Redacted Version
CONFIDENTIAL TREATMENT REQUIRED
TECHNOLOGY LICENSE AGREEMENT
This Technology License Agreement ("Agreement") is made effective as of
December 31, 1997 by and between Integrated Device Technology, Inc., a Delaware
corporation with a principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, MIPS Technologies, Inc., a Delaware corporation with its
principal place of business at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and Silicon Graphics, Inc., a Delaware corporation with a
principal place of business at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
WITNESSETH
WHEREAS, IDT and MTI, as successor in interest to MIPS Technologies,
Inc., as successor to MIPS Computer Systems, Inc., are parties to a
"Manufacturing, Marketing, and Purchase Agreement", effective as of January 16,
1988 (the "Original Agreement"), as subsequently amended by the "Supplemental
Agreement No. 1 to the Manufacturing, Marketing, and Purchase Agreement" (the
"Supplemental Agreement"); and
WHEREAS, IDT and MTI now wish to extend their relationship into the
Twenty-First Century, through MTI's agreement to license to IDT future
generations of microprocessors based on MIPS Architectures and MIPS Designs;
NOW, THEREFORE, in consideration of the mutual promises contained
herein, the parties agree as follows:
1. DEFINITIONS
1.1 Affiliate - means a business entity that, at any time during the term
of this Agreement, controls, is controlled by, or is under common control with,
a party to this Agreement, such control being exercised, directly or indirectly,
through ownership of (or the power to vote) either (i) of outstanding shares
issued by the business entity sufficient to elect a majority of its directors,
or (ii) if the business entity is not a corporation, of an equity interest in
the business entity sufficient to control management of the affairs of the
business entity or the composition of its principal governing authority, which
ownership or voting power is held as of any time during the term of this
Agreement, provided that such business entity shall be considered an Affiliate
only for the time during which such ownership or voting power exists.
1.2 ASP - means the lower average selling price of either (i) the fiscal
quarter for which royalties are being computed or (ii) a combination of such
fiscal quarter and its preceding fiscal quarter. The ASP shall be computed by
dividing the Net Revenue received by IDT for the product by the total number of
units sold during the applicable time period.
1.3 CMOS and CMOS-Derivative Technology - means any technology, for MIPS
Chip product design or manufacture that incorporates a type of circuit structure
containing both p-channel and n-channel devices on the same substrate.
1.4 Deliverables - means those items to be delivered by MTI to IDT in the
manner specified in Section 3. 1.
1.5 Effective Date - means the date first written above.
1.6 Internal Use - means the use of a product (whether hardware, software
or combination thereof) to perform its intended and customary function by and
for the benefit of the party using the product and not for sale, distribution or
sublicensing to others. Internal Use includes, but is not limited to,
evaluation, development, maintenance, customer support, employee training and
the like.
1.7 IDT - means Integrated Device Technology, Inc., a corporation with its
principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
and each of its Affiliates.
1.8 IDT Functional Blocks - means any functional block less than *** of
which is derived from register transfer logic (RTL) supplied by MTI (i.e., more
than *** of the functional block is developed by or for IDT).
1.9 MIPS Architecture - means those MIPS instruction set architectures for
which MTI offers nonexclusive licenses to more than one MIPS Semiconductor
Partner for use in products for sale to the open market. In general, MIPS
Architecture relates to the RISC-based MIPS computer organization, structure and
content, or portions thereof, as designed and enhanced by MTI, including but not
limited to, the MIPS I, MIPS II, MIPS III, MIPS IV, MIPS V, MIPS 16 and the MDMX
instruction set architectures and interface specifications.
1.10 MIPS Binary Code Software- means software in object code form (also
called binary or executable code).
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
2
1.11 MIPS Commercial Software- means MIPS Binary Code Software and MIPS
Source Code Software.
1.12 MIPS Chip(s) - means (a) those integrated circuit central processor
product(s) using MIPS Technology and employing proprietary MIPS Architecture or
MIPS Designs, in whole or in part; (b) integrated circuit arithmetic
co-processor product(s) designed by or on behalf of MTI to connect with and
operate with a MIPS Chip central processor unit; and (c) integrated circuit bus
interface management product(s) designed by or on behalf of MIPS to connect with
and operate with a MIPS Chip central processor or MIPS Chip co-processor.
Notwithstanding the foregoing, nothing in this definition shall require MTI, or
be deemed to create an obligation on the part of MTI, to create. develop or
acquire any particular MIPS Chip referred to above. MIPS Chips do not include
those custom chips designed by or on behalf of MTI exclusively for a third
party, custom chips substantially funded by a third party, MTI's authorized
original equipment manufacturers, or its product. By way of example only, the
parties acknowledge and agree that MIPS Chips do not include the *** or any
graphics processor or central processor unit developed for *** or exclusively
for MTI.
1.13 MIPS Compatible - means a product which complies with the
specifications for the appropriate user mode ISA as defined in the appropriate
MIPS Architecture Reference Manual.
1.14 MIPS Designs - means a microprocessor now or at any later time during
the term of this Agreement developed or co-developed by MTI and licensable from
MTI by MIPS Semiconductor Partners (excluding those designs funded by a third
party, developed substantially in their entirety on a custom basis for the use
of such third party or MTI and not generally made available to any other third
party) employing the MIPS Architecture. By way of example only, the parties
acknowledge and agree that MIPS Designs do not include the *** or any graphics
processor or central processor unit developed for *** or exclusively for MTI.
