<PAGE>
AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON JULY 30, 1999
REGISTRATION NO. 333-83665
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
------------------------
AMENDMENT NO. 1
TO
FORM S-1
REGISTRATION STATEMENT
UNDER
THE SECURITIES ACT OF 1933
------------------------
SILICON IMAGE, INC.
(Exact name of registrant as specified in its charter)
<TABLE>
<S> <C> <C>
DELAWARE 3674 77-0517246
(State or other jurisdiction of (Primary Standard Industrial (I.R.S. Employer
incorporation or organization) Classification Code Number) Identification Number)
</TABLE>
------------------------------
10131 BUBB RD.
CUPERTINO, CALIFORNIA 95014
(408) 873-3111
(Address, including zip code, and telephone number, including area code, of
Registrant's principal executive offices)
------------------------------
DAVID D. LEE
PRESIDENT AND CHIEF EXECUTIVE OFFICER
10131 BUBB RD.
CUPERTINO, CALIFORNIA 95014
(408) 873-3111
(Name, address, including zip code, and telephone number, including area code,
of agent for service)
------------------------------
COPIES TO:
<TABLE>
<S> <C>
DENNIS R. DEBROECK, ESQ. JOHN A. FORE, ESQ.
SUSAN A. DUNN, ESQ. KATHLEEN B. BLOCH, ESQ.
DAVID K. MICHAELS, ESQ. PAUL W. HARTZEL, ESQ.
ANDREW Y. LUH, ESQ. WILSON SONSINI GOODRICH & ROSATI PC
PAMELA A. SERGEEFF, ESQ. 650 PAGE MILL ROAD
FENWICK & WEST LLP PALO ALTO, CA 94304
TWO PALO ALTO SQUARE (650) 493-9300
PALO ALTO, CA 94306
(650) 494-0600
</TABLE>
------------------------------
APPROXIMATE DATE OF COMMENCEMENT OF PROPOSED SALE TO THE PUBLIC:
As soon as practicable after the effective date of this Registration Statement.
------------------------
If any of the securities being registered on this Form are to be offered on
a delayed or continuous basis pursuant to Rule 415 under the Securities Act of
1933, check the following box. / / _________
If this Form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act of 1933, check the following
box and list the Securities Act registration statement number of the earlier
effective registration statement for the same offering. / / _________
If this Form is a post-effective amendment filed pursuant to Rule 462(c)
under the Securities Act of 1933, check the following box and list the
Securities Act registration statement number of the earlier effective
registration statement for the same offering. / / _________
If this Form is a post-effective amendment filed pursuant to Rule 462(d)
under the Securities Act of 1933, check the following box and list the
Securities Act registration statement number of the earlier effective
registration statement for the same offering. / / _________
If delivery of the prospectus is expected to be made pursuant to Rule 434,
please check the following box. / / _________
------------------------------
THE REGISTRANT HEREBY AMENDS THIS REGISTRATION STATEMENT ON SUCH DATE OR
DATES AS MAY BE NECESSARY TO DELAY ITS EFFECTIVE DATE UNTIL THE REGISTRANT SHALL
FILE A FURTHER AMENDMENT WHICH SPECIFICALLY STATES THAT THIS REGISTRATION
STATEMENT SHALL THEREAFTER BECOME EFFECTIVE IN ACCORDANCE WITH SECTION 8(a) OF
THE SECURITIES ACT OF 1933 OR UNTIL THE REGISTRATION STATEMENT SHALL BECOME
EFFECTIVE ON SUCH DATE AS THE COMMISSION, ACTING PURSUANT TO SAID SECTION 8(a),
MAY DETERMINE.
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<PAGE>
EXPLANATORY NOTE
The sole purpose of this Amendment is to file Exhibits to the Registration
Statement. No changes have been made to the text of the Registration Statement
other than to Item 16 (Exhibits and Financial Statement Schedule), and the
addition of certain fee information to Item 13 (Other Expenses of Issuance and
Distribution).
<PAGE>
PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
ITEM 13. OTHER EXPENSES OF ISSUANCE AND DISTRIBUTION.
The following table sets forth the costs and expenses to be paid by Silicon
Image in connection with the sale of the shares of common stock being registered
hereby. All amounts are estimates except for the SEC registration fee, the NASD
filing fee and the Nasdaq National Market filing fee.
<TABLE>
<S> <C>
SEC registration fee.............................................. $ 12,510
NASD filing fee................................................... 5,000
Nasdaq National Market initial filing fee......................... *
Printing and engraving............................................ *
Legal fees and expenses of the Registrant......................... *
Accounting fees and expenses...................................... *
Directors and officers liability insurance........................ *
Blue sky fees and expenses........................................ *
Transfer agent and registrar fees and expenses.................... *
Miscellaneous..................................................... *
Total......................................................... $ *
---------
---------
</TABLE>
- ------------------------
* To be filed by amendment
ITEM 14. INDEMNIFICATION OF DIRECTORS AND OFFICERS.
Section 145 of the Delaware General Corporation Law authorizes a court to
award, or a corporation's board of directors to grant, indemnity to directors
and officers under certain circumstances and subject to certain limitations. The
terms of Section 145 of the Delaware General Corporation Law are sufficiently
broad to permit indemnification under certain circumstances for liabilities,
including reimbursement of expenses incurred, arising under the Securities Act
of 1933.
As permitted by the Delaware General Corporation Law, the Registrant's
certificate of incorporation includes a provision that eliminates the personal
liability of its directors for monetary damages for breach of fiduciary duty as
a director, except for liability:
- for any breach of the director's duty of loyalty to the Registrant or its
stockholders;
- for acts or omissions not in good faith or that involve intentional
misconduct or a knowing violation of law;
- under section 174 of the Delaware General Corporation Law regarding
unlawful dividends and stock purchases; or
- for any transaction from which the director derived an improper personal
benefit.
As permitted by the Delaware General Corporation Law, the Registrant's
bylaws provide that:
- the Registrant is required to indemnify its directors and officers to the
fullest extent permitted by the Delaware General Corporation Law, subject
to certain very limited exceptions;
- the Registrant is required to advance expenses, as incurred, to its
directors and officers in connection with a legal proceeding to the
fullest extent permitted by the Delaware General Corporation Law, subject
to certain very limited exceptions; and
- the rights conferred in the Bylaws are not exclusive.
II-1
<PAGE>
In addition, the Registrant intends to enter into indemnity agreements with
each of our current directors and officers. These agreements provide for the
indemnification of officers and directors for all expenses and liabilities
incurred in connection with any action or proceeding brought against them by
reason of the fact that they are or were agents of the Registrant.
The Registrant intends to obtain directors' and officers' insurance to cover
its directors, officers and some of its employees for certain liabilities,
including public securities matters.
The Underwriting Agreement filed as Exhibit 1.01 to this Registration
Statement provides for indemnification by the underwriters of the Registrant and
its directors and officers for certain liabilities under the Securities Act of
1933, or otherwise.
Reference is made to the following documents filed as exhibits to this
Registration Statement regarding relevant indemnification provisions described
above and elsewhere herein:
<TABLE>
<CAPTION>
EXHIBIT DOCUMENT NUMBER
- ------------------------------------------------------------------------------------ -----------
<S> <C>
Underwriting Agreement.............................................................. 1.01
Registrant's Certificate of Incorporation........................................... 3.01
Registrant's Bylaws................................................................. 3.02
Form of Indemnity Agreement......................................................... 10.01
</TABLE>
ITEM 15. RECENT SALES OF UNREGISTERED SECURITIES.
In the three years prior to the effective date of this Registration
Statement, we have issued and sold the following unregistered securities:
1. On February 28, 1996, we issued and sold an aggregate of 580,000 shares
of Series A preferred stock to two investors for an aggregate consideration of
$580,000 in cash.
2. On September 20, 1996, we issued and sold 400,000 shares of Series B
preferred stock to a group of 3 investors for an aggregate consideration of
$2,200,000 in cash
3. On June 20, 1997, we issued and sold 4,000,000 shares of Series C
preferred stock to 11 investors for an aggregate consideration of $5,000,000 in
cash.
4. On July 29, 1998, we issued and sold 2,737,716 shares of Series D
preferred stock to eight investors for an aggregate consideration of $9,582,006
in cash.
5. On September 16, 1998, we issued and sold 857,143 shares of Series D
preferred stock to one investor for an aggregate consideration of $3,000,000 in
cash.
6. On September 16, 1998, we issued to Intel Corporation a warrant to
purchase up to 142,857 shares of common stock at an exercise price of $3.50 per
share which expires, if not earlier exercised, on September 16, 2004.
7. On September 16, 1998, we issued to Intel Corporation a warrant, which
we amended on April 16, 1999 to provide (1) that Intel may purchase up to
142,857 shares of Common Stock at an exercise price of $0.35 per share at any
time on or before September 16, 2004, and (2) that if a certain milestone is
achieved, we will issue Intel another warrant to purchase up to 142,857 shares
of common stock at an exercise price of $0.35 per share at any time on or before
September 16, 2004.
8. In February, 1999, and in connection with a lease line of credit, we
issued a warrant to purchase up to 32,142 shares of our Series D preferred stock
at an exercise price of $3.50 per share. This warrant is immediately exercisable
and expires upon the earlier of February 17, 2004, or certain corporate
transactions.
II-2
<PAGE>
9. As of June 30, 1999, 4,538,212 shares of common stock had been issued to
our employees, consultants and other service providers upon exercise of options
or pursuant to restricted stock purchase agreements, 1,098,963 shares of common
stock were issuable upon exercise of outstanding options under our 1995 Equity
Incentive Plan and 50,000 shares of common stock were issuable upon exercise of
an outstanding option outside of any plan.
All of the 580,000 shares of Series A preferred stock will automatically
convert into 1,160,000 shares of common stock upon the consummation of this
offering as a result of a two-for-one common stock split effected on May 6,
1997.
All of the 400,000 shares of Series B preferred stock will automatically
convert into 932,203 shares of common stock upon the consummation of this
offering as a result of a two-for-one common stock split effected on May 6, 1997
and an adjustment to the Conversion Price of the Series B preferred stock from
$2.75 per share to $2.36 per share as a result of the issuance and sale of
4,000,000 shares of Series C preferred stock on June 20, 1997.
All of the 4,000,000 shares of Series C preferred stock will automatically
convert on a one-to-one basis into 4,000,000 shares of common stock and all of
the 3,594,859 shares of Series D preferred stock will automatically convert on a
one-to-one basis into 3,594,859 shares of common stock upon the consummation of
this offering.
The sale of the above securities was deemed to be exempt from registration
under the Securities Act of 1933 in reliance upon Section 4(2) of the Securities
Act of 1933 and/or Regulation D promulgated thereunder or Rule 701 promulgated
under Section 3(b) of the Securities Act of 1933 as transactions by an issuer
not involving any public offering or transactions pursuant to compensation
benefit plans and contracts relating to compensation as provided under Rule 701.
These sales were made without general solicitation or advertising. The
recipients of securities in each such transaction represented their intentions
to acquire the securities for investment only and not with a view to or for sale
in connection with any distribution thereof. Each purchaser was a sophisticated
investor with access to all relevant information necessary to evaluate the
investment.
ITEM 16. EXHIBITS AND FINANCIAL STATEMENT SCHEDULES.
(a) The following exhibits are filed herewith:
<TABLE>
<CAPTION>
EXHIBIT
NUMBER EXHIBIT TITLE
- --------- --------------------------------------------------------------------------------------------------
<C> <S>
1.01* Form of Underwriting Agreement.
3.01+ Certificate of Incorporation of the Registrant, filed with the Delaware Secretary of State on June
11, 1999.
3.02* Form of Amended and Restated Certificate of Incorporation of the Registrant to be effective upon
the closing of the offering made pursuant to this Registration Statement.
3.03+ Bylaws of the Registrant, as amended through June 20, 1997.
3.04* Amended and Restated Bylaws of the Registrant to be effective upon the closing of the offering
made pursuant to this Registration Statement.
4.01* Form of Specimen Certificate for Registrant's common stock.
4.02 Intel Warrant No. 1 to Purchase Common Stock of the Registrant.
4.03** Intel Warrant No. 2 to Purchase Common Stock of the Registrant, as amended April 16, 1999.
</TABLE>
II-3
<PAGE>
<TABLE>
<CAPTION>
EXHIBIT
NUMBER EXHIBIT TITLE
- --------- --------------------------------------------------------------------------------------------------
<C> <S>
4.04+ Third Amended and Restated Investors Rights Agreement dated July 29, 1998, as amended October 15,
1998.
5.01* Opinion of Fenwick & West LLP regarding legality of the securities being registered.
10.01+ Form of Indemnification Agreement entered into between the Registrant and its directors.
10.02+ 1995 Equity Incentive Plan, as amended through June 11, 1999.
10.03+ 1999 Equity Incentive Plan.
10.04+ 1999 Stock Purchase Plan.
10.05+ Employment Agreement with Dan Atler dated June 15, 1998.
10.06+ Employment Agreement with Parviz Khodi dated June 10, 1999.
10.07+ Amended and Restated Severance Agreement with David Lee dated August 15, 1997.
10.08+ Amended and Restated Severance Agreement with Scott Macomber dated August 15, 1997.
10.09+ Consulting Agreement with Deog-Kyoon Jeong dated March 1, 1999.
10.10** License Agreement dated March 15, 1995 between Deog-Kyoon Jeong and the Registrant, as amended
through June 18, 1997.
10.11+ Lease Agreement dated April 9, 1997 between Elisabeth Griffinger and the Registrant.
10.12** Business Cooperation Agreement dated September 16, 1998 between Intel Corporation and the
Registrant, as amended October 30, 1998.
10.13** Patent License Agreement dated September 16, 1998 between Intel Corporation and the Registrant.
10.14 Digital Visual Interface Specification Revision 1.0 Promoter's Agreement dated January 8, 1999.
10.15+ Revolving Credit Loan & Security Agreement dated December 17, 1998 between Comerica
Bank-California and the Registrant.
10.16+ Research and Development Contract for Gigabit Links and Multimedia Information Delivery Systems
dated July 1, 1998 between Inter-University Semiconductor Research Center of Seoul National
University and the Registrant.
10.17+ Research and Development Contract for 1000BASE-T Gigabit Ethernet PHY Chip dated July 1, 1999
between Inter-University Semiconductor Research Center of Seoul National University and the
Registrant.
10.18+ Master Lease Agreement and Addendum with Comdisco, Inc. dated February 17, 1999.
23.01* Consent of Fenwick & West LLP (included in Exhibit 5.01).
23.02+ Consent of Independent Accountants.
24.01+ Power of Attorney (included on signature page).
27.01+ Financial Data Schedule.
</TABLE>
- ------------------------
* To be supplied by amendment.
** Confidential treatment has been requested with respect to certain portions
of this exhibit. Omitted portions have been filed separately with the
Securities and Exchange Commission.
+ Previously filed.
II-4
<PAGE>
(b) The following financial statement schedule is filed herewith:
Schedule II--Valuation and Qualifying Accounts
Other financial statement schedules are omitted because the information
called for is not required or is shown either in the financial statements or the
notes thereto.
ITEM 17. UNDERTAKINGS.
The undersigned Registrant hereby undertakes to provide to the Underwriters
at the closing specified in the Underwriting Agreement certificates in such
denominations and registered in such names as required by the Underwriters to
permit prompt delivery to each purchaser.
Insofar as indemnification for liabilities arising under the Securities Act
may be permitted to directors, officers and controlling persons of the
Registrant pursuant to the provisions described under Item 14 above, or
otherwise, the Registrant has been advised that in the opinion of the Securities
and Exchange Commission such indemnification is against public policy as
expressed in the Securities Act and is, therefore, unenforceable. In the event
that a claim for indemnification against such liabilities (other than the
payment by the Registrant of expenses incurred or paid by a director, officer or
controlling person of the Registrant in the successful defense of any action,
suit or proceeding) is asserted by such director, officer or controlling person
in connection with the securities being registered, the Registrant will, unless
in the opinion of its counsel the matter has been settled by controlling
precedent, submit to a court of appropriate jurisdiction the question whether
such indemnification by it is against public policy as expressed in the
Securities Act and will be governed by the final adjudication of such issue.
The undersigned Registrant hereby undertakes that:
(1) For purposes of determining any liability under the Securities Act,
the information omitted from the form of prospectus filed as part of this
Registration Statement in reliance upon Rule 430A and contained in a form of
prospectus filed by the Registrant pursuant to Rule 424(b)(1) or (4) or
497(h) under the Securities Act shall be deemed to be part of this
Registration Statement as of the time it was declared effective.
