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EXHIBIT 10.5
TESSERA CONFIDENTIAL
TESSERA, INC.
LIMITED TCC(TM) LICENSE AGREEMENT
This Agreement is entered into as of this 9th day of May, 1996, between
TESSERA INC., a corporation organized under the laws of Delaware ("Tessera") and
AMKOR ELECTRONICS, INC. a corporation organized under the laws of Pennsylvania
("Licensee") with reference to the following facts:
Scope:
WHEREAS, Tessera owns certain semiconductor integrated circuit ("IC")
packaging technology it calls TCC technology along with related IC tape mounting
technology, where said technologies include manufacturing processes, package
device designs and specifications, including design rules and certain other
proprietary information and technology required to manufacture TCC packages or
related IC packages, collectively, (the "Technology") (each of the foregoing
capitalized terms is more particularly described herein); and
WHEREAS, Licensee wishes to use the Technology including Tessera's
intellectual property rights to manufacture and assemble said TCC and related IC
packages for itself and its customers and to sell same in accordance with the
terms hereof.
The Parties Hereto Agree:
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 made under certain issued Tessera Patents
licensed hereunder. Generally, a TCC package has substantially coplanar bump or
solder ball contacts disposed in a grid array pattern and comprises a thin
compliant multi-layer structure mounted to one surface of an IC die, with
permanent flexible electrical connections between at least one of said contacts
and a corresponding bond pad on said IC die.
B. The term " uBGA(TM)" is a type of chip scale TCC package.
C. The term "Technology" means Tessera Patents and know-how
relating to design, manufacture, and assembly of TCC and related packages
(excluding Batch Technology as defined herein) including know-how owned by
Tessera as of the Effective Date (hereinafter defined). Technology shall also
include TCC derivatives, modifications, improvements, or enhanced specifications
made by Tessera during the term of this Agreement.
D. The term "Technical Information" means Tessera technical
information relating to Technology and know-how which may be proprietary and/or
confidential in nature and which may
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TESSERA CONFIDENTIAL
include, without limitation, material specifications, current best method of
manufacture and assembly, plating processes, tooling specifications, design
methods, techniques, know-how, proprietary software, process data, yields,
reliability data, and other Tessera engineering data and test results needed by
Licensee (the foregoing by mutual agreement) to exercise the rights, licenses
and privileges of the licenses granted hereunder.
E. The term "Patent" means letters patents, utility models,
allowances and applications therefor in all countries of the world, including
re-issues, re-examinations, continuations, divisions, and all corresponding
foreign patents.
F. The term "Tessera Patent" means Patent(s) (i) which had or have
a first effective filing date in any country prior to expiration or termination
of this Agreement, (ii) which arise out of inventions made and/or acquired by
Tessera based on the Technology prior to expiration or termination of this
Agreement, and/or (iii) under which Tessera or any successor thereof has as of
the Effective Date and during the term of this Agreement, the right to grant
licenses of the scope granted herein without the payment of royalty or other
consideration to third parties except for payment to third parties for
inventions made by said parties while employed by Tessera or any successor
thereof, including US patents and US patent applications set forth in Schedule
A attached.
G. The term "Batch Technology" as used herein means Technology
including: (i) any method or result of U.S. Patent Serial Number 08/271,768 (and
related Patents) for bonding or connecting one or more substantially planar
electrically conducting flexible elements to electrical contact(s) on a
substantially planar electrical element such as a semiconductor integrated
circuit, undiced IC wafer, or interconnect substrate, and then forming said
element(s) away from the plane of said contacts in a predetermined fashion into
the flexible electrical lead(s) of a TCC package; (ii) any method or result of
U.S. Patent 5,455,390 (and related Patents) for making and forming one or more
flexible conducting elements on a flexible dielectric film and 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
package; and/or (iii) any method or result of further invention or Patent made
or acquired by Tessera during the term hereof covering any batch processing
method for forming or producing and/or connecting flexible electrical leads of a
TCC package. Notwithstanding, the parties expressly agree that any TCC package
made and/or connected individually on an IC wafer before dicing by traditional
wire bonding methods and/or tape automated bonding ("TAB") gang bonding methods,
is not included in Batch Technology.
