EXHIBIT 10.46
PATENT CROSS LICENSE AGREEMENT
PATENT CROSS LICENSE AGREEMENT ("Agreement") dated May 19, 1999 ("Effective
Date") between MICRON TECHNOLOGY, INC., a Delaware corporation ("MICRON"), and
PIXTECH INC., a Delaware corporation ("PIXTECH").
WHEREAS, MICRON and PIXTECH are entering into an Acquisition Agreement
pursuant to which PIXTECH will acquire certain assets of MICRON (the
"Acquisition Agreement");
WHEREAS, PIXTECH desires to acquire a non-exclusive license under certain
patents of MICRON; and
WHEREAS, MICRON desires to acquire an option to later obtain a license to
certain patents owned or controlled by PIXTECH.
ACCORDINGLY, in consideration of the premises and mutual covenants
contained herein, MICRON and PIXTECH agree as follows:
Section 1. Definitions
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1.1 "FED Product" shall mean:
(a) a product primarily designed for producing an optical image, which:
(i) incorporates one or more bodies of semiconductor material; (ii)
includes a plurality of field emission devices or sites; and (iii)
utilizes a matrix of addressable electron beam generating means to
produce such optical image; and/or
(b) any component or item which forms a part of a FED Product as defined
in Section 1.1(a), above.
1.2 "MICRON Licensed Patents" shall mean:
(a) all patents set forth in Exhibit A;
(b) all patents issued or issuing on the patent applications set forth in
Exhibit A;
(c) all patents which issue based upon an invention disclosure identified
on Exhibit A; and
(d) any and all patents based upon corresponding applications to any of
the patents, patent applications and disclosures referenced in Section
1.2 (a)-(c), as well as their related foreign counterparts, together
with all divisionals, continuations, continuations-in-part, reissues,
substitutions, renewals, confirmations, registrations, extensions or
additions of or to the aforementioned patents.
MICRON represents that the patents, patent applications and disclosures
referenced in Section 1.2 (a)-(c) represent all "FED-Specific" patents,
patent applications and disclosures owned by MICRON. FED-Specific means
that the patent relates exclusively
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to an FED display or component thereof, or to equipment or processes
adapted exclusively for the manufacture of such displays or components; but
expressly does not include all structures, processes or equipment which
might conceivably be utilized in a FED display or in the manufacture of
such a display. MICRON's intent is that Exhibit A identifies all patents,
patent applications and invention disclosures generated as a result of work
on projects at MICRON (or its former subsidiary, Micron Display Technology,
Inc.) directed to the development of FED displays. To the extent that any
existing patents, patent applications or invention disclosures are later
discovered which were generated as a result of such work, but which are not
identified on Exhibit A, MICRON will amend Exhibit A to include such
missing items consistent with this intent.
1.3 "Subsidiary" of a party hereto or of a third party shall mean a
corporation, company or other entity:
(a) more than fifty percent (50%) of whose outstanding shares or
securities (representing the right to vote for the election of
directors or other managing authority) are, now or hereafter, owned or
controlled by a party hereto or such third party, but such
corporation, company or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control exists; or
(b) which does not have outstanding shares or securities, as may be the
case in a partnership, joint venture or unincorporated association,
but more than fifty percent (50%) of whose ownership interest
representing the right to make the decisions for such corporation,
company or other entity is now or hereafter owned or controlled by a
party hereto or such third party (regardless of whether such right to
make decisions is exercised or delegated to another), but such
corporation, company or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control exists.
Section 2. Grants of Rights
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2.1 License to PIXTECH. MICRON grants to PIXTECH a non-exclusive license under
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the MICRON Licensed Patents:
(a) to make (including the right to use any apparatus and practice any
method in making), use, import, offer for sale, lease, sell and/or
otherwise transfer FED Products; and
(b) subject to the conditions set forth in Section 2.2, below, to have
made by another manufacturer for the use, importation, offer for sale,
lease, sale and/or other transfer directly by PIXTECH under the
trademarks or tradenames of PIXTECH or its Subsidiaries.
