit D
Support, Maintenance, and Training Services
| 1. | Support and Maintenance | |
| During the two-year period starting upon the delivery of the final Sunplus Deliverable (the “Support and Maintenance Period”), Sunplus shall provide to SIMG the following services: | ||
| (a) | the provision of fifteen-hundred (1500) person-hours of email, phone, and in-person (at Sunplus facilities in Hsinchu, Taiwan) support, such support to be provided to SIMG on its demand during Sunplus’ working hours (“Support Services”); and, | |
| (b) | the provision, immediately upon availability, of any and all updates, bug fixes, and/or error corrections made by Sunplus to the Licensed Subject Matter (i.e., previously accepted Sunplus Deliverables), such updates, bug fixes, and/or error corrections to be deemed Sunplus Licensed Subject Matter; | |
| provided that in no event shall (i) such services be used by Sunplus, in any manner, to fulfill its obligations hereunder to provide SIMG with the Licensed Subject Matter (e.g., Sunplus may not use such services for purposes of correcting otherwise unacceptable Sunplus Deliverables) and/or (ii) the acceptance of such services by SIMG constitute a waiver of its rights to enforce any breach by Sunplus of any warranty made by Sunplus hereunder (e.g., in the event that Sunplus provides updates, bug fixes, and/or error corrections, the absence of which would constitute a breach of one or more of its warranties). Sunplus shall provide SIMG with any and all Support Services requested by SIMG beyond the number of person-hours specified above, provided that SIMG shall be charged at a rate of USD 200 per hour for such additional Support Services. In the event that SIMG requests in-person on-site support at a site other than Sunplus’ facilities, Sunplus at its discretion shall dispatch personnel to provide such service at such site, and SIMG shall be charged at a rate of USD 200 per hour and bear the expenses and costs incurred by Sunplus arising out of such on-site support. | ||
| 2. | Training | |
| During the Support and Maintenance Period, Sunplus shall provide SIMG with four discrete training sessions of four days each, provided that (i) each such session will be scheduled at a date and time selected by SIMG, (ii) SIMG shall provide Sunplus with at least three (3) weeks prior notice of such date and time, (iii) the parties shall agree upon the agenda and content of such session, as well as the training materials and teachers to be used, and (iv) each such session will be held at either Sunplus’ facilities in Hsinchu, Taiwan or in the State of Hawaii as mutually agreed upon by the parties. |
Exhibit E
Deliverables
Deliverables
| 1. | Sunplus Deliverables. See Attachment 1. | |
| 2. | SIMG Deliverables. See Attachment 2. |