H. THE TERM "[*]" MEANS [*] [*] FURTHER INCLUDES [*].
I. "Licensee's Improvements" means device design modifications,
derivatives, improvements, or enhanced specifications, relating to the TCC
package or related materials that may be made by Licensee arising out of
Technology or Technical Information or incorporated in a
* 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
TCC or related IC package by Licensee for sale or other transfer to a third
party during the term of this Agreement or extension hereof. The parties agree
that Licensee's inventions that do not arise out of Tessera's confidential
information, Technology, or Technical Information shall be excluded from the
definition of Licensee's Improvements unless such invention infringes a Tessera
Patent or is incorporated in a TCC or related IC package by Licensee for sale or
other transfer to a third party.
J. "Standards" means those minimum standards set by Tessera for
quality, reliability, materials, external device properties and/or measurements
pursuant to which Licensee may sell any TCC package or related IC package under
a Tessera trademark.
K. The term "Effective Date" means the date when the last of the
following events occurs:
1. Execution of this Agreement by both parties, and
2. Approval of this Agreement by the Board of Directors of
both parties, if necessary, and
3. All approvals of this Agreement, if necessary, by the
Philippine and/or US Government.
Notwithstanding the foregoing, if the Effective Date does not occur within 30
days of execution of this Agreement, either Party may terminate this Agreement.
L. The term "Affiliate" means any company of which fifty percent
(50%) or more of the voting stock is owned or controlled by Licensee. A company
shall be considered an Affiliate only so long as such majority ownership or
control exists. The term Affiliate shall also include Anam Industrial Co., Ltd.,
Seoul, Korea and Amkor Anam Pilipinas, Inc., Manila, Philippines so long as
these companies are bound by and operate under the terms of this Agreement.
II. LICENSEE RIGHTS:
A. TCC Assembly 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-sub-licensable limited license to use the Technology to
package and/or assemble ICs into TCC and related IC packages and sell same world
wide.
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 or related IC package made using Batch Technology.
III. FEE AND ROYALTY:
A. Transfer Fee. As consideration for the licenses and the assembly
rights and privileges of section II. A., hereof, Licensee shall pay to Tessera
the sum of:
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TESSERA CONFIDENTIAL
(i) [*] US DOLLARS (US $[*]) within
thirty (30) days after the Effective Date; and
(ii) [*] US DOLLARS (US $[*]) upon
substantial completion of the Technology Transfer pursuant to Paragraph VI as
evidenced by first qualification of a TCC or related IC package at either Intel
Corporation or Advanced Micro Devices, Incorporated using each company's
respective qualification program standards; and
(iii) [*] US DOLLARS (US $[*]) upon first commercial shipment
of packaged ICs falling within the scope of this Agreement from Licensee to any
non-Affiliate. The term commercial shipments shall not include evaluation orders
or qualification lots so long as the third party customer receiving the packaged
ICs uses the packaged ICs solely for internal evaluation and not in furtherance
of production, commercialization or further sale or transfer of the packaged IC
devices. All requirements of Paragraph II.A.(ii) shall be deemed met upon first
commercial shipment and Licensee shall simultaneously pay any unpaid portion of
the [*] US DOLLAR ($[*]) PAYMENT PURSUANT TO PARAGRAPH III.A.(ii) with the
payment pursuant to this Paragraph III.A(iii).
B. Base Royalty. In addition to the Transfer Fee, Licensee shall
pay running royalties for the license granted in Paragraph II.A. twice annually
to Tessera during the term of this Agreement. Licensee shall pay a royalty to
Tessera in the amount OF [*] PERCENT ([*]%) OF THE [*] for packages licensed
hereunder.
IV. TESSERA PURCHASE RIGHT:
Licensee agrees to negotiate in good faith with Tessera for the terms
and conditions under which Tessera may purchase reasonable quantities of TCC or
related packages from Licensee.
V. LICENSEE REPORTS AND PAYMENT:
Royalties shall be calculated beginning January 1, 1996 and shall be
payable in full in semiannual payments. Beginning with the first payment period,
Licensee shall deliver a written report describing the basis upon which
royalties have been calculated and the total royalty due Tessera for the
applicable payment period to Tessera within forty-five (45) days after the end
of each payment period. All payments under this Paragraph shall be made in US
Dollars by wire transfer to Silicon Valley Bank, ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇,
▇▇ ▇▇▇▇▇, Account No. 0350527875, Transit No. ▇▇▇▇▇▇▇▇▇, or such other bank or
account as Tessera may from time to time designate in writing. Payments shall be
considered to be made as of the day on which they are received in Tessera's
designated bank or account.