1.15 MIPS Functional Block - means any functional block more than or equal
to *** of which is developed by or for MTI.
1.16 MIPS Internal Documentation - means all manuals, user guidelines and
other documentation relating to the MIPS Architecture, MIPS Chips or MIPS
Commercial Software including all modifications, updates, derivations of and
other changes thereto, whether in written, graphical, human readable, or
machine-readable form, and in any media, which MIPS uses internally and does not
make available for sale or distribution to third parties in the ordinary course
of business but which is made available to MIPS Chips and MIPS Designs
Licensees.
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
3
1.17 MIPS Know-How - means:
(a) design, manufacturing, and engineering, know-how, confidential
information, trade secrets, drawings and artwork, in whatever form embodied,
which are relevant or helpful for any of the activities contemplated to be
performed by IDT pursuant to this Agreement including, but not limited to,
manufacturing, using, selling, installing, designing, improving, enhancing,
modifying, repairing or maintaining the MIPS Chips, MIPS Systems, or MIPS
Commercial Software;
(b) any enhancement, revision, improvement, or other modification
thereto, which is owned by MIPS or which is licensed by MIPS from any third
party as of the Effective Date or thereafter (except for the licenses from AT&T,
the Regents of the University of California, Sun Microsystems, and any other
licenses with respect to which MIPS has no right, or must pay a royalty or other
fee to grant licenses of the scope granted in this Agreement). MIPS Know-How
shall include the MIPS Architecture and MIPS Designs contained within any MIPS
Chip.
1.18 MIPS Semiconductor Partners - means certain other parties who have
rights to manufacture and/or sell MIPS Chips produced from their respective
process technologies; MIPS Semiconductor Partners are not "partners" in the
legal sense and do not have rights to share profits or losses with MTI.
1.19 MIPS Source Code Software - means the software in source code version
(or in a form from which a human-readable form can be produced without reverse
compilation), now owned and as developed or acquired which MIPS makes available
for licensing by MIPS Semiconductor Partners in the ordinary course of business
or as set forth in MTI's then current MIPS price list, catalog, or similar
publication (provided MTI obtains the right to grant sublicenses of the scope
granted in this Agreement (a) without an obligation to pay any royalty, fee, or
other consideration as a result of granting such sublicense; or (b) if a payment
of any royalty, fee, or other consideration is due, IDT pays to MTI in advance
the entire amount of such royalty, fee, or consideration, and further provided
that IDT complies with all preconditions of receiving any such sublicense which
may be required by the licensor, for example executing appropriate license
agreements).
1.20 MIPS Systems - means computer boards and systems products which
incorporate MIPS Chips.
1.21 MIPS Technology - means any patents, patent applications, mask work
rights, copyrights, and other statutory rights which are necessary or required
for any of the activities contemplated to be performed by IDT pursuant to this
Agreement including, but not limited to,
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designing, manufacturing, using, selling, installing, repairing or maintaining,
the MIPS Chips, MIPS Systems, or MIPS Commercial Software which is owned by MTI
or licensed by MTI from any third party as of the Effective Date or thereafter
(except for the licenses from AT&T, the Regents of the, University of
California, Sun Microsystems, and any other licenses with respect to which MTI
has no right, or must pay a royalty or other fee to grant licenses of the scope
granted in the Agreement). MIPS Technology includes the MIPS Architecture and
MIPS Designs contained within any MIPS Chip.
1.22 MIPS Tools - means the MIPS Commercial Software, in source code
versions, now owned and as developed or acquired, which MTI makes available for
licensing by MIPS Semiconductor Partners in the ordinary course of business
(provided MTI obtains the right to grant sublicenses of the scope granted in
this Agreement (a) without any obligation to pay any royalty, fee, or other
consideration as a result of granting, such sublicense, or (b) if a payment of
any royalty, fee, or other consideration is due, IDT pays to MTI in advance the
entire amount of such royalty, fee, or consideration, and further provided that
IDT complies with all preconditions of receiving any such sublicense which may
be required by the licensor, for example executing appropriate license
agreements). MIPS Tools include, without limitation, the following: System
Programmer's Package, including Pixie, Pixstats, cache 3000/4000, etc., RISC/OS,
MIPS C Compiler, ASM, Debugger & Libraries.
1.23 ***
1.24 *** MIPS Commercial Software - means MIPS Commercial Software which has
been supplied to IDT by MIPS and ***.
1.25 Module - means two (2) or more integrated circuit products on an
assembly.
1.26 MTI - means MIPS Technologies, Inc., a Delaware corporation with its
principal place of business at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and each of its Affiliates.
1.27 Net Revenue - means the gross sales revenue received from the sale of
MIPS Chips, MIPS commercial documentation, or the license of MIPS Commercial
Software, accounted for in accordance with generally accepted accounting
principles, after deduction for discounts, returns, freight, insurance, taxes,
and duties, if any, and after deduction of payments for royalties, fees, or
other consideration payable by a party to a third party. If IDT sells MIPS Chips
to other than an unrelated third party, the Net Revenue for such sale shall be
deemed to be the ASP for the MIPS Chip times the number of chips sold. If there
is no ASP for such MIPS Chip, then the Net
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
5
Revenue shall be deemed to be *** of the manufacturing cost per chip of that
MIPS Chip times the number of MIPS Chips.