2.2 Have-Made Rights. The license granted in Section 2.1(b) to have FED
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Products made by another manufacturer:
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(a) shall only apply when the designs, specifications and working drawings
for such FED Products are furnished by, and originate with, PIXTECH or a PIXTECH
Subsidiary;
(b) such designs, specifications and working drawings are sufficiently
detailed that no additional designing by the manufacturer is required (other
than adaptation to the production processes and standards normally used by the
manufacturer, which adaptation results in no more than a negligible change in
the characteristics of the FED Product).
(c) shall not apply to any products manufactured or marketed by said other
manufacturer prior to PIXTECH's furnishing of said designs, specifications
or working drawings.
(d) Unless PIXTECH informs MICRON to the contrary, PIXTECH shall be deemed
to have authorized said other manufacturer to make FED Products under the
license granted to PIXTECH in this section when the conditions specified in this
Section 2.2 are fulfilled.
(e) In response to a written request from MICRON identifying a product or
manufacturer, which request will be made not more often than twice per calendar
year, PIXTECH shall in a timely manner inform MICRON of the quantity of product,
if any, manufactured by each manufacturer pursuant to the license granted
pursuant to Section 2.1(b). Data furnished by PIXTECH in response to such
request will be held as confidential by MICRON and will not be disclosed except
in accordance with the standards set forth in Section 5.9 herein. MICRON further
agrees that such data will be used only for business purposes related to
determining of breach under this Agreement and/or to determining or evaluating
infringement by a third party.
2.3 Combination Products. The provisions of this Section shall apply only to
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the sale, lease or other transfer of FED Product components as defined in
Section 1.1 (b) herein ("FED Product Components"). No license or immunity is
granted under this Agreement by MICRON, either directly or by implication,
estoppel or otherwise to any third parties acquiring FED Product Components from
PIXTECH for the combination of such acquired FED Product Components with other
items (including items acquired from either party hereto) or for the use of such
combination even if such FED Product Components have no substantial use other
than as part of such a combination.
2.4 Subsidiaries. Subject to the provisions of Section 2.5, the license
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granted in Section 2.1 shall include the right of PIXTECH to grant sublicenses
only to its Subsidiaries, and shall not include the right to grant licenses or
sublicenses to any third party which is not a Subsidiary of PIXTECH. No
sublicense shall be broader in any respect at any time during the life of this
Agreement than the license held at that time by PIXTECH.
2.5 Termination of Subsidiary Sublicense. A sublicense granted to a PIXTECH
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Subsidiary shall terminate on the earlier of:
(a) the date such PIXTECH Subsidiary ceases to be a Subsidiary; or
(b) the date of termination or expiration of the license to PIXTECH.
2.6 Acquisition by PIXTECH. If, after the Effective Date, PIXTECH or any of
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its Subsidiaries ("Acquiring Party") either acquires an entity or acquires
substantially all of the
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assets from an entity, and said entity is, immediately prior to such
acquisition, licensed by MICRON under one or more MICRON Licensed Patents
through an existing agreement pursuant to which royalties or other payments are
made by said entity to MICRON; then the license and other rights granted herein
to the Acquiring Party with respect to said MICRON Licensed Patents shall apply
to products manufactured by said entity or through the use of said assets,
provided that such royalties or other payments shall continue to be made by
PIXTECH or said entity to MICRON with respect to such products notwithstanding
that PIXTECH may have been licensed for the same licensed products before the
acquisition. In the event that the Acquiring Party should acquire more than one
entity having such royalty-bearing license obligations to such MICRON Licensed
Patents, only the first-obligated royalty payment per individual product item
will be required.
2.7 License to Third Parties. PIXTECH may propose to MICRON that MICRON
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license the MICRON Licensed Patents to a third Party in parallel to PIXTECH
licensing such third party to patents which PIXTECH owns or has the right to
license. MICRON may, at its sole discretion, and for any or no reason and/or
under any desired conditions, agree or not agree to such license to such third
party. In the event that MICRON agrees, in principle, to such license, PIXTECH
and MICRON shall then agree to the terms of the license, including without
limitation, the existence or amount of sharing of revenues from such license.