(2) For the purpose of determining any liability under the Securities
Act, each post-effective amendment that contains a form of prospectus shall
be deemed to be a new registration statement relating to the securities
offered therein, and the offering of such securities at that time shall be
deemed to be the initial bona fide offering thereof.
II-5
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act of 1933, as amended, the
Registrant has duly caused this Amendment to Registration Statement to be signed
on its behalf by the undersigned, thereunto duly authorized, in the City of
Cupertino, State of California, on the 29th day of July, 1999.
<TABLE>
<S> <C> <C>
SILICON IMAGE, INC.
By: /s/ DAVID D. LEE
-----------------------------------------
David D. Lee
CHIEF EXECUTIVE OFFICER
</TABLE>
Pursuant to the requirements of the Securities Act of 1933, as amended, this
Amendment to Registration Statement has been signed by the following persons in
the capacities and on the date indicated.
<TABLE>
<CAPTION>
SIGNATURE TITLE DATE
- ------------------------------ -------------------------- -------------------
<C> <S> <C>
President, Chief Executive
/s/ DAVID D. LEE Officer and Chairman of
- ------------------------------ the Board (Principal July 29, 1999
David D. Lee Executive Officer)
Vice President, Finance
and Administration and
DANIEL K. ATLER* Chief Financial Officer
- ------------------------------ (Principal Financial July 29, 1999
Daniel K. Atler Officer and Principal
Accounting Officer)
SANG-CHUL HAN*
- ------------------------------ Director July 29, 1999
Sang-Chul Han
RONALD V. SCHMIDT*
- ------------------------------ Director July 29, 1999
Ronald V. Schmidt
DAVID A. HODGES*
- ------------------------------ Director July 29, 1999
David A. Hodges
ANDREW S. RAPPAPORT*
- ------------------------------ Director July 29, 1999
Andrew S. Rappaport
HERBERT CHANG*
- ------------------------------ Director July 29, 1999
Herbert Chang
</TABLE>
<TABLE>
<S> <C>
*By: /s/ DAVID D. LEE
-------------------------
David D. Lee
ATTORNEY-IN-FACT
</TABLE>
II-6
<PAGE>
EXHIBIT INDEX
<TABLE>
<CAPTION>
EXHIBIT
NUMBER EXHIBIT TITLE
- --------- -------------------------------------------------------------------------------------------------------
<C> <S>
1.01* Form of Underwriting Agreement.
3.01+ Certificate of Incorporation of the Registrant, filed with the Delaware Secretary of State on June 11,
1999.
3.02* Form of Amended and Restated Certificate of Incorporation of the Registrant to be effective upon the
closing of the offering made pursuant to this Registration Statement.
3.03+ Bylaws of the Registrant, as amended through June 20, 1997.
3.04* Amended and Restated Bylaws of the Registrant to be effective upon the closing of the offering made
pursuant to this Registration Statement.
4.01* Form of Specimen Certificate for Registrant's common stock.
4.02 Intel Warrant No. 1 to Purchase Common Stock of the Registrant.
4.03** Intel Warrant No. 2 to Purchase Common Stock of the Registrant, as amended April 16, 1999.
4.04+ Third Amended and Restated Investors Rights Agreement dated July 29, 1998, as amended October 15, 1998.
5.01* Opinion of Fenwick & West LLP regarding legality of the securities being registered.
10.01+ Form of Indemnification Agreement entered into between the Registrant and its directors.
10.02+ 1995 Equity Incentive Plan, as amended through June 11, 1999.
10.03+ 1999 Equity Incentive Plan.
10.04+ 1999 Stock Purchase Plan.
10.05+ Employment Agreement with Dan Atler dated June 15, 1998.
10.06+ Employment Agreement with Parviz Khodi dated June 10, 1999.
10.07+ Amended and Restated Severance Agreement with David Lee dated August 15, 1997.
10.08+ Amended and Restated Severance Agreement with Scott Macomber dated August 15, 1997.
10.09+ Consulting Agreement with Deog-Kyoon Jeong dated March 1, 1999.
10.10** License Agreement dated March 15, 1995 between Deog-Kyoon Jeong and the Registrant, as amended through
June 18, 1997.
10.11+ Lease Agreement dated April 9, 1997 between Elisabeth Griffinger and the Registrant.
10.12** Business Cooperation Agreement dated September 16, 1998 between Intel Corporation and the Registrant,
as amended October 30, 1998.
10.13** Patent License Agreement dated September 16, 1998 between Intel Corporation and the Registrant.
10.14 Digital Visual Interface Specification Revision 1.0 Promoter's Agreement dated January 8, 1999.
10.15+ Revolving Credit Loan & Security Agreement dated December 17, 1998 between Comerica Bank-California and
the Registrant.
10.16+ Research and Development Contract for Gigabit Links and Multimedia Information Delivery Systems dated
July 1, 1998 between Inter-University Semiconductor Research Center of Seoul National University and
the Registrant.
10.17+ Research and Development Contract for 1000BASE-T Gigabit Ethernet PHY Chip dated July 1, 1999 between
Inter-University Semiconductor Research Center of Seoul National University and the Registrant.
10.18+ Master Lease Agreement and Addendum with Comdisco, Inc. dated February 17, 1999.
23.01* Consent of Fenwick & West LLP (included in Exhibit 5.01).
23.02+ Consent of Independent Accountants.
24.01+ Power of Attorney (included on signature page).
27.01+ Financial Data Schedule.
</TABLE>
- ------------------------
* To be supplied by amendment.
** Confidential treatment has been requested with respect to certain portions
of this exhibit. Omitted portions have been filed separately with the
Securities and Exchange Commission.
+ Previously filed.
<PAGE>
INTEL/SILICON IMAGE, INC. CONFIDENTIAL
WARRANT
THE WARRANT EVIDENCED OR CONSTITUTED HEREBY, AND ALL SHARES OF COMMON STOCK
ISSUABLE HEREUNDER, HAVE BEEN AND WILL BE ISSUED WITHOUT REGISTRATION UNDER
THE SECURITIES ACT OF 1933, AS AMENDED ("THE ACT") AND MAY NOT BE SOLD,
OFFERED FOR SALE, TRANSFERRED, PLEDGED OR HYPOTHECATED WITHOUT REGISTRATION
UNDER THE ACT UNLESS EITHER (i) THE COMPANY HAS RECEIVED AN OPINION OF
COUNSEL, IN FORM AND SUBSTANCE REASONABLY SATISFACTORY TO THE COMPANY, TO THE
EFFECT THAT REGISTRATION IS NOT REQUIRED IN CONNECTION WITH SUCH DISPOSITION
OR (ii) THE SALE OF SUCH SECURITIES IS MADE PURSUANT TO SECURITIES AND
EXCHANGE COMMISSION RULE 144.
WARRANT TO PURCHASE COMMON STOCK OF SILICON IMAGE, INC.
(Subject to Adjustment)
NO. 1
THIS CERTIFIES THAT, for value received, Intel Corporation, or its
permitted registered assigns ("HOLDER"), is entitled, subject to the terms
and conditions of this Warrant, at any time or from time to time after
September 16, 1998 (the "EFFECTIVE DATE"), and before 5:00 p.m. Pacific Time
on September 16, 2004 (the "EXPIRATION DATE"), to purchase from SILICON
IMAGE, INC., a California corporation (the "COMPANY"), one hundred forty-two
thousand, eight hundred fifty-seven (142,857) shares of Common Stock of the
Company at a price per share of $3.50 (the "PURCHASE PRICE"). Both the
number of shares of Common Stock purchasable upon exercise of this Warrant
and the Purchase Price are subject to adjustment and change as provided
herein.
1. CERTAIN DEFINITIONS. As used in this Warrant the following terms
shall have the following respective meanings:
"CHANGE OF CONTROL TRANSACTION" shall mean (i) a consolidation or
merger of the Company with or into any other corporation or corporations in
which the holder of the Company's outstanding shares immediately before such
consolidation or merger do not, immediately after such consolidation or
merger, retain stock representing a majority of the voting power of the
surviving corporation or such consolidation or merger; (ii) any transaction
or series of related transactions in which a person or group acquires shares
or other securities entitled to vote for a majority of the Company's Board of
Directors; or (iii) a sale of all or substantially all of the assets of the
Company.
"COMMON STOCK" shall mean the Common Stock of the Company and any
other securities at any time receivable or issuable upon exercise of this
Warrant.
"FAIR MARKET VALUE" of a share of Common Stock as of a particular date
shall mean:
<PAGE>
INTEL/SILICON IMAGE, INC. CONFIDENTIAL
(a) If traded on a securities exchange or the Nasdaq
National Market, the Fair Market Value shall be deemed to be the average of
the closing prices of the Common Stock of the Company on such exchange or
market over the 5 business days ending immediately prior to the applicable
date of valuation;
(b) If actively traded over-the-counter, the Fair Market
Value shall be deemed to be the average of the closing bid prices over the
30-day period ending immediately prior to the applicable date of valuation;
and
(c) If there is no active public market, the Fair Market
Value shall be the value thereof, as agreed upon by the Company and the
Holder; provided, however, that if the Company and the Holder cannot agree on
such value, such value shall be determined by an independent valuation firm
experienced in valuing businesses such as the Company and selected by the
Company and approved by the Holder. Up to a total of $10,000 of fees and
expenses of the valuation firm shall be paid for by the Company; however, any
amounts in excess of $10,000 shall be paid for by the Holder.
"HSR ACT" shall mean the Hart-Scott-Rodino Antitrust Improvements Act
of 1976.
"IPO" shall mean the Company's first underwritten public offering of
the Company's Common Stock pursuant to a registration statement filed with
the Securities and Exchange Commission.
"REGISTERED HOLDER" shall mean any Holder in whose name this Warrant
is registered upon the books and records maintained by the Company.
"WARRANT" as used herein, shall include this Warrant and any warrant
delivered in substitution or exchange therefor as provided herein.
2. EXERCISE OF WARRANT
2.1. PAYMENT. Subject to compliance with the terms and conditions
of this Warrant and applicable securities laws, this Warrant may be
exercised, in whole or in part at any time or from time to time, on or before
the Expiration Date by the delivery (including, without limitation, delivery
by facsimile) of the form of Notice of Exercise attached hereto as EXHIBIT 1
(the "NOTICE OF EXERCISE"), duly executed by the Holder, at the principal
office of the Company, and as soon as practicable after such date,
surrendering
(a) this Warrant at the principal office of the Company, and
(b) payment, in cash (by check) or by wire transfer, of an
amount equal to the product obtained by multiplying the number of shares of
Common Stock being purchased upon such exercise by the then effective
Purchase Price (the "EXERCISE AMOUNT"), except that if Holder is subject to
HSR Act Restrictions (as defined in Section 2.5 below), the Exercise Amount
shall be paid to the Company within five (5) business days of the termination
of all HSR Act Restrictions.
2
<PAGE>
INTEL/SILICON IMAGE, INC. CONFIDENTIAL
2.2. NET ISSUE EXERCISE. In lieu of the payment methods set forth in
Section 2.1(b) above, the Holder may elect to exchange all or some of the
Warrant for shares of Common Stock equal to the value of the amount of the
Warrant being exchanged on the date of exchange. If Holder elects to
exchange this Warrant as provided in this Section 2.2, Holder shall tender to
the Company the Warrant for the amount being exchanged, along with written
notice of Holder's election to exchange some or all of the Warrant, and the
Company shall issue to Holder the number of shares of the Common Stock
computed using the following formula:
X = Y (A-B)
-------
A
Where X = the number of shares of Common Stock to be issued to
Holder.
Y = the number of shares of Common Stock purchasable under the
amount of the Warrant being exchanged (as adjusted to the date of
such calculation).
A = the Fair Market Value of one share of Common Stock.
B = Purchase Price (as adjusted to the date of such calculation).
All references herein to an "exercise" of the Warrant shall
include an exchange pursuant to this Section 2.2. Upon receipt of a written
notice of the Company's intention to raise capital by selling shares of
Common Stock in an IPO (the "IPO Notice"), which notice shall be delivered to
Holder at least twenty (20) days before the anticipated date of the filing
with the Securities and Exchange Commission of the registration statement
associated with the IPO (and may be in the form of a notice to Holder
regarding Holder's registration rights with respect to other shares of the
Company's capital stock held by Holder), the Holder shall promptly notify the
Company whether or not the Holder will exercise this Warrant pursuant to this
Section 2.2 prior to consummation of the IPO. Notwithstanding whether or not
an IPO Notice has been delivered to Holder or any other provision of this
Warrant to the contrary, if Holder decides to exercise this Warrant while a
registration statement is on file with the Securities and Exchange Commission
(the "SEC") in connection with the IPO, this Warrant shall be deemed
exercised on the consummation of the IPO and the Fair Market Value of a share
of Common Stock will be the price at which one share of Common Stock was sold
to the public in the IPO. If Holder has elected to exercise this Warrant
pursuant to this Section 2.2 while a registration statement is on file with
the SEC in connection with an IPO and the IPO is not consummated, then
Holder's exercise of this Warrant shall not be effective unless Holder
confirms in writing Holder's intention to go forward with the exercise of
this Warrant.
2.3. "EASY SALE" EXERCISE. In lieu of the payment methods set forth
in Section 2.1(b) above, when permitted by law and applicable regulations
(including Nasdaq and NASD rules), the Holder may pay the Purchase Price
through a "same day sale" commitment from the Holder (and if applicable a
broker-dealer that is a member of the National Association of Securities
Dealers (a "NASD Dealer")), whereby the Holder irrevocably elects to exercise
this Warrant and to sell a portion of the shares of Common Stock so purchased
to pay for the Purchase Price and the Holder (or, if applicable, the NASD
Dealer) commits upon sale (or, in the case of the NASD
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
Dealer, upon receipt) of such shares of Common Stock to forward the Purchase
Price directly to the Company.
2.4. STOCK CERTIFICATES; FRACTIONAL SHARES. As soon as practicable
on or after such date, the Company shall issue and deliver to the person or
persons entitled to receive the same a certificate or certificates for the
number of whole shares of Common Stock issuable upon such exercise, together
with cash in lieu of any fraction of a share equal to such fraction of the
current Fair Market Value of one whole share of Common Stock as of the date
of exercise of this Warrant. No fractional shares or scrip representing
fractional shares shall be issued upon an exercise of this Warrant.
2.5. HSR ACT. The Company hereby acknowledges that exercise of this
Warrant by Holder may subject the Company and/or the Holder to the filing
requirements of the HSR Act and that Holder may be prevented from exercising
this Warrant until the expiration or early termination of all waiting periods
imposed by the HSR Act ("HSR ACT RESTRICTIONS"). If on or before the
Expiration Date Holder has sent an Irrevocable Notice of Exercise to Company
and Holder has not been able to complete the exercise of this Warrant prior
to the Expiration Date because of HSR Act Restrictions, the Holder shall
complete the process of exercising this Warrant in accordance with the
procedures contained herein notwithstanding the fact that completion of the
exercise of this Warrant would take place after the Expiration Date.
2.6. PARTIAL EXERCISE; EFFECTIVE DATE OF EXERCISE. In case of any
partial exercise of this Warrant, the Company shall cancel this Warrant upon
surrender hereof and shall execute and deliver a new Warrant of like tenor
and date for the balance of the shares of Common Stock purchasable hereunder.
This Warrant shall be deemed to have been exercised immediately prior to the
close of business on the date of its surrender for exercise as provided
above. However, if Holder is subject to HSR Act filing requirements this
Warrant shall be deemed to have been exercised on the date immediately
following the date of the expiration of all HSR Act Restrictions.
The person entitled to receive the shares of Common Stock issuable
upon exercise of this Warrant shall be treated for all purposes as the holder
of record of such shares as of the close of business on the date the Holder
is deemed to have exercised this Warrant.
2.7. AUTOMATIC EXERCISE. This Warrant shall be deemed exercised
without any action by the Holder upon the effective date of a Change of
Control Transaction. The Holder may deliver a Notice of Exercise in order to
exercise pursuant to Section 2.1 contingent upon the consummation of the
transaction; otherwise, this Warrant shall be deemed exercised pursuant to
Section 2.2.
3. VALID ISSUANCE: TAXES. All shares of Common Stock issued upon the
exercise of this Warrant shall be validly issued, fully paid and
non-assessable, and the Company shall pay all taxes and other governmental
charges that may be imposed in respect of the issue or delivery thereof. The
Company shall not be required to pay any tax or other charge imposed in
connection with any transfer involved in the issuance of any certificate for
shares of Common Stock in any name other than that of the Registered Holder
of this Warrant, and in such case the Company shall not be required to issue
or deliver any stock certificate or security until such tax
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
or other charge has been paid, or it has been established to the Company's
reasonable satisfaction that no tax or other charge is due.
