TECHNOLOGY TRANSFER AGREEMENT FOR 68-50NM PROCESS NODES
EXHIBIT
10.78
[***]
DENOTES CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT
CONFIDENTIAL
FOR
68-50NM PROCESS NODES
This
TECHNOLOGY TRANSFER AGREEMENT
FOR 68-50NM PROCESS NODES (this “Agreement”), is executed on
this 11th day of
October, 2008 (“Execution
Date”), by and between Micron Technology, Inc., a Delaware corporation
(“Micron”) and Inotera
Memories, Inc., a company-limited-by-shares incorporated under the laws of the
Republic of China (“Joint
Venture Company”). (Micron and the Joint Venture Company are
referred to in this Agreement individually as a “Party” and collectively as the
“Parties”). This
Agreement shall take effect as of the date of the 2nd
Closing. In the event the 2nd Closing
does not occur, this Agreement shall not take effect and neither Party shall
have any rights or obligations hereunder.
RECITALS
A. Micron
has developed technology for 68nm and 50nm Process Nodes for the manufacture of
Stack DRAM Products.
B. The
Joint Venture Company desires to have such technology transferred to the Joint
Venture Company for its use in the manufacture of Stack DRAM Products, and
Micron intends to so transfer such technology to the Joint Venture
Company.
AGREEMENT
NOW,
THEREFORE, in consideration of the mutual promises and agreements herein set
forth, the Parties, intending to be legally bound, hereby agree as
follows.
ARTICLE
1
DEFINITIONS; CERTAIN
INTERPRETATIVE MATTERS
1.1 Definitions.
“2nd Closing” shall have the meaning
set forth in the Share Purchase Agreement.
“Agreement” shall have the
meaning set forth in the preamble to this Agreement.
“Applicable Law” means any
applicable laws, statutes, rules, regulations, ordinances, orders, codes,
arbitration awards, judgments, decrees or other legal requirements of any
Governmental Entity.
“Effective Date” shall mean, if
the 2nd Closing
occurs, the date that the 2nd Closing
occurs.
“Force Majeure Event” means the
occurrence of an event or circumstance beyond the reasonable control of a Party
and includes, without limitation, (a) explosions, fires, flood, earthquakes,
catastrophic weather conditions, or other elements of nature or acts of God; (b)
acts of war (declared or undeclared), acts of terrorism, insurrection, riots,
civil disorders, rebellion or sabotage; (c) acts of federal, state, local or
foreign Governmental Entity; (d) labor disputes, lockouts, strikes or other
industrial action, whether direct or indirect and whether lawful or unlawful;
(e) failures or fluctuations in electrical power or telecommunications service
or equipment; and (f) delays caused by the other Party or Third-Party
nonperformance (except for delays caused by a Party’s contractors,
subcontractors or agents).
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“GAAP” means, with respect to
Micron, United States generally accepted accounting principles, and with respect
to the Joint Venture Company, Republic of China generally accepted accounting
principles, in each case, as consistently applied by the Party for all periods
at issue.
“Governmental Entity” means any
governmental authority or entity, including any agency, board, bureau,
commission, court, municipality, department, subdivision or instrumentality
thereof, or any arbitrator or arbitration panel.
“IP Rights” means copyrights,
rights in trade secrets, Mask Work Rights and pending applications or
registrations of any of the foregoing anywhere in the world. The term
“IP Rights” does not include any Patent Rights or rights in
trademarks.
“Joint Venture Company” shall
have the meaning set forth in the preamble to this Agreement.
“Mask Work Rights" means rights
under the United States Semiconductor Chip Protection Act of 1984, as amended
from time to time, or under any similar equivalent laws in countries other than
the United States.
“Micron” shall have the meaning
set forth in the preamble to this Agreement.
“Party” and “Parties” shall have the
meaning set forth in the preamble to this Agreement
“Patent Rights” means all
rights associated with any and all issued and unexpired patents and pending
patent applications in any country in the world, together with any and all
divisionals, continuations, continuations-in-part, reissues, reexaminations,
extensions, foreign counterparts or equivalents of any of the foregoing,
wherever and whenever existing.
“Person” means any natural
person, corporation, joint stock company, limited liability company,
association, partnership, firm, joint venture, organization, business, trust,
estate or any other entity or organization of any kind or
character.
“Process Node” means
[***].
“Recoverable Taxes” shall
have the meaning set forth in Section
3.5(a).
