Exhibit 10.14
CONFIDENTIAL
DIGITAL VISUAL INTERFACE SPECIFICATION REVISION 1.0 PROMOTER'S AGREEMENT
This Agreement is effective as of January 8, 1999 by and between Intel
Corporation ("Intel"), Silicon Image, Inc. ("SiI"), Compaq Computer Corporation
("Compaq"), Fujitsu Limited ("Fujitsu"), Hewlett-Packard Company ("HP"),
International Business Machines Corporation ("IBM"), and NEC Corporation
("NEC") and the Affiliates of these Corporations, collectively referred to as
the "Promoters".
BACKGROUND
A. The Promoters intend to define, establish and support a digital display
interface specification for integrating digital display services in a
computer system environment. This specification is referred to as the
Digital Visual Interface Specification Revision 1.0.
B. The Promoters wish to encourage broad and open industry adoption of the
Digital Visual Interface Specification Revision 1.0 and wish to
facilitate the provision of necessary licenses to do so.
C. The Promoters also desire to provide for the possibility of issuing
revisions and updates to the Digital Visual Interface Specification
Revision 1.0.
AGREEMENT
1. DEFINITIONS
1.1 "Adopted Specification" shall have the meaning set forth in
Section 4.3.
1.2 "Adopter" means any entity that during the Adoption Period (1) has
executed an identical copy of Attachment A ("Adopter's
Agreement"), (2) had the same Adopter's Agreement also executed by
a Promoter, and then (3) had the fully executed Adopter's
Agreement received by the Secretary as provided in Section 2.2
below, and also means the entity's Affiliates.
1.3 "Adoption Period" for any given Adopter means any time prior to
the later of (i) the date one (1) year after the public release
date of the Licensed Specification or (ii) the date one (1) year
after such Adopter first sells a product that includes a Compliant
Portion. The Adoption Period can be changed by agreement of a
simple majority (>50%) of the Promoters.
1.4 "Affiliate" is an entity that directly or indirectly controls, is
controlled by, or is under common control with another entity, so
long as such control exists. "Control" means beneficial ownership
of more than fifty percent of the voting stock or equity in an
entity.
1.5 "Compliant Portion" means portions of products (hardware, software
or combinations thereof) that implement and are Fully Compliant
with the Digital
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Display Interfaces to provide an interface between a computer and
a digital display.
1.6 "Digital Display Interfaces" means the electrical interfaces,
mechanical interfaces, signals, signaling and coding protocols,
and bus protocols disclosed in, and required by, the Licensed
Specification, including described options for such interfaces in
the Licensed Specification.
1.7 "Fellow Adopters" are the Promoters and all Adopters.
1.8 "Participant" means an entity that has executed a copy of the
Participant Agreement in the form attached hereto as Attachment B
("Participant's Agreement"), delivered it to any Promoter, had the
Promoter execute it and then had the fully executed agreement
received by the Secretary. No changes to the Participant's
Agreement shall be made without the unanimous approval of the
Promoters, except for the change specified in paragraph 2.3.1
below. The Secretary shall keep a master Participants list that
shall be made available to the other Promoters at any time upon
request.
1.9 "Necessary Claims" shall mean those claims of all patents, other
than design patents and design registrations, throughout the world
entitled to an effective filing date prior to January 1, 2003,
which a Promoter or Adopter, as applicable, or its Affiliates has
the right, at any time during the term of this Agreement, to grant
licenses of the scope granted herein without such grant or the
exercise of rights thereunder resulting in payment of royalties or
other consideration to third parties (except for payments to
Affiliates or to employees within the scope of their employment)
and (i) which are necessarily infringed in order to implement and
comply with the Digital Display Interfaces, where such
infringement could not have been avoided by another commercially
possible noninfringing implementation of such Digital Display
Interfaces and licensee shall have the burden of proof to
establish that a claim falls within the scope this clause (i), or
(ii) for which infringement is based on an implementation of any
example included in the body of the Licensed Specification.
Necessary Claims shall not include, and no license shall apply to,
(a) implementation examples included solely in any appendix,
exhibit or other attachment to the Licensed Specification,
(b) claims relating to semiconductor manufacturing technology,
(c) claims not required to be infringed in implementing and
complying with the Digital Display Interfaces even if in the same
patent as Necessary Claims, or (d) claims relating to underlying
operating system functionality not directly related to interfacing
between a computer and a digital display.
1.10 "Secretary" shall have the meaning set forth in Section 2.3.1.
1.11 "Licensed Specification" means the document entitled DIGITAL
VISUAL INTERFACE SPECIFICATION REVISION 1.0 as finally adopted by
the Promoters pursuant to Section 4.3 below and authored and
published by the Promoters.
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1.12 "Specification" means the Licensed Specification; any Minor
Updates as finally adopted pursuant to Section 4.4; and non-final,
unadopted versions until a first final version is adopted.
1.13 "Minor Update" means an update or revision to the Licensed
Specification (e.g., Revisions 1.1, 1.2 ... 1.9) which corrects,
clarifies, or enhances the Licensed Specification without adding
any significant new features or functionality to the Digital
Display Interfaces.
1.14 "Major Revision" means an update or revision to the Licensed
Specification (e.g., Revisions 2.0, 3.0 ...) which adds
significant new features or functionality to, and may also
correct and clarify, the Digital Display Interfaces and is
backward compatible with the Digital Display Interfaces.
1.15 "Fully Compliant" means an implementation of all portions of the
Digital Display Interfaces required for a specific type of product
or component thereof.