4. ADJUSTMENT OF PURCHASE PRICE AND NUMBER OF SHARES. The number of
shares of Common Stock issuable upon exercise of this Warrant (or any shares
of stock or other securities or property receivable or issuable upon exercise
of this Warrant) and the Purchase Price are subject to adjustment upon
occurrence of the following events:
4.1. ADJUSTMENT FOR STOCK SPLITS, STOCK SUBDIVISIONS OR COMBINATIONS
OF SHARES. The Purchase Price of this Warrant shall be proportionally
decreased and the number of shares of Common Stock issuable upon exercise of
this Warrant (or any shares of stock or other securities at the time issuable
upon exercise of this Warrant) shall be proportionally increased to reflect
any stock split or subdivision of the Common Stock. The Purchase Price of
this Warrant shall be proportionally increased and the number of shares of
Common Stock issuable upon exercise of this Warrant (or any shares of stock
or other securities at the time issuable upon exercise of this Warrant) shall
be proportionally decreased to reflect any combination of the Common Stock.
4.2. ADJUSTMENT FOR DIVIDENDS OR DISTRIBUTIONS OF STOCK OR OTHER
SECURITIES OR PROPERTY. In case the Company shall make or issue, or shall
fix a record date for the determination of eligible holders entitled to
receive, a dividend or other distribution with respect to the Common Stock
(or any shares of stock or other securities at the time issuable upon
exercise of the Warrant) payable in (a) securities of the Company or (b)
assets (excluding cash dividends paid or payable solely out of retained
earnings), then, in each such case, the Holder of this Warrant on exercise
hereof at any time after the consummation, effective date or record date of
such dividend or other distribution, shall receive, in addition to the shares
of Common Stock (or such other stock or securities) issuable on such exercise
prior to such date, and without the payment of additional consideration
therefor, the securities or such other assets of the Company to which such
Holder would have been entitled upon such date if such Holder had exercised
this Warrant on the date hereof and had thereafter, during the period from
the date hereof to and including the date of such exercise, retained such
shares and/or all other additional stock available by it as aforesaid during
such period giving effect to all adjustments called for by this Section 4.
4.3. RECLASSIFICATION. If the Company, by reclassification of
securities or otherwise, shall change any of the securities as to which
purchase rights under this Warrant exist into the same or a different number
of securities of any other class or classes, this Warrant shall thereafter
represent the right to acquire such number and kind of securities as would
have been issuable as the result of such change with respect to the
securities that were subject to the purchase rights under this Warrant
immediately prior to such reclassification or other change and the Purchase
Price therefore shall be appropriately adjusted, all subject to further
adjustment as provided in this Section 4. No adjustment shall be made
pursuant to this Section 4.3 upon any conversion or redemption of the Common
Stock which is the subject of Section 4.5.
4.4. ADJUSTMENT FOR CAPITAL REORGANIZATION, MERGER OR CONSOLIDATION.
In case of any capital reorganization of the capital stock of the Company
(other than a combination, reclassification, exchange or subdivision of
shares otherwise provided for herein), or any merger or consolidation of the
Company with or into another corporation (other than a Change of
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
Control Transaction), then, and in each such case, as a part of such
reorganization, merger, or consolidation, lawful provision shall be made so
that the Holder of this Warrant shall thereafter be entitled to receive upon
exercise of this Warrant, during the period specified herein and upon payment
of the Purchase Price then in effect, the number of shares of stock or other
securities or property of the successor corporation resulting from such
reorganization, merger, or consolidation that a holder of the shares
deliverable upon exercise of this Warrant would have been entitled to receive
in such reorganization, consolidation, or merger if this Warrant had been
exercised immediately before such reorganization, merger, or consolidation,
all subject to further adjustment as provided in this Section 4. The
foregoing provisions of this Section 4.4 shall similarly apply to successive
reorganizations, consolidations, and mergers and to the stock or securities
of any other corporation that are at the time receivable upon the exercise of
this Warrant. If the per-share consideration payable to the Holder hereof
for shares in connection with any such transaction is in a form other than
cash or marketable securities, then the value of such consideration shall be
determined in good faith by the Company's Board of Directors. In all events,
appropriate adjustment (as determined in good faith by the Company's Board of
Directors) shall be made in the application of the provisions of this Warrant
with respect to the rights and interests of the Holder after the transaction,
to the end that the provisions of this Warrant shall be applicable after that
event, as near as reasonably may be, in relation to any shares or other
property deliverable after that event upon exercise of this Warrant.
4.5. CONVERSION OF COMMON STOCK. In case all or any portion of the
authorized and outstanding shares of Common Stock of the Company are redeemed
or converted or reclassified into other securities or property pursuant to
the Company's Articles of Incorporation or otherwise, or the Common Stock
otherwise ceases to exist, then, in such case, the Holder of this Warrant,
upon exercise hereof at any time after the date on which the Common Stock is
so redeemed or converted, reclassified or ceases to exist (the "TERMINATION
DATE"), shall receive, in lieu of the number of shares of Common Stock that
would have been issuable upon such exercise immediately prior to the
Termination Date, the securities or property that would have been received if
this Warrant had been exercised in full and the Common Stock received
thereupon had been simultaneously converted immediately prior to the
Termination Date, all subject to further adjustment as provided in this
Warrant. Additionally, the Purchase Price shall be immediately adjusted to
equal the quotient obtained by dividing (x) the aggregate Purchase Price of
the maximum number of shares of Common Stock for which this Warrant was
exercisable immediately prior to the Termination Date by (y) the number of
securities for which this Warrant is exercisable immediately after the
Termination Date, all subject to further adjustment as provided herein.
5. CERTIFICATE AS TO ADJUSTMENTS. In each case of any adjustment in the
Purchase Price, or number or type of shares issuable upon exercise of this
Warrant, the Chief Financial Officer of the Company shall compute such
adjustment in accordance with the terms of this Warrant and prepare a
certificate setting forth such adjustment and showing in detail the facts
upon which such adjustment is based, including a statement of the adjusted
Purchase Price. The Company shall promptly send (by facsimile and by either
first class mail, postage prepaid or overnight delivery) a copy of each such
certificate to the Holder.
6. LOSS OR MUTILATION. Upon receipt of evidence reasonably satisfactory
to the Company of the ownership of and the loss, theft, destruction or
mutilation of this Warrant, and of
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
indemnity reasonably satisfactory to it, and (in the case of mutilation) upon
surrender and cancellation of this Warrant, the Company will execute and
deliver in lieu thereof a new Warrant of like tenor as the lost, stolen,
destroyed or mutilated Warrant.
7. RESERVATION OF COMMON STOCK. The Company hereby covenants that at all
times there shall be reserved for issuance and delivery upon exercise of this
Warrant such number of shares of Common Stock or other shares of capital
stock of the Company as are from time to time issuable upon exercise of this
Warrant and, from time to time, will take all steps necessary to amend its
Articles of Incorporation to provide sufficient reserves of shares of Common
Stock issuable upon exercise of this Warrant. All such shares shall be duly
authorized, and when issued upon such exercise (assuming no change in
applicable law and assuming no unlawful distribution of the Warrant), shall
be validly issued, fully paid and non-assessable, free and clear of all
liens, security interests, charges and other encumbrances or restrictions on
sale and free and clear of all preemptive rights, except encumbrances or
restrictions arising under federal or state securities laws. Issuance of this
Warrant shall constitute full authority to the Company's officers who are
charged with the duty of executing stock certificates to execute and issue
the necessary certificates for shares of Common Stock upon the exercise of
this Warrant.
8. TRANSFER AND EXCHANGE. Subject to the terms and conditions of this
Warrant and compliance with all applicable securities laws, this Warrant and
all rights hereunder may be transferred to any Registered Holder's parent,
subsidiary or affiliate, in whole or in part, on the books of the Company
maintained for such purpose at the principal office of the Company referred
to above, by the Registered Holder hereof in person, or by duly authorized
attorney, upon surrender of this Warrant properly endorsed and upon payment
of any necessary transfer tax or other governmental charge imposed upon such
transfer. Upon any permitted partial transfer, the Company will issue and
deliver to the Registered Holder a new Warrant or Warrants with respect to
the shares of Common Stock not so transferred. Each taker and holder of this
Warrant, by taking or holding the same, consents and agrees that when this
Warrant shall have been so endorsed, the person in possession of this Warrant
may be treated by the Company, and all other persons dealing with this
Warrant, as the absolute owner hereof for any purpose and as the person
entitled to exercise the rights represented hereby, any notice to the
contrary notwithstanding; provided, however that until a transfer of this
Warrant is duly registered on the books of the Company, the Company may treat
the Registered Holder hereof as the owner for all purposes.
9. RESTRICTIONS ON TRANSFER. The Holder, by acceptance hereof, agrees
that, absent an effective registration statement filed with the SEC under the
Securities Act of 1933, as amended (the "1933 ACT"), covering the disposition
or sale of this Warrant or the Common Stock issued or issuable upon exercise
hereof, and registration or qualification under applicable state securities
laws, such Holder will not sell, transfer, pledge, or hypothecate any or all
of such Warrant or Common Stock, unless either (i) the Company has received
an opinion of counsel, in form and substance reasonably satisfactory to the
Company, to the effect that such registration is not required in connection
with such disposition or (ii) the sale of such securities is made pursuant to
SEC Rule 144.
10. COMPLIANCE WITH SECURITIES LAWS. By acceptance of this Warrant, the
Holder hereby represents, warrants and covenants that any shares of Common
Stock purchased
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
upon exercise of this Warrant shall be acquired for investment only and not
with a view to, or for sale in connection with, any distribution thereof;
that the Holder has had such opportunity as such Holder has deemed adequate
to obtain from representatives of the Company such information as is
necessary to permit the Holder to evaluate the merits and risks of its
investment in the Company; that the Holder is able to bear the economic risk
of holding such shares as may be acquired pursuant to the exercise of this
Warrant for an indefinite period; that the Holder understands that the shares
of Common Stock acquired pursuant to the exercise of this Warrant or acquired
upon conversion thereof will not be registered under the 1933 Act (unless
otherwise required pursuant to exercise by the Holder of the registration
rights, if any, previously granted to the registered Holder) and will be
"restricted securities" within the meaning of Rule 144 under the 1933 Act and
that the exemption from registration under Rule 144 will not be available for
at least one year from the date of exercise of this Warrant, subject to any
special treatment by the SEC for exercise of this Warrant pursuant to Section
2.2, and even then will not be available unless a public market then exists
for the stock, adequate information concerning the Company is then available
to the public, and other terms and conditions of Rule 144 are complied with;
and that all stock certificates representing shares of Common Stock issued to
the Holder upon exercise of this Warrant or upon conversion of such shares
may have affixed thereto a legend substantially in the following form:
THE SECURITIES REPRESENTED HEREBY HAVE NOT BEEN REGISTERED UNDER
THE SECURITIES ACT OF 1933, AS AMENDED (THE "ACT"), OR UNDER THE
SECURITIES LAWS OF ANY STATE. THESE SECURITIES ARE SUBJECT TO
RESTRICTIONS ON TRANSFERABILITY AND RESALE AND MAY NOT BE
TRANSFERRED OR RESOLD EXCEPT AS PERMITTED UNDER THE ACT AND THE
APPLICABLE STATE SECURITIES LAWS, PURSUANT TO REGISTRATION OR
EXEMPTION THEREFROM. INVESTORS SHOULD BE AWARE THAT THEY MAY BE
REQUIRED TO BEAR THE FINANCIAL RISKS OF THIS INVESTMENT FOR AN
INDEFINITE PERIOD OF TIME. THE ISSUER OF THESE SECURITIES MAY
REQUIRE AN OPINION OF COUNSEL IN FORM AND SUBSTANCE SATISFACTORY
TO THE ISSUER TO THE EFFECT THAT ANY PROPOSED TRANSFER OR RESALE
IS IN COMPLIANCE WITH THE ACT AND ANY APPLICABLE STATE SECURITIES
LAWS.
11. NO RIGHTS OR LIABILITIES AS STOCKHOLDERS. This Warrant shall not
entitle the Holder to any voting rights or other rights as a shareholder of
the Company. In the absence of affirmative action by such Holder to purchase
Common Stock by exercise of this Warrant, no provisions of this Warrant, and
no enumeration herein of the rights or privileges of the Holder hereof shall
cause such Holder hereof to be a shareholder of the Company for any purpose.
12. REGISTRATION RIGHTS. All shares of Common Stock issuable upon
exercise of this Warrant shall be "Registrable Securities" or such other
definition of securities entitled to registration rights pursuant to the
Third Amended and Restated Investors' Rights Agreement, dated as of July 29,
1998, by and among the Company, the Holder and certain shareholders of the
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
Company, and are entitled, subject to the terms and conditions of that
agreement, to all registration rights granted to holders of Registrable
Securities thereunder.
13. MARKET STAND-OFF AGREEMENT. Holder hereby agrees in connection with
any registration of the Company's securities under the 1933 Act, that, upon
the request of the Company or the underwriters managing any registered public
offering of the Company's securities, such Holder will not sell or otherwise
dispose of this Warrant or any Common Stock issued upon exercise of this
Warrant (or any shares of the Company's Common Stock issued or issuable as a
dividend or other distribution with respect to, or in replacement of, such
Common Stock) without the prior written consent of the Company or such
managing underwriters, as the case may be, for a period of time after the
effective date of such registration requested by such managing underwriters,
but not to exceed 180 days (the "LOCK-UP PERIOD"), and subject to all
restrictions as the Company or the underwriters may specify for all executive
officers and directors of the Company, provided that the Lock up Period
applicable to Holder shall not exceed the Lock up Period for all executive
officers and directors of the Company. In order to enforce the foregoing
covenant, the Company shall have the right to place restrictive legends on
the certificates representing the shares subject to this Section and to
impose stock transfer instructions with respect to such shares (and the
shares or securities of every other period subject to the foregoing
restriction ) until the end of such period.
14. NOTICES. All notices and other communications from the Company to the
Holder shall be given in accordance with the Agreement.
15. HEADINGS. The headings in this Warrant are for purposes of
convenience in reference only, and shall not be deemed to constitute a part
hereof.
16. LAW GOVERNING. This Warrant shall be construed and enforced in
accordance with, and governed by, the laws of the State of California.
17. NO IMPAIRMENT. The Company will not, by amendment of its Articles of
Incorporation or bylaws, or through reorganization, consolidation, merger,
dissolution, issue or sale of securities, sale of assets or any other
voluntary action, avoid or seek to avoid the observance or performance of any
of the terms of this Warrant, but will at all times in good faith assist in
the carrying out of all such terms and in the taking of all such action as
may be necessary or appropriate in order to protect the rights of the
Registered Holder of this Warrant against impairment. Without limiting the
generality of the foregoing, the Company (a) will not increase the par value
of any shares of stock issuable upon the exercise of this Warrant above the
amount payable therefor upon such exercise, and (b) will take all such action
as may be necessary or appropriate in order that the Company may validly and
legally issue fully paid and non-assessable shares of Common Stock upon
exercise of this Warrant.
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
18. NOTICES OF RECORD DATE. In case:
18.1. the Company shall take a record of the holders of its Common
Stock (or other stock or securities at the time receivable upon the exercise
of this Warrant), for the purpose of entitling them to receive any dividend
or other distribution, or any right to subscribe for or purchase any shares
of stock of any class or any other securities or to receive any other right;
or
18.2. of any consolidation or merger of the Company with or into
another corporation, any capital reorganization of the Company, any
reclassification of the Common Stock of the Company, or any conveyance of all
or substantially all of the assets of the Company to another corporation in
which holders of the Company's stock are to receive stock, securities or
property of another corporation; or
18.3. of any voluntary dissolution, liquidation or winding-up of the
Company; or
18.4. of any redemption or conversion of all outstanding Common Stock;
then, and in each such case, the Company will mail or cause to be mailed to
the Registered Holder of this Warrant a notice specifying, as the case may
be, (i) the date on which a record is to be taken for the purpose of such
dividend, distribution or right, or (ii) the date on which such
reorganization, reclassification, consolidation, merger, conveyance,
dissolution, liquidation, winding-up, redemption or conversion is to take
place, and the time, if any is to be fixed, as of which the holders of record
of Common Stock (or such stock or securities as at the time are receivable
upon the exercise of this Warrant), shall be entitled to exchange their
shares of Common Stock (or such other stock or securities), for securities or
other property deliverable upon such reorganization, reclassification,
consolidation, merger, conveyance, dissolution, liquidation or winding-up.
Such notice shall be delivered at least fifteen (15) days prior to the date
therein specified.