“Share
Purchase Agreement” means that certain Share Purchase Agreement by and
between Micron and Qimonda AG entered into as of the Execution Date, as the same
may be amended from time to time.
“Software” means computer
program instruction code, whether in human-readable source code form,
machine-executable binary form, firmware, scripts, interpretive text, or
otherwise. The term “Software” does not include databases and other
information stored in electronic form, other than executable instruction codes
or source code that is intended to be compiled into executable instruction
codes.
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“Stack DRAM” means dynamic
random access memory cell that functions by using a capacitor arrayed
predominantly above the semiconductor substrate.
“Stack DRAM Design” means, with respect to
a Stack DRAM Product, the corresponding design components, materials and
information listed on Schedule 2.
“Stack DRAM Product” means any
memory comprising Stack DRAM, whether in die or wafer form.
“Tax” or “Taxes” means any federal,
state, local or foreign net income, gross income, gross receipts, sales, use ad
valorem, transfer, franchise, profits, service, service use, withholding,
payroll, employment, excise, severance, stamp, occupation, premium, property,
customs, duties or other type of fiscal levy and all other taxes, governmental
fees, registration fees, assessments or charges of any kind whatsoever, together
with any interest and penalties, additions to tax or additional
amounts imposed or assessed with respect thereto.
“Taxing Authority” means any
Governmental Entity exercising any authority to impose, regulate or administer
the imposition of Taxes.
“Third Party” means any Person
other than Micron or the Joint Venture Company.
“Transferred Technology” means
[***].
1.2 Certain Interpretive
Matters.
(a) Unless
the context requires otherwise, (1) all references to Sections, Articles,
Exhibits, Appendices or Schedules are to Sections, Articles, Exhibits,
Appendices or Schedules of or to this Agreement, (2) each accounting term
not otherwise defined in this Agreement has the meaning commonly applied to it
in accordance with GAAP, (3) words in the singular include the plural and
vice versa, (4) the term “including” means “including
without limitation,” and (5) the terms “herein,” “hereof,” “hereunder” and words of
similar import shall mean references to this Agreement as a whole and not to any
individual section or portion hereof. Unless otherwise denoted, all
references to $ or dollar amounts will be to lawful currency of the United
States of America. All references to “day” or “days” will mean calendar
days.
(b) No
provision of this Agreement will be interpreted in favor of, or against, any of
the Parties by reason of the extent to which (1) any such Party or its counsel
participated in the drafting thereof or (2) any such provision is inconsistent
with any prior draft of this Agreement or such provision.
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ARTICLE
2
TRANSFER OF TECHNOLOGY TO
JOINT VENTURE COMPANY
2.1 Delivery of Transferred
Technology to Joint Venture Company. On a delivery schedule
mutually agreed between the Parties, but no earlier than the Effective Date,
Micron shall provide to the Joint Venture Company the Transferred [***], which
process is outlined on Schedule
3. Except as provided in Section 2.2, the
foregoing obligation does not require Micron to create, make, adapt, develop,
modify and/or translate any such information or materials. The Joint
Venture Company may at any time request Micron in writing to supplement its
prior disclosures of such Transferred Technology with any items the Joint
Venture Company believes to be missing or incomplete from such disclosures;
however, with respect to the subject matter of any such requests made [***], the
Joint Venture Company shall be precluded from asserting that Micron is in breach
of its obligations under this Section.
2.2 Preproduction
Wafers. On a delivery schedule mutually agreed between the
Parties, Micron shall, [***], provide to the Joint Venture Company
[***]. On a delivery schedule mutually agreed between the Parties,
Micron shall, at Micron’s cost, provide to the Joint Venture Company
[***].
2.3 Engineering
Services. As reasonably requested by the Joint Venture Company
from time to time and to the extent fulfilling such request would not cause
disruption of their respective operations, Micron will provide to the Joint
Venture Company engineering support for its implementation of the Transferred
Technology transferred by Micron to the Joint Venture Company for use in the
Joint Venture Company’s facilities for the manufacture of Stack DRAM
wafers.