2. LICENSES AND COVENANTS
2.1 GRANTS OF LICENSES TO PROMOTERS AND ADOPTERS. Upon agreement by
the Promoters as to the final version of the text of the Licensed
Specification as set out in Section 4.3, each Promoter (on behalf
of itself and its Affiliates) hereby grants to each of the other
Promoters and to all Adopters a nonexclusive, nontransferable,
royalty-free, nonsublicenseable, worldwide, perpetual,
irrevocable, reciprocal license under its Necessary Claims solely
to make, have made, use, import, and directly and indirectly,
offer to sell, lease, sell, promote and otherwise distribute
Compliant Portions; provided that such license shall not extend to
any part or function of a product in which a Compliant Portion is
incorporated that is not itself part of the Compliant Portion.
2.2 ADOPTERS AGREEMENTS. During the Adoption Period, any Promoter may
provide the Adopter's Agreement (Attachment A hereto) to any third
party who wishes to be an Adopter. During the Adoption Period,
upon the execution of the Adopter's Agreement by such Promoter and
such third party, and delivery to and receipt by the Secretary (as
defined in Section 2.3 below) of a properly fully executed copy of
such Agreement, such Agreement shall be effective. No changes to
the Adopter's Agreement shall be made without the unanimous
approval of the Promoters, except for the change specified in
paragraph 2.3.1 below. The Secretary shall keep a master Adopters
list that shall be made available to the other Promoters at any
time upon request. The master Adopter's Agreement shall be
maintained by the Secretary and provided on a web site sponsored
by the Promoters.
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2.3 ADMINISTRATION OF THE SPECIFICATION.
2.3.1 A Promoter shall be appointed as the secretary for the
Specification (the "Secretary"). The Secretary shall be
responsible for keeping a list of all Adopters and
Participants and keeping copies of all Adopter's Agreements
and Participant's Agreements. The Promoters agree that
Intel shall act as the initial Secretary for the Digital
Visual Interface Specification. Should the current
Secretary desire to cease acting as the Secretary, or
should it withdraw as a Promoter from the Specification or
any proposed update thereto, the Promoters shall appoint
another Promoter as the new Secretary, and (i) the outgoing
Secretary shall provide the new Secretary with its files of
Adopters, Participants and their agreements with the
Promoters, and (ii) the Adopter's Agreement and
Participant's Agreements shall be amended without unanimous
consent so that newly executed Agreements shall become
effective upon receipt of the new Secretary.
2.3.2 The Promoters shall establish a Digital Visual Interface
Specification "Implementer's Forum." The Secretary shall
serve as director of the Implementer's Forum and be
responsible for maintaining a dedicated website and
collecting yearly dues of $2500 from each member of the
Implementer's Forum. Such dues shall be maintained in a
separate account by the Secretary and used to fund
activities and events (e.g. Plugfests or trade show events)
sponsored by the Implementer's Forum in promotion of the
Specification.
2.3.3 Each of the Promoters shall promptly notify each other of
any violation, that may come to such Promoter's attention,
of any Adopter's Agreement by an Adopter or Participant's
Agreement by a Participant. Each Promoter shall have the
right to enforce compliance with the terms of such
Agreements by Adopters and Participants upon notice to the
other Promoters; provided that such Promoters' rights shall
not include any right to enforce against any Adopter a
breach of contract claim for exceeding the scope of the
patent licenses granted in the Adopter's Agreement. Any
promoter may, at its option, bring suit against such
Adopter or Participant to enforce such Agreement. The
other Promoters may, at their discretion, provide
reasonable assistance in the prosecution of such suit, at
the expense of the prosecuting party (except for the value
of time of the assisting party's employees); provided,
however, that no Promoter shall be required to be named as
a party to such suit. In the event a Promoter does not
wish to participate in the enforcement action and is
nonetheless involuntarily joined as a necessary party or
the like, the Promoter(s) initiating the enforcement action
agree(s) to pay the reasonable expenses incurred by the
joined Promoter in such enforcement action (except for the
value of time of the joined party's employees). The
prosecuting party will retain any recovery in such suit.
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2.3.4 Provided that SiI substantially contributes to the
development of a Specification, such Specification, and
each draft version, Minor Update and Major Revision
thereof, shall contain a prominent statement, reasonably
acceptable to SiI, recognizing SiI's contribution to such
Specification. The statement will not include any SiI
trademark or logo. If at the time of the public release of
the Licensed Specification, the Promoters issue a joint
press release such press release shall include a similar
statement. All web sites maintained jointly or
individually by the Promoters and which permit downloading
of the Specification or which contain a web page whose
primary intent is to promote such Specification shall
contain a similar statement.
2.4 COPYRIGHT NOTICES. Any publication of the Specification shall
contain an appropriate copyright notice in the names of all the
Promoters. Public references to the Specification shall attribute
authorship to the Promoters to the extent practical.
2.5 REFERENCES TO SPECIFICATION. The Promoters (not including any
Promoter that withdraws prior to unanimous adoption thereof)
hereby agree not to assert against any Promoter or any Adopter any
trademark or trade name rights they may have now or hereafter in
any name or logo unanimously adopted by the Promoters for use in
connection with Adopted Specifications and products to the extent
such products implement a Compliant Portion. If the Promoters
agree to claim or assert trademark or trade name rights in such
name or logo, they agree to use commercially reasonable efforts,
that represent the best interests of all parties, to agree on the
nature of ownership, licensing, guidelines for usage, and
registration of such name or logo. Prior to adoption of a new
name or logo, the Promoters shall transmit a proposed name or logo
to the Participants and Adopters for comments regarding any
claimed rights in such new name or logo. The Promoters will not
use any name or logo unanimously adopted by the Promoters except
to refer to the Specification and to products to the extent such
products implement a Compliant Portion.
