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TESSERA CONFIDENTIAL EXHIBIT 10.11
TESSERA, INC.
TCC(R) LICENSE AGREEMENT
This Agreement is entered into as of this 1st day of April 1999 ("Effective
Date"), between TESSERA INC., a corporation organized under the laws of
Delaware, having a principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇
▇▇ ▇▇▇▇▇ and the Tessera Affiliates ("Tessera") and Toshiba Corporation, a
corporation organized under the laws of Japan having a principal place of
business at ▇-▇, ▇▇▇▇▇▇▇▇ ▇-▇▇▇▇▇, ▇▇▇▇▇▇-▇▇, ▇▇▇▇▇ ▇▇▇-▇▇▇▇, ▇▇▇▇▇ and the
Licensee Affiliates ("Licensee") with reference to the following facts:
Scope:
WHEREAS, Tessera owns certain patents and patent applications relating to
semiconductor integrated circuit ("IC") packaging for single point bonded TCCs;
and
WHEREAS, Licensee desires to obtain a non-exclusive license under
Tessera's said certain patents and patent applications.
NOW THEREFORE, in consideration of the promises and covenants hereinafter
set forth the parties hereto agree as follows:
I. DEFINITIONS
As used herein, the following terms shall have the following meaning:
A. The term "TCC" is an acronym for Tessera Compliant Chip, a type of
integrated circuit ("IC") package which is the subject matter of certain
Tessera Patents licensed hereunder. By way of non-limiting example, such TCCs
may include IC packages that are in a fan-in arrangement (where external
electrical terminals overlie a surface of an IC device) or are in a fan-out
arrangement (where external electrical terminals are arranged beyond the
periphery of an IC device) or are in a fan-in/fan-out arrangement (where
external electrical terminals both overlie a surface of an IC device and extend
beyond the periphery of the IC device). In such examples, the contact bearing
surface of the IC device may face either towards or away from the external
electrical terminals.
B. The term "(mu)BGA(R)" is a type of TCC where the package terminals
are disposed in or over a compliant structure attached to the face, contact
bearing surface of the IC and the term "F-(mu)BGA(TM)" refers to a type of TCC
where the package terminals are disposed in or over a compliant structure
attached to the back, non-contact bearing surface of the IC.
C. The term "Patent" means letters, patents, utility models, allowances
and applications therefor in all countries of the world, including re-issues,
re-examinations, continuations, continuations-in-part, divisionals, and all
corresponding foreign patents.
D. The term "Tessera Patent" means Patent(s) or claims within such
Patent(s) for the design, manufacture, and/or assembly of TCCs (excluding Batch
Technology as defined herein)
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TESSERA CONFIDENTIAL
owned by Tessera prior to expiration or termination of this Agreement. The term
Tessera Patent shall further include any third party patent for the design,
manufacture, and/or assembly of TCCs (excluding Batch Technology as defined
herein) under which Tessera or any successor thereof has the right to grant
licenses of the scope granted herein, as of the Effective Date or at any time
during the term of this Agreement, without the payment of royalty or other
consideration to such third parties except for payment to third parties for
inventions made by said parties while employed by Tessera or any successor
thereof. As of the Effective Date of this Agreement, Tessera Patents, as
defined above, consist of those issued Patents set forth in Attachment A. Prior
to expiration or termination of this Agreement, Attachment A shall be amended
from time to time to include further issued Patents directly related to the
scope of the license grant in Paragraph II. Tessera has sole discretion in the
prosecution of the Tessera patent applications prospectively licensed
hereunder, non-exclusively including filing continuations,
continuations-in-part, divisionals, filing corresponding foreign patents
applications and/or abandoning one or more of such patent applications.
