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EXHIBIT 10.1
CONFIDENTIAL MATERIALS OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE SUCH OMISSIONS.
LICENSE AGREEMENT
This License Agreement is made and entered into as of June , 1997,
by and between THE PANDA PROJECT INC. ("PANDA" or "Licensor"), a
corporation existing under the laws of Florida, which has its principal
office at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇, and LG CABLE & MACHINERY
LTD. ("LGC" or "Licensee"), a corporation which has its principal office at
555, ▇▇▇▇▇-▇▇▇▇, ▇▇▇▇ an-gu, Anyang-shi, Kyungki-do 430-080, Korea.
WHEREAS, Licensor possesses certain valuable intellectual and
industrial property rights; and
WHEREAS, Licensor is willing to grant, and Licensee desires to
acquire the right to use such rights on a worldwide basis in accordance
with the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the premises and mutual promises,
terms and conditions of this License Agreement, and other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows:
I. DEFINITIONS
-----------
A. "Licensed Product" shall mean a semiconductor package as
described in the patent applications identified in Appendix A of this
License Agreement, and any improvements, modifications, and derivations
thereof and know-how related thereto owned, developed, or acquired (except
in a grant back from another PANDA licensee) by PANDA, and which PANDA has
the right to license during the term of this License Agreement.
B. "Licensed Process" shall mean any process or method pertaining to
the use, manufacture, or testing of Licensed Product and all know-how
related thereto developed and supplied by Panda and/or its affiliates.
C. "Licensed Product Sold" or "Sale" of a Licensed Product shall
mean the sale, lease, or other transfer of a Licensed Product or a product
incorporating a Licensed Product to a third party by LGC; or the internal
use of a Licensed Product by LGC or an LGC Affiliate. A product shall be
considered sold at the time of invoicing or shipment, whichever is earlier,
or if there is no such invoicing or shipment, in the case of internal use,
at the time of such use.
D. "Patent Rights" shall mean any United States or foreign patent
applications or patents owned, controlled, or acquired by PANDA in whole or
in part, during the term of this License Agreement, relating to Licensed
Product or Licensed Process, and which PANDA has the right to license,
which disclose and claim Licensed Process or Licensed Product, and to any
reissues, reexaminations, divisions, continuations, and
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continuations-in-part. Such "Patent Rights" shall not include licenses or
sublicenses related to Licensed Products or Licensed Process granted at any
time to PANDA by its other licensees.
E. "Proprietary Information" shall mean all information or trade
secrets of any description relating to Licensed Product or Licensed Process
developed by, owned, or controlled by PANDA at any time prior to the
termination or expiration of this License Agreement, including, but not
limited to, the development, selling, marketing, use, properties,
structures, compositions, manufacture or quality control of Licensed
Product or Licensed Process, and including, but not limited in form, to
samples, prototypes, data books, manufacturing instructions, drawings,
formulae, and customer lists. Proprietary Information does not include:
(i) information which was known by LGC prior to receipt from PANDA; (ii)
information lawfully disclosed to LGC by a third party which did not derive
the information from PANDA; and (iii) information which is or becomes a
matter of public knowledge or part of the public domain other than through
a breach of this License Agreement.
F. "LGC Affiliate" shall mean any corporation, firm, partnership,
proprietorship, or other form of business organization over which control
is exercised by LGC, and any corporation, firm, partnership,
proprietorship, or other form of business organization in which LGC has at
least a fifty-one percent (51%) ownership interest, or the maximum
ownership interest LGC is permitted to have in the country where such
business organization exists, and any entity under common control with LGC.
G. "PANDA Affiliate" shall mean any corporation, firm, partnership,
proprietorship, or other form of business organization over which control
is exercised by PANDA, and any corporation, firm, partnership,
proprietorship, or other form of business organization in which PANDA has
at least a fifty-one percent (51%) ownership interest, or the maximum
ownership interest PANDA is permitted to have in the country where such
business organization exists, and any entity under common control with
PANDA.
H. "Effective Date" shall mean the later of the date of signature of
this License Agreement by authorized representatives of PANDA and LGC.