19. SEVERABILITY. If any term, provision, covenant or restriction of this
Warrant is held by a court of competent jurisdiction to be invalid, void or
unenforceable, the remainder of the terms, provisions, covenants and
restrictions of this Warrant shall remain in full force and effect and shall
in no way be affected, impaired or invalidated.
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
20. COUNTERPARTS. For the convenience of the parties, any number of
counterparts of this Warrant may be executed by the parties hereto and each
such executed counterpart shall be, and shall be deemed to be, an original
instrument.
21. NO INCONSISTENT AGREEMENTS. The Company will not on or after the date
of this Warrant enter into any agreement with respect to its securities which
is inconsistent with the rights granted to the Holders of this Warrant or
otherwise conflicts with the provisions hereof. The rights granted to the
Holders hereunder do not in any way conflict with and are not inconsistent
with the rights granted to holders of the Company's securities under any
other agreements, except rights that have been waived.
22. SATURDAYS, SUNDAYS AND HOLIDAYS. If the Expiration Date falls on a
day on which the NASDAQ is not open for trading, the Expiration Date shall
automatically be extended until 5:00 p.m. the next business day.
IN WITNESS WHEREOF, the parties hereto have executed this Warrant as
of the Effective Date.
INTEL CORPORATION SILICION IMAGE, INC.
By: /s/ Arvind Sadhani By: /s/ David D. Lee
------------------------- --------------------------
Arvind Sadhani David D. Lee
- ----------------------------- ------------------------------
Printed Name Printed Name
VP & Treasurer CEO
- ----------------------------- ------------------------------
Title Title
SIGNATURE PAGE TO WARRANT
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
EXHIBIT 1
NOTICE OF EXERCISE
(To be executed upon exercise of Warrant)
SILICON IMAGE, INC. WARRANT NO. ___
The undersigned hereby irrevocably elects to exercise the right of purchase
represented by the within Warrant Certificate for, and to purchase
thereunder, the securities of SILICON IMAGE, INC., as provided for therein,
and (check the applicable box):
/ / Tenders herewith payment of the exercise price in full in the form of cash
or a certified or official bank check in same-day funds in the amount of
$____________ for _________ such securities.
/ / Elects the Net Issue Exercise option pursuant to Section 2.2 of the
Warrant, and accordingly requests delivery of a net of ______________ of
such securities, according to the following calculation:
X = Y (A-B) ( ) = ( ) [( ) - ( )]
------- ---------------------------
A ( )
Where X = the number of shares of Common Stock to be issued to Holder.
Y = the number of shares of Common Stock purchasable under the amount
of the Warrant being exchanged (as adjusted to the date of such
calculation).
A = the Fair Market Value of one share of the Common Stock.
B = Purchase Price (as adjusted to the date of such calculation).
/ / Elects the Easy Sale Exercise option pursuant to Section 2.3 of the
Warrant, and accordingly requests delivery of a net of ______________ of
such securities.
Please issue a certificate or certificates for such securities in the name
of, and pay any cash for any fractional share to (please print name, address
and social security number):
Name:
----------------------------------
Address:
-------------------------------
Signature:
-----------------------------
Note: The above signature should correspond exactly with the name on the
first page of this Warrant Certificate or with the name of the assignee
appearing in the assignment form below.
If said number of shares shall not be all the shares purchasable under the
within Warrant Certificate, a new Warrant Certificate is to be issued in the
name of said undersigned for the balance remaining of the shares purchasable
thereunder rounded up to the next higher whole number of shares.
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INTEL/SILICON IMAGE, INC. CONFIDENTIAL
EXHIBIT 2
ASSIGNMENT
(To be executed only upon assignment of Warrant Certificate) WARRANT NO. ___
For value received, hereby sells, assigns and transfers unto
________________________ the within Warrant Certificate, together with all
right, title and interest therein, and does hereby irrevocably constitute and
appoint ____________________________ attorney, to transfer said Warrant
Certificate on the books of the within-named Company with respect to the
number of Warrants set forth below, with full power of substitution in the
premises:
<TABLE>
<CAPTION>
- ---------------------------------------------------------------
NAME(s) OF ASSIGNEE(s) ADDRESS # OF WARRANTS
- ---------------------------------------------------------------
<S> <C> <C>
- ---------------------------------------------------------------
- ---------------------------------------------------------------
- ---------------------------------------------------------------
- ---------------------------------------------------------------
- ---------------------------------------------------------------
</TABLE>
And if said number of Warrants shall not be all the Warrants represented by
the Warrant Certificate, a new Warrant Certificate is to be issued in the
name of said undersigned for the balance remaining of the Warrants registered
by said Warrant Certificate.
Dated:
---------------------------------
Signature:
-----------------------------
Notice: The signature to the foregoing Assignment must correspond to the
name as written upon the face of this security in every particular, without
alteration or any change whatsoever; signature(s) must be guaranteed by an
eligible guarantor institution (banks, stock brokers, savings and loan
associations and credit unions with membership in an approved signature
guarantee medallion program) pursuant to Securities and Exchange Commission
Rule 17Ad-15.
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Exhibit 4.03
CONFIDENTIAL TREATMENT REQUESTED
WARRANT
THE WARRANT EVIDENCED OR CONSTITUTED HEREBY, AND ALL SHARES OF COMMON STOCK
ISSUABLE HEREUNDER, HAVE BEEN AND WILL BE ISSUED WITHOUT REGISTRATION UNDER
THE SECURITIES ACT OF 1933, AS AMENDED ("THE ACT") AND MAY NOT BE SOLD,
OFFERED FOR SALE, TRANSFERRED, PLEDGED OR HYPOTHECATED WITHOUT REGISTRATION
UNDER THE ACT UNLESS EITHER (i) THE COMPANY HAS RECEIVED AN OPINION OF
COUNSEL, IN FORM AND SUBSTANCE REASONABLY SATISFACTORY TO THE COMPANY, TO THE
EFFECT THAT REGISTRATION IS NOT REQUIRED IN CONNECTION WITH SUCH DISPOSITION
OR (ii) THE SALE OF SUCH SECURITIES IS MADE PURSUANT TO SECURITIES AND
EXCHANGE COMMISSION RULE 144.
WARRANT TO PURCHASE COMMON STOCK
OF SILICON IMAGE, INC.
(Subject to Adjustment)
NO. 2
THIS CERTIFIES THAT, for value received, Intel Corporation, a Delaware
corporation ("INTEL"), or its permitted registered assigns ("HOLDER"), is
entitled, subject to the terms and conditions of this Warrant, at any time or
from time to time after September 16, 1998 (the "EFFECTIVE DATE"), and before
5:00 p.m. Pacific Time on September 16, 2004 (the "EXPIRATION DATE"), to
purchase from SILICON IMAGE, INC., a California corporation (the "COMPANY"),
up to two hundred eighty-five thousand, seven hundred fourteen (285,714)
shares of Common Stock of the Company at a price per share of $0.35 (the
"PURCHASE PRICE"). Both the number of shares of Common Stock purchasable
upon exercise of this Warrant and the Purchase Price are subject to
adjustment and change as provided herein. This Warrant is issued pursuant to
that certain Business Cooperation Agreement between the Company and Intel,
dated September 16, 1998 (the "AGREEMENT).
1. CERTAIN DEFINITIONS. As used in this Warrant the following terms
shall have the following respective meanings:
"CHANGE OF CONTROL TRANSACTION" shall mean (i) a consolidation or
merger of the Company with or into any other corporation or corporations in
which the holder of the Company's outstanding shares immediately before such
consolidation or merger do not, immediately after such consolidation or
merger, retain stock representing a majority of the voting power of the
surviving corporation or such consolidation or merger; (ii) any transaction
or series of related transactions in which a person or group acquires shares
or other securities entitled to vote for a majority of the Company's Board of
Directors; or (iii) a sale of all or substantially all of the assets of the
Company.
"COMMON STOCK" shall mean the Common Stock of the Company and any
other securities at any time receivable or issuable upon exercise of this
Warrant.
1
<PAGE>
"DEVELOPMENT" means the company's execution of the Development
Agreement for the [***] Digital Display Interface
Specifications attached as Exhibit A to the Agreement, or a substantially
similar agreement.
"FAIR MARKET VALUE" of a share of Common Stock as of a particular date
shall mean:
(a) If traded on a securities exchange or the Nasdaq
National Market, the Fair Market Value shall be deemed to be the average of
the closing prices of the Common Stock of the Company on such exchange or
market over the 5 business days ending immediately prior to the applicable
date of valuation;
(b) If actively traded over-the-counter, the Fair Market
Value shall be deemed to be the average of the closing bid prices over the
30-day period ending immediately prior to the applicable date of valuation;
and
(c) If there is no active public market, the Fair Market
Value shall be the value thereof, as agreed upon by the Company and the
Holder; PROVIDED, however, that if the Company and the Holder cannot agree on
such value, such value shall be determined by an independent valuation firm
experienced in valuing businesses such as the Company and selected by the
Company and approved by the Holder. Up to a total of $10,000 of fees and
expenses of the valuation firm shall be paid for by the Company; however, any
amounts in excess of $10,000 shall be paid for by the Holder.
"HSR ACT" shall mean the Hart-Scott-Rodino Antitrust Improvements Act
of 1976.
"IPO" shall mean the Company's first underwritten public offering of
the Company's Common Stock pursuant to a registration statement filed with
the Securities and Exchange Commission.
"PC INDUSTRY COMPANIES" means [***].
"REGISTERED HOLDER" shall mean any Holder in whose name this Warrant
is registered upon the books and records maintained by the Company.
"SUPPORT" means participate in publicly known events and promote the
"Digital Display Interface Roadmap" (as defined in the Agreement) (the
"ROADMAP") including, without limitation: production or announcement of
intent to produce products compliant with the Roadmap, issuance of a press
release by a company with positive reference to the Roadmap, or an approved
use of the Company's name in promotional statements for initiatives relating
to the Roadmap.
"WARRANT" as used herein, shall include this Warrant and any warrant
delivered in substitution or exchange therefor as provided herein.
*** Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities and
Exchange Commission.
<PAGE>
2. EXERCISE OF WARRANT
2.1. PAYMENT. Subject to compliance with the terms and conditions
of this Warrant and applicable securities laws, this Warrant may be exercised
only with respect to any shares of Common Stock that are "VESTED SHARES"
pursuant to Section 2.7 below, in whole or in part at any time or from time
to time, on or before the Expiration Date by the delivery (including, without
limitation, delivery by facsimile) of the form of Notice of Exercise attached
hereto as EXHIBIT 1 (the "NOTICE OF EXERCISE"), duly executed by the Holder,
at the principal office of the Company, and as soon as practicable after such
date, surrendering
(a) this Warrant at the principal office of the Company, and
(b) payment, in cash (by check) or by wire transfer of an
amount equal to the product obtained by multiplying the number of shares of
Common Stock being purchased upon such exercise by the then effective
Purchase Price (the "Exercise Amount"), except that if Holder is subject to
HSR Act Restrictions (as defined in Section 2.5 below), the Exercise Amount
shall be paid to the Company within five (5) business days of the termination
of all HSR Act Restrictions.
2.2. NET ISSUE EXERCISE. In lieu of the payment methods set forth in
Section 2.1(b) above, the Holder may elect to exchange all or some of the
Warrant for shares of Common Stock equal to the value of the amount of the
Warrant being exchanged on the date of exchange. If Holder elects to
exchange this Warrant as provided in this Section 2.2, Holder shall tender to
the Company the Warrant for the amount being exchanged, along with written
notice of Holder's election to exchange some or all of the Warrant, and the
Company shall issue to Holder the number of shares of the Common Stock
computed using the following formula:
X = Y (A-B)
-------
A
Where X = the number of shares of Common Stock to be issued to
Holder.
Y = the number of shares of Common Stock purchasable under the
amount of the Warrant being exchanged (as adjusted to the date of
such calculation).
A = the Fair Market Value of one share of Common Stock.
B = Purchase Price (as adjusted to the date of such calculation).
All references herein to an "exercise" of the Warrant shall
include an exchange pursuant to this Section 2.2. Upon receipt of a written
notice of the Company's intention to raise capital by selling shares of
Common Stock in an IPO (the "IPO Notice"), which notice shall be delivered to
Holder at least twenty (20) days before the anticipated date of the filing
with the Securities and Exchange Commission of the registration statement
associated with the IPO (and may be in the form of a notice to Holder
regarding Holder's registration rights with respect to other shares of the
Company's capital stock held by Holder), the Holder shall promptly notify the
<PAGE>
Company whether or not the Holder will exercise this Warrant pursuant to this
Section 2.2 prior to consummation of the IPO. Notwithstanding whether or not
an IPO Notice has been delivered to Holder or any other provision of this
Warrant to the contrary, if Holder decides to exercise this Warrant while a
registration statement is on file with the Securities and Exchange Commission
(the "SEC") in connection with the IPO, this Warrant shall be deemed
exercised on the consummation of the IPO and the Fair Market Value of a share
of Common Stock will be the price at which one share of Common Stock was sold
to the public in the IPO. If Holder has elected to exercise this Warrant
pursuant to this Section 2.2 while a registration statement is on file with
the SEC in connection with an IPO and the IPO is not consummated, then
Holder's exercise of this Warrant shall not be effective unless Holder
confirms in writing Holder's intention to go forward with the exercise of
this Warrant.
2.3. "EASY SALE" EXERCISE. In lieu of the payment methods set forth
in Section 2.1(b) above, when permitted by law and applicable regulations
(including Nasdaq and NASD rules), the Holder may pay the Purchase Price
through a "same day sale" commitment from the Holder (and if applicable a
broker-dealer that is a member of the National Association of Securities
Dealers (a "NASD DEALER")), whereby the Holder irrevocably elects to exercise
this Warrant and to sell a portion of the shares of Common Stock so purchased
to pay for the Purchase Price and the Holder (or, if applicable, the NASD
Dealer) commits upon sale (or, in the case of the NASD Dealer, upon receipt)
of such shares of Common Stock to forward the Purchase Price directly to the
Company.
2.4. STOCK CERTIFICATES; FRACTIONAL SHARES. As soon as practicable
on or after such date, the Company shall issue and deliver to the person or
persons entitled to receive the same a certificate or certificates for the
number of whole shares of Common Stock issuable upon such exercise, together
with cash in lieu of any fraction of a share equal to such fraction of the
current Fair Market Value of one whole share of Common Stock as of the date
of exercise of this Warrant. No fractional shares or scrip representing
fractional shares shall be issued upon an exercise of this Warrant.
2.5. HSR ACT. The Company hereby acknowledges that exercise of this
Warrant by Holder may subject the Company and/or the Holder to the filing
requirements of the HSR Act and that Holder may be prevented from exercising
this Warrant until the expiration or early termination of all waiting periods
imposed by the HSR Act ("HSR ACT RESTRICTIONS"). If on or before the
Expiration Date Holder has sent an Irrevocable Notice of Exercise to Company
and Holder has not been able to complete the exercise of this Warrant prior
to the Expiration Date because of HSR Act Restrictions, the Holder shall
complete the process of exercising this Warrant in accordance with the
procedures contained herein notwithstanding the fact that completion of the
exercise of this Warrant would take place after the Expiration Date
2.6 PARTIAL EXERCISE; EFFECTIVE DATE OF EXERCISE. In case of any
partial exercise of this Warrant, the Company shall cancel this Warrant upon
surrender hereof and shall execute and deliver a new Warrant of like tenor
and date for the balance of the shares of Common Stock purchasable hereunder.
This Warrant shall be deemed to have been exercised immediately prior to the
close of business on the date of its surrender for exercise as provided
above. However, if
<PAGE>
Holder is subject to HSR Act filing requirements this Warrant shall be deemed
to have been exercised on the date immediately following the date of the
expiration of all HSR Act Restrictions.
The person entitled to receive the shares of Common Stock issuable
upon exercise of this Warrant shall be treated for all purposes as the holder
of record of such shares as of the close of business on the date the Holder
is deemed to have exercised this Warrant.