E. The term "Batch Technology" as used herein means Patents relating to
or including: (i) any method or result of U.S. Patent Number 5,518,964 (and
related Patents) for making flexible electrically conducting element(s),
joining said elements to electrical contact(s) on a substantially planar
electrical element such as a semiconductor integrated circuit, undiced IC
wafer, or interconnect substrate, and forming said element(s) away from the
plane of said contacts in a predetermined fashion into the flexible electrical
lead(s) of a TCC; (ii) any method or result of U.S. Patent 5,455,390 (and
related Patents) for making and forming flexible conducting element(s) on a
dielectric film and then simultaneously joining said elements to electrical
contacts on a substantially planar electrical element such as a semiconductor
integrated circuit, undiced IC wafer or interconnect substrate to produce the
flexible electrical leads of a TCC; and/or (iii) any method or result of
further invention or Patent made or acquired by Tessera during the term hereof
covering any processing method for simultaneously forming, producing and/or
connecting a plurality of flexible electrical leads of a TCC. Notwithstanding,
the parties expressly agree that any TCC made and/or connected individually on
a semiconductor integrated circuit or undiced wafer by traditional wire bonding
methods and/or tape automated bonding ("TAB") gang bonding methods, is NOT
included in Batch Technology.
F. The term "Billable Pin" means any electrical connection to an IC bond
pad made or contained in any TCC license hereunder.
G. The term "Licensee Improvements" means derivatives, improvements,
modifications, or enhanced specifications relating to a TCC, or related
materials, that may infringe a Tessera Patent or may be made or incorporated in
a TCC by or for Licensee.
H. The term "Standards" means those minimum standards as set forth in
Attachment C pursuant to which Licensee may sell any TCC under a ▇▇▇▇ (as
defined in Paragraph VIII).
I. The term "Licensee Affiliate" means any company which agrees to be
bond by the terms and conditions of this Agreement and has more than fifty
percent (50%) of the voting stock owned or controlled directly or indirectly by
Licensee. A company shall be considered a Licensee Affiliate only so long as
such majority ownership or control exists. Licensee shall be ultimately
responsible for the actions of the Licensee Affiliates pursuant to this
Agreement.
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TESSERA CONFIDENTIAL
J. The term "Tessera Affiliate" means any company which agrees to be
bound by the terms and conditions of this Agreement and has more than fifty
percent (50%) of the voting stock owned or controlled directly or indirectly by
Tessera. A company shall be considered a Tessera Affiliate only so long as such
majority ownership or control exists. Tessera shall be ultimately responsible
for the actions of the Tessera Affiliates pursuant to this Agreement.
II. LICENSEE RIGHTS
A. License Grant. Subject to the terms and conditions hereinafter set
forth, Licensee's agreement to the provisions hereof including all attachments
hereto, and Licensee's payment of the fees and royalties stated herein in
Paragraph III, Tessera hereby grants Licensee a non-exclusive, non-transferable,
non-sublicensable, limited license to the Tessera Patents to package and/or
assemble ICs into TCCs and use or sell such TCCs world wide. Licensee
specifically is NOT granted any "have made" rights which would allow Licensee to
have non-Affiliates package and/or assemble ICs into TCCs for Licensee.
B. Batch Technology Excluded. Notwithstanding anything herein to the
contrary, Batch Technology is excluded from the scope of this Agreement, and
Licensee's rights herein expressly exclude any right to package and/or assemble,
or sell any TCC made using Batch Technology.
C. No Implied License. Notwithstanding the foregoing, nothing in this
Agreement shall be construed to grant Licensee, successors or assigns or any
third parties an implied license under any patent owned by Tessera other than
the Tessera Patents.
