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EXHIBIT 3.5
LICENSE AND TECHNICAL ASSISTANCE
AGREEMENT
BY AND BETWEEN
ELECTRONICS SYSTEMS & TECHNOLOGY DIVISION
TRW SPACE & ELECTRONICS GROUP
ONE SPACE PARK
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
AND
RF MICRO DEVICES, INC.
▇▇▇▇-▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
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LICENSE AND TECHNICAL ASSISTANCE AGREEMENT
THIS AGREEMENT, made and entered into as the 6th day of June, 1996 by
and between the Electronics Systems & Technology Division of TRW Inc., an Ohio
corporation, having offices at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
(hereinafter "Licensor") and RF Micro Devices, Inc., a North Carolina
corporation, having offices at ▇▇▇▇-▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "Licensee").
WHEREAS, Licensor has developed, designed and manufactured certain
kinds of gallium arsenide heterojunction bipolar transistors, and has utilized
molecular beam epitaxy processes in the production of such transistors, and
possesses patents rights and technical information and know-how relating
thereto; and
WHEREAS, Licensee intends to design, manufacture and sell GaAs
heterojunction bipolar transistors and products incorporating such GaAs
heterojunction bipolar transistors and, to that end, desires to obtain from
Licensor certain rights to Licensor's patent rights relating thereto and to
receive technical assistance from Licensor to assist in enabling Licensee to
manufacture such heterojunction bipolar transistors.
THEREFORE, in consideration of the mutual promises herein contained
and the mutual benefits to be derived therefrom, Licensor and Licensee agree as
follows:
ARTICLE 1
DEFINITIONS
The following words and phrases shall have the meanings set forth
below unless the context requires a different meaning:
1.1 AGREEMENT: This Agreement and the following Schedules hereto:
Schedule 1.6 Existing RFMD Products
Schedule 1.7 Existing TRW GaAs HBT Patent Rights
Schedule 1.8 Existing TRW MBE Patent Rights
Schedule 1.13 HBT Technical Information
Schedule 1.18 MBE Technical Information
Schedule 2.8.2 Licensor Contractual Obligations
Schedule 3.1 Technical Assistance
1.2 ASSET SALE: the sale of all or substantially all the assets of
Licensee.
1.3 COMMERCIAL: Involving the transfer or sale of products where
the transaction does not require qualification of the product to relevant
specifications in of mil-m-38510, mil-std-883, mil-i-38534, mil-i-38535 or
similar specifications and subsequent versions issued by any agency of the
United States government.
1.4 COMMERCIAL WIRELESS COMMUNICATION APPLICATIONS: The sale or
transfer to Commercial customers of products that provide, facilitate,
support or are otherwise directly related to one or more aspects of Wireless
Communication .
1.5 EFFECTIVE DATE: June 6, 1996.
1.6 EXISTING RFMD PRODUCTS: The products listed on Schedule 1.6.
1.7 EXISTING TRW GAAS HBT PATENT RIGHTS: Licensor's patents and
patent applications, listed in
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Schedule 1.7, and any patent and patent applications filed by Licensor after
the Effective Date to protect inventions relating to GaAs HBTs conceived or
first actually reduced to practice prior to the Effective Date, and any United
States and foreign patents which issue from any continuations,
continuations-in-part, divisionals or substitutions thereof, and all
extensions, reexaminations, renewals and reissues therefrom, and all rights to
bring an action against any person to recover damages or profits resulting from
infringement of the foregoing.
1.8 EXISTING TRW MBE PATENT RIGHTS: Licensor's patents and patent
applications, listed in Schedule 1.8, and any patent and patent applications
filed by Licensor after the Effective Date to protect inventions relating to
TRW's MBE processes conceived or first actually reduced to practice prior to
the Effective Date, and any United States and foreign patents which issue from
any continuations, continuations-in-part, divisionals or substitutions thereof,
and all extensions, reexaminations, renewals and reissues therefrom, and all
rights to bring an action against any person to recover damages or profits
resulting from infringement of the foregoing.
1.9 FOUNDRY: A business concern which provides wafer processing
services including: design rules; design support; photomask layout and
fabrication; wafer processing (including in-process testing); wafer dicing and
inspection; and wafer delivery.
1.10 FUTURE TRW GAAS HBT PATENT RIGHTS: Licensor's United States
and foreign patents and patent applications filed by Licensor to protect
inventions relating to GaAs HBTs conceived subsequent to the Effective Date,
and any United States and foreign patents which issue from any continuations,
continuations-in-part, divisionals or substitutions thereof, and all
extensions, reexaminations, renewals and reissues therefrom, and all rights to
bring an action against any person to recover damages or profits resulting from
infringement of the foregoing.
1.11 FUTURE TRW MBE PATENT RIGHTS: Licensor's United States and
foreign patents and patent applications filed by Licensor to protect inventions
relating to MBE processes conceived subsequent to the Effective Date, and any
United States and foreign patents which issue from any continuations,
continuations-in-part, divisionals or substitutions thereof, and all
extensions, reexaminations, renewals and reissues therefrom, and all rights to
bring an action against any person to recover damages or profits resulting from
infringement of the foregoing.
1.12 GAAS HBT: A heterojunction bipolar transistor having a base,
emitter and collector formed on a substrate of gallium arsenide, and the
manufacturing process utilized for forming such transistors on the gallium
arsenide substrate.
1.13 HBT TECHNICAL INFORMATION: All documentation, know-how,
software or other information of Licensor relating to Licensor's GaAs HBT,
whether or not it is considered proprietary or a trade secret by Licensor,
including, without limitation, data and information contained in reports,
documents, computer programs, drawings and graphs, schematics, manuals, files
and notes in any medium or representation, electronic or otherwise, including
but not limited to those items specified in Schedule 1.13.
1.14 IPO: an underwritten initial public offering of Licensee's
common stock to be registered under the Securities Act of 1933, as amended.
1.15 LICENSED FIELD: The design, development, manufacture,
testing, sale, marketing, , service, and repair of Licensed Products, including
the sale of spare parts for or spare complete Licensed Products by Licensee,
for Commercial Wireless Communication Applications where the Licensed Products
operate on signals having a frequency of less than ten (10) gigahertz.
1.16 LICENSED PRODUCTS: Any GaAs HBT products where the emitter of
the GaAs HBT has a width of between One (1) and Three (3) microns inclusive.
1.17 MBE: An epitaxial process for manufacturing the starting
wafers for GaAs HBTs utilizing molecular beam technology.
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1.18 MBE TECHNICAL INFORMATION: All documentation, know-how,
software or other information of Licensor relating to Licensor's MBE
processes for use in connection with the production of GaAs HBTs, whether or
not it is considered proprietary or a trade secret by Licensor, including,
without limitation, data and information contained in reports, documents,
computer programs, drawings and graphs, schematics, manuals, files and notes in
any medium or representation, electronic or otherwise, including but not
limited to those items specified in Schedule 1.18.