ARTICLE
3
PAYMENTS
3.1 Transfer of Technology to
Joint Venture Company. For the transfer of the Transferred
Technology from Micron to the Joint Venture Company for the 68nm Process Node
and the 50nm Process Node, the Joint Venture Company shall pay to Micron the sum
of $50,000,000.00 (fifty million dollars) within ten (10) days of the Effective
Date, unless, prior to such time, MeiYa Technology Corporation (“MeiYa”) shall have paid to
Micron the technology transfer fees contemplated to be paid by it to Micron with
respect to the transfer by Micron to MeiYa of the 68 nm and 50 nm process
nodes. The Joint Venture Company shall have no further or other
obligation to make additional technology transfer payments with respect to the
transfer of such process nodes.
3.2 Engineering Service
Fees. Micron shall charge Joint Venture Company for any
engineering services provided by Micron to Joint Venture Company under Section 2.3 for all
out-of-pocket expenses reasonably incurred in connection therewith. [***]. If
any employee(s) of Micron are required to provide such services at a location
other than his/her/their normal working location, then [***]. Micron
will invoice Joint Venture Company for all such costs and expenses monthly as
incurred. Joint Venture Company will pay Micron the amount due within
thirty (30) days of receipt of invoice.
3.3 Invoices;
Payments.
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(a) All
invoices under this Agreement may be sent by any method described in Section 8.1 or
electronically with hardcopy confirmation sent promptly thereafter by any method
described in Section
8.1. Such invoices should be sent to the following contacts or
such other contact as may be specified hereafter pursuant to a notice sent in
accordance with Section
8.1:
Invoices to Joint Venture
Company:
To be
provided by notice.
(b) All
amounts owed by a Party under this Agreement are stated, calculated and shall be
paid in United States Dollars ($ U.S.).
(c) Payment
is due on all amounts properly invoiced within thirty (30) days of receipt of
invoice. All payments made under this Agreement shall be made by
check sent to the following person or by such other manner designated by such
person:
Payments to Micron:
[***]
▇▇▇▇ ▇.
▇▇▇▇▇▇▇ ▇▇▇
P.O. Box
6, MS ▇-▇▇▇
▇▇▇▇▇,
▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇-▇▇▇▇
Fax: [***]
Email: [***]
3.4 Interest. Any
amounts payable to a Party hereunder and not paid within the time period
provided shall accrue interest, from the time such payment was due until the
time payment is actually received, at the rate of [***] or the highest rate
permitted by Applicable Law, whichever is lower.
3.5 Taxes.
(a) All
sales, use and other transfer Taxes imposed directly on or solely as a result of
the services, rights licensed or technology transfers or the payments therefor
provided herein shall be stated separately on the service provider’s, licensor’s
or technology transferor’s invoice, collected from the service recipient,
licensee or technology transferee and shall be remitted by service provider,
licensor or technology transferor to the appropriate Taxing Authority (“Recoverable Taxes”), unless
the service recipient, licensee or technology transferee provides valid proof of
tax exemption prior to the Effective Date or otherwise as permitted by law prior
to the time the service provider, licensor or technology transferor is required
to pay such taxes to the appropriate Taxing Authority. When property
is delivered, rights granted and/or services are provided or the benefit of
services occurs within jurisdictions in which collection and remittance of Taxes
by the service recipient, licensee or
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technology
transferee is required by law, the service recipient, licensee or technology
transferee shall have sole responsibility for payment of said Taxes to the
appropriate Taxing Authority. In the event any Taxes are Recoverable
Taxes and the service provider, licensor or technology transferor does not
collect such Taxes from the service recipient, licensee or technology transferee
or pay such Taxes to the appropriate Governmental Entity on a timely basis, and
is subsequently audited by any Taxing Authority, liability of the service
recipient, licensee or technology transferee will be limited to the Tax
assessment for such Recoverable Taxes, with no reimbursement for penalty or
interest charges or other amounts incurred in connection
therewith. Except as provided in Section 3.5(b), Taxes
other than Recoverable Taxes shall not be reimbursed by the service recipient,
licensee or technology transferee, and each Party is responsible for its own
respective income Taxes (including franchise and other Taxes based on net income
or a variation thereof), Taxes based upon gross revenues or receipts, and Taxes
with respect to general overhead, including but not limited to business and
occupation Taxes, and such Taxes shall not be Recoverable Taxes.
(b) In the
event that the service recipient, licensee or technology transferee is
prohibited by Applicable Law from making payments to the service provider,
licensor or technology transferor unless the service recipient, licensee or
technology transferee deducts or withholds Taxes therefrom and remits such Taxes
to the local Taxing Authority, [***].