VI. TECHNOLOGY TRANSFER:
A. In addition to granting of the aforesaid licenses under the
Technology, upon Effective Date of this Agreement and the payment of the portion
of the Transfer Fee described in
* 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
Paragraph III.A.(i) above, to the extent not otherwise previously transferred,
Tessera will transfer to Licensee the Technology, including certain TCC package
specifications, Standards and Technical Information for the TCC packages
licensed herein.
B. Tessera will make available on at least a semiannual basis, all
improvements including changes and modifications in Standards, methods,
materials and specifications during the term of this Agreement through Tessera's
regularly published Technical Briefing Bulletin or substantially equivalent
method. Notwithstanding the foregoing, Tessera is under no obligation to
transfer and/or license any information whether confidential, proprietary or
otherwise that it may be prohibited from transferring to Licensee by contract
with a third party or applicable law. Notwithstanding any provision to the
contrary, Tessera shall not be under any obligation to transfer or disclose
actual patent applications or related documents to Licensee.
C. The Parties hereto acknowledge that Tessera has provided
Licensee substantial access to Technology prior to the execution of this
Agreement. Notwithstanding, for a period of up to twelve (12) months commencing
with the Effective Date of this Agreement, and according to a mutually agreeable
time schedule and manpower assignment schedule, Tessera will make certain of its
engineering staff available at its San ▇▇▇▇ facilities for transfer activities,
including joint activities with Licensee's engineers, as may be necessary in
accordance with mutual agreement to successfully complete the Technology
transfer, provided, Tessera shall not be obligated to provide more than sixty
(60) working days of engineering support during first twelve month period.
Licensee agrees to pay all reasonable coach class air travel and hotel charges
incurred by Tessera personnel in connection with engineering support performed
at any of Licensee's facilities outside of San ▇▇▇▇. Additional engineering
interactions, conducted to collaborate on technical issues of mutual concern,
shall be supported by each party at its own expense.
D. Additional engineering support (not to exceed sixty (60) working
days) beyond the initial twelve month period for an additional twelve (12) month
period may be made available, according to a mutually agreeable time schedule
and manpower assignment schedule, at a per diem rate of US $[*] per support
engineer, plus reasonable air travel and hotel charges. Any support or other
services required thereafter may be provided upon terms mutually agreeable to
the parties.
VII. IMPROVEMENTS GRANTBACK:
A. Licensee hereby grants to Tessera a fully-paid,
non-sub-licensable, non-transferable, perpetual, right to make, use and/or sell
Licensee's Improvements, including Licensee's Patents covering any inventions
contained in such Licensee's Improvements, made after August 31, 1994, the date
of the Non-Disclosure Agreement ("NDA") between the parties (Attachment B.),
covering exchange of confidential and proprietary information or made during the
term of this Agreement or extension hereof, for Tessera to manufacture, have
manufactured, use or sell products.
B. Tessera agrees that Licensee may use any Licensee's Improvements
to which Licensee has granted to Tessera the rights and licenses described in
this Paragraph VII, and Licensee agrees that it shall not use Licensee's
Improvements that has not been licensed in accordance with this Paragraph VII.
* 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
C. Licensee agrees to grant to the other licensees of Tessera on
commercially reasonable terms a non-exclusive, non-transferable,
non-sub-licensable license under Licensee's Patents covering any inventions
contained in such Licensee's Improvements made on or after August 31, 1994, the
date of the Non-Disclosure Agreement ("NDA") between the parties covering
exchange of confidential and proprietary information or made during the term of
this Agreement or extension hereof, unless such other licensees refuse to grant
to Licensee similar licenses under any of such other licensees' patents relating
to any improvements developed by such other licensee on similar commercially
reasonable terms. In no event shall Licensee be under any obligation to grant
such licenses to other licensees of Tessera, unless Licensee's Improvements are
used in IC packages sold externally to non-Affiliates or proposed by Licensee
and accepted for incorporation into the Standards.