1.19 MERGER: the participation of a party as a constituent
corporation in a merger in which it is not the surviving corporation if its
stockholders immediately prior to the effective time of the merger own less
than fifty percent (50%) of the outstanding voting securities of the surviving
corporation immediately after the effective time of the merger.
1.20 OPERATIONAL FOUNDRY: A Foundry shall be considered
operational for purposes of this Agreement when (a) all of the conditions set
forth in Sections 1.20.1 through 1.20.4 are met; or, (b) when the parties
mutually agree that the Foundry is operational.
1.20.1 EQUIPMENT AND PROCESS DOCUMENTATION - all equipment
is installed and in operation and manufacturing flow documents (Licensor
MF1-type documents) on all major process steps are in place
1.20.2 LINE YIELD (NUMBER OF WAFERS COMPLETED MEETING
PROCESS CONTROL MONITOR [PCM] YIELDS) - exceeds 50% at a throughput rate of
50 wafer starts per week
1.20.3 OVERALL YIELD (THROUGH PACKAGED CHIP TEST) ON
2 STANDARD EVALUATION CIRCUITS (SEC) [to be selected from existing Licensee
chip products now manufactured by Licensor in its GaAs foundry] - exceeds 60%
of the prior overall yield for that sec product currently in production by
Licensor; this yield must be achieved from at least 4 wafer lots, with a
minimum 2 week interval between the start of the 1st and 4th wafer lot.
1.20.4 PACKAGED CHIP RELIABILITY YIELDS - equivalent to
current reliability levels achieved through testing by Licensee using
Licensee's standard packaged chip reliability testing procedures.
1.21 PATENT RIGHTS: Existing TRW GaAs HBT Patent Rights, Future
TRW GaAs HBT Patent Rights, Existing TRW MBE Patent Rights, and Future TRW MBE
Patent Rights.
1.22 RESTRICTED STOCK: Those 2,683,930 shares of Licensee's
common stock, no par value, issued to Licensor pursuant to the Restricted Stock
Agreement of even date herewith.
1.23 STOCK SALE: the sale by a party or its stockholders in a
single transaction or series of substantially contemporaneous related
transactions of more than fifty percent (50%) of the party's outstanding voting
securities entitled to vote in the election of directors.
1.24 TECHNICAL INFORMATION: HBT Technical Information and MBE
Technical Information.
1.25 TRANSFER: any mortgage, pledge, transfer, sale, assignment or
other disposition, whether voluntary, by operation of law or otherwise, of a
party's rights hereunder, including any delegation or subcontracting of duties
and specifically including (i) a Stock Sale; and (ii) a Merger.
1.26 WIRELESS COMMUNICATION: The transmission of voice, data or
other information via the transmission or reception of electromagnetic energy
propagating through the air with a frequency of less than 10 gigahertz.
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ARTICLE 2
LICENSE
2.1 HBT LICENSE: Licensor hereby grants to Licensee, subject to
the terms and conditions of this Agreement, a fully paid up, royalty free
worldwide right and license under Existing TRW GaAs HBT Patent Rights, Future
TRW GaAs HBT Patent Rights and to HBT Technical Information to design, develop,
manufacture, have manufactured, use, test, sell, market, service, and repair
Licensed Products and Existing RFMD Products in the Licensed Field.
2.1.1 Subject to the provisions of Sections 2.8 and 5.2
herein, the license granted in this Section 2.1 shall be exclusive as to all
persons including Licensor for Licensed Products and Existing RFMD Products in
the Licensed Field.
2.1.2 The license granted in this Section 2.1 may , at
Licensor's sole option and sole discretion, be converted to a non-exclusive
license under the circumstances set forth in Section 5.2 of this Agreement.
2.1.3 The license granted in this Section 2.1 shall be
perpetual, subject to the provisions of Article 8 relating to termination or
expiration of this Agreement.
2.1.4 The license granted in this Section 2.1 is effective
as of the Effective Date.
2.1.5 Licensee shall have the right to assign in whole or
in part or to grant sublicenses under the licenses to utilize Existing TRW GaAs
HBT Patent Rights, Future TRW HBT Patent Rights and HBT Technical Information
granted in this Section 2.1 to responsible parties, but only in accordance with
the provisions of Article 13 herein.
2.1.6 The license granted in this Section 2.1 to utilize
HBT Technical Information in the Licensed Field is a continuing license that
extends automatically without any further action on the part of Licensor or
Licensee to (i) any modification, update, change or other improvement to the
HBT Technical Information that is made by Licensor after the Effective Date and
is delivered to Licensee in accordance with Section 3.5; and (ii) any
discovery, development or other invention made by Licensor after the Effective
Date that constitutes new HBT Technical Information and is required to be
delivered to Licensee in accordance with Section 3.5.
2.2 MBE LICENSE: Licensor hereby agrees to grant to Licensee,
subject to the terms and conditions of this Agreement, a fully paid up, royalty
free, worldwide right and license under Existing TRW MBE Patent Rights, Future
TRW MBE Patent Rights and to MBE Technical Information to design, develop,
manufacture, have manufactured but only in accordance with Section 2.2.6 and
Article 13, use, test, sell, market, service, and repair Licensed Products and
Existing RFMD Products in the Licensed Field.
2.2.1 Subject to the provisions of Sections 2.8 and 5.2
herein, the license granted in this Section 2.2 shall be exclusive as to all
persons including Licensor for Licensed Products and Existing RFMD Products in
the Licensed Field.
2.2.2 The license granted in this Section 2.2 may, at
Licensor's sole option and sole discretion, be converted to a non-exclusive
license under the circumstances set forth in Section 5.2 of this Agreement.
2.2.3 The license granted in this Section 2.2 shall be
perpetual, subject to the provisions of Article 8 relating to termination or
expiration of this Agreement.
2.2.4 The license granted in this Section 2.2 shall be
effective as of the date that Licensee has an Operational Foundry for the
manufacture of Licensed Products.
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2.2.5 Licensee shall have the right to assign, in whole or
in part, or grant sublicenses under the Existing TRW MBE Patent Rights, Future
TRW MBE Patent Rights and MBE Technical Information granted in this Section 2.2
only in accordance with Article 13. .
2.2.6 Licensee shall have the right to have Licensed
Products and Existing RFMD Products manufactured on its behalf by a third party
under the license granted in this Section 2.2 only upon the prior written
approval of an authorized representative of Licensor, which approval may be
given, withheld or conditioned at the sole discretion of Licensor.
2.2.7 The license granted in this Section 2.2 to utilize
MBE Technical Information in the Licensed Field is a continuing license that
extends automatically without any further action on the part of Licensor or
Licensee to (i) any modification, update, change or other improvement to the
MBE Technical Information that is made by Licensor after the Effective Date and
is delivered to Licensee in accordance with Section 3.5; and (ii) any
discovery, development or other invention made by Licensor after the Effective
Date that constitutes new MBE Technical Information and is required to be
delivered to Licensee in accordance with Section 3.5.