II. GRANT OF LICENSES
-----------------
Subject to the terms of this License Agreement, PANDA agrees to grant
and does grant to LGC a non-exclusive, worldwide license during the term of
this License Agreement to make, have made for it, import, use, sell, offer
for sale, or otherwise dispose of Licensed Product and to use and have used
the Licensed Process under Patent Rights and Proprietary Information;
provided, that no license is granted hereunder for LGC to make, have made
for it, use, sell or otherwise dispose of Licensed Products or to use or
have used the Licensed Process in the development, manufacture and sale or
other distribution of switches incorporating Fast Ethernet technology.
Such license does not include the right to grant sublicenses or assign this
license, except that PANDA agrees that LGC shall have the right to grant a
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sublicense to LG Semicon Co., Ltd. ("LGS") provided that: (i) the terms of
the sublicense to LGS shall be consistent with the terms of the license set
forth in this License Agreement; (ii) the royalties payable in accordance
with the terms of the sublicense granted by LGC to LGS shall be at least
equal to those set forth in Appendix C of this License Agreement; and (iii)
LGC shall be responsible for the payment to PANDA of the royalties payable
in accordance with the terms of the sublicense. The grant of the above
license or any part thereof to LGS pursuant to this Section II shall not
release LGC from any of its obligations under this License Agreement.
PANDA agrees not to grant any additional licenses to make or to have
made the Licensed Product within Korea for two years and six months from
the effective date of this License Agreement.
III. CONFIDENTIALITY CLAUSE BY LGC
-----------------------------
A. Except as may be required by law or by a governmental agency, LGC
agrees that it will not, directly or indirectly, disseminate, disclose or
otherwise make available to any third party, or reverse engineer, any
Proprietary Information and will use the same degree of care to prevent
disclosure thereof that LGC uses to protect its own proprietary and
confidential information, but in any event no less than a reasonable level
of care. LGC agrees to obligate LGC Affiliates to abide by this
confidentiality obligation. Employees of LGC or LGC Affiliates shall be
provided access to Proprietary Information by LGC only on a "need to know"
basis and shall be advised by LGC of the confidential nature thereof, and
shall be bound by written agreement to protect the confidentiality of such
information. The provisions hereof shall survive expiration or termination
of this License Agreement for a period of seven (7) years.
B. LGC and LGC Affiliates are authorized to disclose to their
distributors and customers only such Proprietary Information received from
PANDA concerning the Licensed Process and Licensed Product as is reasonably
necessary to enable Licensed Product to be sold, leased, placed or used,
and LGC and LGC Affiliates are authorized to disclose to their respective
contractors and suppliers only such Proprietary Information received from
PANDA as is reasonably necessary to enable LGC or LGC Affiliates to make or
have made the Licensed Product.
LGC shall have the obligation to bind by written agreement any such
distributor, customer, contractor, or supplier receiving Proprietary
Information to protect the confidentiality of such information.
IV. ROYALTY CLAUSE
--------------
A. The Licenses granted under Section II, above, shall be subject to
a Royalty as provided for in Appendix C to this License Agreement for
Licensed Product Sold by LGC or a LGC Affiliate, or for any internal use of
the Licensed Product by LGC or an LGC Affiliate.
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B. The Royalties provided herein are in consideration of the trade
secrets, know-how, Patent Rights, and Proprietary Information provided by
PANDA hereunder, and the ability of LGC to achieve a significant
competitive advantage by its early entry into the marketplace due to its
access to such intellectual property rights.
C. In addition to the Royalty provided above, LGC shall pay PANDA a
one time, non-refundable license fee of U.S. $250,000.00 within forty-five
(45) days of the Effective Date of the Agreement. The consideration for
such license fee shall include the license of the Technology and technical
information related to the Technology.
V. PAYMENTS, RECORDS AND REPORTS
-----------------------------
A. Within thirty (30) days after the end of each calendar quarter in
which Royalties are earned or otherwise become due under this License
Agreement, LGC shall furnish PANDA with a written report setting forth the
computation of the Royalties payable during the preceding calendar quarter,
and shall make such payment. Royalties shall be paid to PANDA in U.S.
dollars. In case a conversion from one currency to another is involved in
determining an earned Royalty Payment, the exchange rate shall be the
exchange rate in effect at the Chase Manhattan Bank in New York City on the
last day of the applicable Calendar Quarter. Late payments shall bear
interest at the rate of prime plus two percent, as in effect at the Chase
Manhattan Bank in New York City at the time such payments originally become
due.