D. Any improvement that is made through the joint efforts of
Tessera and Licensee shall be deemed a "Joint Improvement" hereunder and shall
be the joint property of both Tessera and Licensee, and both Tessera and
Licensee shall have a fully-paid, non-assessable, transferable, perpetual,
sub-licensable right and license to use such Joint Improvements, but such right
and license shall not include any right of license by implication with respect
to any part of the Technology. Licensee and Tessera shall reasonably consult
with one another with respect to applying for and maintaining jointly owned
patents with respect to such Joint Improvements at shared expense. In the event
that one party hereto (the "Notifying Party") notifies the other party that the
Notifying Party wishes to apply for or maintain a patent in any country for any
such Joint Improvement and the other party hereto does not confirm to the
Notifying Party, within thirty (30) days thereafter, that such other party will
join in such patent application and share the cost thereof, the Notifying Party
shall have a right, at its own expense, to apply for or maintain such patent in
its own name, in which case such patent shall be the sole property of the
Notifying Party, and the Joint Invention in the country covered by such patent
shall be treated as an improvement made solely by the Notifying party, and shall
be subject to the provisions of this Agreement covering such party improvements.
The parties hereto shall execute such documents and render such assistance as
may be appropriate to enable the party properly having title to such
Improvements to maintain or obtain patents for the same.
E. Licensee agrees to provide semiannually to Tessera on or about
the dates set forth in Paragraph V (Licensee Reports and Payments) written
reports on Licensee's developmental efforts, including, but not limited to,
memoranda, patent disclosures and patent applications, relating directly or
indirectly to Licensee's Improvements made on or after August 31, 1994.
F. Each party hereto agrees to provide a written notification to
the other party within thirty (30) days of receiving any third party claim of
patent infringement. To the extent that a party knows of infringement of a third
party patent by the other party prior to a third party claim of infringement
based upon the other party's particular manufacture, use or sale of packaged
devices incorporating the Technology, Technical Information or Licensee
Improvement, the knowledgeable party shall contact the other party about such
infringement.
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TESSERA CONFIDENTIAL
VIII. TRADEMARKS:
A. Ownership. Licensee acknowledges the ownership of Tessera's
trademarks including, but not limited to, TESSERA, TESSERA BLOCK LOGO, TCMT, TCC
and uBGA (hereinafter "Marks"), and 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 right, title or interest in the Marks other
than the right to use the Marks in accordance with this Agreement to make and
sell TCC packages and related IC packages according to the Standards.
B. Form of Use. Licensee agrees to use the Marks only in the form
and manner with appropriate legends as prescribed from time to time by Tessera,
and not use any other trademark or service ▇▇▇▇ in combination with any of the
Marks without prior written approval of Tessera.
IX. SUPPLIER:
Licensee, at its sole option, may enter agreements ("Subcontract") with
suppliers ("Supplier") to manufacture TCCs or related IC packages or components,
materials or services thereof which are licensed hereunder for Licensee only and
not for Supplier's use or sale to anyone other than Licensee, provided that: (a)
prior to any disclosure of Tessera confidential information, Licensee and
Supplier shall execute a Non-Disclosure Agreement having substantially similar
terms as Paragraph XIV herein (Non-Disclosure); and (b) Licensee shall ensure
that Supplier receives no property rights to the Technology transferred under
Subcontract and that any improvements to the Technology made by Supplier shall
be Licensee Improvements as set forth in this Agreement; and (c) prior to
transfer of any Technology or Technical Information to each Supplier, Licensee
shall deliver an executed copy of each such Subcontract to Tessera. In the event
Licensee or Supplier breaches any of the foregoing obligations, they shall
immediately take all reasonable steps to mitigate any damages, costs, or
expenses arising therefrom and Tessera shall have the right to terminate further
confidential disclosures pursuant to paragraph XIV.B. of this Agreement.
X. TERM AND TERMINATION:
A. Term. This Agreement shall become effective on Effective Date
and, unless earlier terminated as provided for elsewhere in this Agreement,
shall remain in full force until it automatically expires on the fifteenth
(15th) anniversary of the Effective Date, provided that:
1. The parties agree to meet between the fourth and fifth
anniversary of the Effective Date, and discuss the terms of the Agreement.