MICRON is under no obligation to accept or agree to terms offered or proposed by
PIXTECH or such third party.
2.8 License Option to MICRON. PIXTECH, on behalf of itself and its
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Subsidiaries, hereby grants to MICRON, effective as of the third anniversary of
this Agreement and continuing for the term of this Agreement, the option to
obtain, at MICRON's sole discretion, a non-exclusive license to MICRON and its
Subsidiaries under: (a) all patents and technology owned by PIXTECH, either
directly or through a Subsidiary, relating to FED Products or to the manufacture
of FED Products; and/or (b) all patents and technology relating to FED Products
or to the manufacture of FED Products, to the extent that such patents and
technology are licensable by PIXTECH, either directly or through a Subsidiary,
as of the date MICRON elects to exercise such option. Such license(s) shall
include the rights:
(a) to make (including the right to use any apparatus and practice any
method in making), use, import, offer for sale, lease, sell and/or
otherwise transfer FED Products; and
(b) to have FED Products made by another manufacturer for the use,
importation, offer for sale, lease, sale and/or other transfer
directly by MICRON.
The terms and conditions of such MICRON License Agreement shall be set forth in
a definitive written agreement to be negotiated in good faith by the parties
following MICRON's written exercise of such option and shall be subject to and
consistent with the terms and conditions of all licensing agreements of PIXTECH
existing and operable as of the date of such exercise; provided, however, that:
(i) any such license(s) under the aforementioned patents and technology
owned by PIXTECH or a Subsidiary shall be on terms and conditions,
including royalty rates, which, when considered as a whole, are no less
favorable than those of any other
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licensing agreement of PIXTECH of similar scope, territory and duration
that is existing and operable as of the date of such exercise;
(ii) any such license(s) under the aforementioned patents and technology
licensable by PIXTECH or its Subsidiaries shall be on terms and conditions,
including royalty rates, which, when considered as a whole, are as
favorable as PIXTECH or its Subsidiaries may reasonably grant without
incurring any financial penalty or similar liability under its licensing
agreement with Motorola, Inc. (as amended and effective as of the Effective
Date of this Agreement); and
(iii) the license to PIXTECH under the MICRON Licensed Patents granted
herein under Section 2.1 shall be considered in determining the scope,
territory and duration, and the relative favorability of the terms, of any
such existing and operable licensing agreements of PIXTECH, on the one
hand, and the definitive agreement to be negotiated with MICRON following
exercise of its option hereunder, on the other.
2.9 Release of MICRON. PIXTECH, on behalf of itself and its Subsidiaries,
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hereby releases MICRON and its Subsidiaries from all claims, demands and rights
of action which PIXTECH or its Subsidiaries may have on account of any
infringement or alleged infringement of any patent which PIXTECH owns or has the
right to enforce, based upon acts of MICRON or any of its Subsidiaries prior to
the Effective Date of this Agreement.
2.10 Release of PIXTECH. MICRON, on behalf of itself and its Subsidiaries,
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hereby releases PIXTECH and its Subsidiaries from all claims, demands and rights
of action which MICRON or its Subsidiaries may have on account of any
infringement or alleged infringement of any patent which MICRON owns or has the
right to enforce, based upon acts of PIXTECH or any of its Subsidiaries prior to
the Effective Date of this Agreement. MICRON, on behalf of itself and its
Subsidiaries, further hereby releases Unipac Optoelectronics Corporation, ▇▇. ▇,
▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇ ▇▇▇, Science-Based Industrial Park, Hsin-Chu City, Taiwan
("UNIPAC")from all claims, demands and rights of action which MICRON or its
Subsidiaries may have on account of any infringement or alleged infringement of
any patent which MICRON owns or has the right to enforce, based upon acts of
UNIPAC in manufacturing, using or selling FED Products prior to the Effective
Date of this Agreement.