2.3 EXISTING RFMD PRODUCTS HBT LICENSE: Licensor hereby grants to
Licensee, subject to the terms and conditions of this Agreement, a fully paid
up, royalty free worldwide right and license under Existing TRW GaAs HBT Patent
Rights and to HBT Technical Information to design, develop, manufacture, have
manufactured, use, test, sell, market, service, and repair the following
Existing RFMD Products outside the Licensed Field:
RF 2310 HBT Gain Block, RFMD design
RF 2311 HBT Gain Block, RFMD design
RF 2312 HBT Gain Block, RFMD design - CATV broadband amp
RF 2313 HBT Gain Block
RF 2314 HBT Gain Block
RF 2315 HBT Gain Block
RF 2316 HBT TV Distr Amp (Balanced)
RF 2317 HBT TV Distr Amp (Unbalanced)(G=15dB).
2.3.1 The license granted in this Section 2.3 shall be
non-exclusive.
2.3.2 The license granted in this Section 2.3 shall be
perpetual, subject to the provisions of Article 8 relating to termination or
expiration of this Agreement.
2.3.3 The license granted in this Section 2.3 is effective
as of the Effective Date.
2.3.4 Licensee shall have the right to assign in whole or
in part or to grant sublicenses under the licenses to utilize Existing TRW GaAs
HBT Patent Rights and HBT Technical Information granted in this Section 2.3 but
only in accordance with the provisions of Article 13.
2.3.5 The license granted in this Section 2.3 to use HBT
Technical Information is a continuing license that extends automatically
without any further action on the part of Licensor or Licensee to (i) any
modification, update, change or other improvement to the HBT Technical
Information that is made by Licensor after the Effective Date and is delivered
to Licensee in accordance with Section 3.5; and (ii) any discovery, development
or other invention made by Licensor after the Effective Date that constitutes
new HBT Technical Information and is delivered to Licensee in accordance with
Section 3.5.
2.4 EXISTING RFMD PRODUCTS MBE LICENSE: Licensor hereby agrees to
grant to Licensee, subject to the terms and conditions of this Agreement, a
fully paid up, royalty free worldwide right and license under Existing TRW MBE
Patent Rights and to MBE Technical Information to design, develop, manufacture,
use, test, sell, market, service, and repair the following Existing RFMD
Products outside the Licensed Field:
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RF 2310 HBT Gain Block, RFMD design
RF 2311 HBT Gain Block, RFMD design
RF 2312 HBT Gain Block, RFMD design - CATV broadband amp
RF 2313 HBT Gain Block
RF 2314 HBT Gain Block
RF 2315 HBT Gain Block
RF 2316 HBT TV Distr Amp (Balanced)
RF 2317 HBT TV Distr Amp (Unbalanced)(G=15dB).
2.4.1 The license granted in this Section 2.4 shall be
non-exclusive.
2.4.2 The license granted in this Section 2.4 shall be
perpetual, subject to the provisions of Article 8 relating to termination or
expiration of this Agreement.
2.4.3 The license granted in this Section 2.4 shall be
effective as of the date that the parties hereto mutually agree that Licensee
has an Operational Foundry for the manufacture of Licensed Products.
2.4.4 Licensee shall have the right to assign, in whole or
in part, or to grant sublicenses under the Existing TRW MBE Patent Rights and
MBE Technical Information for Existing RFMD Products granted in this Section
2.4 only in accordance with Article 13.
2.4.5 The license granted in this Section 2.4 to utilize
MBE Technical Information is a continuing license that extends automatically
without any further action on the part of Licensor or Licensee to (i) any
modification, update, change or other improvement to the MBE Technical
Information that is made by Licensor after the Effective Date and is delivered
to Licensee in accordance with Section 3.5; and (ii) any discovery, development
or other invention made by Licensor after the Effective Date that constitutes
new MBE Technical Information and is delivered to Licensee in accordance with
Section 3.5.
2.5 FUTURE TECHNOLOGIES: Except for the Future TRW GaAs HBT
Patent Rights, Future TRW MBE Patent Rights, or as specified in Sections 2.1.6,
2.2.7, 2.3.6 and 2.4.6, rights and licenses to future TRW technologies
applicable to the Licensed Field and/or Licensed Products are not granted to
Licensee by this Agreement. Commencing on the Effective Date and continuing
until ten (10) years from the date that the parties hereto mutually agree that
Licensee has an Operational Foundry for the manufacture of Licensed Products,
rights and licenses to other TRW future technologies applicable to the Licensed
Field and/or Licensed Products not granted to Licensee by this Agreement shall
be offered to Licensee by Licensor on the following terms and conditions:
2.5.1 Licensor shall deliver a notice to Licensee stating
its bona fide intention to grant rights and/or licensees to a third party for
technologies applicable to the Licensed Field and/or Licensed Products, and
identify the specific technology it desires to license (the "Offered
Technology") and the terms and conditions by which it proposes to license the
Offered Technology.
2.5.2 Within forty-five (45) days after the date of such
notice, Licensee shall inform Licensor whether or not it is willing to license
the Offered Technology upon the same terms and conditions which Licensor
proposes to license the Offered Technology to the third party. If Licensor has
not received Licensee's decision by the end of the forty-five (45) day period,
it will be deemed that Licensee has decided not to license the Offered
Technology.
2.5.3 If Licensee does not elect to license the Offered
Technology in accordance with Section 2.5.2, Licensor may license the Offered
Technology to any third party upon terms which in their entirety are no more
favorable to the prospective third party than those specified to Licensee,
provided that the license is consummated within ninety (90) days of the date of
the notice to Licensee. Licensor may, at its discretion, alter the final terms
of the license to the third party from those notified to Licensee such that,
though individual terms may be more
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favorable to the third party, the overall license terms and conditions are in
their entirety no more favorable to the third party than those notified. If
the final terms and conditions are, in their entirety, considered to be more
favorable to the third party than those notified to Licensee, then Licensor
must offer those terms to Licensee in accordance with Section 2.5.2, and
Licensee shall have forty-five (45) days to elect to license the Offered
Technology.
2.5.4 All obligations to grant licenses to future TRW
technologies under this Section 2.5 shall terminate ten (10) years from the
date that the parties hereto mutually agree that Licensee has an Operational
Foundry for the manufacture of Licensed Products.
2.6 EXCLUSION: Except as otherwise provided in this Agreement,
the license and rights granted hereunder shall not be interpreted as granting
or implying the grant of rights in any other invention or technical information
of either party. Licensor specifically reserves to itself the right to utilize
Existing TRW GaAs HBT Patent Rights, Future TRW GaAs HBT Patent Rights, Future
TRW MBE Patent Rights, Existing TRW MBE Patent Rights, HBT Technical
Information, and MBE Technical Information for any and all purposes other than
as set forth in this Article 2.