3.6 Payment
Delay. Notwithstanding anything to the contrary in this
Agreement, if requested by Micron by notice in accordance with Section 8.1, Joint
Venture Company will [***] until notified by Micron in accordance with Section
8.1.
ARTICLE
4
INTELLECTUAL
PROPERTY
4.1 [***] IP or Patent
Rights. Nothing in this Agreement [***]. The transfers of
technology by Micron to the Joint Venture Company hereunder
[***]. The Joint Venture Company shall [***].
ARTICLE
5
WARRANTIES;
DISCLAIMERS
5.1 No Implied
Obligation. Nothing contained in this Agreement shall be
construed as:
(a) a
warranty or representation that any manufacture, sale, lease, use or other
disposition of any products based upon Transferred Technology or other
technology transferred hereunder will be free from infringement,
misappropriation or other violation of any Patent Rights, IP Rights or other
intellectual property rights of any Person;
(b) an
agreement to bring or prosecute proceedings against Third Parties for
infringement, misappropriation or other violation of rights or conferring any
right to bring or prosecute proceedings against Third Parties for infringement,
misappropriation or other violation of rights; or
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(c) conferring
any right to use in advertising, publicity, or otherwise, any trademark, trade
name or names, or any contraction, abbreviation or simulation thereof, of either
Party.
5.2 DISCLAIMER. THE
TRANSFERRED TECHNOLOGY OR OTHER TECHNOLOGY OR MATERIALS TRANSFERRED OR DEVELOPED
UNDER THIS AGREEMENT, OR (B) MANUFACTURE OR HAVE MANUFACTURED ANY PRODUCTS BASED
THEREON. MICRON MAKES NO WARRANTY, EXPRESS, IMPLIED, STATUTORY OR
OTHERWISE, THAT THE USE, PRACTICE OR COMMERCIAL EXPLOITATION [***].
ARTICLE
6
LIMITATION OF
LIABILITY
6.1 LIMITATION OF
LIABILITY. [***].
ARTICLE
7
TERM AND
TERMINATION
7.1 Term. If
the 2nd Closing
occurs, the term of this Agreement shall commence on the Effective Date and
continue in effect until terminated in accordance with this Agreement or any
other agreement to which the Parties are parties. In the event the
2nd
Closing does not occur, this Agreement shall not take effect and neither Party
shall have any rights or obligations hereunder.
7.2 Termination of this
Agreement.
(a) This
Agreement shall terminate automatically if [***].
(b) Micron
may terminate this Agreement by notice to the Joint Venture Company if the Joint
Venture Company commits a material breach of this Agreement and such breach
remains uncured for [***] of the breach from Micron.
(c) The Joint
Venture Company may not terminate this Agreement for any reason, including
breach by Micron.
7.3 Effects of
Termination.
(a) Termination
of this Agreement shall not affect any of the Parties’ respective rights accrued
or obligations owed before termination. In addition, the following
shall survive termination of this Agreement for any reason: Articles 1, 3, 4, 5, 6 and 8 and Section
7.3.
(b) Upon
termination of this Agreement, the Joint Venture Company shall:
[***]
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ARTICLE
8
MISCELLANEOUS
8.1 Notices. All
notices and other communications hereunder shall be in writing and shall be
deemed given upon (a) transmitter’s confirmation of a receipt of a
facsimile transmission, (b) confirmed delivery by a standard overnight carrier
or when delivered by hand, or (c) delivery in person, addressed at the following
addresses (or at such other address for a party as shall be specified by like
notice):
If to Joint Venture
Company:
Inotera Memories, Inc.
▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇,
▇▇▇-▇▇ Technology Park Kueishan,
Taoyuan 333
Taiwan, ROC
Attention: Legal
Department
Fax: ▇▇▇▇ ▇ ▇▇▇ ▇▇▇▇ ▇▇▇
▇▇▇▇
If to
Micron: Micron
▇▇▇▇ ▇. ▇▇▇▇▇▇▇ ▇▇▇
Mail Stop ▇-▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: General
Counsel
Fax: ▇▇▇.▇▇▇.▇▇▇▇
8.2 Waiver. The
failure at any time of a Party to require performance by the other Party of any
responsibility or obligation required by this Agreement shall in no way affect a
Party’s right to require such performance at any time thereafter, nor shall the
waiver by a Party of a breach of any provision of this Agreement by the other
Party constitute a waiver of any other breach of the same or any other provision
nor constitute a waiver of the responsibility or obligation itself.