2. On or before six months prior to the expiration date
hereof, Licensee must elect one of the following options and notify Tessera in
writing of its election, for the period beginning upon the expiration of this
Agreement:
a. If Licensee desires to practice further any of
the issued, non-expired patent rights in Paragraph II.A. granted prior to the
expiration of this Agreement, Licensee may
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TESSERA CONFIDENTIAL
elect to enter into a separate non-exclusive, non-transferable,
non-sub-licensable Patent License Agreement with Tessera for all such issued,
non-expired patents (keeping intact Paragraph VII) and shall pay one-half (1/2)
of the royalties listed in Paragraph III.B. herein for the lesser of five (5)
additional years or the life of the last expiring issued patent licensed under
this Agreement's Paragraph II.A; or
b. Licensee may elect to permit the Agreement to
expire in accordance with its terms (including termination of any payments of
royalties to Tessera and termination of any rights of Licensee to use further
any Tessera Patent licensed hereunder).
B. Paid-up license. Upon expiration of the five year separate
Patent License Agreement under Paragraph X.A2.a., Licensee shall have a fully
paid-up and perpetual license to the issued, non-expired patents which are the
subject matter of and under the terms of said separate Patent License Agreement.
C. 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 non-breaching party may terminate this Agreement
if such breach is not cured within sixty (60) days of notice thereof.
D. 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 or
(ii) a third party acquires more than fifty percent (50%) of the capital stock
entitled to vote for directors of such party ("Selling Party"), the Selling
Party shall notify the other party of such sale or assignment of assets or the
third 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
third party stating that such third party shall expressly undertake all the
terms and conditions of this Agreement to be performed by Selling Party. In the
event that such assignee/transferee does not fulfill obligations under this
Agreement, the other party shall reserve a right to terminate this Agreement.
E. Termination for Bankruptcy. In the event that one party becomes
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. Upon such termination the non-bankrupt party shall
have an option to terminate the obligations of both the parties to transfer or
license Technology, Technical Information, Tessera Patent, or Licensee's
Improvement that is filed after the date of termination for bankruptcy, with the
parties retaining all rights to use any Technical Information and Technology
transferred prior to such termination and/or Tessera Patent and Patent covering
any inventions in Licensee's Improvements, to the extent licensed hereunder,
just prior to such termination for bankruptcy, all such rights remaining in full
force and good standing, subject to continuation of the royalty payments as
stipulated in Paragraph III hereof.
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F. Termination for Invalidity. In the event that claims in any
Tessera Patent are found to be invalid by final judgment from a court of
competent jurisdiction, Licensee may terminate this Agreement provided Licensee
ceases to make, use and/or sell IC packages containing or embodying the
Technology (excluding any such invalidated claims) or the Technical Information
and covenants not to resume making, using and/or selling such IC packages.
Licensee shall provide Tessera with a written representation of such termination
and covenant pursuant to this Paragraph X.F. Licensee agrees that the
confidentiality provisions (Paragraph XIV.) of this Agreement shall remain in
effect for all Technology and Technical Information transferred between the
parties prior to termination pursuant to this Paragraph X.F. Within thirty (30)
days of such written termination, all tangible Tessera confidential information
and all copies thereof shall be returned or destroyed. Notwithstanding the
foregoing, Licensee may retain one archival copy of Tessera's confidential
information. Such archival copy shall remain in restricted files with Licensee's
Corporate Counsel.
G. Termination for Non-Use. In the event Licensee ceases to make,
use and/or sell IC packages containing or embodying the Technology or the
Technical Information and covenants not to resume making, using and/or selling
such IC packages, Licensee may terminate this Agreement. Licensee shall provide
Tessera with a written representation of such termination and covenant pursuant
to this Paragraph X.G. Licensee agrees that the confidentiality provisions
(Paragraph XIV.) of this Agreement shall remain in effect for all Technology and
Technical Information transferred between the parties prior to termination
pursuant to this Paragraph X.G. Within thirty (30) days of such written
termination, all tangible Tessera confidential information and all copies
thereof shall be returned or destroyed. Notwithstanding the foregoing, Licensee
may retain one archival copy of Tessera's confidential information. Such
archival copy shall remain in restricted files with Licensee's Corporate
Counsel.