3. COPYRIGHT OWNERSHIP/MODIFICATIONS TO SPECIFICATION
3.1 TITLE. Effective as of adoption of a Specification under
Section 4.3 or a Minor Update thereto under Section 4.4, each
Promoter shall own, and is hereby conveyed, a non-exclusive,
undivided, and equal ownership in the copyrights in the Adopted
Specification. Each Promoter may exercise any and all rights of
copyright ownership and sublicense such rights in the Adopted
Specification as if such rights were solely owned by such Promoter
and without permission of the other Promoters and without any duty
to account. Any Promoter may propose a copyright enforcement
action against a purported infringer of the Adopted Specification,
and the other Promoters shall have the right to participate at
their own expense and at their own discretion. On request of any
Promoter considering
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suit against a third party, the other Promoters may, at their
discretion, provide reasonable assistance in the
prosecution of such suit, at the expense of the prosecuting
party (except for the value of time of the assisting party's
employees); provided, however, that no Promoter shall be required
to be named as a party to such suit. In the event a Promoter does
not wish to participate in the enforcement action and is
nonetheless involuntarily joined as a necessary party or the like,
the Promoter(s) initiating the enforcement action agree(s) to pay
the reasonable expenses incurred by the joined Promoter in such
enforcement action (except for the value of time of the joined
party's employees). The prosecuting party will retain any
recovery in such suit. If a Promoter wishes to register the
Adopted Specification with the Copyright Office, it may do so in
the name of all the Promoters at its own expense, and the other
Promoters shall cooperate with such Promoter to the extent
reasonably required to file the application for copyright
registration. No further obligation will exist after the
application is filed.
3.2 MODIFICATIONS. Any modifications to or derivative works of the
Specification shall be owned solely by the Promoter(s) creating
them, subject to the underlying copyright in the Specification,
unless and until such modification or derivative work is adopted
by the Promoters. However, except for excerpts or quotations from
a published Specification, no Promoter shall publish any such
unadopted modified work, derivative work, or foreign language
translation thereof without the unanimous consent of the other
Promoters. The parties will cooperate from time to time with
respect to responsibility for translation of the Specifications
into foreign languages, and shall equally share the out-of-pocket
costs therefor.
3.3 LICENSE. Subject to the confidentiality provisions contained in
Section 6, each Promoter hereby grants each of the other Promoters
a license under its copyrights to reproduce, distribute, display
and create derivative works of any unadopted draft Specifications,
solely for the purpose of developing the Adopted Specification(s)
under the terms of this Agreement.
4. SPECIFICATION COMPLETION
4.1 SPECIFICATION RELEASE TO PARTICIPANTS AND ADOPTERS. The Promoters
shall cooperate to finalize the Specification according to the
following procedure:
4.1.1 Any Adopted Specification shall be authorized for release
to third parties (including Adopters and Participants) only
by a simple majority agreement (>50%) of the Promoters.
4.1.2 The Promoters shall use reasonable efforts to expedite
edits/changes suggested to each revision of the
Specification as quickly as possible.
4.2 SPECIFICATION RELEASE TO PARTICIPANTS. Non-final, unadopted
revisions of the Specification may be designated unreleased or
released and shall be maintained in confidence and only disclosed
pursuant to the terms herein. Unreleased revisions
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shall only be shared among the Promoters. Agreement of a simple
majority (>50%) of the Promoters is required to designate an
unreleased revision as a released revision. Once a revision of
the Specification has been authorized for release, a Promoter may
provide a copy of such revision to a Participant and solicit
suggestions for incorporation in the Specification from the
Participant. Non-final, unadopted Specifications shall not be
provided to Adopters.
4.3 PUBLISHED SPECIFICATION. The Specification or any proposed Minor
Update thereof shall be deemed final and is adopted ("Adopted
Specification") when the Promoters agree by a simple majority
(>50%), in writing, that such version of the Specification is
final and adopted. For purposes of voting on the Specification or
for any other voting under this Agreement, Affiliates shall not be
entitled to vote and their approval is not required in connection
with any vote. Such Adopted Specification shall become effective
and be made publicly available after the thirty (30) day period
specified in Section 4.3.1.
4.3.1 Any Promoter that fails to vote or votes against adoption
of an Adopted Specification may choose to withdraw from
this Agreement under Section 7 by sending written notice to
all other Promoters within thirty (30) days after the date
on which the Secretary sends written notice to such
Promoter notifying such Promoter that the Secretary
received the simple majority (>50%) necessary for adoption
of the Adopted Specification. Following such withdrawal,
the Promoter will have only those rights and obligations
hereunder set forth under Section 7.2. A Promoter shall be
considered to have adopted the Adopted Specifications for
purposes of this Agreement, with all rights and obligations
with respect thereto under this Agreement, if such Promoter
(i) voted in favor of the Adopted Specifications or
(ii) failed to vote or voted against such Adopted
Specifications and did not so withdraw within the above
thirty (30) day period. The Secretary shall maintain a
list of the current Promoters on the public web site
maintained by the Promoters.
4.4 UPDATES TO THE SPECIFICATION. Once Promoters have agreed upon an
Adopted Specification under Section 4.3 above, any Minor Update to
the Adopted Specification shall be treated as a proposal to
develop a new Specification, and shall be subject to the same
processes and procedures used for development of the original
specification as outlined above. Each Promoter may, in its sole
discretion, cooperate with development of such new Specification
or withdraw with regard to such new Specification without
withdrawing from an earlier Adopted Specification. Adoption of
such a new Specification shall not terminate any right or
obligation of any Promoter under this Agreement, including the
licenses granted, received or agreed to be made available with
respect to the earlier Adopted Specification.
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5. SUBSEQUENT REVISIONS
5.1 REVISION 1.0 PROMOTER'S AGREEMENT. Each Promoter agrees that the
scope of this Agreement is limited to the Specifications and does
not cover any Major Revision specifications.