8.3 Assignment. [***].
8.4 Third Party
Rights. Nothing in this Agreement, whether express or implied,
is intended or shall be construed to confer, directly or indirectly, upon or
give to any Person, other than the Parties hereto, any legal or equitable right,
remedy or claim under or in respect of this Agreement or any covenant, condition
or other provision contained herein.
8.5 Force
Majeure. The Parties shall be excused from any failure to
perform any obligation hereunder to the extent such failure is caused by a Force
Majeure Event.
8.6 Choice of
Law. This Agreement shall be construed and enforced in
accordance with and governed by the laws of the State of Delaware, USA, without
giving effect to the principles of conflict of laws thereof.
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8.7 Jurisdiction;
Venue. Any suit, action or proceeding seeking to enforce any
provision of, or based on any matter arising out of or in connection with, this
Agreement shall be brought in a state or federal court of competent jurisdiction
located in the State of California, USA, and each of the Parties to this
Agreement hereby consents and submits to the exclusive jurisdiction of such
courts (and of the appropriate appellate courts therefrom) in any such suit,
action or proceeding and irrevocably waives, to the fullest extent permitted by
Applicable Law, any objection which it may now or hereafter have to the laying
of the venue of any such suit, action or proceeding in any such court or that
any such suit, action or proceeding which is brought in any such court has been
brought in an inconvenient forum.
8.8 Headings. The
headings of the Articles and Sections in this Agreement are provided for
convenience of reference only and shall not be deemed to constitute a part
hereof.
8.9 Export
Control. Each Party agrees that it will not
knowingly: (a) export or re-export, directly or indirectly, any
technical data (as defined by the U.S. Export Administration Regulations)
provided by the other Party or (b) disclose such technical data for use in, or
export or re-export directly or indirectly, any direct product of such technical
data, including Software, to any destination to which such export or re-export
is restricted or prohibited by United States or non-United States law,
without obtaining prior authorization from the U.S. Department of Commerce and
other competent Government Entities to the extent required by Applicable
Laws.
8.10 Entire
Agreement. This Agreement, together with its Schedules and the
agreements and instruments expressly provided for herein, including the
applicable terms of any other agreements to which Micron and the Joint Venture
Company are a Party, constitute the entire agreement of the Parties hereto with
respect to the subject matter hereof and supersede all prior agreements and
understandings, oral and written, between the Parties hereto with respect to the
subject matter hereof.
8.11 Severability. Should
any provision of this Agreement be deemed in contradiction with the laws of any
jurisdiction in which it is to be performed or unenforceable for any reason,
such provision shall be deemed null and void, but this Agreement shall remain in
full force in all other respects. Should any provision of this
Agreement be or become ineffective because of changes in Applicable Laws or
interpretations thereof, or should this Agreement fail to include a provision
that is required as a matter of law, the validity of the other provisions of
this Agreement shall not be affected thereby. If such circumstances
arise, the Parties hereto shall negotiate in good faith appropriate
modifications to this Agreement to reflect those changes that are required by
Applicable Law.
8.12 Counterparts. This
Agreement may be executed in several counterparts, each of which shall be deemed
an original, but all of which together shall constitute one and the same
instrument.
<
Signature page follows >
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IN
WITNESS WHEREOF, this Agreement has been executed as of the date first above
written.
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MICRON
TECHNOLOGY, INC
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By:
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/s/ D. ▇▇▇▇ ▇▇▇▇▇▇
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Name:
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D.
▇▇▇▇ ▇▇▇▇▇▇
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Title:
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President
and Chief Operating Officer
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INOTERA
MEMORIES, INC.
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By:
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/s/ ▇▇▇▇▇▇▇ ▇▇▇
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Name:
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▇▇▇▇▇▇▇
▇▇▇
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Title:
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President
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By:
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/s/ ▇▇▇▇▇ ▇▇▇▇▇▇
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Name:
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▇▇▇▇▇
▇▇▇▇▇▇
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Title:
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Executive
Vice President
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THIS IS THE SIGNATURE
PAGE FOR THE TECHNOLOGY TRANSFER AGREEMENT FOR 68-50NM PROCESS NODES ENTERED
INTO BY AND BETWEEN MICRON TECHNOLOGY AND THE JOINT VENTURE
COMPANY
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