2.7 VESTING. "UNVESTED SHARES" are shares of Common Stock subject
to this Warrant that have not vested pursuant to this Section 2.7. VESTED
SHARES" refers to the number of shares of Common Stock that have vested due
to meeting the following milestones:
(a) One hundred forty-two thousand, eight hundred
fifty-seven (142,857) shares of Common Stock shall vest in full if, on or
prior to March 31, 1999, both of the following events occur: (A) Intel
publicly discloses the Roadmap, and (B) three (3) of the PC Industry
Companies participate in the Support or Development of the Roadmap;[***]; and
(b) One hundred forty-two thousand, eight hundred
fifty-seven (142,857) shares of Common Stock shall vest thirty (30) days
after Intel first ships for revenue product based on or supporting the [***],
as defined in the Agreement. [***]
(c) If (i) Intel terminates the Agreement for the Company's
material breach pursuant to Section 10.4 of the Agreement prior to [***] as
defined in the Agreement; or (ii) there is a Change in Control and the
surviving corporation does not assume the Company's obligations under the
Agreement; then and in each such case (A) if such breach or non-assumption,
as the case may be, causes Intel to be unable to meet one or both milestones,
all Unvested Shares associated with such milestone(s) shall be deemed vested,
and (B) if it is no longer possible for Intel to meet such milestone(s)
(other than for reasons set forth in (A)), the Warrant shall expire
unexercised with respect to all Unvested Shares associated with such
milestone(s).
2.8. AUTOMATIC EXERCISE. Upon the effective date of a Change of
Control Transaction, (a) this Warrant shall be deemed exercised with respect
to any and all Vested Shares without any action by the Holder, and (b) with
respect to any and all Unvested Shares, to the extent such Unvested Shares
become Vested Shares pursuant to Section 2.7(c), such Vested Shares shall be
deemed exercised without any action by the Holder. In the event the
Agreement is assumed, this
*** Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities and
Exchange Commission.
<PAGE>
Warrant shall be adjusted pursuant to Section 4.4 below. With respect to
Vested Shares, the Holder may deliver a Notice of Exercise in order to
exercise pursuant to Section 2.1 contingent upon the consummation of the
transaction; otherwise, this Warrant shall be deemed exercised pursuant to
Section 2.2.
3. VALID ISSUANCE: TAXES. All shares of Common Stock issued upon the
exercise of this Warrant shall be validly issued, fully paid and
non-assessable, and the Company shall pay all taxes and other governmental
charges that may be imposed in respect of the issue or delivery thereof. The
Company shall not be required to pay any tax or other charge imposed in
connection with any transfer involved in the issuance of any certificate for
shares of Common Stock in any name other than that of the Registered Holder
of this Warrant, and in such case the Company shall not be required to issue
or deliver any stock certificate or security until such tax or other charge
has been paid, or it has been established to the Company's reasonable
satisfaction that no tax or other charge is due.
4. ADJUSTMENT OF PURCHASE PRICE AND NUMBER OF SHARES. The number of
shares of Common Stock issuable upon exercise of this Warrant (or any shares
of stock or other securities or property receivable or issuable upon exercise
of this Warrant) and the Purchase Price are subject to adjustment upon
occurrence of the following events:
4.1. ADJUSTMENT FOR STOCK SPLITS, STOCK SUBDIVISIONS OR COMBINATIONS
OF SHARES. The Purchase Price of this Warrant shall be proportionally
decreased and the number of shares of Common Stock issuable upon exercise of
this Warrant (or any shares of stock or other securities at the time issuable
upon exercise of this Warrant) shall be proportionally increased to reflect
any stock split or subdivision of the Common Stock. The Purchase Price of
this Warrant shall be proportionally increased and the number of shares of
Common Stock issuable upon exercise of this Warrant (or any shares of stock
or other securities at the time issuable upon exercise of this Warrant) shall
be proportionally decreased to reflect any combination of the Common Stock.
4.2. ADJUSTMENT FOR DIVIDENDS OR DISTRIBUTIONS OF STOCK OR OTHER
SECURITIES OR PROPERTY. In case the Company shall make or issue, or shall
fix a record date for the determination of eligible holders entitled to
receive, a dividend or other distribution with respect to the Common Stock
(or any shares of stock or other securities at the time issuable upon
exercise of the Warrant) payable in (a) securities of the Company or (b)
assets (excluding cash dividends paid or payable solely out of retained
earnings), then, in each such case, the Holder of this Warrant on exercise
hereof at any time after the consummation, effective date or record date of
such dividend or other distribution, shall receive, in addition to the shares
of Common Stock (or such other stock or securities) issuable on such exercise
prior to such date, and without the payment of additional consideration
therefor, the securities or such other assets of the Company to which such
Holder would have been entitled upon such date if such Holder had exercised
this Warrant on the date hereof and had thereafter, during the period from
the date hereof to and including the date of such exercise, retained such
shares and/or all other additional stock available by it as aforesaid during
such period giving effect to all adjustments called for by this Section 4.
<PAGE>
4.3. RECLASSIFICATION. If the Company, by reclassification of
securities or otherwise, shall change any of the securities as to which
purchase rights under this Warrant exist into the same or a different number
of securities of any other class or classes, this Warrant shall thereafter
represent the right to acquire such number and kind of securities as would
have been issuable as the result of such change with respect to the
securities that were subject to the purchase rights under this Warrant
immediately prior to such reclassification or other change and the Purchase
Price therefore shall be appropriately adjusted, all subject to further
adjustment as provided in this Section 4. No adjustment shall be made
pursuant to this Section 4.3 upon any conversion or redemption of the Common
Stock which is the subject of Section 4.5.
4.4. ADJUSTMENT FOR CAPITAL REORGANIZATION, MERGER OR CONSOLIDATION.
In case of any capital reorganization of the capital stock of the Company
(other than a combination, reclassification, exchange or subdivision of
shares otherwise provided for herein), or any merger or consolidation of the
Company with or into another corporation (provided, that in the event of a
Change of Control Transaction, this Warrant shall be automatically exercised
with respect to any and all Vested Shares pursuant to Section 2.8 above and
this Section 4.4 shall apply with respect to any and all Unvested Shares),
then, and in each such case, as a part of such reorganization, merger, or
consolidation, lawful provision shall be made so that the Holder of this
Warrant shall thereafter be entitled to receive upon exercise of this
Warrant, during the period specified herein and upon payment of the Purchase
Price then in effect, the number of shares of stock or other securities or
property of the successor corporation resulting from such reorganization,
merger, or consolidation that a holder of the shares deliverable upon
exercise of this Warrant would have been entitled to receive in such
reorganization, consolidation, or merger if this Warrant had been exercised
immediately before such reorganization, merger, or consolidation, all subject
to further adjustment as provided in this Section 4. The foregoing
provisions of this Section 4.4 shall similarly apply to successive
reorganizations, consolidations, and mergers, and to the stock or securities
of any other corporation that are at the time receivable upon the exercise of
this Warrant. If the per-share consideration payable to the Holder hereof
for shares in connection with any such transaction is in a form other than
cash or marketable securities, then the value of such consideration shall be
determined in good faith by the Company's Board of Directors. In all events,
appropriate adjustment (as determined in good faith by the Company's Board of
Directors) shall be made in the application of the provisions of this Warrant
with respect to the rights and interests of the Holder after the transaction,
to the end that the provisions of this Warrant shall be applicable after that
event, as near as reasonably may be, in relation to any shares or other
property deliverable after that event upon exercise of this Warrant.
4.5. CONVERSION OF COMMON STOCK. In case all or any portion of the
authorized and outstanding shares of Common Stock of the Company are redeemed
or converted or reclassified into other securities or property pursuant to
the Company's Articles of Incorporation or otherwise, or the Common Stock
otherwise ceases to exist, then, in such case, the Holder of this Warrant,
upon exercise hereof at any time after the date on which the Common Stock is
so redeemed or converted, reclassified or ceases to exist (the "TERMINATION
DATE"), shall receive, in lieu of the number of shares of Common Stock that
would have been issuable upon such exercise immediately prior to the
Termination Date, the securities or property that would have been received if
this Warrant had been exercised in full and the Common Stock received
thereupon
<PAGE>
had been simultaneously converted immediately prior to the Termination Date,
all subject to further adjustment as provided in this Warrant. Additionally,
the Purchase Price shall be immediately adjusted to equal the quotient
obtained by dividing (x) the aggregate Purchase Price of the maximum number
of shares of Common Stock for which this Warrant was exercisable immediately
prior to the Termination Date by (y) the number of securities for which this
Warrant is exercisable immediately after the Termination Date, all subject to
further adjustment as provided herein.
5. CERTIFICATE AS TO ADJUSTMENTS. In each case of any adjustment in the
Purchase Price, or number or type of shares issuable upon exercise of this
Warrant, the Chief Financial Officer of the Company shall compute such
adjustment in accordance with the terms of this Warrant and prepare a
certificate setting forth such adjustment and showing in detail the facts
upon which such adjustment is based, including a statement of the adjusted
Purchase Price. The Company shall promptly send (by facsimile and by either
first class mail, postage prepaid or overnight delivery) a copy of each such
certificate to the Holder.
6. LOSS OR MUTILATION. Upon receipt of evidence reasonably satisfactory
to the Company of the ownership of and the loss, theft, destruction or
mutilation of this Warrant, and of indemnity reasonably satisfactory to it,
and (in the case of mutilation) upon surrender and cancellation of this
Warrant, the Company will execute and deliver in lieu thereof a new Warrant
of like tenor as the lost, stolen, destroyed or mutilated Warrant.
7. RESERVATION OF COMMON STOCK. The Company hereby covenants that at all
times there shall be reserved for issuance and delivery upon exercise of this
Warrant such number of shares of Common Stock or other shares of capital
stock of the Company as are from time to time issuable upon exercise of this
Warrant and, from time to time, will take all steps necessary to amend its
Articles of Incorporation to provide sufficient reserves of shares of Common
Stock issuable upon exercise of this Warrant. All such shares shall be duly
authorized, and when issued upon such exercise (assuming no change in
applicable law and assuming no unlawful distribution of the Warrant), shall
be validly issued, fully paid and non-assessable, free and clear of all
liens, security interests, charges and other encumbrances or restrictions on
sale and free and clear of all preemptive rights, except encumbrances or
restrictions arising under federal or state securities laws. Issuance of
this Warrant shall constitute full authority to the Company's officers who
are charged with the duty of executing stock certificates to execute and
issue the necessary certificates for shares of Common Stock upon the exercise
of this Warrant.
8. TRANSFER AND EXCHANGE. Subject to the terms and conditions of this
Warrant and compliance with all applicable securities laws, this Warrant and
all rights hereunder may be transferred to any Registered Holder's parent,
subsidiary or affiliate, in whole or in part, on the books of the Company
maintained for such purpose at the principal office of the Company referred
to above, by the Registered Holder hereof in person, or by duly authorized
attorney, upon surrender of this Warrant properly endorsed and upon payment
of any necessary transfer tax or other governmental charge imposed upon such
transfer. Upon any permitted partial transfer, the Company will issue and
deliver to the Registered Holder a new Warrant or Warrants with respect to
the shares of Common Stock not so transferred. Each taker and holder of this
<PAGE>
Warrant, by taking or holding the same, consents and agrees that when this
Warrant shall have been so endorsed, the person in possession of this Warrant
may be treated by the Company, and all other persons dealing with this
Warrant, as the absolute owner hereof for any purpose and as the person
entitled to exercise the rights represented hereby, any notice to the
contrary notwithstanding; provided, however that until a transfer of this
Warrant is duly registered on the books of the Company, the Company may treat
the Registered Holder hereof as the owner for all purposes.
9. RESTRICTIONS ON TRANSFER. The Holder, by acceptance hereof, agrees
that, absent an effective registration statement filed with the SEC under the
Securities Act of 1933, as amended (the "1933 ACT"), covering the disposition
or sale of this Warrant or the Common Stock issued or issuable upon exercise
hereof, and registration or qualification under applicable state securities
laws, such Holder will not sell, transfer, pledge, or hypothecate any or all
of such Warrant or Common Stock, unless either (i) the Company has received
an opinion of counsel, in form and substance reasonably satisfactory to the
Company, to the effect that such registration is not required in connection
with such disposition or (ii) the sale of such securities is made pursuant to
SEC Rule 144.
10. COMPLIANCE WITH SECURITIES LAWS. By acceptance of this Warrant, the
Holder hereby represents, warrants and covenants that any shares of Common
Stock purchased upon exercise of this Warrant shall be acquired for
investment only and not with a view to, or for sale in connection with, any
distribution thereof; that the Holder has had such opportunity as such Holder
has deemed adequate to obtain from representatives of the Company such
information as is necessary to permit the Holder to evaluate the merits and
risks of its investment in the Company; that the Holder is able to bear the
economic risk of holding such shares as may be acquired pursuant to the
exercise of this Warrant for an indefinite period; that the Holder
understands that the shares of Common Stock acquired pursuant to the exercise
of this Warrant or acquired upon conversion thereof will not be registered
under the 1933 Act (unless otherwise required pursuant to exercise by the
Holder of the registration rights, if any, previously granted to the
registered Holder) and will be "restricted securities" within the meaning of
Rule 144 under the 1933 Act and that the exemption from registration under
Rule 144 will not be available for at least one year from the date of
exercise of this Warrant, subject to any special treatment by the SEC for
exercise of this Warrant pursuant to Section 2.2, and even then will not be
available unless a public market then exists for the stock, adequate
information concerning the Company is then available to the public, and other
terms and conditions of Rule 144 are complied with; and that all stock
certificates representing shares of Common Stock issued to the Holder upon
exercise of this Warrant or upon conversion of such shares may have affixed
thereto a legend substantially in the following form:
THE SECURITIES REPRESENTED HEREBY HAVE NOT BEEN REGISTERED UNDER
THE SECURITIES ACT OF 1933, AS AMENDED (THE "ACT"), OR UNDER THE
SECURITIES LAWS OF ANY STATE. THESE SECURITIES ARE SUBJECT TO
RESTRICTIONS ON TRANSFERABILITY AND RESALE AND MAY NOT BE
TRANSFERRED OR RESOLD EXCEPT AS PERMITTED UNDER THE ACT AND THE
<PAGE>
APPLICABLE STATE SECURITIES LAWS, PURSUANT TO REGISTRATION OR
EXEMPTION THEREFROM. INVESTORS SHOULD BE AWARE THAT THEY MAY BE
REQUIRED TO BEAR THE FINANCIAL RISKS OF THIS INVESTMENT FOR AN
INDEFINITE PERIOD OF TIME. THE ISSUER OF THESE SECURITIES MAY
REQUIRE AN OPINION OF COUNSEL IN FORM AND SUBSTANCE SATISFACTORY
TO THE ISSUER TO THE EFFECT THAT ANY PROPOSED TRANSFER OR RESALE
IS IN COMPLIANCE WITH THE ACT AND ANY APPLICABLE STATE SECURITIES
LAWS.
11. NO RIGHTS OR LIABILITIES AS STOCKHOLDERS. This Warrant shall not
entitle the Holder to any voting rights or other rights as a shareholder of
the Company. In the absence of affirmative action by such Holder to purchase
Common Stock by exercise of this Warrant, no provisions of this Warrant, and
no enumeration herein of the rights or privileges of the Holder hereof shall
cause such Holder hereof to be a shareholder of the Company for any purpose.
12. MARKET STAND-OFF AGREEMENT. Holder hereby agrees in connection with
any registration of the Company's securities under the 1933 Act, that, upon
the request of the Company or the underwriters managing any registered public
offering of the Company's securities, such Holder will not sell or otherwise
dispose of this Warrant or any Common Stock issued upon exercise of this
Warrant (or any shares of the Company's Common Stock issued or issuable as a
dividend or other distribution with respect to, or in replacement of, such
Common Stock) without the prior written consent of the Company or such
managing underwriters, as the case may be, for a period of time after the
effective date of such registration requested by such managing underwriters,
but not to exceed 180 days (the "LOCK-UP PERIOD"), and subject to all
restrictions as the Company or the underwriters may specify for all executive
officers and directors of the Company, provided that the Lock up Period
applicable to Holder shall not exceed the Lock up Period for all executive
officers and directors of the Company. In order to enforce the foregoing
covenant, the Company shall have the right to place restrictive legends on
the certificates representing the shares subject to this Section and to
impose stock transfer instructions with respect to such shares (and the
shares or securities of every other period subject to the foregoing
restriction ) until the end of such period.
13. NOTICES. All notices and other communications from the Company to the
Holder shall be given in accordance with the Agreement.
14. HEADINGS. The headings in this Warrant are for purposes of
convenience in reference only, and shall not be deemed to constitute a part
hereof.
15. LAW GOVERNING. This Warrant shall be construed and enforced in
accordance with, and governed by, the laws of the State of California.
16. NO IMPAIRMENT. The Company will not, by amendment of its Articles of
Incorporation or bylaws, or through reorganization, consolidation, merger,
dissolution, issue or sale of securities, sale of assets or any other
voluntary action, avoid or seek to avoid the
<PAGE>
observance or performance of any of the terms of this Warrant, but will at
all times in good faith assist in the carrying out of all such terms and in
the taking of all such action as may be necessary or appropriate in order to
protect the rights of the Registered Holder of this Warrant against
impairment. Without limiting the generality of the foregoing, the Company
(a) will not increase the par value of any shares of stock issuable upon the
exercise of this Warrant above the amount payable therefor upon such
exercise, and (b) will take all such action as may be necessary or
appropriate in order that the Company may validly and legally issue fully
paid and non-assessable shares of Common Stock upon exercise of this Warrant.