5.2 SEPARATE PROMOTER'S AGREEMENTS FOR MAJOR REVISION SPECIFICATIONS.
Should any Promoter(s) herein undertake development of any Major
Revision specification, the Promoters each agree that all
Promoters herein shall be given the opportunity to participate in
such development by entering into a separate corresponding
promoter's agreement for such Major Revision specification. The
Promoters each agree that such promoter's agreement shall be
offered on substantially the same terms and conditions at this
Agreement.
6. CONFIDENTIALITY
6.1 CONFIDENTIAL INFORMATION. Each Promoter will maintain the
non-final, unadopted versions of the Specification and the
confidential contributions each other Promoter makes to the
Specification in confidence with at least the same degree of care
that it uses to protect its own confidential and proprietary
information, but no less than a reasonable degree of care under
the circumstances and will neither disclose nor copy the
non-final, unadopted versions of the Specification except as
necessary for its employees and contractors (under obligation of
confidentiality) with a need to know for the purpose of developing
or updating the Specification or implementing a product according
to the Specification. Any information incorporated in a
particular revision of the Specification, including any exhibits
or attachments thereto, shall be permitted to be released upon
agreement of the Promoters pursuant to Section 4 hereof. Any
copies of non-final, unadopted Specifications or of confidential
contributions which are made will be marked "confidential,"
"proprietary" or with a similar legend. Unless the parties agree
otherwise, this obligation of confidentiality will expire 3 years
from the date of disclosure of such information hereunder. A
party will not, however, be liable for the disclosure of any
information which is:
a) rightfully in the public domain other than by the
recipient's breach of a duty;
b) rightfully received from a third party without any
obligation of confidentiality; or
c) rightfully known to the recipient without any
limitation on use or disclosure prior to its receipt
from the disclosing party; or
d) independently developed by employees of the
recipient without access to the disclosed
information; or
e) rightfully disclosed as required by law; or
f) made public by a simple majority agreement (>50%) of
the Promoters.
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6.2 RESIDUALS. This Agreement and the terms of confidentiality
hereunder shall not be construed to limit any Promoter's right to
independently develop or acquire products or technology, including
similar or competing products or technology, without the use of
another party's confidential information. Any party shall be free
to use for any purpose the residuals resulting from access to or
work with the confidential information defined in Section 6.1,
provided that such party shall maintain the confidentiality of the
confidential information as provided herein. The term "residuals"
means information in non-tangible form, which may be retained by
persons who have had access to such confidential information,
including ideas, concepts, know-how or techniques contained
therein. No party shall have any obligation to limit or restrict
the assignment of such persons or to pay royalties for any work
resulting from the use of residuals. However, the foregoing shall
not be deemed to grant to any party a license under the other
party's copyrights or patents.
7. WITHDRAWAL
7.1 NOTICE OF WITHDRAWAL. A Promoter may, on written notice to the
other Promoters, withdraw from this Agreement.
7.2 EFFECT OF WITHDRAWAL. Upon withdrawal by a Promoter:
7.2.1 All covenants and licenses granted by and to such
withdrawing Promoter with respect to any Adopted
Specification adopted by the withdrawing Promoter as of the
date of such withdrawal shall continue in full force and
shall extend to and from entities who are or later become
Adopters (and their Affiliates as provided in the license),
even after such withdrawal. No covenant or license shall
be deemed granted or received or required to be granted by
such Promoter as to a new Specification or new revisions of
the Specification adopted after the date of such
withdrawal. For the avoidance of doubt, in the event any
Promoter withdraws prior to the publication of the first
Adopted Specification, the covenants to grant licenses are
extinguished and of no effect.
7.2.2 A withdrawing Promoter must identify in its notice of
withdrawal, with reasonable specificity, any technical
contribution it has made with regard to any as yet
unadopted revision or proposed update to the Specification
being considered at the time of withdrawal or to any
Specification adopted within thirty (30) days of such
notice if such withdrawal is being done under
Section 4.3.1. Any technical contribution not noticed will
be licensed by such withdrawing Promoter under Sections 2.1
and 2.2. Additionally, the copyrights in any materials
contributed by such Promoter as of the time of withdrawal
shall still be subject to the provisions of Section 3.1
above.
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8. GENERAL
8.1 NO OTHER LICENSES. Except for the rights expressly provided by
this Agreement, no Promoter grants or receives, by implication, or
estoppel, or otherwise, any rights under any patents or other
intellectual property rights.
8.2 LIMITED EFFECT. This Agreement shall not be construed to waive
any Promoter's rights under law or any other agreement except as
expressly set out here.
8.3 NO WARRANTY. Promoter acknowledges that the Specification and any
contributions thereto provided by another Promoter(s) are provided
"AS IS" WITH NO WARRANTIES WHATSOEVER, WHETHER EXPRESS, IMPLIED OR
STATUTORY, INCLUDING, BUT NOT LIMITED TO ANY WARRANTY OF
MERCHANTABILITY, NONINFRINGEMENT, FITNESS FOR ANY PARTICULAR
PURPOSE, OR ANY WARRANTY OTHERWISE ARISING OUT OF ANY PROPOSAL,
SPECIFICATION, OR SAMPLE.
Notwithstanding the above, each Promoter warrants that the Promoter has
not knowingly contributed any third party confidential information to the
Specification and that it has the authority to enter into this Agreement.
8.4 DAMAGES. In no event will Promoters be liable to each other for
any loss of profits, loss of use, incidental, consequential,
indirect, or special damages arising out of this Agreement or any
Adopter or Participant agreements related hereto, whether or not
such party had advance notice of the possibility of such damages.