1.28 Original Agreement - means the Manufacturing, Marketing, and Purchase
Agreement, effective as of January 16, 1988, as more fully described in the
first recital of this Agreement.
1.29 ***
1.30 ***
1.31 ***
1.32 SGI - means Silicon Graphics, Inc., a Delaware corporation with its
principal place of business at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
1.33 Specifications - means MIPS' then current specifications including all
improvements, corrections, additions, updates, deletions, and modifications
thereto.
1.34 Supplemental Agreement - means the "Supplemental Agreement No. 1 to the
Manufacturing, Marketing, and Purchase Agreement" dated November 15, 1994, by
and between IDT and MTI, as successor in interest to MIPS Computer Systems, Inc.
1.35 Tape-out - means the machine-readable tape used to generate masks or
other intermediate step to generate masks in a form reasonably suitable to be
delivered to a mask vendor.
1.36 ***
1.37 *** MIPS Commercial Software - means MIPS Commercial Software as
supplied to IDT by MIPS.
2. TECHNOLOGY LICENSE
2.1 MIPS Chips.
2.1.1 ***
2.1.2 Grant. Subject to the offer and acceptance requirements contained
in Section 2.1.1, MTI hereby grants to IDT and IDT hereby accepts a personal,
nonexclusive,
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
6
worldwide, revocable (only in accordance with Section 16 herein),
non-transferable, and non-assignable right and license to make, have made, use,
modify, market, sell and distribute the MIPS Chips provided that: ***
2.1.3 Modifications. If IDT designs, manufactures, and/or markets any
*** MIPS Chips, IDT shall be solely and completely responsible for the design,
manufacturing, marketing, integrated circuit support, and software support
requirements of its customers. Although MTI is under no obligation to, it may,
if requested and available, provide consulting services to IDT at mutually
agreed upon prices in connection with such IDT modification activities. MTI
shall have the right to purchase generally available *** MIPS Chips directly
from IDT at IDT's then current prices, terms and conditions, and to use such ***
MIPS Chips for any purpose.
2.2 Software License.
2.2.1 ***
2.2.2 ***
2.2.3 MIPS Tools. MTI hereby grants to IDT and IDT hereby accepts a
personal, non-exclusive, worldwide, revocable (only in accordance with Section
16 herein), non-transferable right and license to use MIPS Tools for IDT's
Internal Use only.
2.3 ***
2.4 Documentation Rights.
2.4.1 ***
2.4.2 ***
2.5 Offer and Acceptance Required. The rights and licenses described in
Section 2.2 and Section 2.4 shall only apply to MIPS commercial documentation,
MIPS Internal Documentation, and MIPS Commercial Software that (a) relates to
any MIPS Architecture or MIPS Design which has been offered to and accepted by
IDT in the manner set forth in Section 2.1.1, and (b) has been provided to IDT
as a Deliverable in the manner set forth in Section 3.
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
7
2.6 Rights Under the Original Agreement and the Supplemental Agreement.
IDT, SGI, and MTI agree that this Agreement supersedes the Original
Agreement with respect to all transactions and occurrences on and after the
Effective Date, including, without limitation, all license rights, and royalty
rates. Royalties on sales on and after the Effective Date shall be payable
solely to MTI.
3. Deliverables.
3.1 ***
3.2 ***
3.3 ***
3.4 Program Management. Each party shall identify an individual employee
("Program Manager") who shall be responsible for interfacing with the other
party, especially in connection with the provision of Deliverables. The Program
Manager shall be knowledgeable about his employer's products and design and
manufacturing activities and possess adequate communication skills to keep the
other party fully informed relative to his employer's performance under this
Agreement. Each party shall notify the other in writing of any successor or
designee of the Program Manager.
4. MARKETING RIGHTS AND OBLIGATIONS.
4.1 Marketing Responsibilities. IDT shall use commercially reasonable
efforts to:
(a) actively engage in the marketing and distribution of MIPS Chips;
(b) encourage its existing sales organization to solicit and actively
promote marketing and sales of MIPS Chips;
(c) provide quality support to its customers, by training, and
maintaining a sufficient number of competent technical personnel to
provide such support; and
(d) not engage in any advertising or trade practice which adversely
affects the good name, trademarks, goodwill, or reputation of MTI or
MIPS Chips.
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
8
4.2 Trademarks. - IDT may use MTI trademarks only in accordance with MTI's
specifications, a copy of which is attached hereto as Exhibit B, and only on
products licensed hereunder. IDT acknowledges MTI's ownership of and title to
all rights in the MTI trademarks and the goodwill attaching to the MTI
trademarks. IDT agrees not to contest the MTI trademarks. Each party agrees not
to use, employ or attempt to register any trademarks or trade names which are
confusingly similar to the other party's trademarks.
5. MAINTENANCE AND SUPPORT.
5.1. MIPS Chips. IDT shall be solely and completely responsible for
providing all maintenance and support for MIPS Chips necessary and appropriate
for purchasers of MIPS Chips from IDT except for MIPS Commercial Software
support to purchasers of Certified *** MIPS Chips which MTI shall provide. MTI's
duty to provide maintenance and support to any IDT customer is contingent on
such customer's execution of a valid current MIPS Software Maintenance
Agreement.