2.11 MICRON Conditional Covenant Not to ▇▇▇ on Non-Licensed Patents. To the
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extent that MICRON, within the calendar year prior to the Effective Date of this
Agreement, utilized processes, recipes, chemistries and fabrication procedures
to manufacture FED Products utilizing a rectangular glass baseplate substrate,
which processes, recipes, chemistries and fabrication procedures fall within the
scope of one or more patents owned by MICRON but not a MICRON Licensed Patent;
MICRON agrees to not initiate any suit or action against PIXTECH, its
Subsidiaries or UNIPAC for infringement of such patent(s) (regardless of the
date of issuance of such patent(s)) based upon the use of such processes,
recipes, chemistries or fabrication procedures to manufacture FED Products
during the term of the license granted herein. This covenant not to ▇▇▇ is
personal to PIXTECH, its Subsidiaries and UNIPAC, and shall not benefit
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any other persons or entities, including any successors in interest to PIXTECH,
its Subsidiaries, UNIPAC or any trustee in bankruptcy, receiver or other
successor of such entities.
Section 3. Term of Agreement; Acquisition of PIXTECH
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3.1 Term. The term of the licenses and rights granted under this Agreement
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shall commence on the Effective Date and expire on the 10th anniversary of such
date in May, 2009, without regard to the duration of the MICRON Licensed
Patents, and unless earlier terminated under the provisions of this Agreement.
3.2 Early Termination. MICRON shall have the right to terminate the license
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and any other rights granted to PIXTECH granted under this Agreement if PIXTECH
fails at any time to make the payment required under this Agreement or the
Acquisition Agreement between the parties, or is otherwise in material breach of
its obligations under this Agreement or the Acquisition Agreement, and if
PIXTECH does not cure such failure (including the payment of any interest)
within thirty (30) days after written notice from MICRON to PIXTECH specifying
the nature of such failure.
3.3 Termination on Change in Control or Ownership. In the event that:
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(a) more than 50% of PIXTECH's outstanding shares or securities
(representing the right to vote for the election of directors or other
managing authority) become owned or controlled, directly or
indirectly, by a third party (Change in Control"); or
(b) there is a sale of substantially all of the assets of PIXTECH ("Asset
Sale");
then, in the absence of the advance consent of MICRON, which consent will not
unreasonably be withheld, all rights and licenses granted by MICRON herein shall
immediately terminate upon such Change in Control or such Asset Sale. In no
event shall any right or license be transferred or transferable which will inure
to the benefit of any trustee in bankruptcy or receiver.
Except, however, that the above termination provision shall not apply where
the Change in Control results from stock price changes affecting outstanding
shares of convertible securities held by a third party owning at least 20% of
the outstanding shares of PIXTECH as of the Effective Date of this Agreement.
3.4 Negotiations for Future License. Within one year prior to the expiration
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of the full term of the license granted herein, MICRON agrees to enter into
negotiations in good faith with PIXTECH for a new license to the MICRON Licensed
Patents. The agreement in this section is personal to PIXTECH, and shall not
benefit any successors in interest; and shall apply only to the extent that
PIXTECH is not in breach or default of any obligations under this Agreement or
the Acquisition Agreement.
Section 4. Notice
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Notices and other communications shall be sent by facsimile or by
registered or certified mail to the following addresses and shall be effective
upon mailing:
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For MICRON: For PIXTECH:
Micron Technology, Inc Pixtech, Inc.
Attn: General Counsel/ Attn: ▇▇▇▇▇▇ ▇▇▇▇▇▇
Intellectual Property Counsel President and CEO
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇ Avenue ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Boise, Idaho 83707-0006 Zone Industrial ▇▇ ▇▇▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇ Telephone: 011-33-4-42-29-10-00
Facsimile: 011-33-4-42-29-05-09
With a Copy To:
▇▇▇▇▇▇ & Dodge, LLP
Attn: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, Esq.
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇
Telephone: ▇▇▇-▇▇▇-▇▇▇▇
Facsimile: 617-227-4420
Section 5. Miscellaneous
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5.1 No Assignment. Except as expressly provided in Sections 2.4 and 3.3
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herein, PIXTECH may not assign or otherwise transfer any rights under the
license granted herein, and may not otherwise assign or transfer any rights
under any of the MICRON Licensed Patents or any other patent(s) owned by MICRON.