III. FEE AND ROYALTY
A. License Fee. As consideration for the licenses and privileges of
Paragraph II.A. hereof, Licensee shall pay to Tessera the sum of [*] US DOLLARS
($[*]). The payment of such Licensee Fee shall be as follows:
(1) Licensee shall pay [*] US DOLLARS (US$[*]) within thirty (30) days
of the Effective Date
(2) the remaining [*] US DOLLARS (US$[*]) in License Fee compensation
shall be waived by Licensee's attainment of a minimum cumulative production
quantity and sales level of royalty bearing TCC packages (for which Licensee
pays Tessera a royalty directly, i.e. based upon this Agreement) on the
following schedule:
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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TESSERA CONFIDENTIAL
Cumulative Production
& Sales Quantity
of royalty bearing
Deadline TCC packages Waiver Amount
---------------------------------- --------------------- -------------
Two years from the First Quarterly [*] US$[*]
Payment due Tessera pursuant to
Paragraph V.
Three years from the First Quarterly [*] US$[*]
Payment due Tessera pursuant to
Paragraph V.
Four years from the First Quarterly [*] US$[*]
Payment due Tessera pursuant to
Paragraph V.
As Licensee meets the cumulative schedule (shown above) each year, the
amount listed in the "Waiver Amount" column shall be subtracted and waived from
the remaining [*] US DOLLARS due Tessera as a License Fee. If Licensee's
production and sales of royalty bearing TCC packages does not meet the
commitment schedule shown above at a respective Deadline, i.e. the end of a
respective production and sales period, any unpaid or unwaived portion of the
remaining [*] US DOLLAR License Fee shall be immediately due and payable to
Tessera from Licensee.
B. Royalty. In addition to the License Fee, Licensee shall pay running
royalties for the license granted in Paragraph II.A. four times annually (as set
forth in Paragraph V) to Tessera during the term of this Agreement. Licensee
shall pay a royalty to Tessera in the amount of [*] US [*] (US$[*]) per Billable
Pin for TCCs made by Licensee hereunder, whether sold, transferred or used
internally.
C. Volume Adjustments. Royalty payments due Tessera hereunder shall be
adjusted by multiplying Licensee's total base royalty calculated under Paragraph
III.B. above, by a factor of [*] ([*]) until Licensee has paid Tessera [*] US
DOLLARS (US$[*]) in aggregate royalties, and then by a factor of [*] ([*]) until
Licensee has paid Tessera an additional [*] US DOLLARS (US$[*]) in royalties.
DISCOUNT FOR PREPAYMENT: At any time, Licensee may elect to pay Tessera [*] US
DOLLARS (US$[*]) in lieu of any such Volume Adjustments, in which event said
Licensee shall notify Tessera and tender such payment and henceforth pay
royalties at the lowest level (as set forth in Paragraph III.B., above) without
any such Volume Adjustments.
D. Adjustments for CPI Changes. Licensee's royalty payments shall be
further adjusted by multiplying amounts due under Paragraph III.C. above by a
factor based on changes in the US Consumer Price Index ("CPI"). Said factor is
deemed to be equal to one (1.0) for the first three years of the term of this
Agreement. During said term or any extension hereof, said
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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TESSERA CONFIDENTIAL
factor shall be recalculated every three years by dividing the average of the
actual CPI during the three (3) years previous to such date of recalculation in
effect on each third anniversary by the actual CPI in effect on the Effective
Date of this Agreement. However, any change in the CPI pursuant to this
provision shall not cause an adjustment of more than a 50%.
E. Most Favored Royalty. As of the Effective Date, Tessera, in good
faith, intends that any agreement that Tessera enters into henceforth with
another similarly situated licensee whereby such licensee receives identical
rights, privileges, terms and conditions as contained in this Agreement, shall
be on royalty rate terms no more favorable to such other licensee than the
royalty terms set forth in this Agreement. The following shall not be deemed
agreements subject to this Paragraph: (i) agreements between Tessera and Tessera
Affiliates; (ii) cross-license or other agreements under which a substantial
portion of the consideration received by Tessera consists of rights to patents
and/or technology owned by the other party to such agreement; (iii) agreements
with governmental or educational agencies; and (iv) agreements in settlement of
litigation. In the event that Tessera grants another such identical license
having better royalty terms than the royalty terms set forth in this Agreement,
Tessera shall promptly notify Licensee of the financial terms of such other
license. Upon notice by Licensee, given within 30 days after such notice by
Tessera, this Agreement shall be amended to substitute all of the royalty terms
of such other license for the royalty terms of this Agreement, provided that
(a) Licensee must accept all of the royalty terms of such other license, and
may not select particular terms; and (b) such amendment shall not affect
Tessera's rights with respect to royalties or other moneys accrued and/or paid
prior to such amendment.