2.7 MARKINGS: To the extent practical, Licensee shall provide on
any Licensed Product or component parts thereof, or on any Existing RFMD
Product manufactured, used or sold utilizing any of the rights or licenses
granted under this Agreement, or on the packaging or data sheets related
thereto so long as the marking is in accordance with applicable marking
provisions of United States or foreign patent laws, a legible notice that such
Licensed Product or component part or Existing RFMD Product is manufactured
under a license granted by Licensor. Licensee shall submit to Licensor prior
to marking any Licensed Product or component part thereof or Existing RFMD
Product the full copy of such proposed marking for written approval by
Licensor, which approval will not be unreasonably withheld and will be deemed
given unless Licensor responds to the contrary within ten (10) business days of
such submission. No rights are granted hereunder by either party to the other
regarding their respective trade names or trademarks.
2.8 LICENSOR RESERVATIONS: Licensor reserves unto itself the
rights to utilize Existing TRW GaAs HBT Patent Rights, Future TRW GaAs HBT
Patent Rights, Existing TRW MBE Patent Rights, Future TRW MBE Patent Rights,
HBT Technical Information, and MBE Technical Information to manufacture, have
manufactured, use, test, sell, service, and repair Licensed Products in the
Licensed Field, but only in accordance with the following:
2.8.1 Licensor may provide Foundry services for any
customers but limited solely to the provision of the following services:
Design Rule Manual
Element Library (GDSII tape)
Model & Design Rule Technical Consultation
Design Rule Check & Circuit Layout Verification
Maskset Procurement and Storage
Three (3) inch MBE profile wafers
HBT or HEMT wafer processing with full backside metallization
Status Reports
Delivery of a minimum of 3 wafers per lot that pass PCM
specifications; and
2.8.2 Licensor is permitted production of Licensed Products
for use in the Licensed Field in order to fulfill any and all contractual
obligations Licensor has as of the Effective Date. A listing of such
contractual obligations is set forth in Schedule 2.8.2.
2.9 MAINTENANCE OF PATENTS: Licensor shall retain the right to
manage and control the prosecution and
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maintenance of patent applications and patents included in the Patent Rights,
and shall have sole financial responsibility for patent acquisition or
maintenance of the Patent Rights to the extent it elects, in its sole
discretion, to pursue the same. From time to time at the reasonable request of
Licensee, Licensor shall furnish Licensee with a written report setting forth
in reasonable detail the identity and status of each patent and patent
application included in the Patent Rights. In the event Licensor determines
that it no longer deems it necessary or desirable to prosecute a patent
application or maintain a patent included in the Patent Rights in any country,
Licensor shall notify Licensee not less than thirty (30) days prior to the
abandonment of the patent application or the final due date for the payment of
the maintenance fee. In such event, Licensee may obtain an assignment of the
patent application or patent by notifying Licensor and providing it with
appropriate assignment documents in a form ready to be executed by it, and
thereafter Licensee shall own the same and shall have the right to (and the
sole financial responsibility for) management and control of the prosecution
and maintenance of such patent applications and patents. Any assignment of any
patent or patent application pursuant to this Section 2.9 shall include a
royalty-free, fully paid up non-exclusive license to Licensor under such patent
or application to design, develop, manufacture, have manufactured, use, test,
sell, market, service, and repair any products outside of Licensed Field.
2.10 ENFORCEMENT OF PATENT RIGHTS:
2.10.1 If either party hereto learns at any time of any
infringement or threatened infringement by any other person of any enforceable
Patent Rights owned by or licensed to the other party after the Effective Date,
that party shall give notice of that infringement or threatened infringement to
the other party. The parties shall then consult together as to the best course
of action to pursue in response to such potential infringement, but neither
party shall be obligated to institute legal action at its own expense. A good
faith failure by one party to provide such notice to the other party shall not
be deemed a breach of this Agreement and shall not give rise to a right of
action by other party.
2.10.2 In the event that the parties do not reach an
agreement as contemplated by Section 2.10.1 hereof as to the best course of
action to pursue with respect to a potential infringement (i) Licensor shall
have the right, but not the obligation, to institute legal action, through
counsel of its own choosing and at its sole expense, to restrain any
infringement or threatened infringement, or to recover damages therefor, of its
enforceable Patent Rights, and (ii) Licensee shall have the right, but not the
obligation, to institute legal action, through counsel of its own choosing and
at its sole expense, to restrain any infringement or threatened infringement,
or to recover damages therefor, of its enforceable Patent Rights in the
Licensed Field. The party that bears the expenses of pursuing legal action
against a third party infringer shall be entitled to any damages, lost profits
or other monies recovered by judgment, decree, settlement, arbitration or
otherwise, resulting from such legal action.
2.10.3 In the event that one party elects to institute legal
action against a third party infringer, the other party shall fully cooperate
in the prosecution of such action including joining as a party in suit when
necessary to acquire standing to institute legal action pursuant to this
Section 2.10; provided, however, that such other party shall be reimbursed for
all reasonable out-of-pocket expenses incurred in providing such cooperation
including its reasonable legal fees and expenses. The electing party shall
reimburse the other party for all such expenses within thirty (30) days after
its receipt of an invoice from the other party that describes such expenses in
reasonable detail, with supporting documentation as appropriate.
ARTICLE 3
TECHNICAL ASSISTANCE AND EQUIPMENT
3.1 TECHNICAL ASSISTANCE AND TRAINING: Licensor shall use
reasonable efforts to provide Licensee with such technical assistance, training
and instruction as may be necessary to enable Licensee or its permitted
sublicensee to design, construct, start-up, test and operate an Operational
Foundry, and to utilize the MBE process in such Operational Foundry, in
accordance with the implementation plan set forth in Schedule 3.1.
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3.1.1 Licensor shall assist Licensee in the design and
upfit of a Foundry (if Licensee elects to operate its own Foundry), including
the provision of such information within its possession as may reasonably be of
use to Licensee (as determined solely by Licensor) with respect to site
selection, building specifications, plant layout, equipment specifications and
sourcing, manufacturing process flows, chemical and physical parameters and
conditions, raw material and intermediate material requirements, waste
generation and treatment, consumable items and materialsand all other
engineering, scientific or technical assistance appropriate for the design and
construction of a Foundry.
3.1.2 Licensor shall assist Licensee in the start-up phase
of the Foundry, including technical assistance, instruction and training of
Licensee personnel to operate, adjust, modify, control and optimize the
manufacturing process to be undertaken at the foundry to the point where it can
become an Operational Foundry.
3.1.3 The instruction and technical assistance to be
rendered by Licensor shall be at Licensee's Foundry location unless otherwise
agreed by the parties. All travel and living expenses incurred by Licensor
personnel in traveling to and from Licensee's Foundry and while on site shall
be borne by Licensor.