5.2. MIPS Tools. MTI shall provide to IDT (on terms and conditions no less
favorable than those provided to MTI's other MIPS Semiconductor partners)
support and maintenance for MIPS Tools (excluding IDT *** MIPS Commercial
Software) which are licensed to IDT pursuant to the terms of this Agreement.
5.3. MIPS Commercial Software.
5.3.1. MTI shall make available for purchase, support and maintenance
services with respect to *** MIPS Commercial Software to third party customers
in accordance with MTI's then current standard terms, conditions, and prices.
5.3.2. IDT may make support and maintenance services available to its
customers of *** MIPS Commercial Software.
5.4 ***
5.5 No Support. MTI shall have no responsibility or obligation to provide
any maintenance or support whatsoever to any person or entity regarding (a) ***
MIPS Chips, or (b) IDT *** of MIPS Commercial Software, MIPS Tools, MIPS
commercial documentation or MIPS Internal Documentation.
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
9
6. COMPENSATION AND PRICES
6.1 License Fee. Upon acceptance of the license rights pursuant to Section
2.1.1, IDT will be entitled to license the new MIPS Architecture or new MIPS
Design *** to license the same MIPS Architecture and MIPS Design on
substantially the same terms and at substantially the same time (within one
year) as IDT.
6.2 Royalties
6.2.1 MIPS Chips.
6.2.1.1 Royalty ***. IDT agrees to pay MTI royalties based on
Net Revenue received by IDT for the sale of MIPS Chips by IDT according to the
royalty rates ("Applicable Rate") included in the following schedule:
*** ***
***% ***% ***
***% ***% ***
***% ***% ***
***
***
***
6.2.1.2 ***
6.2.2 Software.
6.2.2.1 ***
6.2.2.2 ***
6.3. Payment. IDT shall make such royalty and license fee payments to MTI on
the forty-fifth (45th) day following the end of each IDT fiscal quarter. On any
overdue royalty payments,
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
10
MTI may charge and IDT shall pay a one percent (1%) per month finance charge
upon the unpaid balance until the date of payment.
6.4 Records and Reports.
6.4.1. Records. IDT shall keep complete and accurate records relating
to the sales of *** and *** MIPS Chips sold and each copy of MIPS Commercial
Software licensed, which records shall at a minimum include the name and address
of the purchaser/sublicensee, the date of shipment, the unit price, the total
purchase price of the order and a copy of the sublicense agreement.
6.4.2 Reports. IDT shall report to MTI on an IDT fiscal quarterly basis
for each MIPS Chip sold and each copy of MIPS Commercial Software licensed, the
quantity sold/sublicensed, the Net Revenue and the total amount of royalty and
license fees due and owing to MTI for such IDT fiscal quarter. The reports
described in this Section shall be made to MTI no later than forty-five (45)
days of the close of each IDT fiscal quarter.
6.4.3 Audit. MTI shall have the right, through an independent
accounting firm, to make an examination and audit, not more frequently than
annually, during normal business hours, of IDT's records and accounts as may
contain information bearing upon the amounts due hereunder. Prompt adjustment
shall be made by IDT or MTI as the case may be for any errors or omissions
disclosed by such audit. In the event that any quarterly report understates the
royalties and license fees due for any fiscal quarter by more than five percent
(5%), IDT shall reimburse MTI for the cost of such audit. No IDT information
examined by the independent accounting firm shall be disclosed to MTI or any
other person.
6.5 ***
7. PURCHASING RIGHTS AND OBLIGATIONS.
7.1 ***
7.2 ***
8. Relationship with the Original Agreement. This Agreement supersedes the
Original Agreement with respect to all transactions and occurrences on and after
the Effective Date, including, without limitation, all license rights, and
royalty rates.
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
11
9. New Technology. Subject to the terms of the Mutual Confidential
Information Non-Disclosure Agreement, Exhibit D, the parties shall meet and
discuss information relating to new technology, product plans, and design
efforts, to the extent related to the subject matter of this Agreement.
10. MIPS' DUTY TO PROVIDE EQUAL RIGHTS
The material obligations imposed on IDT under this Agreement shall, in
aggregate, be no greater than those imposed on the other MIPS Semiconductor
Partners of MIPS. The material rights granted to IDT under this Agreement shall
be no less than those granted to any other similarly licensed Semiconductor
Partner. The parties acknowledge and agree that this Agreement will be amended
to accomplish the purpose of this Section should MTI provide, in aggregate, more
rights to or require lesser obligations of any current or future Partner.
11. ***
12. INVENTIONS AND TOOLING
12.1. Title.
12.1.1 All designs, data, MIPS Technology, and MIPS Know-How provided
by MTI to IDT shall remain the property of MTI exclusively throughout the world.
All modifications, enhancements, ideas, discoveries, inventions, derivatives and
other information and improvements to such designs, data, MIPS Technology, and
MIPS Know-How, developed by MTI, shall remain the property of MTI exclusively
throughout the world. MTI shall have the exclusive, world-wide right, title and
interest in and to all patents, patent applications, copyrights, mask works,
trademarks, and all other proprietary right relating to such MTI designs, data,
MIPS Technology, MIPS Know-How, MTI modifications, MTI enhancements, and/or MTI
improvements;
12.1.2 MTI shall retain the ownership rights to the logic design,
circuit design, and pattern generation tapes created by its development efforts.