IV. TAXES
Any taxes imposed by the Government of Japan based upon payments from
Licensee to Tessera under this Agreement shall be paid in accordance with the
United States-Japan Treaty for the Avoidance of Double Taxation. Tessera
acknowledges that Tessera shall be obligated to pay tax at the reduced
withholding income tax rate of ten percent (10%) rather than the ordinary rate
of twenty percent (20%) by filing the officially sanctioned "Application Form
for Income Tax Convention between the United States and Japan" (hereinafter
"Application Form") with the Japanese tax authorities. Licensee shall send
Tessera the Application Form within thirty (30) days after execution of this
Agreement for Tessera's signature and Tessera shall immediately sign and return
it to Licensee so that Licensee may file it with the relevant Japanese tax
authorities on behalf of Tessera. Tessera agrees that notwithstanding the
payment condition as set forth elsewhere in this Agreement, Licensee may
withhold the remittance of the payment until Licensee completes the filing
procedure of the Application Form with the Japanese tax authorities; provided,
however, that in no event such withholding of the remittance shall extend
beyond the end of fifteen (15) working days from the date when Licensee
received the signed Application Form from Tessera. Licensee shall deduct and
pay any taxes due the Japanese government from payments made by licensee
hereunder to the tax authorities in Japan. Licensee shall promptly furnish
Tessera with the corresponding tax receipts and/or certificates evidencing
payments or registration thereof.
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TESSERA CONFIDENTIAL
V. LICENSEE REPORTS AND PAYMENT
Quarterly Royalty Payments. Beginning on the Effective Date of this
Agreement, royalties shall be calculated and paid in full in quarter annual
payment periods ending March 31, June 30, September 30 and December 31 of each
year. Beginning with the first such royalty calculation and payment, Licensee
shall deliver a written report (as shown in Attachment B) describing the basis
upon and containing the information sufficient to determine the royalties due
Tessera for the applicable payment period. All payments under this Paragraph
shall be made in US Dollars by wire transfer to Union Bank of California, ▇▇
▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇, Account Name: Tessera, Account No.:
6450148359, Routing No. ▇▇▇▇▇▇▇▇▇, International Swift Code: ▇▇▇▇▇▇▇▇, or such
other bank or account as Tessera may from time to time designate in writing.
Licensee will further submit with each such calculation report, an accounting of
the total quantity of TCCs manufactured by Licensee as compared to the total
quantity of TCCs manufactured for Licensee by a separate Tessera TCC assembly
licensee. The payments of royalties and submission of royalty reports from
Licensee to Tessera under this Paragraph shall be made within sixty (60) days
from the end of each reporting calendar quarter and shall be considered to be
made as of the day on which such payments are received in Tessera's designated
bank account.
VI. INTENTIONALLY LEFT BLANK.
VII. IMPROVEMENT GRANTBACK
A. Licensee Improvement Grantbacks. Licensee agrees not to assert that
Tessera infringes Licensee's Patents covered by any inventions contained in
Licensee Improvements conceived of prior to the termination of this Agreement so
that Tessera may manufacture, have manufactured, use, sell or offer for sale
TCCs (excluding Batch Technology).