H. Any termination of this Agreement pursuant to this paragraph X,
except as provided in Subparagraph B above shall be deemed a termination of this
Agreement in accordance with its terms (including termination of any payments of
royalties to Tessera and any rights of Licensee to use any Technology or Tessera
Patent licensed hereunder).
I. 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 payment to Tessera
accrued under this Agreement on or prior to expiration or termination.
2. Licensee's obligation to submit written report
stipulated in Paragraph V, Licensee Reports and Payment, and to permit the
inspection and audit of its account record stipulated in Paragraph XI,
Reasonable Audit.
3. The rights and licenses of Tessera and its other
licensees to use all improvements that may be granted during the term of this
Agreement and any extension hereof, and licenses to any inventions contained in
Licensee's Improvements granted under Paragraph VII hereof.
4. Obligation of both parties stipulated in Paragraph XIV,
Non-Disclosure.
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5. Paragraph X, Term and Termination.
6. Paragraph XII, No Warranties.
7. Paragraph XIII, Limitation on Damages.
8. Paragraph XV, Indemnity.
9. Paragraph XVI, Miscellaneous.
XI. REASONABLE AUDIT:
Upon reasonable written prior notice, Tessera shall have the right to
examine and audit, through an independent third party CPA firm, at its expense
and 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, however, 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 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.
XII. NO WARRANTIES:
Licensee acknowledges and agrees that the rights and licenses,
Technology 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 Technology or Standards will be sufficient or yield any
particular result.
To the best of Tessera's knowledge and belief at the time of execution
of this Agreement, Tessera hereby represents that Tessera is the owner of
Tessera Patents licensed hereunder and that Tessera has the right to grant the
scope of the license contemplated within this Agreement.
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.
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XIV. NON-DISCLOSURE:
A. The parties agree that all confidential information disclosed
either orally or in writing by one party to the other pursuant to this Agreement
shall, for a period of eight (8) years from the date of first receipt of this
information, not be used except in accordance with the rights and licenses
granted pursuant to this Agreement and shall be maintained in confidence by the
receiving party, provided, however, that such information is designated and
marked as being confidential in nature by the disclosing party at the time of
disclosure to the receiving party and provided further that such information, if
disclosed orally, is reduced to writing, marked as being confidential, and
delivered to the receiving party within thirty (30) days after such disclosure.
Such Confidential Information may be disclosed only to employees of the
receiving party who have a specific need to know such information for the
purpose of the disclosing party. Notwithstanding the foregoing provisions of
this Paragraph:
1. The receiving party's obligation with respect to keeping
information confidential shall terminate with respect to any part of such
information which appears in issued patents or printed publications or which
ceases to be confidential or enters the public domain through no fault of the
receiving party;
2. The receiving party shall not be precluded from
disclosing or making any use whatsoever of any information which it can show was
in its possession prior to the disclosure made by the furnishing party or which
subsequently lawfully came into the receiving party's possession through
channels independent of the furnishing party or which was developed completely
independent of information provided to receiving party hereunder;
3. For the purpose of keeping information confidential the
receiving party shall use efforts commensurate with those which it employs for
the protection of corresponding information of its own, but not less than a
reasonable degree of care to prevent unauthorized use, disclosure,
dissemination, or publication of information transferred hereunder;
4. The receiving party shall not be liable for any
disclosure resulting from the sale of any product or component; and
5. The receiving party may disclose confidential
information of the party to the receiving party's Suppliers or vendors where
necessary for the manufacture, use or sale of products by the receiving party,
as provided for in Paragraph IX (Supplier).
B. The parties hereto shall consult with each other from time to
time and mutually approve promotional materials, including samples, technical
data, or otherwise containing any proprietary and/or confidential information of
the parties, for disclosure to customers by either party or jointly under a
mutually agreeable and reciprocal non-disclosure agreement. Notwithstanding the
parties' obligations hereunder with respect to timely reports and/or disclosures
to the other containing confidential information, breach of this Paragraph XIV
by either party shall be deemed sufficient cause for the other party to
terminate any further obligation to make confidential disclosures to the
breaching party without limiting any other remedy at law. If such a breach
occurs, the non-breaching party shall send a written notification to the
breaching party. The
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TESSERA CONFIDENTIAL
breaching party will then have fifteen (15) days from the mailing date of the
notification within which to mitigate the effects of the wrongful disclosure
amounting to a breach hereunder. If such actions are sufficient to mitigate the
effects of the wrongful disclosure, the obligation of the Nonbreaching party to
make confidential disclosures shall resume.