IDT shall retain physical possession of such items to perform its rights and
obligations under this Agreement. Upon cancellation of this Agreement for any
reason, IDT shall return or destroy MTI Internal Documentation and an officer of
IDT shall certify that such MIPS Internal Documentation has been returned or
destroyed.
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
12
12.1.3 All IDT modifications and improvements to the MIPS Chips, all
IDT modifications and improvements to the technology, and all IDT modifications
and improvements to the information licensed in Section 2 herein, shall belong
exclusively to IDT.
12.2 IDT's Inventions.
12.2.1 All discoveries, improvements, and inventions conceived
including mask works fixed in a semiconductor chip product, in the performance
of this Agreement by IDT shall be the sole and exclusive property of IDT and IDT
shall retain any and all rights to file any patent applications, mask work
registrations, trademark registrations, and copyrights thereon.
12.2.2 IDT shall own all right, title and interest in any integrated
circuit product it develops even if such product is designed specifically to
interface with a MIPS Chip. Upon cancellation of this Agreement for any reason,
MTI shall return or destroy IDT Confidential Information and an officer of MIPS
shall certify that such IDT Confidential Information has been returned or
destroyed.
12.3 Survival. The provisions of this Section shall survive the termination,
cancellation, or expiration of this Agreement.
13. PROPRIETARY INFORMATION
13.1 Definition. "Proprietary Information" as used herein shall mean all or
any portion of only the: (a) written, recorded, graphical or other information
in tangible form disclosed, during the term of this Agreement, by one party to
the other party which is stamped "Proprietary," "Confidential," or with a
similar legend denoting the proprietary interest therein of the disclosing
party; (b) oral information which is disclosed by one party to the other party
to the extent it is identified as "Proprietary" or "Confidential" at the time of
oral disclosure, is reduced to written or other tangible form within thirty (30)
days of oral disclosure, and such written or tangible form is stamped
"Proprietary", "Confidential", or with a similar legend denoting the proprietary
interest therein of the disclosing, party; (c) the MIPS Tools and the
Deliverables; and (d) models and other devices delivered or disclosed, during
the term of this Agreement, by one party to the other party which have been
identified in writing at the time of disclosure as being, proprietary to the
disclosing party and any information, data or know-how derived from any
information contained in items (a), (b), (c) and (d), above ("Derivative
Information"); provided, however, Proprietary Information shall not include any
information that is:
(a) in the possession of the receiving party prior to disclosure by the
disclosing party and not subject to other restrictions on disclosure;
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(b) independently developed by the receiving party;
(c) publicly disclosed by the disclosing party;
(d) rightfully received by the receiving party from a third party
without restrictions on disclosure;
(e) approved for unrestricted release or unrestricted disclosure by the
disclosing party; or
(f) produced or disclosed pursuant to applicable laws, regulations or
court order, provided the receiving party has given the disclosing
party prompt notice of such request so that the disclosing party has an
opportunity to defend, limit or protect such production or disclosure.
13.2 Restrictions. This Agreement and the exchanges hereunder shall not be
deemed to establish a confidential relationship between the parties and all
information, documentation and devices exchanged between the parties hereunder
other than Proprietary Information shall be received and treated by the
receiving party on a non confidential and unrestricted basis.
The parties agree, for a period of ten (10) years from the date of
disclosure:
(a) not to disclose Proprietary Information of the other party outside
of the receiving party;
(b) to limit dissemination of the other party's Proprietary Information
to only those of the receiving party's officers, directors, agents and
employees who require access thereto for authorized purposes;
(c) to ensure that each person who receives or has access to
Proprietary Information has previously executed a written nondisclosure
agreement; and
(d) to return to the disclosing party, or destroy, Proprietary
Information of the disclosing party upon receipt of a written request
therefor from the disclosing party, without retaining any copy thereof.
The standard of care to be exercised by the receiving party to meet
these obligations shall be the standard exercised by the receiving party with
respect to its own proprietary information of a similar nature, but in no event
less than due care.
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13.3 No Publication. A copyright notice by itself does not constitute or
evidence a publication or public disclosure.
13.4 Proprietary Notices.
13.4.1 MIPS Commercial Software, MIPS commercial documentation, and
MIPS Internal Documentation. MIPS commercial documentation, MIPS Internal
Documentation, and MIPS Commercial Software are copyrighted. Copies may be made
only as permitted by this Agreement. As a condition of the reproduction and
distribution rights granted herein, IDT shall reproduce and apply the MTI
copyright notice to all copies, in whole or in part, in any form, of the MIPS
Commercial Software or MIPS Documentation reproduced hereunder. IDT shall not
alter or remove any copyright, trademark, tradename or other proprietary notice,
legend, symbol or label appearing on or in copies of MIPS Commercial Software or
MIPS Documentation.
13.4.2 MIPS Chips. IDT shall cause MTI's respective copyright and mask
work notices to be placed on the masks of all MIPS Chips containing portions of
MTI copyrighted or MTI mask work content.
13.4.3 Rights in Data. The parties will cooperate in the mutual
determination of a procedure for the usage of appropriate "Rights in Technical
Data" type legends to be included, as appropriate, on items licensed by MTI to
IDT pursuant to this Agreement that IDT has reason and the right to deliver
under one or more U.S. Government contracts or subcontracts.