Any assignment or grant in violation of this Section 5.1 shall be void. Subject
to the foregoing limitation and the limitations of Section 3.3, this Agreement
shall bind and benefit the parties hereto and their successors.
5.2 No Promotion. Neither party shall use or refer to this Agreement or any of
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its provisions in any promotional activity, except that a party may disclose the
existence of this Agreement, and that "PIXTECH has a license under MICRON's FED
patents".
5.3 Other Rights. Nothing contained in this Agreement shall be construed as
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conferring any rights by implication, estoppel or otherwise, to PIXTECH under
(a) any MICRON-owned non-patent intellectual property right, or (b) except as
expressly provided in Section 2.11 herein, under any MICRON-owned patents or
patent applications, other than the MICRON Licensed Patents. Neither party is
required hereunder to furnish or disclose to the other party any technical or
other information (including without limitation, copies of MICRON Licensed
Patents) except as specifically provided herein.
5.4 Infringement. PIXTECH may notify MICRON of any infringement or suspected
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infringement by any third party of any of the MICRON Licensed Patents. MICRON
shall not, however, have any obligation to institute any action or suit against
any third party for infringement of any of the MICRON Licensed Patents or to
defend any action or suit brought by a third party which challenges or concerns
the validity of any of the MICRON Licensed Patents.
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PIXTECH shall not have any right to institute any action or suit against third
parties for infringement of, or to defend the validity of, any of the MICRON
Licensed Patents. MICRON is not required to file any patent application, or to
secure any patent or patent rights, or to maintain any patent in force.
5.5 Amendments. This Agreement shall not be binding upon the parties until it
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has been signed hereinbelow by or on behalf of each party. No amendment or
modification hereof shall be valid or binding upon the parties unless made in
writing and signed as aforesaid, except that either party may amend its address
in Section 4 by written notice to the other party.
5.6 Unenforceable Provisions. If any section of this Agreement is held to be
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invalid, illegal or unenforceable, such provision shall be enforced to the
maximum extent permitted by law and the parties fundamental intentions
hereunder, and the remaining provisions shall not be affected.
5.7 Governing Law. This Agreement shall be construed, and the legal relations
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between the parties hereto shall be determined, in accordance with the law of
the State of Delaware, USA, without regard to its conflict of law rules.
5.8 Section Headings. The headings of sections are inserted for convenience of
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reference only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
5.9 Disclosure of Agreement. Except as expressly provided in Section 5.2, each
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party agrees not to disclose the terms, conditions or scope of this Agreement to
any third party (other than its Subsidiaries) without the prior written consent
of the other party. This obligation is subject to the following exceptions:
(a) disclosure is permissible if required by government or court order,
provided the party required to disclose first gives the other prior written
notice to enable it to seek a protective order;
(b) disclosure is permissible if otherwise required by law;
(c) disclosure is permissible if required to enforce rights under this
Agreement;
(d) each party may use similar terms and conditions in other agreements;
and
(e) each party may disclose this Agreement or its contents to the extent
reasonably necessary, on a confidential basis, to its accountants, attorneys,
financial advisors, its present or future providers of venture capital and/or
potential investors in or acquirers of such party.
The nondisclosure obligation shall be satisfied by a party if it treats this
Agreement in the same manner as it treats its other similar contracts.
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5.10 Execution. This Agreement may be signed in one or more counterparts, each
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of which shall be deemed to be an original and all of which when taken together
shall constitute the same agreement.
This Agreement and its exhibits embody the entire understanding of the
parties with respect to the matters addressed herein, and replaces any prior
oral or written communications between the parties.
Agreed to: Agreed to:
Micron Technology, Inc. Pixtech, Inc.
By: /s/ ▇.▇. ▇▇▇▇▇▇, ▇▇. By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
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Name:_____________________ Name:______________________
Title:____________________ Title:_____________________
Date:_____________________ Date: _____________________
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Exhibit A
MICRON Licensed Patents
[ ]*
*Confidential treatment has been requested for this portion and has been filed
with the Commission.
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