17. NOTICES OF RECORD DATE. In case:
17.1. the Company shall take a record of the holders of its Common
Stock (or other stock or securities at the time receivable upon the exercise
of this Warrant), for the purpose of entitling them to receive any dividend
or other distribution, or any right to subscribe for or purchase any shares
of stock of any class or any other securities or to receive any other right;
or
17.2. of any consolidation or merger of the Company with or into
another corporation, any capital reorganization of the Company, any
reclassification of the Common Stock of the Company, or any conveyance of all
or substantially all of the assets of the Company to another corporation in
which holders of the Company's stock are to receive stock, securities or
property of another corporation; or
17.3. of any voluntary dissolution, liquidation or winding-up of the
Company; or
17.4. of any redemption or conversion of all outstanding Common Stock;
then, and in each such case, the Company will mail or cause to be mailed to
the Registered Holder of this Warrant a notice specifying, as the case may
be, (i) the date on which a record is to be taken for the purpose of such
dividend, distribution or right, or (ii) the date on which such
reorganization, reclassification, consolidation, merger, conveyance,
dissolution, liquidation, winding-up, redemption or conversion is to take
place, and the time, if any is to be fixed, as of which the holders of record
of Common Stock (or such stock or securities as at the time are receivable
upon the exercise of this Warrant), shall be entitled to exchange their
shares of Common Stock (or such other stock or securities), for securities or
other property deliverable upon such reorganization, reclassification,
consolidation, merger, conveyance, dissolution, liquidation or winding-up.
Such notice shall be delivered at least fifteen (15) days prior to the date
therein specified.
18. SEVERABILITY. If any term, provision, covenant or restriction of this
Warrant is held by a court of competent jurisdiction to be invalid, void or
unenforceable, the remainder of the terms, provisions, covenants and
restrictions of this Warrant shall remain in full force and effect and shall
in no way be affected, impaired or invalidated.
19. COUNTERPARTS. For the convenience of the parties, any number of
counterparts of this Warrant may be executed by the parties hereto and each
such executed counterpart shall be, and shall be deemed to be, an original
instrument.
<PAGE>
20. NO INCONSISTENT AGREEMENTS. The Company will not on or after the date
of this Warrant enter into any agreement with respect to its securities which
is inconsistent with the rights granted to the Holders of this Warrant or
otherwise conflicts with the provisions hereof. The rights granted to the
Holders hereunder do not in any way conflict with and are not inconsistent
with the rights granted to holders of the Company's securities under any
other agreements, except rights that have been waived.
21. SATURDAYS, SUNDAYS AND HOLIDAYS. If the Expiration Date falls on a
day on which the NASDAQ is not open for trading, the Expiration Date shall
automatically be extended until 5:00 p.m. the next business day.
<PAGE>
IN WITNESS WHEREOF, the parties hereto have executed this Warrant as
of the Effective Date.
INTEL CORPORATION SILICON IMAGE, INC.
By: /s/ Arvind Sodhani By: /s/ David D. Lee
------------------------- --------------------------
Arvind Sodhani David D. Lee
- ----------------------------- ------------------------------
Printed Name Printed Name
VP & TREASURER CEO
- ----------------------------- ------------------------------
Title Title
SIGNATURE PAGE TO WARRANT
<PAGE>
EXHIBIT 1
NOTICE OF EXERCISE
(To be executed upon exercise of Warrant)
SILICON IMAGE, INC. WARRANT NO. ___
The undersigned hereby irrevocably elects to exercise the right of purchase
represented by the within Warrant Certificate for, and to purchase
thereunder, the securities of Silicon Image, Inc., as provided for therein,
and (check the applicable box):
/ / Tenders herewith payment of the exercise price in full in the form of
cash or a certified or official bank check in same-day funds in the
amount of $____________ for _________ such securities.
/ / Elects the Net Issue Exercise option pursuant to Section 2.2 of the
Warrant, and accordingly requests delivery of a net of ______________ of
such securities, according to the following calculation:
X = Y (A-B) ( ) = ( ) [( ) - ( )]
------ ---------------------------
A ( )
Where X = the number of shares of Common Stock to be issued to
Holder.
Y = the number of shares of Common Stock purchasable under the
amount of the Warrant being exchanged (as adjusted to the date of
such calculation).
A = the Fair Market Value of one share of the Common Stock.
B = Purchase Price (as adjusted to the date of such calculation).
/ / Elects the Easy Sale Exercise option pursuant to Section 2.3 of the
Warrant, and accordingly requests delivery of a net of ______________ of
such securities.
Please issue a certificate or certificates for such securities in the name
of, and pay any cash for any fractional share to (please print name, address
and social security number):
Name:
----------------------------------
Address:
-------------------------------
Signature:
-----------------------------
Note: The above signature should correspond exactly with the name on the
first page of this Warrant Certificate or with the name of the assignee
appearing in the assignment form below.
If said number of shares shall not be all the shares purchasable under the
within Warrant Certificate, a new Warrant Certificate is to be issued in the
name of said undersigned for the balance remaining of the shares purchasable
thereunder rounded up to the next higher whole number of shares.
<PAGE>
EXHIBIT 2
ASSIGNMENT
(To be executed only upon assignment of Warrant Certificate) WARRANT NO. ___
For value received, hereby sells, assigns and transfers unto
________________________ the within Warrant Certificate, together with all
right, title and interest therein, and does hereby irrevocably constitute and
appoint ____________________________ attorney, to transfer said Warrant
Certificate on the books of the within-named Company with respect to the
number of Warrants set forth below, with full power of substitution in the
premises:
<TABLE>
<CAPTION>
- ---------------------------------------------------------------
NAME(s) OF ASSIGNEE(s) ADDRESS # OF WARRANTS
- ---------------------------------------------------------------
<S> <C> <C>
- ---------------------------------------------------------------
- ---------------------------------------------------------------
- ---------------------------------------------------------------
- ---------------------------------------------------------------
- ---------------------------------------------------------------
</TABLE>
And if said number of Warrants shall not be all the Warrants represented by
the Warrant Certificate, a new Warrant Certificate is to be issued in the
name of said undersigned for the balance remaining of the Warrants registered
by said Warrant Certificate.
Dated: 19
-------------------------------
Signature:
---------------------------
Notice: The signature to the foregoing Assignment must correspond to the
name as written upon the face of this security in every particular, without
alteration or any change whatsoever; signature(s) must be guaranteed by an
eligible guarantor institution (banks, stock brokers, savings and loan
associations and credit unions with membership in an approved signature
guarantee medallion program) pursuant to Securities and Exchange Commission
Rule 17Ad-15.
<PAGE>
CONFIDENTIAL TREATMENT REQUESTED
AMENDMENT TO SILICON IMAGE, INC.
WARRANT NO. 2 TO PURCHASE COMMON STOCK
This Amendment to the Silicon Image, Inc. Warrant No. 2 to Purchase
Common Stock (the "AMENDMENT") is dated as of April 16, 1999 and is entered
into by and between Silicon Image, Inc., a California corporation (the
"COMPANY"), and Intel Corporation, a Delaware corporation ("INTEL").
Capitalized terms used herein but not otherwise defined herein shall have the
meanings ascribed to them in the Warrant (as defined below).
R E C I T A L S:
WHEREAS, the Company and Intel entered into a Silicon Image, Inc.
Warrant No. 2 to Purchase Common Stock (the "WARRANT"), whereby the Company
issued to Intel a warrant to purchase 285,714 shares of Common Stock of the
Company (the "SHARES").
WHEREAS, the Warrant provided that the Shares would vest in two equal
increments of 142,857 shares upon completion of each of two milestones.
WHEREAS, the first milestone has been met.
WHEREAS, Company and Intel wish to amend the Warrant such that it
shall be exercisable for 142,857 shares of Common Stock of the Company which
vested upon completion of the first milestone and to make further changes as
set forth below.
WHEREAS, the Company and Intel agree that, if and when the second
milestone is completed, the Company will issue to Intel an additional warrant
for 142,857 shares (the "NEW WARRANT") having the same terms as the Warrant,
as amended herein
NOW, THEREFORE, THE PARTIES HEREBY AGREES AS FOLLOWS:
1. AMENDMENT TO PARAGRAPH 1. Paragraph 1 of the Warrant is
hereby amended and restated in its entirety as follows:
"THIS CERTIFIES THAT, for value received, Intel
Corporation, a Delaware corporation ("INTEL"), or its
permitted registered assigns ("HOLDER"), is entitled,
subject to the terms and conditions of this Warrant,
at any time or from time to time after September 16,
1998 (the "EFFECTIVE DATE"), and before 5:00 p.m.
Pacific Time on September 16, 2004 (the "EXPIRATION
DATE"), to purchase from SILICON IMAGE, INC., a
California corporation (the "COMPANY"), up to one
hundred forty-two thousand, eight hundred fifty seven
(142,857), shares of Common Stock of the Company at a
price per share of $0.35 (the "PURCHASE PRICE"). Both
the number of shares of Common Stock purchasable upon
exercise of this Warrant and the Purchase Price are
subject to adjustment and change as provided herein.
This Warrant is issued pursuant to that certain
Business Cooperation Agreement between the Company
and Intel, dated September 16, 1998 (the "AGREEMENT)."
<PAGE>
2. AMENDMENT OF SECTION 2.1. Section 2.1 of the Warrant is
hereby amended to delete the phrase, "only with respect to any shares of
Common Stock that are "Vested Shares" pursuant to Section 2.7 below."
3. DELETION OF SECTION 2.7. Section 2.7 of the Warrant is
hereby deleted in its entirety.
4. AMENDMENT OF SECTION 2.8. Section 2.8 is renumbered
"Section 2.7" and is amended and restated in its entirety to read as follows:
"AUTOMATIC EXERCISE. Upon the effective date of a
Change of Control Transaction, this Warrant shall be
deemed exercised with respect to any and all Shares
without any action by the Holder. In the event the
Agreement is assumed, this Warrant shall be adjusted
pursuant to Section 4.4 below. The Holder may deliver
a Notice of Exercise in order to exercise pursuant to
Section 2.1 contingent upon the consummation of the
transaction; otherwise, this Warrant shall be deemed
exercised pursuant to Section 2.2."
5. AMENDMENT OF SECTION 4.4. The second parenthetical in
Section 4.4 is deleted and replaced by the following: "(provided, that in the
event of a Change of Control Transaction, this Warrant shall be automatically
exercised)."
6. AGREEMENT TO ISSUE NEW WARRANT. The Company shall issue to
Warrantholder the New Warrant thirty (30) days after Intel first ships for
revenue product based on or supporting [***], as defined in the Agreement;
provided, that if this does not occur prior to September 16, 2004, the
Company shall have no further obligation to issue the New Warrant. [***]. The
New Warrant shall be exercisable for 142,857 shares of the Company's common
stock at a price of $0.35 per share, subject to adjustment for changes in the
Company's capital stock that occur after the date hereof and prior to
issuance of the New Warrant, and shall be substantially in the form of the
Warrant. If on or before September 16, 2004 (i) Intel terminates the
Agreement for the Company's material breach pursuant to Section 10.4 of the
Agreement prior to [***], as defined in the Agreement; or (ii) there is a
Change in Control and the surviving corporation does not assume the Company's
obligations under the Agreement; then and in each such case (A) if such
breach or non-assumption, as the case may be, causes Intel to be unable to
meet the milestone set forth in the first two sentences of this paragraph,
the Company shall issue to Warrantholder the New Warrant, and (B) if it is no
longer possible for Intel to meet the milestone described in the first two
sentences of this paragraph (other than for reasons set forth in (A)), the
Company's obligation to issue the New Warrant shall terminate and be of no
further force or effect.
2
*** Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities and
Exchange Commission.
<PAGE>
7. GOVERNING LAW. This Amendment will be governed by and
construed in accordance with the internal laws of the State of California,
excluding that body of laws pertaining to conflict of laws.
8. NO OTHER CHANGES. Accept as amended as set forth in this
Amendment, all other provisions of the Warrant shall continue in full force
and effect.
9. AGREEMENT IN FORCE. The parties hereto hereby confirm and
agree that the Warrant, as amended hereby, is, and shall continue to be, in
full force and effect and is hereby reaffirmed and ratified in all respects.
10. COUNTERPARTS. This Amendment may be executed in one or
more counterparts, each of which shall be deemed an original, which together
will constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Amendment to be duly
executed on the day and year first above written.
SILICON IMAGE, INC. INTEL CORPORATION
By: /s/ David D. Lee By: /s/ Noel Lazo
--------------------------- ---------------------------
Name: David D. Lee Name: Noel Lazo
------------------------ ------------------------
Title: CEO Title: Assistant Treasurer
----------------------- ------------------------
3
<PAGE>
Exhibit 10.10
CONFIDENTIAL TREATMENT REQUESTED
LICENSE AGREEMENT
This License Agreement is made this 15th day of March, 1995 by
Deog-Kyoon Jeong, an individual with a place of business at Seoul National
University, Shinlim-dong, Gwanak-gu, Seoul 151-742, Korea ("DK"), and Silicon
Image, Inc., a California corporation with a place of business at 3715
Redwood Circle, Palo Alto, California 94306 ("SII"). This Agreement will
become effective, if at all, upon the later of (a) March 28, 1995, or (b)
SII's closing of a sale of its securities having a value of at least Two
Million Dollars ($2,000,000).
RECITALS
A. SII has been formed to engage in the business of designing,
manufacturing, and marketing electronic components for transmitting video
information.
B. DK has developed certain "SERIAL LINK TECHNOLOGY" described on
EXHIBIT A hereto.
C. Prior to the date of this Agreement, DK granted limited rights
in the Serial Link Technology to [***] (collectively, the "PRIOR LICENSEES").
D. DK desires to license to SII, and SII desires to license from
DK, the Serial Link Technology for two fields of use: (a) transmitting video
information, and (b) [***].
NOW, THEREFORE, the parties agree as follows:
1. LICENSE.
1.1 GRANT OF RIGHTS. DK hereby grants to SII a perpetual,
irrevocable, worldwide license to use, make, have made, copy, publish,
modify, improve, prepare derivative works based on, market, distribute,
lease, and sell the Serial Link Technology, with full rights to sublicense
others to do the same, solely in two fields of use: (a) transmitting video
information, and (b) [***]. The foregoing license includes, but is not
limited to, licenses under any patents, copyrights, mask work rights, trade
secret rights, and other intellectual property rights (collectively,
"INTELLECTUAL PROPERTY RIGHTS") owned or licensed by DK in connection with
the Serial Link Technology.
1.2 EXCLUSIVITY. DK agrees, however, that after the date of
this Agreement, DK will not grant to any other party rights to use the Serial
Link Technology in the field of use described in Section 1.1(a) above.
1.3 ENHANCEMENTS. SII and DK acknowledge that DK is a
shareholder in SII and that DK's shares in SII are subject to repurchase
restrictions that lapse over four (4) years, provided that DK continues to
render substantial services to SII. SII and DK agree that the services to be
rendered to SII by DK are likely to include maintaining, enhancing, and
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
customizing the Serial Link Technology for use by SII, and that all
enhancements and customizations developed by DK for SII will be owned by SII.
In addition, subject to any limitations imposed by DK's existing agreements
with the Prior Licensees, DK agrees to disclose and license to SII at no
additional charge all enhancements and other modifications of the Serial Link
Technology, regardless of whether they are developed at SII's request, and
the term "Serial Link Technology" as used in this Agreement will be construed
to include all such enhancements and modifications developed by DK. However,
SII will have no obligation to incorporate any such enhancements or
modifications into the Serial Link Technology.
1.4 ADDITIONAL RIGHTS. In the event that DK owns (presently
or in the future) any patent rights that block or interfere with SII's
license rights, DK will grant to SII a non-exclusive license to use, make,
have made, copy, publish, modify, improve, prepare derivative works based on,
market, distribute, lease, and sell any products, software, or hardware
covered by such patent rights, with full rights to sublicense others to do
the same, to the extent necessary to enable SII to exercise its rights under
this Agreement.
2. PAYMENT.
2.1 ROYALTY. During each of the years set forth below, SII
will pay to DK the percentage set forth opposite that year of the "Net
Receipts" (as defined below) actually received by SII with respect to all
sales, licenses, sublicenses, or other commercial exploitation of the Serial
Link Technology or any derivative work thereof.