B. LGC shall keep and maintain complete and accurate records in
sufficient detail to enable Royalties payable to PANDA hereunder to be
determined (including records on all conversion of currency under Paragraph
A above), and it shall permit such records to be inspected once per year
upon written notice by PANDA during reasonable business hours by a
certified public accountant or firm of certified public accountants
reasonably acceptable to LGC and appointed by PANDA for this purpose;
provided, however, that LGC shall have the right to destroy or discard such
records in accordance with LGC's record retention policy, provided that
such records shall be kept for a minimum of five (5) years after the end of
the Calendar Quarter to which they apply. PANDA shall bear the cost and
expense of such investigation by accountants, unless the accountants
determine that LGC's determination of the Royalties due and owing to PANDA
was incorrect (in LGC's favor) in an amount exceeding four percent (4%) of
the amount calculated by LGC, in which case LGC shall bear such cost and
expense.
VI. GRANTBACK OF LICENSE
--------------------
LGC grants to PANDA a perpetual license under information and
inventions, whether patentable or not, related to improvements,
modifications, and derivatives of Licensed Products or Licensed Process
originated or invented during the term of this License Agreement by
employees, agents, contractors, or suppliers of LGC having access to
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Licensed Product, Licensed Process, or Proprietary Information. Such
license to PANDA shall be non-exclusive, irrevocable, perpetual,
world-wide, and royalty free to make, have made, use, import, sell, offer
for sale, and otherwise transfer products covered by such information and
inventions. PANDA may not sublicense or assign this right, other than to a
PANDA Affiliate, or as part of an acquisition of PANDA or sale of PANDA
assets.
VII. JOINT PUBLIC ANNOUNCEMENT
-------------------------
Upon the signing of this License Agreement by authorized
representatives of LGC and PANDA, a joint press release in a form mutually
agreed will be issued announcing the execution of this License Agreement.
VIII. USE OF PANDA'S TRADEMARKS
-------------------------
A. Use of Trademarks.
-----------------
Licensee may use (in the manner agreed to by Licensor and Licensee
from time to time during the term of this Agreement) the trademark VSPA or
other similar marks (the "Trademarks") in connection with the sale,
distribution, marketing and promotion of the Licensed Products. Licensee
shall not pay Licensor any additional fee for such use. Licensee may not
use third party trademarks, tradenames, service marks and commercial
symbols in connection with the sale, distribution, marketing and promotion
of the Licensed Products, but Licensee may adopt and use its own
trademarks, tradenames, service marks and commercial symbols in connection
therewith. Licensee shall give Licensor thirty (30) days prior written
notice before using any Trademarks for the first time in a particular
jurisdiction outside the United States. At Licensor's request and expense,
Licensee shall execute a registered user agreement and any other documents
that Licensor may reasonably request in order to establish or confirm
Licensor's right, title and interest with respect to the Trademarks.
B. Quality Control
---------------
Licensee shall apply the Trademarks only to Licensed Products that
have been manufactured in accordance with those specific quality control
standards that Licensor may from time to time promulgate and communicate to
Licensee with respect to such Licensed Products sold under the Trademarks;
provided, however, that those standards shall be no higher than the
standards by which Licensor manufactures such Licensed Products itself.
Additionally, Licensee shall use the Trademarks in compliance with
all relevant laws and regulations and submit samples of Licensed Products
sold under the Trademarks, upon the request of Licensor, so as to enable
Licensor to inspect such samples and confirm that Licensee is in compliance
with its obligations under this Section. Licensor shall in no case delay
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approval or rejection by more than thirty (30) days from the time of
submittal by LGC.
Licensee shall not modify any of the Trademarks in any way and not
use any of the Trademarks on any goods or services other than the Licensed
Products.
If Licensee fails to use the Trademarks in compliance with this
Section, such failure shall be deemed to be a material breach of one of the
Licensee's obligations under this Agreement, for the purposes of possible
termination of this Agreement.