8.5 NOTICES. Shall be sent to:
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Intel Corporation Silicon Image, Inc. Compaq Computer Corporation
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇. ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇ ▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: General Counsel Attn: President Attn: General Counsel
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Dell Corporation Fujitsu Limited Hewlett-Packard Company
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇. 1-1, Kamikodanaka 4-chome, ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ Nakahara-ku ▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attn: General Counsel Kawasaki-shi, Kanagawa-▇▇▇ 211-8588 Attn: Director, Intellectual
JAPAN Property Law
Attn: General Manager, Industry
Relations Division (H043)
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International Business Microsoft Corporation NEC Corporation
Machines Corp. ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇-▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ Fuchu Tokyo
Attn: Legal Department 183-8501
JAPAN
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8.6 GOVERNING LAW. This Agreement shall be construed and controlled
by the substantive laws of New York without reference to conflict
of laws principles. Any litigation arising out of this Agreement
shall take place in New York, and all parties irrevocably consent
to jurisdiction of the state and Federal courts there.
8.7 NOT PARTNERS. The Promoters are independent companies and are not
partners or joint venturers with each other. While the Promoters
may select an entity to handle certain administrative tasks for
them, no party is authorized to make any commitment on behalf of
all or any of them.
8.8 COMPLETE AGREEMENT. This Agreement sets forth the entire
understanding of the parties and supersedes all prior agreements
and understandings relating hereto. No modifications or additions
to or deletions from this Agreement shall be binding unless
accepted in writing by an authorized representative of all
parties.
8.9 TERMINATION. This agreement continues for each Promoter until
terminated with respect to such Promoter upon events such as
withdrawal or default.
8.10 PUBLICITY. No Promoter may make any statement on behalf of the
Digital Visual Interface Working Group, without the prior approval
of all of the Promoters.
8.11 EXECUTION IN COUNTERPARTS. This Agreement may be executed in any
number of counterparts, each of which when so executed and timely
delivered shall be deemed an original, and such counterparts
together shall constitute one instrument.
9. COMPLIANCE WITH ANTITRUST LAWS
Each Promoter acknowledges that the Promoters are committed to fostering
competition in the development of new products and services and the
Specification is intended to promote such competition. The Promoters further
acknowledge that they may compete with one another in various lines of business
and that it is therefore imperative that they and their representatives act in a
manner which does not violate any applicable antitrust laws and regulations.
Without limiting the generality of the foregoing, the Promoters acknowledge that
the Promoters will not discuss issues relating to product costs, product
pricing, methods or channels of product distribution, any division of markets,
or allocation of customers or any other topic which should not be discussed
among competitors. Accordingly, each Promoter hereby assumes responsibility to
provide appropriate legal counsel topic which should not be discussed among
competitors. Accordingly, each Promoter hereby assumes responsibility to
provide appropriate legal counsel to its representatives acting under this
Agreement regarding the importance of limiting their discussions to subjects
that relate to the purposes of the Agreement, whether or not such discussions
take place during formal meetings, informal gatherings, or otherwise.
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In witness of their agreement, the Promoters have executed this Agreement below:
INTEL CORPORATION SILICON IMAGE, INC. COMPAQ COMPUTER CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇. ▇▇▇ By: /s/ ▇▇▇▇ Memo
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Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇ ▇. ▇▇▇ Name: ▇▇▇▇ Memo
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Title: V.P., General Manager Title: CEO Title: V.P. Module Division
------------------------- -------------------- ----------------------
Date: 2/19/99 Date: 2/5/99 Date: 1/14/99
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DELL CORPORATION FUJITSU LIMITED HEWLETT-PACKARD COMPANY
By: By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇
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Name: Name: ▇▇▇▇▇▇ ▇▇▇▇▇ Name:
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Title: Title: General Manager, Title:
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Desktop Products Division Date:
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Date: Date: February 12th, 1999
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INTERNATIONAL BUSINESS MACHINES MICROSOFT CORPORATION NEC CORPORATION
CORPORATION
By: /s/ ▇▇▇ ▇. ▇▇▇▇▇▇ By: By: /s/ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
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Name: ▇▇▇ ▇. ▇▇▇▇▇▇ Name: Name: ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
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Title: Vice President Desktop Title: Title: Executive General Manager
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Systems Development
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Date: 1/19/99 Date: Date: April 23, 1999
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SIGNATURE PAGE
FOR THE
DIGITAL VISUAL INTERFACE SPECIFICATION REVISION 1.0
PROMOTER'S AGREEMENT
12
CONFIDENTIAL
DIGITAL VISUAL INTERFACE SPECIFICATION REVISION 1.0 ADOPTER'S AGREEMENT
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Certain Promoters have developed a digital display interface specification
based upon Silicon Image's technology. This is a patent license agreement
among parties wishing to adopt the DIGITAL VISUAL INTERFACE SPECIFICATION
REVISION 1.0
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ATTACHMENT A
ADOPTER'S AGREEMENT
As used in this Agreement:
- The "PROMOTERS" are Intel Corporation, Silicon Image, Inc., Compaq
Computer Corporation, Dell Corporation, Fujitsu Limited, Hewlett-Packard
Company, International Business Machines Corporation, Microsoft
Corporation, and NEC Corporation and their Affiliates.
- "ADOPTER" is the entity named at the end of this Agreement and such
entity's Affiliates, provided that during the Adoption Period such entity
(1) has executed this Agreement, (2) had the same Agreement also executed
by a Promoter, and then (3) had the fully executed Agreement received by
the Secretary.
- "ADOPTION PERIOD" for any given Adopter means any time prior to the later
of (i) the date one (1) year after the public release date of the
Licensed Specification or (ii) the date one (1) year after such Adopter
first sells a product that includes a Compliant Portion.