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 attorneys' fees and expenses) arising out of or related to
Licensee's use of the Technology. Notwithstanding, Licensee shall not be
required to defend or help defend the validity of any Tessera Patent.
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. Notwithstanding, Tessera shall not be required to
defend or help defend the validity of any Licensee Patent.
XVI. MISCELLANEOUS:
The following additional terms shall apply to this Agreement:
A. Governing Law. Arbitration. This Agreement shall be governed,
interpreted and construed in accordance with the laws of the States of
California as if without regard to its provisions with respect to conflicts of
Laws. Both parities 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, such disputes,
controversies, claims or differences shall be finally settled by arbitration
under the rules of Arbitration of the International Chamber of Commerce by three
arbitrators appointed in accordance with said rules. Judgment on the award
rendered by the arbitrators shall be final. If a claim is brought by Tessera
(except for nonpayment of royalties), the location of the arbitration shall be
Philadelphia, Pennsylvania. If a claim is brought by Licensee or by Tessera for
nonpayment of royalties, the location of the arbitration shall be San Jose,
California.
B. No Waiver. No failure or delay on 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. 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.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇.
▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
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TESSERA CONFIDENTIAL
Facsimile No.: ▇▇▇-▇▇▇-▇▇▇▇
Attn.: Chief Executive Officer
Licensee: Amkor Electronics, Inc.
Goshen Corporate Park
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Attn.: ▇▇▇▇▇ ▇▇▇▇▇, Corporate Counsel
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 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.
D. Documentation Managers. Both Licensee and Tessera shall
designate a Documentation Manager to perform the task of logging and tracking
the confidential documents transferred between the companies. If possible, each
transfer of confidential information should be first transferred between the
respective Documentation Managers before disclosure in a meeting or via
mail/fax. If the information is first disclosed between representatives of the
parties, an effort should be made to send a copy of the disclosed information to
the receiving party's Documentation Manager along with the date of the
disclosure. Tessera's Documentation Manager is ▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, In-house
Patent Counsel and may be contacted at the Tessera fax and street address.
Licensee's Documentation Manager is ▇▇▇▇▇ ▇▇▇▇▇, Corporate Counsel and may be
contacted at Licensee's fax and street address.
E. 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.
F. 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.
G. Assignment. Neither party may assign this Agreement or any of
its rights or obligations hereunder without the prior written consent of the
other party.
H. Export Regulations. Both parties shall comply with the laws and
regulations of he government of the United States, and of any other country as
applicable relating to the export of
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TESSERA CONFIDENTIAL
commodities and technical data, any direct product of such data, or any product
received the other, to any proscribed country listed in such laws and
regulations unless properly authorized by the appropriate government, and not
knowingly export, or allow the export or re-export of any Technology or
Proprietary Information, or any system, component, item, material or package
made under or using the foregoing, in violation of any restrictions, laws or
regulations, or without all required licenses and authorizations, to
Afghanistan, the People's Republic of China or any Group Q, S, W, Y or Z country
specified in the then current Supplement No. 1 to Section 770 of the US Export
Administration Regulations (or any successor supplement or regulations).
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the date first above written.
TESSERA, INC.: AMKOR ELECTRONICS, INC.:
/s/ ▇▇▇▇ ▇. ▇▇▇▇▇ 5-9-96 /s/ ▇▇▇▇ ▇▇▇▇▇▇ 5-10-96
----------------------------------- ------------------------------------
Name Date Name Date
President President
----------------------------------- ------------------------------------
Title Title
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15
[TESSERA, INC. LETTERHEAD]
August 13, 1997
▇▇. ▇▇▇▇▇ ▇▇▇▇▇
Corporate Counsel
Amkor Electronics, Inc.