3.1.4 Notwithstanding the provisions set forth above in
this Section 3.1, Licensor shall be under no obligation to provide technical
assistance to Licensee once the expense limit set forth in Schedule 3.1 has
been reached. In no event will Licensor be obligated to spend more money than
is set forth in Schedule 3.1.
3.1.5 If Licensee requests Licensor to perform, prior to
December 31, 1998, additional technical assistance beyond that specified in
Schedule 3.1, then Licensor shall provide such additional technical assistance
at Licensor's then existing labor rates, including burden and reasonable
margin. If such additional technical assistance is requested, then Licensee
shall also reimburse Licensor for all expenses incurred by Licensor and its
employees in connection with the performance of such services (including but
not limited to travel, lodging and meal expenses). Licensee shall be
responsible for all expenses incurred by Licensee's representatives in
connection with the performance of all technical assistance (including but not
limited to travel, lodging and meal expenses). Additional Technical Assistance
beyond that specified in Schedule 3.1 to be performed after December 31, 1998
will be subject to the mutual agreement of the parties.
3.2 TECHNICAL INFORMATION: Licensor shall not be obligated to
reduce to a tangible medium of expression any Technical Information; provided,
that nothing in this Section shall be construed to diminish the scope of
Licensee's licenses or the obligation of Licensor to deliver Technical
Information to Licensee.
3.3 DELIVERY OF TECHNICAL INFORMATION: Licensor shall deliver to
Licensee HBT Technical Information and MBE Technical Information related to
Licensed Products in the same form as is used in Licensor's own business. Both
source code and object code for software included in the HBT Technical
Information or the MBE Technical Information shall be delivered to Licensee.
Licensor shall deliver HBT Technical Information as soon as practical and in
any event within thirty (30) days of the Effective Date. Licensor shall
deliver MBE Technical Information as soon as practical and in any event within
thirty (30) days of the date of Licensee's written request for such MBE
Technical Information, which request may be made no earlier than the date upon
which the MBE License becomes effective as set forth in Section 2.2.4.
Licensor shall deliver to Licensee one legible copy of each issued patent and
all patent applications included in the Patent Rights as soon as practical
after the Effective Date. Licensor shall also promptly furnish Licensee a copy
of all patent applications filed and patents issued after the Effective Date
that are included in the Patent Rights.
3.4 USE AND NONDISCLOSURE: Licensee shall not use or permit the
use of Technical Information for any purpose not authorized by this Agreement.
Licensee shall hold in confidence, and shall not disclose or communicate or
permit to be disclosed or communicated to any third person, any Technical
Information which is furnished to Licensee hereunder except in accordance with
Sections 3.6 and 3.7. Licensee shall take or cause to be taken all necessary
precautions to the same extent that it would with its own technical
information, but in no event less than a reasonable standard of care, to
prevent the disclosure or communication of Technical Information to third
persons.
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3.5 UPDATES OF TECHNICAL INFORMATION: Except as specified in this
Section 3.5, Licensor shall be under no obligation to deliver to Licensee any
modifications or additions to Technical Information.
3.5.1 Licensor shall provide to Licensee updated HBT
Technical Information related to improvements to or new discoveries of HBT
Technical Information, but only as such updated HBT Technical Information
relates to GaAs HBTs having an emitter width between Two (2) and Three (3)
microns inclusive and only until three (3) years from the date that Licensee
has an Operational Foundry or this Agreement is terminated in accordance with
Article 8, whichever occurs first.
3.5.2 Licensor shall provide to Licensee updated HBT
Technical Information related to improvements to or new discoveries of HBT
Technical Information, but only as such updated HBT Technical Information
relates to GaAs HBTs having an emitter width of One (1) micron and only for a
period of eight (8) years after the date Licensee has an Operational Foundry or
this Agreement is terminated in accordance with Article 8, whichever occurs
first.
3.5.3 Licensor shall provide to Licensee updated MBE
Technical Information related to improvements to or new discoveries of MBE
Technical Information as it relates to the processing of GaAs HBTs having an
emitter width between One (1) and Three (3) microns, only if the licenses
granted in Sections 2.2 and 2.4 have become effective, and only for a period of
eight (8) years after the date that the licenses granted in Sections 2.2 and
2.4 become effective or this Agreement is terminated in accordance with Article
8, whichever occurs first.
3.5.4 The updated Technical Information specified in this
Section 3.5 shall be delivered to Licensee in the same form as is used in
Licensor's own business (including both source code and object code in the case
of software), and will be delivered as soon as practical after the same becomes
available.
3.5.5 Licensor's obligations to provide updated Technical
Information according to this Section 3.5 is subject to the limitation of
expense set forth in Schedule 3.1. After such limitation of expense is met,
Licensor's provision of updated Technical Information shall be at Licensee's
expense.
3.6 HBT EXCEPTIONS: Licensee may disclose HBT Technical
Information to its employees, sublicensees, consultants, and subcontractors to
the extent that each such disclosure is reasonably necessary for purposes of
designing, developing, constructing, manufacturing, marketing, selling,
installing, repairing and/or servicing Licensed Products or procuring goods and
services required in connection therewith; provided that (i) Licensee clearly
marks any document or other material containing any HBT Technical Information
so disclosed to indicate that such documents or materials contain confidential
and proprietary information of Licensor; (ii) Licensee requires each person to
whom such documents or materials are disclosed to sign a written agreement
limiting use thereof to the purpose stated in such agreement, prohibiting the
reproduction thereof and the disclosure thereof to any such person and
requiring the prompt return thereof when no longer needed or such agreement is
terminated; and (iii) providing that any reproduction, note or summary of such
documents or materials immediately upon the making thereof shall become the
property of Licensor and shall be delivered to Licensor with the return of
Technical Information or otherwise destroyed.
3.7 MBE EXCEPTIONS: Licensee may disclose MBE Technical
Information only to its employees and any permitted sublicensee or assignee
under Article 13 to the extent that each such disclosure is reasonably
necessary for purposes of designing, developing, constructing, manufacturing,
marketing, selling, installing, repairing and/or servicing Licensed Products or
procuring goods and services required in connection therewith; provided that
(i) Licensee clearly marks any document or other material containing any MBE
Technical Information so disclosed to indicate that such documents or materials
contain confidential and proprietary information of Licensor; (ii) Licensee
requires each employee to whom such documents or materials are disclosed to
sign a written agreement limiting use thereof to the purpose stated in such
agreement, prohibiting the reproduction thereof and the disclosure thereof to
any other person; and (iii) providing that any reproduction, note or summary of
such documents or materials immediately upon the making thereof shall become
the property of Licensor and shall be delivered to Licensor with
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the return of Technical Information.