- "FELLOW ADOPTERS" are the Promoters and all Adopters.
- "AFFILIATE" is an entity that directly or indirectly controls, is
controlled by, or is under common control with another entity, so long as
such control exists. "Control" means beneficial ownership of more than
fifty percent of the voting stock or equity in an entity.
- "COMPLIANT PORTION" means portions of products (hardware, software or
combinations thereof) that implement and are Fully Compliant with the
Digital Display Interfaces to provide an interface between a computer and
a digital display.
- "DIGITAL DISPLAY INTERFACES" means the electrical interfaces, mechanical
interfaces, signals, signaling and coding protocols, and bus protocols
disclosed in, and required by, the Licensed Specification, including
described options for such interfaces in the Licensed Specification.
- "NECESSARY CLAIMS" shall mean those claims of all patents, other than
design patents and design registrations, throughout the world entitled to
an effective filing date prior to January 1, 2003, which a Promoter or
Adopter, as applicable, or its Affiliates has the right, at any time
during the term of this Agreement, to grant licenses of the scope granted
herein without such grant or the exercise of rights thereunder resulting
in payment of royalties or other consideration to third parties (except
for payments to Affiliates or to employees within the scope of their
employment) and (i) which are necessarily infringed in order to implement
and comply with the Digital Display Interfaces, where such infringement
could not have been avoided by another commercially possible
noninfringing implementation of such Digital Display Interfaces and
licensee shall have the burden of proof to establish that a claim falls
within the scope this clause (i), or (ii) for which infringement is based
on an implementation of any example included in the body of the Licensed
Specification. Necessary Claims shall not include, and no license shall
apply to, (a) implementation examples included solely in any appendix,
exhibit or other attachment to the Licensed Specification, (b) claims
relating to semiconductor manufacturing technology, (c) claims not
required to be infringed in
13
implementing and complying with the Digital Display Interfaces even
if in the same patent as Necessary Claims, or (d) claims relating to
underlying operating system functionality not directly related to
interfacing between a computer and a digital display.
- "LICENSED SPECIFICATION" means the document entitled DIGITAL VISUAL
INTERFACE SPECIFICATION REVISION 1.0 as finally adopted by the
Promoters and authored and published by the Promoters.
- "FULLY COMPLIANT" means an implementation of all portions of the
Digital Display Interfaces required for a specific type of product or
component thereof.
- "SECRETARY" shall mean the Promoter chosen to administrate the
Licensed Specification as the Promoters may determine from time to
time. As of the effective date of this Agreement, the Secretary is
Intel.
LICENSES:
- GRANTS OF LICENSES. The following license has been granted by the
Promoters to all Adopters. Upon Adopter's execution of this Agreement
during the Adoption Period, the agreement to license is granted by
Adopter to all Fellow Adopters (including the Promoters), and the grants
of all Fellow Adopters shall extend to Adopter. In each case, the party
(Promoter, Adopter, or Fellow Adopter) and its Affiliates granting the
license is referred to as the "Licensor."
Upon agreement by the Promoters as to the final version of the text of
the Licensed Specification, Licensor hereby grants to each Promoter and
its Affiliates and to each Fellow Adopter and its Affiliates a
nonexclusive, nontransferable, royalty-free, nonsublicenseable,
worldwide, perpetual, irrevocable, reciprocal license under its Necessary
Claims solely to make, have made, use, import, and directly and
indirectly, offer to sell, lease, sell, promote and otherwise distribute
Compliant Portions; provided that such license shall not extend to any
part or function of a product in which a Compliant Portion is
incorporated that is not itself part of the Compliant Portion.
- ACCEPTANCE OF LICENSES. Adopter hereby accepts the licenses granted by
the Fellow Adopters.
- TRADEMARKS. The Adopter and its Affiliates hereby agree not to assert
against any Promoter or any Fellow Adopter any trademark or trade name
rights they may have now or hereafter in any name or logo adopted by the
Promoters for use in connection with such Licensed Specification provided
that the Adopter and its Affiliates have not provided notice of rights as
set forth below. Prior to adoption of a new name or logo, the Promoters
shall transmit a proposed name or logo to Adopter. Adopter shall have
30 days to notify the Secretary in writing if it possesses any rights to
such name or logo. Failure to respond within such 30 days will waive any
rights of Adopter to such proposed name or logo. The Adopter and its
Affiliates will not use the name or logo adopted by the Promoters except
to refer to the Licensed Specification and to products which implement a
Compliant Portion.
GENERAL
- NO OTHER LICENSES. Adopter neither grants nor receives any license to or
right to use any trademark, tradename, copyright, or maskwork hereunder.
Except for the rights expressly
14
provided by this Agreement, Adopter neither grants nor receives, by
implication, or estoppel, or otherwise, any rights under any patents or
other intellectual property rights.
- NO WARRANTY. Adopter acknowledges that the Licensed Specification is
provided "AS IS" WITH NO WARRANTIES WHATSOEVER, WHETHER EXPRESS, IMPLIED
OR STATUTORY, INCLUDING, BUT NOT LIMITED TO ANY WARRANTY OF
MERCHANTABILITY, NONINFRINGEMENT, FITNESS FOR ANY PARTICULAR PURPOSE, OR
ANY WARRANTY OTHERWISE ARISING OUT OF ANY PROPOSAL, SPECIFICATION, OR
SAMPLE.
- DAMAGES. In no event will Promoters, Adopter or Fellow Adopters be
liable to the other for any loss of profits, loss of use, incidental,
consequential, indirect, or special damages arising out of this
Agreement, whether or not such party had advance notice of the
possibility of such damages.