Goshen Corporate Park
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇
RE: Amendment Letter - Change in Definition of "Licensee"
Dear ▇▇▇▇▇:
As mentioned in my June 16, 1997 letter to you, Tessera is requesting a
modification to the TCC License Agreement so that Anam (Korea) and Amkor/Anam
(Philippines) are expressly covered under the terms of the Agreement pursuant to
the Affiliate Agreement that both have signed with Tessera. The proposed
modification to the introductory paragraph of the Agreement is as follows:
"This Agreement is entered into as of this 9th day of May, 1996, between
TESSERA, INC., a corporation organized under the laws of Delaware
("Tessera") and AMKOR ELECTRONICS, INC. a corporation organized under the
laws of Pennsylvania and its Affiliates ("Licensee") with reference to
the following facts:"
If you agree with the above revision, please have an authorized representative
of Amkor sign the both copies of this amendment letter
Best regards,
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
----------------------------------
▇▇▇▇▇ ▇▇▇▇▇▇▇
Director of Intellectual Property
Tessera, Inc.
TESSERA. INC. AMKOR ELECTRONICS. INC.
Signature: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇ Signature: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
-------------------------- ------------------------------
Print Name: ▇▇▇▇ ▇▇▇▇▇ Print Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
------------------------- -----------------------------
Title: President Title: Executive Vice President
------------------------------ ----------------------------------
Date: 8.13.97 Date: 8-20-97
------------------------------- -----------------------------------
16
ANAM INDUSTRIAL Co., Ltd.
AFFILIATE STATUS AGREEMENT
Pursuant to Paragraph I.L. (shown below) of the Limited TCC License Agreement
("Agreement") between Tessera, Inc. and Amkor Electronics, Inc. having an
Effective Date of May 9, 1996, Anam Industrial Co., Ltd. hereby accepts such
Affiliate status and agrees to be bound by the terms and conditions of the
underlying Agreement between Tessera and Amkor Electronics, Inc. and thereby
enjoys the same rights as any Affiliate under such Agreement.
L. The term "Affiliate" means any company of which fifty percent
(50%) or more of the voting stock is owned or controlled by
Licensee. A company shall be considered an Affiliate only so long
as such majority ownership or control exists. The term Affiliate
shall also include Anam Industrial Co., Ltd., Seoul, Korea and
Amkor Anam Pilipinas, Inc., Manila, Philippines so long as these
companies are bound by and operate under the terms of this
Agreement.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the date last written below.
TESSERA, INC. ANAM INDUSTRIAL Co., Ltd.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇ By: /s/ JUNGIHIL ▇▇▇
-------------------------------- ------------------------------------
Print Name: ▇▇▇▇ ▇▇▇▇▇ Print Name: Jungihil ▇▇▇
------------------------ ----------------------------
Title: President Title: Managing Director, R&D
----------------------------- ---------------------------------
Date: 6-16-97 Date: May 29, 1997
------------------------------ ----------------------------------
17
AMKOR ANAM PILIPINAS, INC.
AFFILIATE STATUS AGREEMENT
Pursuant to Paragraph I.L. (shown below) of the Limited TCC License Agreement
("Agreement") between Tessera, Inc. and Amkor Electronics, Inc. having an
Effective Date of May 9, 1996, Amkor Anam Pilipinas, Inc. hereby accepts such
Affiliate status and agrees to be bound by the terms and conditions of the
underlying Agreement between Tessera and Amkor Electronics, Inc. and thereby
enjoys the same rights as any Affiliate under such Agreement.
L. The term "Affiliate" means any company of which fifty percent
(50%) or more of the voting stock is owned or controlled by
Licensee. A company shall be considered an Affiliate only so long
as such majority ownership or control exists. The term Affiliate
shall also include Anam Industrial Co., Ltd., Seoul, Korea and
Amkor Anam Pilipinas, Inc., Manila, Philippines so long as these
companies are bound by and operate under the terms of this
Agreement.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the date last written below.
TESSERA, INC. AMKOR ANAM PILIPINAS, INC.
Signature: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇ Signature: /s/ ▇▇▇▇▇▇▇ ▇. ▇'▇▇▇▇▇
-------------------------- -------------------------------
Print Name: ▇▇▇▇ ▇▇▇▇▇ Print Name: ▇▇▇▇▇▇▇ ▇. ▇'▇▇▇▇▇
------------------------- ------------------------------
Title: President Title: VICE CHAIRMAN, AMKOR/ANAM PILIPINAS
------------------------------ -----------------------------------
Date: 7/25/97 Date: 6-25-97
------------------------------- ------------------------------------