B. Cross Licensing With Other Tessera Licensees. Licensee agrees to
negotiate in good faith with the other licensees of Tessera on commercially
reasonable terms a non-exclusive, non-transferable, non-sublicensable license
under Licensee's Patents covering any inventions contained in such Licensee
Improvements that are discoverable from an examination of the TCCs made by
Licensee unless such other licensees refuse to grant to Licensee similar
licensees under any of such other licensees' patent relating to any
improvements developed by such other licensee on similar commercially
reasonable terms. In no event shall Licensee be under any obligation to
negotiate such licenses in good faith with other licensees of Tessera, unless
Licensee Improvements are used in IC packages sold externally to non-Affiliates
or proposed by Licensee and adopted for incorporation into a TCC packaging
standard.
VII. TRADEMARKS & LICENSE NOTICE
A. Trademark Ownership. Licensee acknowledges Tessera's ownership of the
following trademarks: TESSERA BLOCK LOGO, TCC, COMPLIANT CHIP, (mu)BGA, Micro
BGA and F-(mu)BGA (hereinafter "Marks"). Licensee agrees that it will do nothing
inconsistent with such ownership and that all use of the Marks by Licensee shall
inure to the benefit of and be on behalf of Tessera. Licensee agrees that
nothing in this Agreement shall give Licensee any
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TESSERA CONFIDENTIAL
right, title or interest in the Marks other than the right to use the Marks in
accordance with this Agreement to make and sell TCCs according to the Standards.
B. Trademark License Grant. Subject to the IC packages manufactured
pursuant to this Agreement meeting all of the Standards, Licensee's agreement
and compliance with to other provisions of this Agreement including all
attachments hereto, and Licensee's payment of the fees and royalties stated
herein in Paragraph III, Tessera hereby grants Licensee a non-exclusive,
non-transferable, non-sublicensable limited license to use the Marks to identify
and distinguish the royalty bearing TCCs that are sold by Licensee under this
Agreement, subject to the proper use of such Marks (as set forth in this
Paragraph below) and the acknowledgement of ownership of such Marks in
documentation, articles and promotional material; to wit, each such use shall
contain the following text: "__________ (List of the Marks used in the item) are
trademarks of Tessera, Inc." or a suitable variant thereof to account for a
singular use of one or more of the Marks.
C. Trademark Form of Use. Licensee shall use its best efforts to use the
Marks as modifiers in conjunction with generic nouns, e.g. the (mu)BGA(R)
package. Further, all of the Marks, except "Micro BGA" and "F-(mu)BGA", are
federally registered by the U.S. Trademark Office. As such, Licensee shall use
the "(R)" symbol adjacent the Marks in all titles and headings and other
prominent uses of the Marks and shall also use its best efforts to use the "R"
symbol on at least the first and most obvious use of each of the Marks within
the text of any printed material. "Micro BGA" and "F-(mu)BGA" are common law
trademarks of Tessera. As such, Licensee shall use the "(TM)" symbol adjacent
this ▇▇▇▇ in all titles and headings and other prominent uses of the Micro BGA
marks and shall also use its best efforts to use the "(TM)" symbol on at least
the first and most obvious use of each such ▇▇▇▇ within the text of any printed
material.
D. License Notice. Licensee promotional material and advertisements
referring to royalty bearing TCCs may include a prominent written notice that
"These products are made under a license from Tessera, Inc.".
IX. THIS PARAGRAPH INTENTIONALLY LEFT BLANK
X. TERM AND TERMINATION
A. Term. This Agreement shall become effective on the Effective Date and,
unless earlier terminated as provided for elsewhere in this Agreement, shall
remain in full force until the expiration of the last to expire of any Tessera
Patent. Notwithstanding, Licensee may terminate this Agreement by reason of
non-use of the relevant Tessera Patents licensed hereunder; such termination by
Licensee shall take effect immediately upon Tessera's receipt of a written
notice signed by Licensee.