- GOVERNING LAW. This Agreement shall be construed and controlled by the
substantive laws of New York without reference to conflicts of laws
principles. Any litigation arising out of this Agreement shall take
place in New York, and all parties irrevocably consent to jurisdiction of
the state and Federal courts there.
- NOT PARTNERS. Adopter understands that the Promoters are independent
companies and are not partners or joint venturers with each other. While
the Promoters may select an entity to handle certain administrative tasks
for them, no party is authorized to make any commitment on behalf of all
or any of them.
- PROMOTERS AS BENEFICIARIES. While only a single Promoter has executed
this Agreement with Adopter, Adopter understands that all of the
Promoters are beneficiaries of this Agreement and any Promoter is
entitled to enforce its terms against Adopter.
- COMPLETE AGREEMENT. This Agreement sets forth the entire understanding
of the agreement between the Adopters and the Promoters and supersedes
all prior agreements and understandings relating hereto. No
modifications or additions to or deletions from this Agreement shall be
binding unless accepted in writing by an authorized representative of all
parties.
- EXECUTION IN COUNTERPARTS. This Agreement may be executed in any number
of counterparts, each of which when so executed and timely delivered
shall be deemed an original, and such counterparts together shall
constitute one instrument.
- EFFECTIVE DATE. This Agreement shall be legally binding when during the
Adoption Period:
1) the Promoter has signed the Agreement,
2) the Adopter has signed the Agreement, and
3) the Agreement has been received via overnight courier to
the attention of the Secretary at
Digital Display Working Group (DDWG)
ATTN: DDWG Secretary
Intel Corporation
HF3-23
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- NOTICES. All notices under this Agreement shall be sent to:
If to the Promoters: If to Adopter:
Digital Display Working Group (DDWG) ----------------
ATTN: DDWG Secretary ----------------
Intel Corporation ----------------
HF3-23 ----------------
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ADOPTER: PROMOTER:
BY: BY:
--------------------- ----------------------
NAME: NAME
------------------- --------------------
TITLE: TITLE:
------------------ -------------------
DATE: DATE:
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16
CONFIDENTIAL
DIGITAL VISUAL INTERFACE SPECIFICATION REVISION 1.0 PARTICIPANT'S AGREEMENT
ATTACHMENT B
PARTICIPANT'S AGREEMENT
Certain Promoters are developing a specification (the "Specification") defining
a digital display interface based upon Silicon Image's technology. The
Specification may become appropriate for industry-wide adoption and the
Promoters seek the counsel, advice, and input of Participant. In order to
facilitate consultations between the Promoters and Participant, this Agreement
sets out the legal terms that will govern those consultations.
As used herein, "Promoters" means Intel Corporation, Silicon Image, Inc., Compaq
Computer Corporation, Dell Corporation, Fujitsu Limited, Hewlett-Packard
Company, International Business Machines Corporation, Microsoft Corporation, and
NEC Corporation. "Participant" refers to the industry participant named below
and its Affiliates. "Affiliate" is an entity that directly or indirectly
controls, is controlled by, or is under common control with another entity, so
long as such control exists. "Control" means beneficial ownership of more than
fifty percent of the voting stock or equity in an entity.
CONSULTATION. Any Promoter and Participant may consult with each other on the
content, feasibility, and other aspects of one or more revisions of the
Specification. The Promoters shall be free to incorporate the suggestions of
Participant into the Specification.
IN CONFIDENCE. Participant will maintain the non-final versions of the
Specification in confidence with at least the same degree of care that it uses
to protect its own confidential and proprietary information, but no less than a
reasonable degree of care under the circumstances and will neither disclose nor
copy the non-final versions of the Specification except as necessary for its
employees and contractors (under obligation of confidentiality) with a need to
know for the purposes of developing or updating the Specification. Any copies
which are made will be marked "confidential," "proprietary" or with a similar
legend. Unless the parties agree otherwise, this obligation of confidentiality
will expire 3 years from the date of disclosure to Participant. Participant
will not, however, be liable for the disclosure of any information that is:
a) rightfully in the public domain other than by Participant's
breach of a duty;
b) rightfully received from a third party without any obligation of
confidentiality; or
c) rightfully known to the Participant without any limitation on use
or disclosure prior to its receipt from the disclosing party; or
d) independently developed by employees of the Participant without
access to the disclosed information; or
e) rightfully disclosed as required by law; or
f) inherently disclosed in the marketing or sale of a product or
service.
Any party shall be free to use for any purpose the residuals resulting from
access to or work with the confidential information defined above, provided that
such party shall maintain the confidentiality of such confidential information
as provided herein. The term "residuals" means information in non-tangible
form, which may be retained by persons who have had access to such confidential
information, including ideas, concepts, know-how or techniques contained
17
therein. No party shall have any obligation to limit or restrict the assignment
of such persons or to pay royalties for any work resulting from the use of
residuals. However, the foregoing shall not be deemed to grant to any party a
license under the other party's copyrights or patents.
LICENSING. The Promoters intend to license the right to implement the Licensed
Specification to all interested industry members on a royalty-free basis. The
Promoters have the right to disclose the Specification in draft and in final
form, including Participant's suggestions to third parties.
Upon agreement by the Promoters as to the text of the Licensed Specification,
with respect to any suggestion or improvement to the Specification made by
Participant and incorporated in the Licensed Specification, Participant and its
Affiliates hereby grants to each Promoter and its Affiliates and to each Adopter
and its Affiliates a nonexclusive, nontransferable, royalty-free,
nonsublicenseable, worldwide, perpetual, irrevocable, reciprocal license under
its Necessary Claims solely to make, have made, use, import, and directly and
indirectly, offer to sell, lease, sell, promote and otherwise distribute
Compliant Portions; provided that such license shall not extend to any part or
function of a product in which a Compliant Portion is incorporated that is not
itself part of the Compliant Portion.