3.8 RESTRICTIONS: The rights granted Licensee herein cover only
Licensed Products for use as licensed hereunder, and Licensee agrees that it
shall not, during the terms of this Agreement, manufacture, sell, lease or
otherwise dispose of any Licensed Products or parts thereof embodying any of
the Patent Rights except insofar as the application thereof is expressly
provided for under this Agreement.
ARTICLE 4
CONSIDERATION
In consideration of all rights, licenses, technical assistance and
Technical Information and benefits conferred to Licensee hereunder, Licensee
has issued to Licensor Two Million Six Hundred Eighty-Three Thousand, Nine
Hundred and Thirty (2,683,930) shares of Restricted Stock.
ARTICLE 5
MANUFACTURE OF LICENSED PRODUCTS
5.1 SUPPLY OF LICENSED PRODUCTS: Once Licensee has provided an
Operational Foundry, Licensee agrees to use commercially reasonable efforts to
place itself in, and to maintain, a position to manufacture, test, sell,
service, repair, and maintain Licensed Products for application in the Licensed
Field in the manner necessary to supply effectively the demand therefor.
5.2 PERFORMANCE GOALS: If the following gross revenue goals are
not reached by Licensee by the date specified, Licensor may, at its sole option
and upon thirty (30) days prior written notice, convert any or all of the
licenses granted in Article 2 to non-exclusive licenses. For purposes of this
Article, the date upon which Licensee has an Operational Foundry shall be
called the "Target Date."
DATE GROSS REVENUES WITHIN
---- ---------------------
PRECEDING 12 MONTH PERIOD
-------------------------
Target Date Plus One Year $30,000,000
Target Date Plus Two Years $65,000,000
Target Date Plus Three Years $125,000,000
Licensee's gross revenues shall be calculated in accordance with generally
accepted accounting principles.
ARTICLE 6
IMPROVEMENTS
Licensee agrees that any modifications or improvements in the Licensed
Products, Patent Rights or the Technical Information made by Licensee,
including any inventions, shall be promptly made known to Licensor in the form
of drawings, written descriptions, or other data, and Licensor shall have a
royalty free, non-exclusive right to use such modifications or improvements,
including any inventions outside the Licensed Field or in accordance with
Section 2.8. Licensee further agrees to inform Licensor from time to time in
writing of any of Licensee's patents and patent applications relating to such
modifications, improvements or inventions. If, in countries selected by
Licensor, Licensee decides it shall not file applications for, or maintain
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patents upon, Licensee's modifications, improvements or inventions, then
Licensor shall have the right to do so at its expense and such applications and
patents shall be and become its property, provided Licensee shall continue to
have the right to make use thereof on an exclusive basis in the Licensed Field.
Licensee shall use its best efforts to have executed such application papers
and assignments as Licensor may request in connection with such patents. The
provisions of this Article 6 shall survive termination or expiration of this
Agreement insofar as the rights of the parties to use such improvements,
modifications, inventions and patents are concerned.
ARTICLE 7
REPRESENTATIONS, WARRANTIES AND INDEMNIFICATION
7.1 REPRESENTATIONS AND WARRANTIES OF LICENSOR: Except as
provided for or otherwise described in this Agreement, Licensor represents and
warrants to Licensee as follows:
7.1.1 As of the Effective Date, Licensor is the owner of
all Patent Rights and Technical Information licensed in this Agreement in
existence as of the Effective Date.
7.1.2 As of the Effective Date, Licensor has all requisite
power and authority to enter into and execute this Agreement, to grant the
licenses provided herein and to perform its obligations hereunder.
7.1.3 This Agreement constitutes a legal, valid and binding
obligation of Licensor, enforceable against Licensor in accordance with its
terms.
7.1.4 Licensor has not entered into any agreement with
third parties that would conflict with the terms and conditions herein.
Neither the execution and delivery of this Agreement nor the performance by
Licensor of any of its obligations hereunder will conflict with or result in a
breach of the terms, conditions or provisions of, or constitute a default
under, the Articles of Incorporation or By-Laws of Licensor, as amended.
7.1.5 No royalties or fees have been paid by Licensor to
other persons by reason of its ownership of the Patent Rights or Technical
Information.
7.1.6 As of the Effective Date there is no pending or, to
the actual knowledge of Licensor, threatened claim, litigation or rendered
decision, judgment or holding against Licensor concerning: (i) any claims of
ownership by Licensor to any of the Patent Rights or Technical Information;
(ii) the validity, registrability or enforceability of any intellectual
property rights of Licensor associated with any of the Patent Rights or
Technical Information; (iii) the license of any Patent Rights or Technical
Information to Licensee; or (iv) that the Commercial manufacture, use or sale
of any Licensed Product violates the intellectual property rights of any other
person.
7.1.7 The documentation relating to the Technical Information
to be transferred and disclosed by Licensor to Licensee pursuant to this
Agreement will constitute actual Technical Information used by Licensee prior
to the Effective Date.
7.2 LICENSOR'S RIGHTS: Licensor does not make any representation
or warranty as to the validity of the Patent Rights or that the manufacture,
use or sale of Licensed Products shall not infringe the intellectual property
rights of third parties.
7.3 REPRESENTATIONS AND WARRANTIES OF LICENSEE: Except as
provided for or otherwise described in this Agreement, Licensee represents and
warrants to Licensor as follows:
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7.3.1 Licensee has all requisite power and authority to
enter into and execute this Agreement and to perform its obligations hereunder.
7.3.2 This Agreement constitutes a legal, valid and binding
obligation of Licensee, enforceable against Licensee in accordance with its
terms.
7.3.3 Licensee has not entered into any agreements with
third parties that would conflict with the terms and conditions herein.
Neither the execution and delivery of this Agreement nor the performance by
Licensee of its obligations hereunder will conflict with or result in a breach
of the terms, conditions or provisions of, or constitute a default, under the
Articles of Incorporation or By-Laws of Licensee, as amended.
7.4 VISITS: With respect to all visits of personnel of one party to
the facilities of the other party, the visiting party shall defend and
indemnify the other party from all liability, claim or loss for injury to or
death of any visiting party's employees or agents which such persons are
present at the plant of the other party, and also for damage to the visiting
party's property or to the property of any employee or agent of the visiting
party which may occur during the presence of any such person at the plant of
the other party, regardless of how much damage occurs.
7.5 LIMITATION OF LIABILITY: Licensor does not assume any
responsibility, nor does Licensor give any warranties to Licensee, of any
nature whatsoever, with respect to the ability of Licensee to construct
successfully Licensed Products using the Technical Information or Patent
Rights. LICENSOR'S WARRANTY OBLIGATIONS AND LICENSEE'S REMEDIES THEREUNDER ARE
SOLELY AND EXCLUSIVELY AS STATED HEREIN.