B. Termination for Breach. Either party may terminate this Agreement due
to the other party's breach of this Agreement, such as failure to perform its
duties, obligations, or responsibilities herein (including, without limitation,
failure to pay royalties and provide reports as set forth herein). The parties
agree that such breach will cause substantial damages to the party not in
breach. Therefore, the parties agree to work together to mitigate the effect of
any such breach; however, the non-breaching party may terminate this Agreement
if such breach is
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not cured or sufficiently mitigated (to the non-breaching party's satisfaction)
within sixty (60) days of notice thereof.
C. Termination for Assignment. In the event that (i) a party either sells
or assigns substantially all of its assets or business to a third party
("Selling Party") or (ii) a third party acquires more than fifty percent (50%)
of the capital stock entitled to vote for directors of such party ("Purchasing
Party"), the Selling Party shall notify the other party hereto of such sale or
assignment of assets or the Purchasing Party's acquisition. In any case of
sale, assignment or acquisition, the Selling Party shall provide to the other
party a written confirmation from such Purchasing Party stating that such
Purchasing Party shall expressly undertake all the terms and conditions of this
Agreement to be performed by Selling Party. In the event that Licensee is the
Selling Party and the Purchasing Party does not agree to fulfill such
obligations under this Agreement, Tessera shall reserve a right to terminate
this Agreement. In the event Tessera is the Selling Party, the Purchasing Party
shall be bound to the terms and obligations of this Agreement.
D. Termination for Bankruptcy. In the event that one party becomes
insolvent or bankrupt, permanently ceases doing business, makes an assignment
for the benefit of its creditors, commits an act of bankruptcy, commences any
bankruptcy proceedings or other proceedings in the nature of bankruptcy
proceedings, or has commenced against it any bankruptcy proceedings or other
proceedings in the nature of bankruptcy proceedings that are not dismissed
within sixty (60) days, then the other party shall have the right to terminate
this Agreement immediately upon its notice.
E. Any termination of this Agreement pursuant to this Paragraph X shall
be deemed a termination of this Agreement in accordance with its terms
(including termination of any payments of unaccrued royalties to Tessera and
any rights of Licensee to use any Tessera Patent licensed hereunder).
F. Survival Clause. Unless otherwise provided elsewhere in this
Agreement, the following provisions shall survive the termination or expiration
of this Agreement:
1. Licensee's obligation to make payments and associated payment
reports (as stipulated in Paragraph V) to Tessera accrued under this Agreement
on or prior to expiration or termination.
2. Licensee's obligation to permit the inspection and audit of its
account record stipulated in Paragraph XI.A., Financial Audit, shall expire
five (5) years from any termination of this Agreement.
3. Paragraph VII.A., Licensee Improvement Grantbacks.
4. Paragraph X, Term and Termination.
5. Paragraph XII, No Warranties
6. Paragraph XIII, Limitation on Damages
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7. Paragraph XIV, Confidentiality of Agreement Terms
8. Paragraph XV, Indemnity
9. Paragraph XVI, Miscellaneous
XI. REASONABLE AUDIT
A. Financial Audit. Upon reasonable written prior notice, Tessera shall
have the right to examine and audit through an independent third party CPA
firm, not more frequently than once per year, all records of Licensee that may
contain information bearing upon the amount of fees payable under this
Agreement; provided, that the said auditor shall have agreed in advance in
writing to maintain in confidence and not to disclose to Tessera or any third
party any Licensee proprietary information obtained during the course of such
audit. The results of any such audit shall be final, and within thirty (30)
days after receiving the auditor's report, Licensee shall make payment to
Tessera of any amount which may be found to be payable, if any. Tessera shall
bear the expenses of such audit examinations unless royalties due and owing to
Tessera are determined by the auditor to be at least five percent (5%) greater
than such similar amounts as calculated and/or paid by Licensee, in which case
Licensee shall bear such expenses.