<TABLE>
<CAPTION>
Percentage of
Year Net Receipts
---- -------------
<S> <C>
[***] [***]
</TABLE>
After [***], no further royalties will be due to DK under this Agreement and
SII's license will be fully paid.
2.2 NET RECEIPTS. As used herein, "NET RECEIPTS" means
SII's gross receipts (exclusive of taxes, interest, service or processing
charges, finance charges, currency exchange fees, insurance, and
transportation costs) from all sales, licenses, sublicenses, or other
commercial exploitation of the Serial Link Technology or any derivative work
thereof, minus (1) any credits or refunds for returns; (2) any rebates and
promotional allowances to customers; and (3) any sales commissions. If, in
connection with any license of the Serial Link Technology, SII receives
refundable advances against future payment obligations, such advances will be
deemed received only as shipments are made against them.
2.3 PAYMENT DATES. Payments due to DK under Section 2.1
hereof will be calculated and made quarterly based on actual receipts for the
previous calendar quarter. Amounts received by SII in foreign currencies
will be deemed converted into United States
2
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
Dollars at the average exchange rates used by SII in its financial statements
for the month of receipt. Within forty-five (45) days after the close of
each quarter ending March 31, June 30, September 30, and December 31, SII
will deliver to DK a report which will provide all reasonably necessary
information for computation of the payments, if any, due to DK for such
quarterly period, together with any payments due DK with respect to such
period.
2.4 AUDIT RIGHTS. An independent certified public
accountant selected by DK may, upon reasonable notice and during normal
business hours, but no more often than once each year, inspect the records of
SII on which such reports are based. SII's determination of the payments due
DK under this Agreement will be deemed conclusive unless, within eighteen
(18) months from the date of payment thereof, DK notifies SII in writing of
any error in such payments. Any inspection of SII's records pursuant to this
Section 2.4 will be conducted during SII's normal business hours, under SII's
supervision, and in a manner which does not interfere with SII's business
operations. If, upon performing an inspection of SII's records, it is
determined that SII has underpaid DK by an amount equal to or greater than
ten percent (10%) of the payments due DK in the particular period in
question, SII shall bear all reasonable expenses and costs of the audit.
3. MARKETING.
3.1 NO OBLIGATION TO MARKET. DK agrees that SII has no
fiduciary duty to DK, either express or implied, and may market, or not
market at all, the Serial Link Technology and its derivative works or any
other technology licensed to or developed by DK for SII hereunder. Nothing
in this Agreement will prevent SII from marketing any other technology,
whether similar or dissimilar to the Serial Link Technology.
3.2 METHODS OF MARKETING. All aspects of the distribution
and marketing of products containing the Serial Link Technology will be in
SII's sole control, including without limitation the methods of marketing,
pricing, naming, packaging, labeling and identification, protection, terms
and conditions of sale or license, and warranty, if any.
3.3 TRADEMARKS. SII and its licensees will sell or
sublicense products containing the Serial Link Technology or derivative works
thereof under a trademark or trademarks to be selected by SII or its
licensees respectively. Such trademarks will be the property of SII or its
licensees respectively, and DK will acquire no rights in any of them.
4. INTELLECTUAL PROPERTY RIGHTS.
4.1 DK'S REPRESENTATIONS AND WARRANTIES. DK represents and
warrants to SII that:
(a) The Serial Link Technology as delivered to SII
will substantially conform to the description in EXHIBIT A.
(b) DK has developed the Serial Link Technology
independently and has not knowingly infringed the Intellectual Property
Rights of others; PROVIDED THAT, with respect to patent rights, DK has
performed no investigation but nothing has come to his attention to indicate
that the Serial Link Technology infringes the patent rights of others.
3
<PAGE>
(c) DK is the sole and exclusive owner of the Serial
Link Technology, subject to the rights of the Prior Licensees, and has full
power and right to enter into this Agreement without liability to others.
(d) DK has previously granted rights in the Serial
Link Technology only to the Prior Licensees. Those prior grants of rights
are consistent with the rights granted to SII herein. DK will not grant any
rights in the Serial Link Technology to any third party which are
inconsistent with the rights granted to SII herein.
(e) DK has full power to enter into this Agreement,
to carry out his obligations under this Agreement, and to grant the rights
granted to SII herein.
4.2 SII'S REPRESENTATIONS AND WARRANTIES. SII represents
and warrants to DK that:
(a) Any contributions by SII to derivative works of
the Serial Link Technology will not infringe upon any Intellectual Property
Rights of any third party.
(b) SII has full power to enter into this Agreement
and to carry out its obligations under this Agreement.
4.3 INFRINGEMENT BY OTHERS. Each party will notify the
other of any infringement of rights in the Serial Link Technology that come
to such party's attention. In the event of any infringement of any rights
granted to SII hereunder, SII will have the first option to bring any action
for such infringement on behalf of itself and DK, and DK will cooperate fully
with SII in such action; and in such event SII will bear the expenses of the
action and will recover its expenses from any sums recovered in the action.
The balance of the proceeds of such action will be deemed to be Net Receipts
and will be divided between SII and DK according to the percentages specified
in Section 2.1. If SII declines in writing to bring any such action, DK may
proceed to bring the action, will bear all expenses of the action, and will
be entitled to any sums recovered in the action.
4.4 INDEPENDENT DEVELOPMENT. Nothing in this Agreement will
impair SII's right to acquire, license, develop for itself, or have others
develop for it, modifications or enhancements to the Serial Link Technology
or derivative works thereof, or replacements for the Serial Link Technology
or derivative works thereof.
5. CONFIDENTIAL INFORMATION.
5.1 NONDISCLOSURE. SII and DK agree that the terms and
conditions of this Agreement, the trade secrets and technology embodied in
the Serial Link Technology, the concepts, know how, techniques and algorithms
known or developed by DK at the time of entering into this Agreement, any
information disclosed by SII to DK or his accountant under Section 2.4, any
information concerning the other party's marketing plans, existing or future
products, and any other confidential business or technical information
disclosed to the other party in the furtherance of this Agreement will be
deemed confidential and held in strict
4
<PAGE>
confidence and will not be disseminated or disclosed without the express
written consent of the other party.
5.2 EXCLUSIONS. Notwithstanding the above, the following
materials will not be deemed confidential:
(a) Information that is or becomes known to the
general public without breach of the nondisclosure obligations of this
Agreement;
(b) Information that is customarily disclosed to
others without restriction on disclosure;
(c) Information that is obtained from a third party
or independently developed without breach of a nondisclosure obligation and
without restriction on disclosure; and
(d) Information that is required to be disclosed in
connection with any suit, action, or other dispute related to this Agreement.
6. TERM AND TERMINATION.
6.1 TERM. This Agreement will commence on the date first
written above and will continue until terminated by mutual consent of the
parties or as provided in this Section 6.
6.2 TERMINATION.
(a) If either party becomes the subject of a
voluntary or involuntary petition in bankruptcy or any proceeding relating to
insolvency, receivership, liquidation, or composition for the benefit of
creditors, if that petition or proceeding is not resolved in its favor within
sixty (60) days after filing, the other party may terminate this Agreement on
thirty (30) days' prior written notice.
(b) If either party materially breaches any term or
condition of this Agreement and fails to cure that breach within thirty (30)
days after receiving written notice of the breach, the other party shall have
the right to terminate this Agreement any time after the end of such thirty
(30) day period.
(c) If SII fails to commercialize the Silicon Link
Technology by within three (3) years of the date when this Agreement becomes
effective, then DK may terminate this Agreement on thirty (30) days' prior
written notice to SII. As used herein, "commercialize" means incorporate in
a product that is readily available and offered for sale to third parties in
commercially reasonable quantities.
6.3 EFFECTS OF TERMINATION.
(a) Each party shall return or destroy all copies of
the confidential information of the other party within thirty (30) days after
the effective date of the termination.
5
<PAGE>
At the request of either party, an officer of the other party will certify in
writing that such other party has complied with this obligation.
(b) All sums owed to SII by DK, or to DK by SII, will
become immediately due and payable upon the effective date of termination.
(c) SII and its licensees will have the right to ship
to customers all products remaining in inventory that contain the Serial Link
Technology or any derivative work thereof.
(d) Neither party will be liable for damages of any
kind as a result of exercising its right to terminate this Agreement
according to its terms, and termination will not affect any other right or
remedy at law or in equity of either party.
(e) All rights and licenses granted by SII (or by
SII's sublicensees) to third parties in good faith will continue in full
force and effect. In addition, the obligations of the parties under Sections
4 (Intellectual Property Rights), 5 (Confidential Information), 7 (Limitation
of Liability), and 8 (Miscellaneous) will survive the termination of this
Agreement.
(f) If DK terminates this Agreement pursuant to
Section 6.2(a) or 6.2(c), all of the rights granted by DK to SII under
Section 1 will immediately terminate and expire (subject to the provisions of
paragraph (e) above concerning the survival of the rights and licenses of
third parties).
7. LIMITATION OF LIABILITY.
SII AND DK WILL NOT BE LIABLE FOR ANY LOST PROFITS OR ANY SPECIAL,
INCIDENTAL, OR CONSEQUENTIAL DAMAGES, EVEN IF INFORMED OF THE POSSIBILITY
THEREOF IN ADVANCE AND EVEN IF A REMEDY SET FORTH HEREIN FAILS OF ITS
ESSENTIAL PURPOSE. THIS LIMITATION APPLIES TO ALL CAUSES OF ACTION UNDER ANY
THEORY OF LIABILITY, INCLUDING WITHOUT LIMITATION BREACH OF CONTRACT, BREACH
OF WARRANTY, NEGLIGENCE, STRICT LIABILITY, AND OTHER TORTS.
8. MISCELLANEOUS.
8.1 GOVERNING LAW; FORUM. This Agreement will be deemed
entered into in Santa Clara County, California and will be governed by and
interpreted in accordance with the substantive laws of the State of
California, excluding the Convention on Contracts for the Sale of
International Goods. The parties agree that any dispute arising out of or
related to this Agreement will be finally settled under the Rules of
Conciliation and Arbitration of the International Chamber of Commerce by a
single arbitrator appointed in accordance with those Rules. The place of
arbitration will be Santa Clara County, California, but the parties hereby
agree to exclude any right of application or appeal to the courts in
connection with any questions of law arising in the course of the reference
or out of the award. The language to be used in the arbitral proceedings
will be English. The applicable procedural law will be the law of the place
of arbitration. Judgment upon the award may be entered in any court having
jurisdiction.
6
<PAGE>
8.2 ASSIGNMENT. Except upon a merger, reorganization, or
sale of all or substantially all the assets of the assigning party, neither
party may assign this Agreement without the prior written consent of the
other. Any assignment permitted hereunder will be subject to the written
consent of the assignee to all the terms and provisions of this Agreement.
8.3 MODIFICATION. No modification to this Agreement, nor
any waiver of any rights, will be effective unless assented to in writing by
the party to be charged, and the waiver of any breach or default shall not
constitute a waiver of any other right hereunder or any subsequent breach or
default.
8.4 NOTICES. Any required or permitted notices hereunder
must be given in writing at the address of each party sent forth above, or to
such other address as either party may substitute by written notice to the
other in the manner contemplated herein, by one of the following methods:
hand delivery; registered, express, or certified mail, return receipt
requested, postage prepaid; nationally-recognized private express courier; or
facsimile. Notices will be deemed given on the date when hand delivered or
transmitted by facsimile, one (1) day after being sent by express mail or
nationally-recognized private express courier, and five (5) days after being
sent by registered or certified mail.
8.5 COUNTERPARTS. This Agreement may be executed in
multiple counterparts, each of which will be deemed an original, but all of
which together will constitute one and the same instrument.
8.6 INDEPENDENT CONTRACTORS. In performing their respective
duties under this Agreement, each of the parties will be operating as an
independent contractor. Nothing contained herein will in any way constitute
any association, partnership, or joint venture between the parties hereto, or
be construed to evidence the intention of the parties to establish any such
relationship.
8.7 SEVERABILITY. In the event that it is determined by a
court of competent jurisdiction that any provision of this Agreement is
invalid, illegal, or otherwise unenforceable, such provision will be enforced
as nearly as possible in accordance with the stated intention of the parties,
while the remainder of this Agreement will remain in full force and effect
and bind the parties according to its terms. To the extent any provision
cannot be enforced in accordance with the stated intentions of the parties,
such provisions will be deemed not to be a part of this Agreement.
8.8 EQUITABLE RELIEF. DK acknowledges that the rights and
licenses granted to SII hereunder are of a unique, unusual, extraordinary,
and intellectual character that gives them a special value, the loss of which
cannot be reasonably or adequately compensated in damages in an action at
law, that a material breach by DK of this Agreement will cause SII great and
irreparable injury and damage and, therefore, that SII will be entitled to
injunctive relief to prevent such injury or damage.
7
<PAGE>
8.9 HEADINGS. The headings of the Sections and subsections
of this Agreement are for convenience only and will not be of any effect in
construing the meanings of the Sections and subsections.
8.10 ENTIRE AGREEMENT. This Agreement and the exhibits
attached hereto constitute the entire and exclusive agreement between the
parties hereto with respect to the subject matter hereof.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first set forth above.
Silicon Image, Inc.
By: /s/ Ignatius Tjandrasuwita 3/15/95 /s/ Deog-Kyoon Jeong 3/15/95
--------------------------------------- -------------------------------
Ignatius Tjandrasuwita, Vice President Deog-Kyoon Jeong
8
<PAGE>
EXHIBIT A
SERIAL LINK TECHNOLOGY SPECIFICATION
The serial link is a point-to-point, differential, communication
interconnect technology, implementable in low-cost, scaleable CMOS process
technologies. The media is a DC-balanced, transformer coupled, 50ohm
twisted-pair cable or 100ohm twinax cable. The transmission cable carries a
low voltage swing (less than 500mV peak-to-peak) differential signals.
Transmission rate can be as high as 1.5 giga bits per second with bit error
rate of 10E-9 or better, in a typical 0.6um CMOS implementations. Silicon
area required to implement serial link cells on an integrated circuits (ICs)
and power consumption are small enough to integrate multiple serial link
channels on an IC.
[***]
9
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
AMENDMENT NO. 1
TO
LICENSE AGREEMENT
BETWEEN DEOG-KYOON JEONG AND SILICON IMAGE, INC.
This Amendment No. 1 shall serve to amend the License Agreement (hereinafter
referred to as "The License Agreement") between Deog-Kyoon Jeong ("DK") and
Silicon Image, Inc. ("SII") dated March 15, 1995. The License Agreement sets
forth terms and conditions of licensing Serial Link Technology developed by
DK to SII in the use of (a) transmitting video information, and (b) [***], as
defined in the section 1.1 of the License Agreement.
The License Agreement is hereby amended as follows:
In the first paragraph of the License Agreement, delete the following
sentence;
"THIS AGREEMENT WILL BECOME EFFECTIVE, IF AT ALL, UPON THE LATER OF (a)
MARCH 28, 1995, OR (b) SII'S CLOSING OF A SALE OF ITS SECURITIES HAVING A
VALUE OF AT LEAST TWO MILLION DOLLARS ($2,000,000)."
And replace with;
"THIS AGREEMENT WILL BECOME EFFECTIVE AS OF MAY1, 1995."
Other than the addition of the foregoing, the License Agreement remains
unmodified and in full force and effect.
The Effective Date of this Amendment No. 1 is May 1, 1995.
Silicon Image, Inc.
By: /s/ Ignatius Tjandrasuwita 5/1/95 /s/ Deog-Kyoon Jeong 5/1/95
-------------------------------------- ------------------------------
Ignatius Tjandrasuwita, Vice President Deog-Kyoon Jeong
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
AMENDMENT NO. 2
TO
LICENSE AGREEMENT
BETWEEN DEOG-KYOON JEONG AND SILICON IMAGE, INC.
This Amendment No. 2, dated November 30, 1995, amends a certain
License Agreement dated March 15, 1995 by and between Deog-Kyoon Jeong ("DK")
and Silicon Image, Inc. ("SII"), as amended by Amendment No. 1 thereto dated
May 1, 1995 (the "License Agreement").
1. Recital D of the License Agreement is amended to read in full as
follows: "DK desires to license to SII, and SII desires to license from DK,
the Serial Link Technology for all fields of use except those that are
exclusively reserved to the Prior Licensees under the terms of their existing
agreements with DK."