IX. ASSEMBLY EQUIPMENT
------------------
LGC and PANDA shall each use its best efforts to design and develop
the Assembly Equipment to make the VSPA packages and LGC shall have the
option to purchase such Assembly Equipment from PANDA. If LGC chooses to
exercise its option to purchase such Assembly Equipment from PANDA, a
separate standard purchase and sales agreement for each item of Assembly
Equipment shall be executed by the parties, at prices to be determined
through negotiation.
X. MOLDS, PLASTIC FRAMES AND PINS
------------------------------
LGC will have the option to make the molds, plastic frames, covers
and pins, and PANDA will transfer representative component drawings for a
264 pin VSPA package for such manufacture if requested to do so, at cost.
Alternatively, PANDA will supply molds, plastic frames, covers and pins
pursuant to a standard purchase and sale agreement to be executed by the
parties, at prices to be determined by negotiation.
XI. TRAINING OF LGC PERSONNEL
-------------------------
LGC shall be entitled to send up to two (2) employees to Boca Raton
for a total of up to forty (40) hours of training with respect to Licensed
Product, Licensed Process, and Proprietary Information. Training in excess
of this amount shall be billed to LGC by PANDA at $150/hour. LGC shall be
responsible for all expenses and liabilities of such employees.
XII. PURCHASE OF LICENSED PRODUCT BY PANDA
-------------------------------------
LGC agrees to accept purchase orders from PANDA for Licensed Product
during the term of this License Agreement on a most favored customer basis
and to sell Licensed Product to PANDA at an agreed upon price. No
royalties shall be payable to PANDA on such sales of Licensed Product.
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XIII. TRANSFER OF PROPRIETARY INFORMATION
-----------------------------------
Within fifteen (15) days of execution of this Agreement, PANDA shall
provide two (2) copies of the materials identified in Appendix B.
XIV. ASSIGNMENT BY PANDA
-------------------
PANDA may assign any of its rights, including rights to payments of
earned Royalties, to any corporation or other entity which is an Affiliate
of PANDA.
XV. TERM AND TERMINATION
--------------------
A. This License Agreement shall become effective as of the Effective
Date and, unless otherwise terminated as provided herein, shall continue in
full force and effect until the last to expire of the Licensed Patents.
Thereafter, LGC may acquire a license to know-how and trade secrets covered
herein at a reduced royalty rate to be agreed upon between LGC and PANDA.
B. Termination for Cause. After the occurrence of any of the
following events, this License Agreement may be terminated by either Party
(the "Terminating Party") by giving written notice of Termination to the
other Party, such Termination being immediately effective upon the giving
of such Notice of Termination:
(a) A material breach or default as to any obligation hereunder
by the other Party and the failure of the other Party to promptly pursue
(within thirty (30) days after receiving written notice thereof from the
Terminating Party) a reasonable remedy designed to cure (in the reasonable
judgment of the Terminating Party) such material breach or default; or
(b) The filing of a petition in bankruptcy, insolvency or
reorganization against or by the other Party, which petition shall not have
been dismissed within ninety (90) days of filing thereof, or the other
Party becoming subject to a composition for Creditors, whether by law or
agreement, or the other Party going into receivership or otherwise become
insolvent; or
C. LGC shall have the right to terminate this License Agreement at
any time with or without cause upon six (6) months prior written notice to
PANDA. Termination of this License Agreement by LGC shall not alter or
affect the rights or obligations of either party arising prior to such
termination, nor shall termination pursuant to this Section relieve LGC of
its payment obligations hereunder. Any termination by LGC as provided in
this Paragraph shall not prejudice the right of PANDA to recover any earned
Royalty, or other sums owned or accrued at the time of such termination nor
prejudice the right of PANDA to maintain an action against LGC for
infringement of its patent or other intellectual property rights.