B. Standards Audit. Prior to the first shipment of TCCs to a third party
by Licensee upon which Licensee intends to bear the Marks under the license set
forth in Paragraph VIII.B. pursuant to this Agreement, Licensee shall provide
Tessera with sufficient quantities of such packages to enable Tessera to
determine if such packages are in compliance with the Standards. Upon receipt
of such packages, Tessera shall promptly perform the tests set forth in
Attachment C and provide a written report to Licensee detailing the results of
the tests so performed. After the Licensee manufactured TCCs have passed
Tessera's testing requirements, Licensee may use the Marks as set forth in
Paragraph VIII. To ensure the on-going, future minimum quality and reliability
of the TCCs sold by Licensee under any of the Marks pursuant to this Agreement,
Tessera shall have a right to perform the tests set forth in Attachment C at
any time during the term of this Agreement upon 60 day written notice by
Tessera to Licensee of Tessera's intention to perform such Standards testing.
Upon Licensee's receipt of such written notice from Tessera, Licensee shall
promptly provide sufficient quantities of TCCs for such testing. Upon receipt
of such packages, Tessera shall promptly perform the tests and provide a
written report to Licensee detailing the results of the tests so performed.
XII. NO WARRANTIES
Licensee acknowledges and agrees that the rights and licenses, Tessera
Patents and specifications granted or otherwise provided hereunder are provided
to Licensee "AS IS", with no warranty of any kind. TESSERA MAKES NO WARRANTY,
EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, CONCERNING THE SUBJECT MATTER OF THIS
AGREEMENT, INCLUDING WITHOUT LIMITATION, WARRANTIES OF FITNESS FOR A PARTICULAR
PURPOSE, QUALITY, USEFULNESS OR NONINFRINGEMENT. Tessera makes no warranty that
the Tessera Patents, any specifications or Standards provided by Tessera to
Licensee will be sufficient to yield any particular result.
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XIII. LIMITATION ON DAMAGES
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR ANY OTHER
PERSON OR ENTITY (UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER
THEORY) FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR
RELATED TO THE SUBJECT MATTER OF THIS AGREEMENT, EVEN IF THE PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR LOSSES.
XIV. CONFIDENTIALITY OF AGREEMENT TERMS
A. Tessera and Licensee shall keep the terms of this Agreement
(including all Attachments hereto) confidential except:
(1) to any court or governmental body or agency compelling such
disclosure; however, any disclosure shall be limited to that compelled by the
governmental body or agency and the disclosing party will take all reasonable
actions to obtain a protective order protecting the disclosure; or
(2) as may otherwise be required by law; or
(3) either party may disclose to third parties the existence of this
Agreement.
B. A party receiving a request, subpoena or order for the disclosure of
the terms or conditions of this Agreement shall notify the other party as soon
as practicable and if, at all possible, in sufficient time to allow the other
party to oppose disclose or seek appropriate protective orders. The party
receiving such request, subpoena or order shall cooperate to the extent
reasonably possible with the other party in any effort to oppose disclosure or
seek protective orders.
XV. INDEMNITY
A. Licensee agrees to defend, indemnify and hold Tessera harmless from
and against any and all damages, liabilities, costs and expenses (including
reasonable attorney's fees and expenses) arising out of or related to Licensee's
use of Tessera's Patents or any Tessera specifications. Notwithstanding,
Licensee shall not bear the obligation or expense of defending the validity of
any Tessera Patent. Tessera shall have sole control over and bear the expense
for so defending the validity of the Tessera Patents.
B. Tessera agrees to defend, indemnify and hold Licensee harmless from
and against any and all damages, liabilities, costs and expenses (including
reasonable attorney's fees and expenses) arising out of or related to Tessera's
use of Licensee Improvements or any Licensee specifications. Notwithstanding,
Tessera shall not bear the obligation or expense of defending the validity of
any Licensee Patent. Licensee shall have sole control over and bear the expense
for so defending the validity of the Licensee Patents.