NONCONFIDENTIALITY OF PARTICIPANT SUBMISSIONS. Participant agrees that any
submission sit makes to the Promoters regarding the draft Specifications shall
be deemed to be made on a non-confidential basis and that the Promoters shall be
free to use these submissions for any purpose and disclose such submissions to
each other and any third parties.
COPYRIGHTS IN SPECIFICATION AS ADOPTED. Participant hereby conveys a
non-exclusive, undivided, and equal ownership in any copyright interests it
may have any submission it makes to the Promoters that is ultimately
incorporated into any Specification that is finally adopted by the Promoters
and authored and published by the Promoters. Each Promoter may exercise any
and all rights of copyright ownership and sublicense such rights in any such
Specification as if such rights were solely owned by such Promoter and
without permission of the Participant and without any duty to account.
"COMPLIANT PORTION" means portions of products (hardware, software or
combinations thereof) that implement and are Full Compliant with the Digital
Display Interfaces to provide an interface between a computer and a digital
display.
"DIGITAL DISPLAY INTERFACES" means the electrical interfaces, mechanical
interfaces, signals, signaling and coding protocols, and bus protocols disclosed
in, and required by, the Licensed Specification, including described options for
such interfaces in the Licensed Specification.
"NECESSARY CLAIMS" shall mean those claims of all patents, other than design
patents and design registrations, throughout the world entitled to an effective
filing date prior to January 1, 2003, which a Participant, or its Affiliates,
has the right, at any time during the term of this Agreement, to grant licenses
of the scope granted herein without such grant or the exercise of rights
thereunder resulting in payment of royalties or other consideration to third
parties (except for payments to Affiliates or to employees within the scope of
their employment) and (i) which are necessarily infringed in order to implement
and comply with the Digital Display Interfaces,
18
where such infringement could not have been avoided by another commercially
possible noninfringing implementation of such Digital Display Interfaces and
licensee shall have the burden of proof to establish that a claim falls
within the scope this clause (i), or (ii) for which infringement is based on
an implementation of any example included in the body of the Licensed
Specification. Necessary Claims shall not include, and no license shall
apply to, (a) implementation examples included solely in any appendix,
exhibit or other attachment to the Licensed Specification, (b) claims
relating to semiconductor manufacturing technology, (c) claims not required
to be infringed in implementing and complying with the Digital Display
Interfaces even if in the same patent as Necessary Claims, or (d) claims
relating to underlying operating system functionality not directly related to
interfacing between a computer and a digital display.
"LICENSED SPECIFICATION" means the document entitled DIGITAL VISUAL INTERFACE
SPECIFICATION REVISION 1.0 as finally adopted by the Promoters and authored
and published by the Promoters.
"FULLY COMPLIANT" means an implementation of all portions of the Digital Display
Interfaces required for a specific type of product or component thereof.
FELLOW PARTICIPANTS. The Promoters may invite additional parties to become
"Fellow Participants" by execution by those additional parties of a
Participant's Agreement identical to this agreement. When a Promoter
identifies such a Fellow Participant, the Participant shall be free to
exchange information relating to the non-final versions of the Specification
with such Fellow Participant, and such information shall be treated as
confidential as provided above.
TRADEMARKS AND BRANDING. The Participant and its Affiliates hereby agrees
not to assert against any Promoter or any Fellow Adopter any trademark or
trade name rights they may have now or hereafter in any name or logo adopted
by the Promoters for use in or with such Specification provided that the
Participant and its Affiliates have not provided notice of rights as set
forth below. Prior to adoption of a new name or logo, the promoters shall
transmit a proposed name or logo to Participant. Participant shall have 30
days to notify the Secretary if it believes it possesses any rights to such
name or logo. Failure to respond within such 30 days will waive any rights
of Participant to such proposed name or logo. The Participant will not use
the name or logo adopted by the Promoters except to refer to the
Specification and to products which fully comply with the Specification.
EARLY TERMINATION. A party may terminate this agreement as to itself at any
time without cause upon written notice to the other. All obligations of
confidentiality, and the license granted above, will survive the termination of
this agreement.
GENERAL. This Agreement does not create a joint venture, partnership or other
form of business association between the parties, not an obligation to buy or
sell products implementing the draft Specification or its final version. This
Agreement will be governed by the substantive laws of New York without reference
to conflict of laws principles. Participant understands that all of the
Promoters are intended third party beneficiaries of this Agreement and may
enforce the provisions thereof against Participant. This Agreement may be
executed in any number of counterparts, each of which when so executed and
timely delivered shall be deemed an original,
19
and such counterparts together shall constitute one instrument. Each
Participant warrants that the Participant has not contributed any third party
confidential information to the Specification and that it has the authority
to enter into this Agreement.
EFFECTIVE DATE. This Agreement shall be legally binding when:
1) the Promoter has signed the Agreement,
2) the Participant has signed the Agreement, and
3) the Agreement has been received via overnight courier to the
attention of the Secretary at
Digital Display Working Group (DDWG)
ATTN: DDWG Secretary
Intel Corporation
HF3-23
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NOTICES. All notices under this Agreement shall be sent to:
If to the Promoters: If to Participant:
Digital Display Working Group (DDWG) ----------------------
ATTN: DDWG Secretary ----------------------
Intel Corporation ----------------------
HF3-23 ----------------------
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AGREED:
PARTICIPANT PROMOTER
Corp. Name: Corp. Name:
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Signed: Signed:
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Name: Name:
----------------------- -------------------------------
Title: Title:
---------------------- ------------------------------
Date: Date:
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20