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D. The parties agree that upon termination or expiration of this
License Agreement, Licensee shall immediately cease: (i) any use or
practice of the Licensed Product or the Licensed Process; and (ii), except
as provided in Section F below, any making, use, or sale of the Licensed
Product, including internal use within LGC or LGC Affiliates. Upon
termination or expiration of this License Agreement, LGC shall, at its own
expense, return to PANDA all Proprietary Information as soon as practicable
after the date of termination or expiration, including, but not limited to,
the materials identified in Appendix B, original documents, drawings,
computer diskettes, models, samples, notes, reports, notebooks, letters,
manuals, prints, memoranda and any copies thereof, which have been received
by LGC. All Proprietary Information and Patent Rights shall remain the
exclusive property of PANDA during the term of this License Agreement and
thereafter.
E. Upon termination or expiration of this License Agreement, nothing
shall be construed to release License from its obligations to pay Licensor
any and all royalties, license fees or other amounts accrued but unpaid
hereunder prior to the date of such termination or expiration.
F. After termination or expiration of this License Agreement for any
reason by either party, LGC may sell all Licensed Product which it has on
hand upon the date of termination or expiration provided, however, that the
sales shall be completed not later than six (6) months from the date of the
termination or expiration and that the termination or expiration shall not
relieve LGC from making the full earned Royalty payments herein provided on
all Licensed Product by it either before or after the date of the
termination or expiration.
XVI. INFRINGEMENT
------------
In the event Licensee shall learn of a possible infringement of any
patent included in the Patent Rights, Licensee shall promptly call
Licensor's attention thereto in writing and shall provide Licensor with
evidence of the infringement. Both parties shall use their best efforts in
cooperation with each other to terminate the infringement without
litigation. If the efforts of the parties are not successful in abating
the infringement within ninety (90) days after the infringer has been
formally notified by Licensor of the infringement, Licensor shall have the
right to: (a) commence suit on its own account; and (b) join Licensee in
such suit; and Licensor shall give timely notice in writing to Licensee of
its election. Any proceeds of such suit shall be the property of Licensor.
XVII. PATENT MARKING
--------------
Licensee agrees to ▇▇▇▇ all Licensed Products made, used, or sold
under the terms of this License Agreement, or their container with the
numbers of applicable patents of PANDA or other appropriate marking in
accordance with the patent marking laws of the country in which the
Licensed Product is manufactured, used, or sold.
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XVIII. WAIVER OF DEFAULT
-----------------
A waiver, express or implied, by either of the parties hereto of any
right hereunder or of any default, breach, or other failure to perform by
the other party hereto, shall not constitute or be deemed a future waiver
of that or any other right hereunder or of any default, breach or any other
failure to perform thereafter by such other party. All waivers to be
effective must be in writing and signed by the waiving party.
XIX. GOVERNING LAW
-------------
This License Agreement shall be governed, interpreted and construed
in accordance with the laws of the State of Florida, USA, excluding its
conflict of law principles.
XX. NO RIGHTS BY IMPLICATION
------------------------
No rights or licenses with respect to Licensed Product or Licensed
Process are granted or deemed granted hereunder or in connection herewith,
other than those rights or expressly granted in this License Agreement.
XXI. DEFENSIVE LITIGATION
--------------------
Licensee shall defend and indemnify Licensor from and against any
damages, liabilities, costs, and expenses, including reasonable attorney's
fees and Court costs, either: (i) arising out of the manufacture, use,
sale, or other transfer of Licensed Product by Licensee or its customers;
or (ii) arising out of improvements, modifications, or derivatives of
Licensed Product introduced by Licensee or its customers; or (iii) arising
out of injuries or damages caused by Licensed Product; provided that,
Licensee shall have no liability under this indemnity with respect to any
claim, which alleges that the Patent Rights infringe any rights of a third
party.
XXII. DISPUTE RESOLUTION
------------------
A. Any dispute, controversy, or claim arising out of or relating to
this License Agreement, or to a breach thereof, including its
interpretation, performance, or termination shall be submitted to and
finally resolved by arbitration. The arbitration shall be conducted in the
English language in accordance with the rules of conciliation and
arbitration of the International Chamber of Commerce in effect on the date
hereof. Any such arbitration shall take place in the State of Florida,
United States of America. The decision of the arbitrators shall be final
and binding upon the parties hereof, and the expense of the arbitration
(including without limitation the award of attorney's fees to the
prevailing party) shall be paid as the arbitrators determine.