13.5 Exhibit A. Until the Tape-Out of a MIPS Chip, all documents and
information set forth on Exhibit A, including all updates, modifications and
derivatives thereof, shall be deemed Confidential Information irrespective of
marking. Thereafter, except for bonding diagrams, electrical specifications,
instruction formats, timing diagrams, and any other specifications commonly
provided by semiconductor chip manufacturers to their customers, all such
Exhibit A documents and information, including all updates, modifications, and
derivatives thereof, shall be deemed to be Confidential Information irrespective
of marking. MTI shall not unreasonably refuse to permit IDT to disclose
Confidential Information relating to a design licensed by IDT from MTI hereunder
to prospective customers subject to appropriate confidentiality agreements prior
to tapeout for beta site purposes.
13.6 Survival. The provisions of this Section shall survive the expiration,
termination, or cancellation of this Agreement.
14. PROPRIETARY RIGHTS INDEMNIFICATION
14.1 Indemnification by MTI. MTI shall indemnify and hold IDT harmless
against any claim based on infringement by the design furnished by MTI of a U.S.
trade secret, patent, mask
15
work right, copyright, trademark or other proprietary right of a third party,
shall defend at its expense all suits against IDT based upon such a claim and
shall pay costs and damages awarded against IDT in such suit, provided that IDT
shall notify MTI promptly in writing of such suit and at MTI's request and at
its expense is given control of such suit and all reasonable requested
information and assistance for defense of same. IDT shall have the right to be
represented by its own attorney at its expense. This indemnity does not extend
to any suit based upon an infringement or alleged infringement of any patent,
copyright, mask work right, trademark, trade secret, or other proprietary rights
by the manufacturing process or modification of the MIPS Chips made by IDT, the
use of the MIPS Chips in combination with other equipment or software not
provided by MTI or a modification or enhancement to the MIPS Chips not made by
MTI, if such claim would not have occurred but for such combination,
modification or enhancement, any marking, or branding applied to the MIPS Chips
or modification or design of the MIPS Chips by or at the request of IDT, or any
infringement based upon AT&T, Berkeley, or Sun Microsystems software except as
to any modifications or enhancements to such software made by MTI and delivered
to IDT. The foregoing states the entire liability of MTI for trade secret,
patent, mask work right, copyright, trademark or other proprietary rights
infringement.
14.2 Limitation of Liability. THE FOREGOING STATES THE ENTIRE LIABILITY OF
THE PARTIES, AND THE EXCLUSIVE REMEDY FOR THE PARTIES, FOR ANY INFRINGEMENT OF
ANY PATENT, COPYRIGHT, TRADEMARK, TRADE SECRET, MASK WORK RIGHT OR OTHER
PROPRIETARY RIGHT OF A THIRD PARTY BY MIPS CHIPS, MIPS COMMERCIAL DOCUMENTATION,
AND MIPS SOFTWARE, OR ANY PART THEREOF.
14.3 Remedy for Infringement.
14.3.1 If the design or manufacture of any MIPS Chip, or any portion
thereof, is finally adjudged to infringe a United States patent, copyright, or
mask work right, MTI may:
(a) procure the right to continue using the MIPS Chip or process;
(b) replace or modify the MIPS Chip or process so that it becomes
noninfringing; or
(c) refund to IDT the costs of such infringing MIPS Chip mask set(s)
(if any) at standard manufacturing cost, the value of all inventory of
such infringing MIPS Chip, and all work-in-process relating to such
infringing MIPS Chip as audited by an independent third party.
14.3.2 This indemnity does not extend to any suit based upon (a) an
infringement or alleged infringement of any patent, copyright, mask work right,
trademark, trade secret or other proprietary rights by the modification of the
MIPS Chip by IDT; or (b) the use of the MIPS Chip
16
in combination with other equipment or software not provided by MTI; or (c) a
modification or enhancement not made by MTI if such claim would not have
occurred but for such combination, modification, or enhancement; or (d) any
marking or branding applied to the MIPS Chips or modification or design of the
MIPS Chips by or at the request of IDT; or (e) any infringement based upon AT&T,
Berkeley, or Sun Microsystems software except as to any modifications or
enhancements to such software made by MTI and delivered to IDT. SECTION 14
STATES THE ENTIRE LIABILITY OF MTI FOR TRADE SECRET, PATENT, MASK WORK RIGHT,
COPYRIGHT, TRADEMARK OR OTHER PROPRIETARY RIGHTS INFRINGEMENT.
14.4 Survival. The provisions of this Section 14 shall survive the
termination, cancellation or expiration of this Agreement.
15. TERM, CANCELLATION AND TERMINATION
15.1 Term. The term of this Agreement, unless earlier canceled or terminated
in accordance with the provisions of Sections 15.2 and 15.3 hereinafter, shall
be from the Effective Date through December 31, 2007 (the "Termination Date").