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XVI. MISCELLANEOUS
The following additional terms shall apply to this Agreement:
A. Governing Law. This Agreement shall be governed, interpreted and
construed in accordance with the laws of the State of California, irrespective
of choice of laws provisions. Both parties shall use their best efforts to
resolve by mutual agreement any disputes, controversies, claims or difference
which may arise from, under, out of or in connection with this Agreement. If
such disputes, controversies, claims or differences cannot be settled between
the parties, any litigation between the parties relating to this Agreement shall
take place in San Jose, California. The parties hereby consent to personal
jurisdiction and venue in the state and federal courts of California.
B. No Waiver. Any waiver, express or implied, by either of the parties
hereto of any right hereunder or default by the other party, shall not
constitute or be deemed a continuing waiver or a waiver of any right or default.
No failure or delay on the part of either party in the exercise of any right or
privilege hereunder shall operate as waiver thereof, nor shall any single or
partial exercise of such right or privilege preclude other or further exercise
thereof or any other right or privilege.
C. Equitable Relief: Nothing herein shall preclude either party from
taking whatever actions are necessary to prevent immediate, irreparable harm to
its interests. Otherwise, these procedures are exclusive and shall be fully
exhausted prior to the initiation of any litigation.
D. Notices. All notices, required documentation, and correspondence in
connection herewith shall be in the English language, shall be provided in
writing and shall be given by facsimile transmission or by registered or
certified letter to Tessera and Licensee at the addresses and facsimile numbers
set forth below:
Tessera: Tessera, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇.
▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Facsimile No.: ▇▇▇-▇▇▇-▇▇▇▇
Attn: Chief Executive Officer
Licensee: Toshiba Corporation
1-1, Shibaura 1-Chome.
▇▇▇▇▇▇-▇▇, ▇▇▇▇▇ ▇▇▇-▇▇▇▇, ▇▇▇▇▇
Facsimile No.: ▇▇-▇-▇▇▇▇-▇▇▇▇
Attn.: Senior Manager
Licensing & Contracts Department
Intellectual Property Division
Either Party may change its address and/or facsimile number by giving the
other party notice of such new address and/or facsimile number. All notices if
given or made by registered or certified letter shall be deemed to have been
received on the earlier of the date actually received and the date three days
after the same was posted and if given or made by facsimile
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12
TESSERA CONFIDENTIAL
transmission shall be deemed to have been received at the time of dispatch,
unless such date of deemed receipt is not a business day, in which case the
date of deemed receipt shall be the next succeeding business day.
E. Invalidity. If any provision of this Agreement is declared invalid
or unenforceable by a court having competent jurisdiction, it is mutually
agreed that this Agreement shall endure except for the part declared invalid or
unenforceable by order of such court. The parties shall consult and use their
best efforts to agree upon a valid and enforceable provision which shall be a
reasonable substitute for such invalid or unenforceable provision in light of
the intent of this Agreement.
F. Assignment. Neither party may assign this Agreement or any of its
right or obligations hereunder without the prior written consent of the other
party.
G. Export Regulations. Both parties shall comply with the laws and
regulations of the government of the United States and of any country as
relevant to each party hereto relating to the export of commodities and
technical data.
H. Section Headings. The headings and captions used herein shall not
be used to interpret or construe this Agreement.
I. Entire Understanding. This Agreement embodies the entire
understanding between the parties relating to the subject matter hereof,
whether written or oral, and there are no prior representations, warranties or
agreements between the parties not contained in this Agreement. Any amendment
or modification of any provision of this Agreement must be in writing, dated
and signed by both parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the date first above written.
TESSERA, INC. TOSHIBA CORPORATION
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
---------------------------------- -----------------------------------
Print Name: ▇▇▇▇ ▇. ▇▇▇▇▇ Print Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇
-------------------------- ---------------------------
Vice President & Group Executive
Title: President Title: Semiconductor Group
------------------------------- --------------------------------
Date: 3-24-99 Date: March 31, 1999
-------------------------------- ---------------------------------
Page 12 of 20