Page 10
B. Notwithstanding anything contained in this Section, each party
shall have the right to institute judicial proceedings against the other
party or anyone acting by, through or under such other party in order to
enforce the instituting party's rights hereunder through reformation of
contact, specific performance, temporary restraining order, preliminary
injunction, final injunction, or similar equitable relief.
XXIII. NOTICES
-------
Each notice required or permitted to be sent under this License
Agreement shall be given by Federal Express or comparable express delivery
service to Licensor and to Licensee at the address indicated below:
For Licensor: The Panda Project, Inc.
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, ▇▇.
For Licensee: ▇▇ ▇▇▇▇▇ & ▇▇▇▇▇▇▇▇▇ ▇▇▇.
▇▇▇, ▇▇▇▇▇-▇▇▇▇, ▇▇▇▇ an-gu
Anyang-shi, Kyungki-do 430-080
Korea
Either party may change its address for purposes of this License Agreement
by giving the other party written notice of its new address.
XXIV. ENTIRE UNDERSTANDING
--------------------
This License 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 that relate
to Licensed Product, Licensed Process, Proprietary Information, and Patent
Rights.
XXV. INVALIDITY
----------
If any provision of this License Agreement is declared invalid or
unenforceable by an arbitration panel or by a court having competent
jurisdiction, it is mutually agreed that this License Agreement shall
endure except for the part declared invalid or unenforceable. 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 License
Agreement.
XXVI. AMENDMENTS
----------
Page 11
Any amendment or modification of any provision of this License
Agreement must be in writing, dated and signed by both LGC and PANDA.
XXVII. SURVIVABILITY
-------------
The following provisions, as well as any other provisions whose
survivability is reasonably intended by the terms of this Agreement, shall
survive after the termination or expiration of this Agreement: III, IV, V,
VI, XIV, XVI, XIX, XXI, XXII and XXX.
XXVIII. RESPONSIBILITY FOR TAXES
------------------------
If Licensee is required to withhold taxes from any amount payable by
Licensee hereunder, then Licensee shall pay to Licensor an additional
amount as may be necessary so that Licensor will receive, after deduction
of the withheld tax, the amount that Licensor would have received in the
absence of the withholding tax.
XXIX. COUNTERPARTS
------------
This License Agreement may be executed in any number of English
language counterparts and each such counterpart shall be deemed to be an
original.
XXX. BINDING EFFECT
--------------
This License Agreement shall be binding upon, and inure to the
benefit of, the parties hereto and their successors, assigns, estates,
beneficiaries, representatives, and heirs.
XXXI. WARRANTY AND DISCLAIMER
-----------------------
A. Each party represents and warrants that it has full corporate
power and authority to enter into and perform this Agreement. This
Agreement has been duly authorized and duly executed and delivered by
Licensor and Licensee, and it is valid, binding and enforceable against
each party in accordance with its terms.
B. EXCEPT AS SET FORTH IN THIS SECTION, THE PARTIES ACKNOWLEDGE AND
AGREE THAT THERE ARE NO WARRANTIES, COVENANTS, REPRESENTATIONS, OR
AGREEMENTS BY PANDA AS TO MARKETABILITY, MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE OR OTHER ATTRIBUTES, TITLE, AND NON-INFRINGEMENT WHETHER
EXPRESS OR IMPLIED (IN LAW OR IN FACT), ORAL OR WRITTEN.
Page 12
XXXII. COMPLIANCE WITH LAW
-------------------
PANDA agrees to comply with the laws and regulations of the United
States government, and LGC agrees to comply with the laws and regulations
of the Korean government, and the United States government, as may be
applicable to LGC in connection with the exportation of products or
technical data.
XXXIII.
In the event that the Korean government requires that it review this
Agreement, such review will be the responsibility of LGC, and if any
changes or modifications are made in this Agreement as required by the
Korean government, PANDA will have the right to terminate this Agreement;
provided however, if any such changes or modifications are made or required
after the execution of this Agreement or the commencement of the license,
such termination will not relieve LGC from its obligation to pay the full
license fee required under Paragraph IV C and any accrued Royalty Payments
required under Paragraph IV.