15.2 Termination. MTI may terminate this Agreement effective immediately and
without liability upon written notice to IDT if any one of the following events
occurs:
(a) IDT files a voluntary petition in bankruptcy or otherwise seeks
protection under any law for the protection of debtors;
(b) proceeding is instituted against IDT under any provision of the
Federal Bankruptcy Code which is not dismissed within ninety (90) days;
(c) IDT is adjudged a bankrupt;
(d) a court assumes jurisdiction of the assets of IDT under a federal
reorganization act;
(e) a trustee or receiver is appointed by a court for all or a
substantial portion of the assets of IDT;
(f) IDT becomes insolvent, ceases or suspends business; or
(g) IDT makes an assignment of the majority of its assets for the
benefit of its creditors.
17
15.3 Cancellation for Cause. If either party fail to perform or violates any
material obligation under this Agreement, then, upon thirty (30) days written
notice to the breaching party specifying such default (the "Default Notice"),
the non-breaching party may terminate this Agreement, without liability, unless:
(a) The breach specified in the Default Notice is cured within the
thirty (30) day period; or
(b) The default reasonably requires more than thirty (30) days to
correct (specifically excluding any failure to pay money), and the
defaulting party has begun substantial corrective action to remedy the
default within such thirty (30) days period and diligently pursues such
action, in which event, termination shall not be effective unless
ninety (90) days has expired from the date of the Default Notice
without such corrective action being completed and the default
remedied.
15.4 Fulfillment of Orders Upon Termination. The expiration of this
Agreement shall have no effect on any purchase order placed by MTI prior to the
effective date of such expiration. Any payment obligations incurred prior to
termination, expiration or cancellation shall survive the expiration,
cancellation, or termination of this Agreement.
15.5 Continuation.
15.5.1 Notwithstanding the passage of the Termination Date as set forth
in Section 15.1, or termination/cancellation of this Agreement for any reason,
the rights and licenses granted to IDT pursuant to Section 2 of this Agreement,
except for the right to receive updates on existing MIPS Chip products, MIPS
Commercial Software, and information on future MIPS Chips and Systems, shall
continue (as a result of rights granted in accordance with Section 2) for
successive terms of ten (10) years that will automatically renew, conditioned
upon payment by IDT of royalties pursuant to Section 6 herein.
15.5.2 However, except for IDT's continuing right to distribute ***
MIPS Binary Software conditioned upon payment of royalties (Section 6), if IDT
materially breaches its duties under the terms of the Software License or any
provision herein relating to the MIPS Commercial Software, MTI may cancel the
Software License and all rights granted herein relating to MIPS Commercial
Software. In the event of such cancellation of IDT's rights to MIPS Commercial
Software, IDT shall promptly return to MTI all MIPS Source Code documentation
and information provided by MTI in connection with the MIPS Commercial Software,
and shall promptly pay to MTI any and all amounts due and owing relating to the
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
18
MIPS Commercial Software. After cancellation, IDT shall have no right to copy,
market, or distribute MIPS Source Code Software or *** MIPS Binary Software.
16. GENERAL TERMS AND CONDITIONS.
16.1 Notices. All notices and requests required or authorized hereunder,
shall be given in writing either by personal delivery to the party to whom
notice is given, or by certified mail, postage prepaid, return receipt
requested. The date upon which any such notice is so personally delivered, or if
the notice is given by certified mail, the date three (3) days after it is
deposited in the U.S. mails, shall be deemed to be the date of such notice,
irrespective of the date appearing therein.
If to IDT: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, President and CEO
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
with a copy to: ▇▇▇▇ ▇▇▇▇▇▇▇, Esq.
Vice President, General Counsel & Secretary
Integrated Device Technology, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
If to MTI: ▇▇▇▇▇ ▇▇▇▇▇▇▇
MIPS Technologies, Inc.
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
with a copy to: General Counsel
MIPS Technologies, Inc.
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
If to SGI: Legal Services
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
The address of the parties may be changed by notice given in accordance
with this Section.
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
19
16.2 Export. Each party shall comply with all laws and regulations of the
United States Government relating to the export from the United States of
technical information, technical data, or products made using technical
information or technical data or products received from the other party under
this Agreement and any exhibit hereto. The parties agree to cooperate in
obtaining any required licenses. In the event of a breach, the breaching party
shall indemnify and hold the non-breaching party harmless for any breach of this
Section.
16.3 Governing Law and Forum Selection. This Agreement shall be governed by
California law excluding its conflict of laws rules. All disputes arising out of
this Agreement shall be subject to the exclusive jurisdiction and venue of the
California state courts of Santa ▇▇▇▇▇ County (or, in the case of exclusive
federal jurisdiction, the United States District Court for the Northern District
of California) and the parties consent to the personal and exclusive
jurisdiction and venue of these courts.
16.4 Waiver. The delay or failure of a party to exercise any right, power,
remedy, or privilege hereunder or failure to strictly enforce any breach,
violation, default, provision or condition shall not impair any such right,
power, remedy or privilege nor shall it constitute a waiver thereof or
acquiescence thereto. Any waiver, permit, consent, or approval of any kind
regarding any breach, violation, default, provision or condition of this
Agreement must be in writing and shall be effective only to the extent
specifically set forth in such writing. No partial waiver of any such right,
power, privilege, breach, violation, default, provision, or condition on any one
occasion shall preclude any other or further exercise thereof or constitute a
waiver thereof or acquiescence thereto on any subsequent occasion unless clear
and express notice thereof in writing is provided.