7.6 EXCLUSION: THE WARRANTIES PROVIDED IN THIS ARTICLE 7 ARE IN
LIEU OF ALL OTHER WARRANTIES, WHETHER STATUTORY, EXPRESS OR IMPLIED, AT LAW OR
IN EQUITY, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, ALL OF WHICH ARE EXPRESSLY EXCLUDED.
LICENSOR'S WARRANTY OBLIGATIONS AND LICENSEE'S REMEDIES ARE SOLELY AND
EXCLUSIVELY AS STATED IN THIS ARTICLE 7. IN NO CASE SHALL LICENSOR OR LICENSEE
BE LIABLE FOR ANY SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES,
WHETHER ARISING IN CONTRACT, WARRANTY, TORT, INCLUDING NEGLIGENCE, STRICT
LIABILITY, OR OTHER LEGAL OR EQUITABLE THEORY. LICENSOR DOES NOT MAKE ANY
WARRANTY AS TO THE VALIDITY OR ENFORCEABILITY OF THE PATENT RIGHTS.
ARTICLE 8
TERM AND TERMINATION
8.1 TERM: This Agreement shall commence on the Effective Date,
and shall remain in effect until this Agreement is terminated in accordance
with Sections 8.2 or 11.2.
8.2 TERMINATION:
8.2.1 Licensee agrees to use its reasonable best efforts to
obtain written commitments from one or more banks, institutional investors or
financing sources for debt, lease or equity funds in an aggregate amount which,
when added to the cash on hand held by Licensee, will be sufficient to enable
Licensee to purchase and reconfigure and upfit, or design, construct, install
and start-up, a Foundry to be used to manufacture Licensed Products (the
"Financing"). In lieu of securing the Financing and subject to Article 13
hereof, Licensee may elect to sublicense a third party in order to enable such
third party to manufacture Licensed Products for Licensee. If Licensee is
unable to secure the Financing or enter into a definitive sublicense agreement
with a third party for the manufacture of Licensed Products, by March 1, 1997,
then this
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Agreement, and the licenses and rights granted herein, shall terminate and be
of no force or effect unless both parties agree to extend such date. If the
Agreement is terminated in accordance with this Section 8.2.1, then:
8.2.1.1 Licensee shall return to Licensor all
Technical Information which has been delivered to Licensee in accordance with
Article 3; and
8.2.1.2 The licenses granted to Licensee in
accordance with Article 2 shall be automatically terminated as of such date and
shall be of no force or effect.
8.2.2 In the event that Licensee has been unable to construct
or sublicense an Operational Foundry by December 31, 1998 despite all
reasonable efforts of the parties, then this Agreement, and the licenses and
rights granted herein, shall terminate unless both parties agree to extend such
date. If the Agreement is terminated in accordance with this Section 8.2.2,
then:
8.2.2.1 Licensee shall return to Licensor all
Technical Information which has been delivered to Licensee in accordance with
Article 3; and
8.2.2.2 The licenses granted to Licensee in
accordance with Article 2 shall be automatically terminated as of such date and
shall be of no force and effect.
ARTICLE 9
EXCUSABLE DELAY
9.1 NOTICE: If either Licensor or Licensee is unable to perform
any of their respective obligations as herein provided then the party whose
performance is prevented or delayed shall give the other party notice thereof
as soon as reasonably possible under the circumstances and information
regarding the cause or reason therefor.
9.2 EXCUSABLE DELAY: If either Licensor or Licensee is unable to
perform any of their respective obligations as herein provided due to any
circumstances beyond its reasonable control, but not due to its negligence
(including but not limited to strikes, war, an act of God, a public enemy,
interference by any civil or military authority, inability to secure
governmental approval, materials or services or similar cause) and gives notice
to the other as provided in Section 9.1, then the time of performance of any
such obligation shall be extended for a period equal to the number of days
during which performance thereof was delayed due to such circumstances, and
during such period such party shall not be deemed in default of this Agreement.
ARTICLE 10
NOTICES AND LEGAL ADDRESSES
Except as otherwise expressly provided, all notices under this
Agreement shall be made by fax, confirmed by letter, to the fax numbers and
addresses below:
Licensee: RF Micro Devices, Inc.
▇▇▇▇-▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Telecopy: ▇▇▇-▇▇▇-▇▇▇▇
Attention: President
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Licensor: TRW Inc.
Electronics Systems & Technology Division
One Space Park
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Telecopy: 310.
Attention: Vice President and General Manager
ARTICLE 11
DEFAULT
11.1 DEFAULT: The occurrence of one or more of the following shall
constitute a default hereunder:
11.1.1 In the event a party fails to pay any sum due and
payable hereunder within ten (10) days after same has become due and payable
and such failure continues for fifteen (15) days after written notice from the
payee;
11.1.2 In the event Licensor is unable to fulfill its
obligations under this Agreement as a result of: (a) liens, claims, charges or
encumbrances in existence as of the Effective Date or arising as a result of
Licensor's execution or performance of this Agreement; (b) Licensor's failure
to obtain all consents, approvals or authorizations of other persons necessary
as of the Effective Date in order to grant the licenses provided for herein;
(c) Licensor's failure to make all filings, notifications and registrations
with all governmental authorities, if any, necessary as of the Effective Date
in order to grant the licenses provided for herein; or (d) any federal, state
or local judgment, writ, decree, order, statute, rule or regulation applicable
as of the Effective Date to Licensor, the Patent Rights or Technical
Information, and such inability continues for a period of thirty (30) days
after written notice from Licensee specifying such failure, provided that if
the failure be such that it cannot with due diligence be cured within such
thirty (30) day period, then Licensor shall have such longer period, not to
exceed thirty (30) additional days, as shall be reasonably necessary to cure
such failure so long as Licensor is acting in good faith and with due
diligence;
11.1.3 In the event a party fails to perform any other
material covenant or obligation required to be performed by such party
hereunder and such failure continues for a period of thirty (30) days after
written notice from the nondefaulting party specifying such failure, provided
that if the failure be such that it cannot be cured solely by the payment of
money and cannot with due diligence be cured within such thirty (30) day
period, then the notified party shall have such longer period, not to exceed
thirty (30) additional days, as shall be reasonably necessary to cure such
failure so long as such party is acting in good faith and with due diligence;
11.1.4 In the event a party (i) shall commence a voluntary
case or other proceeding seeking dissolution, liquidation or other relief with
respect to itself or its debts under any bankruptcy, insolvency or other
similar law now or hereafter in effect or seeking the appointment of a
receiver, trustee, liquidator, custodian or other similar official, or (ii)
shall consent to any such relief or to the appointment of, or taking possession
by, such official in any voluntary case or other proceeding commenced against
it; or
11.1.5 In the event any involuntary case or other proceeding
shall be commenced against a party seeking dissolution, liquidation or other
relief with respect to it or its debts under any bankruptcy, insolvency or
other similar law now or hereafter in effect or seeking the appointment of a
receiver, trustee, liquidator, custodian or other similar official of it or any
substantial part of its property, if such involuntary case or other proceeding
shall remain undismissed and unstayed for a period of sixty (60) days.