IN WITNESS WHEREOF, PANDA and LGC have signed this License
Agreement.
THE PANDA PROJECT, INC.
By:
---------------------------
Name:
---------------------------
Title:
---------------------------
Date:
---------------------------
LG CABLE & MACHINERY LTD.
By:
---------------------------
Name:
---------------------------
Title:
---------------------------
Date:
---------------------------
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CONFIDENTIAL MATERIALS OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE SUCH OMISSIONS.
APPENDIX A
----------
Status Report of VSPA Patent Applications
-----------------------------------------
U.S. Applications
-----------------
1. U.S. Application Ser. No. **********
Subject: *****************
Title: ***********************
Filed: *************
2. U.S. Application Ser. No. **********
Subject: *****************
Title: ***********************
Filed: *************
3. U.S. Application Ser. No. **********
Subject: *****************
Title: ***********************
Filed: *************
4. U.S. Application Ser. No. **********
Subject: *****************
Title: ***********************
Filed: *************
5. U.S. Application Ser. No. **********
Subject: *****************
Title: ***********************
Filed: *************
Page 14
CONFIDENTIAL MATERIALS OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE SUCH OMISSIONS.
Foreign Patent and Applications
-------------------------------
6. Taiwanese Patent No. 70517
Subject: Spider Pack (VSPA)
Title: "Prefabricated Semiconductor Chip Carrier@
Filed: March 16, 1994
Appl. No. 83102269
ISSUED: March 11, 1995
7. PCT Application Ser. No. **********
Subject: *****************
Title: ***********************
Filed: *************
8. PCT Application Ser. No. **********
Subject: *****************
Title: ***********************
Filed: *************
9. PCT Application Ser. **********
Subject: *****************
Title: ***********************
Filed: *************
10. PCT Application Ser. No. **********
Subject: *****************
Title: ***********************
Filed: *************
Page ▇▇
▇▇▇▇▇▇▇▇ ▇
----------
Identification of Proprietary Information transferred to LGC.
(1) Design drawings for the VSPA 264 pin package (latest revision as of
date of signed agreement)
(a) assembly: Dwg. # 210800003
(b) pins (3 separate parts numbers): Dwg. #s 210500004, 210500005,
210500006
(c) frame subassembly: Dwg. #211600001
(d) plastic housing: Dwg. #210200002
(e) die attach plate: Dwg. #210900005
(f) plating specification: Dwg. #211500003
(2) Materials list qualified for use for device assembly.
(3) Existing process specifications for relative assembly processes
(incomplete at this time).
(a) die attach
(b) wirebonding
(c) encapsulation
(d) PCB assembly
(4) JEDEC registration documentation
(5) Pertinent reports and information relative to VSPA performance
evaluations, (electrical and thermal), materials evaluations, and
qualification testing.
(6) Existing design for a test socket for VSPA 264 pin package
(a) sample test socket for VSPA 264 pin package
Panda will keep LGC informed of the availability of design information
relating to higher density configurations of the Licensed Products and if
LGC requests the design information it will be provided on a compensation
basis agreed to by LGC and PANDA at the time of LGC's request.
Page 16
CONFIDENTIAL MATERIALS OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
ASTERISKS DENOTE SUCH OMISSIONS.
APPENDIX C
----------
Royalty Schedule
Number of I/O per package Royalty per I/O
------------------------- ---------------
******** ********
******** ********
******** ********
******** ********
******** ********
(regardless of I/Os)
When LGC has accrued an aggregate payment related to PQFP-B (VSPA)
********** to Panda at any time starting from the effective date of this
License Agreement, where the aggregate payment related to PQFP-B includes
the license fee, royalties, equipment purchases from Panda, raw material
purchases from Panda, and investment in Panda including any stock
purchases, the royalty schedule changes to the following:
Number of I/O per package Royalty per I/O
------------------------- ---------------
******** ********
******** ********
******** ********
******** ********
******** ********
(regardless of I/Os)
Licensor agrees that if during the term of this Agreement Licensor enters
into an agreement with a third party the provisions of which are
substantially identical to this Agreement but which provides for royalties
lower than those shown above, Licensee shall pay royalties to Licensor
thereafter based on such lower royalty rate.