16.5 Assignment. Neither party shall assign this Agreement or any material
responsibilities, rights, or any orders issued hereunder or delegate any duties
created hereunder to any person or entity other than a U.S. entity controlling,
controlled or under common control with such party, or a U.S. successor in
interest to its MIPS risc microprocessor business by way of merger,
consolidation, transfer of all or substantially all of such assets, without the
prior written consent of the other party. Any attempt of assignment or
delegation without the required consent shall be void. This Section is not
intended to prohibit either party from reasonably subcontracting work in the
course of performing this Agreement.
16.6 Captions. All Section captions and headings are for reference only and
shall not be considered in interpreting or construing this Agreement.
16.7 Severability. If any provision of this Agreement is declared invalid,
illegal, or unenforceable by any tribunal, then such provision shall be deemed
automatically adjusted to conform to the requirements for validity as declared
at such time and, as so adjusted, shall be
20
deemed a provision of this Agreement as though originally included herein. In
the event that the provision deemed invalid, illegal or unenforceable is of such
a nature that it cannot be so adjusted, the provision shall be deemed deleted
from this Agreement as though the provision had never been included herein. If
any provision or portion of this Agreement is held to be unenforceable or
invalid, the parties agree to negotiate, in good faith, a substitute valid
provision which most nearly effects the parties' intent in entering into this
Agreement. In either case, the remaining provisions of this Agreement shall
remain in full force and effect.
WITHOUT LIMITING THE FOREGOING, IT IS EXPRESSLY UNDERSTOOD AND AGREED
THAT EACH AND EVERY PROVISION OF THIS AGREEMENT WHICH PROVIDES FOR A LIMITATION
OF LIABILITY, DISCLAIMER OF WARRANTY OR EXCLUSION OF DAMAGES IS INTENDED BY THE
PARTIES TO BE SEVERABLE AND INDEPENDENT OF ANY OTHER SUCH PROVISION. FURTHER, IN
THE EVENT THAT ANY REMEDY HEREUNDER IS DETERMINED TO HAVE FAILED OF ITS
ESSENTIAL PURPOSE, ALL LIMITATIONS OF LIABILITY AND EXCLUSIONS OF DAMAGES SHALL
REMAIN IN EFFECT.
16.8 Binding Effect. This Agreement shall be binding upon and inure to the
benefit of the successors, administrators, executors, heirs and assigns of each
party hereto.
16.9 Independent Contractors. The parties are each independent contractors
and neither party shall be, nor represent itself to be, the franchiser, joint
venturer, franchisee, partner, broker, employee, servant, agent, or legal
representative of the other party for any purpose whatsoever. Neither party is
granted any right or authority to assume or create any obligation or
responsibility, express or implied, on behalf of or in the name of the other
party, or bind the other party in any matter or thing whatsoever, including but
not limited to, the right or authority to obligate the other party to accept or
deliver any order, or to sell or refuse to sell to any potential customer.
16.10 Limitation of Damages. IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR
COSTS OF PROCUREMENT OF SUBSTITUTE GOODS AND SERVICES, LOSS OR USE, DATA OR
PROFITS, INTERRUPTION OF BUSINESS OR ANY SPECIAL, INCIDENTAL, INDIRECT,
EXEMPLARY, OR CONSEQUENTIAL DAMAGES, ARISING OUT OF OR IN CONNECTION WITH THIS
AGREEMENT, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY, WHETHER IN AN ACTION
FOR CONTRACT, STRICT LIABILITY OR TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, AND
WHETHER OR NOT THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE. THE
ESSENTIAL PURPOSE OF THIS PROVISION IS TO LIMIT THE POTENTIAL LIABILITY OF THE
PARTIES.
21
16.11 Precedence. In the event of any inconsistency or conflict between the
terms and conditions of this Agreement on the one hand and any term or condition
of an Exhibit to this Agreement on the other hand, the terms and conditions of
this Agreement shall in all instances govern and control.
16.12 Entire Agreement. This Agreement and the other documents, exhibits,
schedules, instruments, certificates, and writings attached and/or delivered
pursuant hereto contain and constitute the sole, complete and entire agreement
and understanding of the parties concerning the matters contained herein and may
not be altered, modified or changed in any manner except by writing duly
executed by the parties. No statements, promises or representations have been
made by any party to another, or are relied upon, and no consideration has been
or is offered, promised, expected or held out, other than as stated in this
Agreement. No party is relying on any representations other than those expressly
set forth herein. No conditions precedent to the effectiveness of this Agreement
exist, other than as may be expressly provided herein. There are no oral or
written collateral agreements. All prior discussions and negotiations have been,
and are, merged and integrated into, and superseded by, this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
SILICON GRAPHICS, INC. INTEGRATED DEVICE TECHNOLOGY, INC.
By:________________________ By:________________________
Title: ____________________ Title: ____________________
Date: _____________________ Date: _____________________
MIPS TECHNOLOGIES, INC.
By:________________________
Title: ____________________
Date: _____________________
22
EXHIBIT A
DELIVERABLES
***
*** Confidential treatment has been requested for certain portions of this
document. Such omitted portions have been filed separately with the
Securities and Exchange Commission.
EXHIBIT B
TRADEMARKS
TO BE APPENDED
EXHIBIT C
MIPS COMMERCIAL SOFTWARE LICENSE AGREEMENT
TO BE APPENDED
EXHIBIT D
TO BE APPENDED