11.2 REMEDY: If any party is in default as specified in Section
11.1, the party not in default may
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terminate this Agreement by giving the other party thirty (30) days prior
written notice of termination and pursue any other remedy hereunder or
otherwise available to it at law or in equity.
11.3 COMPENSATION: Each party hereby expressly agrees and
acknowledges that termination of this Agreement by either party for default
shall not entitle the other party to any termination compensation or to any
payment in respect of any goodwill established during the term of this
Agreement or render the party liable for damages on account of any loss of
prospective profits or on account of any expenditure, investment or obligation
incurred or made by the parties, or otherwise.
11.4 PERFORMANCE AFTER DEFAULT TERMINATION: If this Agreement is
terminated for default, whether due to the default of Licensor or otherwise,
Licensee shall discontinue the use of the Patent Rights, and Technical
Information and shall return to Licensor all Technical Information furnished to
or otherwise made available to Licensee hereunder.
ARTICLE 12
SURVIVAL OF OBLIGATIONS
Other provisions hereof notwithstanding, the obligations of Licensor
and Licensee under Articles 6 and 7 and Sections 3.4 and 3.8 shall survive the
termination and expiration of this Agreement.
ARTICLE 13
SUBLICENSES, ASSIGNMENTS AND TRANSFERS
13.1 Neither party may sublicense or Transfer any of its rights or
obligations under this Agreement in whole or in part or delegate any of its
obligations or duties hereunder to any person except upon compliance with this
Article 13.
13.2 Prior to the date Licensee constructs or sublicenses an
Operational Foundry, Licensor may Transfer its rights hereunder only with the
prior written consent of Licensee, which consent will not be unreasonably
withheld. From and after the date Licensee certifies that it has an
Operational Foundry, Licensor may Transfer its rights hereunder to any person
upon prior written notice to Licensee.
13.3 Licensee may sublicense its license rights under Section 2.2 to
any person with the prior written consent of Licensor, which consent may be
given, withheld or conditioned at the sole discretion of Licensor.
13.4 Licensee may Transfer its license rights under Section 2.2 only
as follows:
13.4.1 If the proposed Transfer would occur prior to an IPO,
Licensee may Transfer such rights only with the prior written consent of
Licensor, which consent may be given, withheld or conditioned at the sole
discretion of Licensor;
13.4.2 If the proposed Transfer is after the closing of an
IPO and not in conjunction with a Stock Sale, Merger or Asset Sale, Licensee
may Transfer such rights only with the prior written consent of Licensor, which
consent may be given, withheld or conditioned at the sole discretion of
Licensor;
13.4.3 If the proposed Transfer is after the closing of an
IPO and in conjunction with a Stock Sale, Merger or Asset Sale, Licensee may
Transfer such rights by delivering to Licensor a written undertaking executed
by the transferee under which such transferee acknowledges that the rights it
is acquiring from Licensee are limited to the Licensed Field in accordance with
this Agreement.
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13.5 Prior to the closing of an IPO, Licensee may sublicense or
Transfer its license rights under Section 2.1, and may Transfer all its other
rights under this Agreement except its license rights under Section 2.2, to any
person with the prior written consent of Licensor, which consent shall not be
unreasonably withheld.
13.6 After the closing of an IPO, Licensee may sublicense or Transfer
its license rights under Section 2.1, and may Transfer all its rights under
this Agreement except its license rights under Section 2.2, to any person by
delivering to Licensor a written undertaking executed by the transferee under
which such transferee acknowledges that the rights it is acquiring from
Licensee are limited to the Licensed Field in accordance with this Agreement.
13.7 Any purported sublicense or Transfer in contravention of this
Agreement shall be null and void and of no force or effect.
ARTICLE 14
MISCELLANEOUS
14.1 HEADINGS: The headings and titles to the Articles and
Sections of this Agreement are inserted for convenience only and shall not be
deemed a part hereof or affect the construction or interpretation of any
provision hereof.
14.2 REMEDIES: Unless otherwise expressly provided herein, the
rights and remedies hereunder are in addition to, and not in limitation of,
other rights and remedies under the Agreement, and exercise of one right or
remedy shall not be deemed a waiver of any other right or remedy.
14.3 MODIFICATION - WAIVER: No cancellation, modification,
amendment, deletion, addition or other change in this Agreement or any
provision hereof, or waiver of any right or remedy herein provided, shall be
effective for any purpose unless specifically set forth in a writing signed by
the party to be bound thereby and specifically referencing this Agreement. No
waiver of any right or remedy in respect of any occurrence or event on one
occasion shall be deemed a waiver of such right or remedy in respect of such
occurrence or event on any other occasion.
14.4 ENTIRE AGREEMENT: This Agreement supersedes all other
agreements, oral or written, heretofore made with respect to the subject hereof
and the transactions contemplated hereby and, with the Schedules hereto and, in
conjunction with the Securities Purchase Agreement, Restricted Stock Agreement,
Subordinated Convertible Promissory Note, Warrant, Deficit Warrant, and Supply
Agreements of even date herewith, contains the entire agreement of the parties.
14.5 CONTROLLING LAW: All questions concerning the validity and
operation of this Agreement and the performance of the obligations imposed upon
the parties hereunder shall be governed by and construed in accordance with the
laws of the State of California, United States of America applicable to
contracts entered into and wholly to be performed in the State of California.
14.6 SUCCESSORS AND ASSIGNS: The provisions of this Agreement
shall be binding upon and inure to the benefit of Licensor and Licensee and
their respective successors and assigns, but this provision shall not be deemed
to expand or otherwise affect the limitations on assignment and sublicensing
set forth in Article 13 .
14.7 COUNTERPARTS: This Agreement has been executed in several
counterparts, each of which shall be deemed to be an original copy hereof.
14.8 SCHEDULES: The Schedules hereto shall form an integral part
of this Agreement and shall
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have the same effectiveness as the Agreement itself. In the event of any
conflict between the terms of the Agreement and any Schedule, the Agreement
shall be controlling.
14.9 GOVERNMENT REGULATIONS: This Agreement is subject to all the
laws and regulations, and other administrative acts, now or hereinafter in
effect, of the United States Government and its departments and agencies.
Technical Information, any Licensed Product, component, or spare part, are not
authorized to be directly or indirectly sold, leased, released, assigned,
transferred, conveyed, or in any manner disposed of in or to any country where
such sale, lease, assignment, transferal, conveyance or use, is regulated by
the United States Government without first obtaining any necessary approvals of
the United States Government.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date and year first set forth above.
TRW Inc.
Electronics Systems & Technology Division
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
----------------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
Vice President & Division General Manager
RF Micro Devices, Inc.
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
----------------------------------
President and CEO
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