2. Section 1.1 of the License Agreement is amended to read in full as
follows: "DK hereby grants to SII a perpetual, irrevocable, worldwide
license to use, make, have made, copy, publish, modify, improve, prepare
derivative works based on, market, distribute, lease, and sell the Serial
Link Technology; with rights to sublicense others to do the same, in all
fields of use except those that are exclusively reserved to the Prior
Licensees under the terms of their existing agreements with DK. The
foregoing license includes, but is not limited to, licenses under any
patents, copyrights, mask work rights, trade secret rights, and other
intellectual property rights (collectively, "INTELLECTUAL PROPERTY RIGHTS")
owned or licensed by DK in connection with the Serial Link Technology."
3. Section 1.2 is amended to read in full as follows: "DK agrees
that after the date of this Agreement, DK will not grant to any other party
rights to use the Serial Link Technology."
4. Except as modified by this Amendment, the terms of the License
Agreement remain in full force and effect.
IN WITNESS WHEREOF, the parties have executed this Amendment No. 2 as
of the date set forth above.
Silicon Image, Inc.
By: /s/ David D. Lee /s/ Deog-Kyoon Jeong
--------------------------- --------------------
David D. Lee, President Deog-Kyoon Jeong
<PAGE>
AMENDMENT NO. 3
TO
LICENSE AGREEMENT
BETWEEN DEOG-KYOON JEONG AND SILICON IMAGE, INC.
This Amendment No. 3, dated 6/18, 1997, amends a certain License
Agreement dated March 15, 1995 by and between Deog-Kyoon Jeong ("DK") and
Silicon Image, Inc. ("SII"), as amended by Amendment No. 1 thereto dated May
1, 1995 and Amendment No. 2 thereto dated November 30, 1995 (the "LICENSE
AGREEMENT").
1. Recital C of the License Agreement is amended to read in full as follows:
"Prior to the date of this Agreement, DK granted limited rights in the
Serial Link Technology to [***] (collectively, the "PRIOR LICENSEES").
2. A new subsection 4.1(f) is added to the License Agreement to read
in full as follows: "In addition to (and in no way limiting) the
foregoing, DK warrants and represents that pursuant to a prior
agreement with [***], and that DK has the right to grant the licenses
granted herein to the inventions covered by such patents and patent
applications."
3. A new subsection 4.1(g) is added to the License Agreement to read in full
as follows: "In addition to (and in no way limiting) the foregoing, DK
warrants and represents that pursuant to a prior agreement with [***]."
4. Except as modified by this Amendment, the terms of the License Agreement
remain in full force and effect.
IN WITNESS WHEREOF, the parties have executed this Amendment No. 3 as
of the date set forth above.
Silicon Image, Inc.
By: /s/ David D. Lee /s/ Deog-Kyoon Jeong
-------------------------- --------------------------
David D. Lee, President Deog-Kyoon Jeong
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
Rider A
To
Amendment No. 3
to
License Agreement
Patents and Patent Applications
[***]
<TABLE>
<CAPTION>
Invention Patent/ Filing/
Description/Title Application No. Country Issue Date
------------------ --------------- ------- ----------
<S> <C> <C> <C>
High speed Serial Link for 5,587,709 U.S.A. Dec/24/1996
fully duplexed data
Communication
</TABLE>
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
EXHIBIT 10.12
CONFIDENTIAL TREATMENT REQUESTED
10/98 AMENDMENT TO THE
BUSINESS COOPERATION AGREEMENT
BETWEEN
SILICON IMAGE, INC AND INTEL CORPORATION
This Amendment to the BCA ("10/98 BCA Amendment") is entered into as of October
30, 1998 ("Effective Date") by and between Silicon Image, Inc. a California
corporation, having an office at 10131 Bubb Road, Cupertino, CA 95134, U.S.A,
("SiI") and Intel Corporation, a Delaware corporation, having an office at 2200
Mission College Blvd., Santa Clara, California 95052, U.S.A. ("Intel").
RECITALS
WHEREAS, obtaining, support and participation from other key companies
in the development of the digital display interface specification(s) may require
that Intel and SiI enter into one or more separate digital display interface
specification development agreement(s) that may materially conflict with one or
more terms of the existing BCA and/or Exhibit A therein and may provide a
materially different working group structure;
WHEREAS, Intel and SiI each desire that their rights and obligations
under the BCA shall apply, to the extent possible, to their respective
activities in the DDI Working Group and the [***] Digital Display Interface
Specifications developed by the DDI Working Group;
WHEREAS, Intel and SiI desire to modify the specification license
agreements provided in Exhibits B, C, D, and E of the BCA and also desire
that all the rights and obligations contained in the BCA regarding executing
the amended [***] Exhibits D and/or E herein, as applicable, shall apply to
the digital display interface specifications produced by the DDI Working
Group;
NOW THEREFORE, in consideration of the mutual covenants and promises
contained herein, the parties agree as follows:
AGREEMENT
1. ADDITIONAL DEFINITIONS
1.1. "BCA" shall mean the existing BUSINESS COOPERATION AGREEMENT
BETWEEN SILICON IMAGE, INC. AND INTEL CORPORATION.
1.2. "DDI Working Group" shall mean a group including Intel,
Silicon Image, and one or more other entities that enter into
a DDI [***] WG Agreement and/or DDI [***]
1 of 1
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
WG Agreement in order to cooperate in developing the [***]
Digital Display Interface Specifications.
1.3. "DDI [***] WG Agreement" shall mean an agreement, other
than the BCA or Exhibit A therein, executed by the DDI
Working Group that provides for joint development of the
[***] Digital Display Interface Specification by the DDI
Working Group and that provides a working group structure
that materially differs from that provided by the existing
BCA and Exhibit A therein and/or includes terms that
materially differ from and conflict with one or more terms
of the BCA and/or Exhibit A therein.
1.4. "DDI [***] WG Agreement" shall mean an agreement, other
than the BCA or Exhibit A therein, executed by the DDI
Working Group that provides for joint development of the
[***] Digital Display Interface Specification by the DDI
Working Group and that provides a working group structure
that materially differs from that provided by the existing
BCA and Exhibit A therein and/or includes terms that
materially differ from and conflict with one or more terms
of the BCA and/or Exhibit A therein.
2. CHANGES TO EXHIBITS B AND C OF THE BCA. Intel and SiI each agree that
the Exhibit B and C amended industry specification license agreements
provided in this 10/98 BCA Amendment replace the BCA Exhibit B and C
industry specification license agreements, respectively.
3. [***]
4. CHANGES TO BCA SECTION 5.3 IF A DDI WORKING GROUP RELEASES A DIGITAL
DISPLAY INTERFACE SPECIFICATION. If Intel and SiI enter into a DDI
[***] WG Agreement and the DDI Working Group publicly releases a [***]
Digital Display Interface Specification, Intel and SiI each agree
that Section 5.3 of the BCA shall be amended as set forth below.
[***]
5. CHANGES TO BCA SECTION 5.4 IF A DDI WORKING GROUP RELEASES A DIGITAL
DISPLAY INTERFACE SPECIFICATION. If Intel and SiI enter into a DDI
[***] WG Agreement and the DDI Working Group publicly releases a [***]
Digital Display Interface Specification, Intel and SiI each agree
that Section 5.4 of the BCA shall be amended as set forth below.
1 of 1
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
[***]
6. EFFECT OF INTEL/SII SPECIFICATION APPROVAL AS PART OF WG. In the
event that Intel and SiI enter into a DDI [***] WG Agreement and/or
DDI [***] WG Agreement and the agreement provides for individual
working group members to approve or disapprove the working group
digital display interface specifications, Intel and SiI each agree
that their respective approval of any such draft or final
specifications, whether under the BCA and/or under the DDI WG
Agreement, shall deem that specification an Approved Specification
for the purposes of the BCA and Section 4.2.2 therein.
7. APPLICABILITY OF BCA TO INTEL'S AND SII'S DDI WORKING GROUP
ACTIVITIES. If Intel and SiI enter into a DDI [***] WG Agreement
and/or a DDI [***] WG Agreement, Intel and SiI each agree that to
the extent that the BCA is not in direct conflict with the DDI [***]
WG Agreement and/or DDI [***] WG Agreement, the BCA shall apply to
their respective activities in the DDI Working Group and the [***]
Digital Display Interface Specifications developed by the DDI
Working Group.
8. POSSIBLE FUTURE AMENDMENTS TO THE BCA. If Intel and SiI enter into a
DDI [***] WG Agreement and/or a DDI [***] WG Agreement, Intel and
SiI each agree to negotiate in good faith to amend the BCA solely to
address any material conflicts between the DDI [***] WG Agreement
and the BCA and/or the DDI [***] WG Agreement and the BCA,
respectively. Intel and SiI each agree that any such amendment(s)
shall preserve to the extent possible their rights and obligations
under the BCA as applied to their respective activities in the DDI
Working Group and the [***] Digital Display Interface Specifications
developed by the DDI Working Group.
1 of 1
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by duly authorized officers or representatives on the date below
written.
INTEL CORPORATION Silicon Image, Inc.
By: /s/ PATRICK P. GELSINGER By: /s/ DAVID D. LEE
------------------------ ----------------
PATRICK P. GELSINGER DAVID D. LEE
- ---------------------------- --------------------
Printed Name Printed Name
V.P., GENERAL MANAGER CEO
- ---------------------------- --------------------
Title Title
12-7-98
- ---------------------------- --------------------
Date Date
[SIGNATURE PAGE TO 10/98 AMENDMENT TO THE BUSINESS COOPERATION
AGREEMENT BETWEEN SILICON IMAGE, INC. AND INTEL CORPORATION]
1 of 1
<PAGE>
Exhibit A
THIS 10/98 BCA AMENDMENT MAKES NO CHANGES TO EXHIBIT A OF THE BCA.
1 of 3
<PAGE>
Amended Exhibit B of the BCA
AMENDED
DIGITAL DISPLAY INTERFACE SPECIFICATION, [***] AGREEMENT
for the Industry
1 of 3
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
LICENSE AGREEMENT BETWEEN INTEL AND SILICON IMAGE FOR THE
DIGITAL DISPLAY INTERFACE SPECIFICATION, [***]
This is a royalty-free, reciprocal patent license provided by Intel and Silicon
Image for Adopters of the Digital Display Interface Specification, [***]
who wish to make use of the Digital Display Interfaces ("DDI") described in the
Digital Display Interface Specifications, in their DDI-compliant products. When
Adopter's authorized representative during the Adoption Period signs this
Agreement and delivers it to Intel at the address below, this Agreement will be
legally binding and will extend to all Fellow Adopters.
- --------------------------------------------------------------------------------
1. DEFINITIONS: As used in this Agreement,
- - "Adoption Period" means any time prior to the later of (1) the date six
(6) months after [INSERT the public release date of the Digital Display
Interface Specification] or (2) the date six (6) months after Adopter
first sells a product that includes a Compliant Portion.
- - "Adopter" is the party identified at the end of this Agreement.
- - "Fellow Adopters" are Intel Corporation ("Intel"), Silicon Image, Inc.
("SiI"), and any other entity which during the Adoption Period executes
and delivers or has executed and delivered to Intel Corporation a
substantially identical counterpart of this Agreement, including any of
the party's Affiliates.
- - "Affiliate" means any entity which directly or indirectly controls, is
controlled by, or is under common control with the subject party, so
long as such control exists.
- - The "Digital Display Interface Specification" is the document entitled
DIGITAL INTERFACE SPECIFICATION, [***], published by Intel.
- - The " Digital Display Interfaces" are the electrical interfaces,
mechanical interfaces, signals, signaling and coding protocols, and bus
protocols disclosed in, and required by, the Digital Display Interface
Specification, including described options in that specification.
- - "Interface Claims" means claims of a patent or patent application,
which are owned or controlled by a party, that must be infringed in
order to comply with the Digital Display Interfaces. "Interface Claims"
does not include claims relating to manufacturing technology, claims
not required to be infringed in complying with the Digital Display
Interfaces (even if in the same patent as Interface Claims), or claims
which, if licensed, would require a payment of royalties to
unaffiliated third parties.
- - "Compliant Portion" means portions of products (hardware, software or
combinations thereof) that implement and are compliant with the Digital
Display Interfaces.
2. RECIPROCAL LICENSE
- - Each Fellow Adopter grants to each other Fellow Adopter a nonexclusive,
royalty-free, irrevocable, nontransferable, non-sublicenseable,
worldwide license under its Interface Claims to make, have made, use,
import, offer to sell and sell products which implement and comply with
the Digital Display Interfaces; provided that such license under
Interface Claims shall not extend to features of a product which are
not required to implement and comply with the Digital Display
Interfaces.
- - Adopter hereby accepts the licenses granted by the Fellow Adopters.
3. GENERAL LEGAL POINTS
- - NOT PARTNERS. The Parties are independent companies and are not
partners or joint venturers with each other. Intel is not acting on
behalf of any other entity including, but not limited to, other
adopters or promoters of the Digital Display Interface Specification.
2 of 3
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
- - NO WARRANTY. The Digital Display Interface Specification is provided
"AS IS" WITH NO WARRANTIES WHATSOEVER, WHETHER EXPRESS, IMPLIED OR
STATUTORY, INCLUDING, BUT NOT LIMITED TO ANY WARRANTY OF
MERCHANTABILITY, NONINFRINGEMENT OF THIRD-PARTY INTELLECTUAL PROPERTY,
FITNESS FOR ANY PARTICULAR PURPOSE, OR ANY WARRANTY OTHERWISE ARISING
OUT OF ANY PROPOSAL, SPECIFICATION, OR SAMPLE.
- - DAMAGES. Neither Party will 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
laws of Delaware. Any litigation arising out of this Agreement shall
take place in Delaware, and the Parties irrevocably consent to
jurisdiction of the state and Federal courts there.
- - COMPLETE AGREEMENT, NO OTHER LICENSES. This Agreement sets forth the
Parties' entire agreement regarding its subject matter. Except for the
rights expressly provided by this Agreement, neither Party grants or
receives, by implication, or estoppel, or otherwise, any rights under
any patents or other intellectual property rights. No modifications or
additions to or deletions from this Agreement shall be binding unless
accepted in writing by an authorized representative of both Parties.
Silicon Image, Inc.
By:
----------------------------------
Vice-President
Date:
----------------------------------
INTEL CORPORATION ADOPTER
By:
---------------------------------- -----------------------------
Vice-President (Company Name)
Date: By:
---------------------------------- ------------------------
Address: Name:
Intel Corporation -----------------------
Digital Display Interface Office Title:
M/S: -----------------------
2200 Mission College Blvd. Date:
Santa Clara, CA 95052-8119 -----------------------
3 of 3
<PAGE>
Amended Exhibit C of the BCA
Amended
DIGITAL DISPLAY INTERFACE SPECIFICATION, [***] AGREEMENT
for the Industry
1 of 3
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
LICENSE AGREEMENT BETWEEN INTEL AND SILICON IMAGE FOR THE
DIGITAL DISPLAY INTERFACE SPECIFICATION, [***]
This is a royalty-free, reciprocal patent license provided by Intel and Silicon
Image for Adopters of the Digital Display Interface Specification, [***]
who wish to make use of the Digital Display Interfaces ("DDI") described in the
Digital Display Interface Specifications, in their DDI-compliant products. When
Adopter's authorized representative during the Adoption Period signs this
Agreement and delivers it to Intel at the address below, this Agreement will be
legally binding and will extend to all Fellow Adopters.
- -------------------------------------------------------------------------------
1. DEFINITIONS: As used in this Agreement,
- - "Adoption Period" means any time prior to the later of (1) the date six
(6) months after [INSERT the public release date of the Digital Display
Interface Specification] or (2) the date six (6) months after Adopter
first sells a product that includes a Compliant Portion.
- - "Adopter" is the party identified at the end of this Agreement.
- - "Fellow Adopters" are Intel Corporation ("Intel"), Silicon Image, Inc.
("SiI"), and any other entity which during the Adoption Period executes
and delivers or has executed and delivered to Intel Corporation a
substantially identical counterpart of this Agreement, including any of
the party's Affiliates.
- - "Affiliate" means any entity which directly or indirectly controls, is
controlled by, or is under common control with the subject party, so
long as such control exists.
- - The "Digital Display Interface Specification" is the document entitled
DIGITAL INTERFACE SPECIFICATION, [***], published by Intel.
- - The " Digital Display Interfaces" are the electrical interfaces,
mechanical interfaces, signals, signaling and coding protocols, and bus
protocols disclosed in, and required by, the Digital Display Interface
Specification, including described options in that specification.
- - "Interface Claims" means claims of a patent or patent application,
which are owned or controlled by a party, that must be infringed in
order to comply with the Digital Display Interfaces. "Interface Claims"
does not include claims relating to manufacturing technology, claims
not required to be infringed in complying with the Digital Display
Interfaces (even if in the same patent as Interface Claims), or claims
which, if licensed, would require a payment of royalties to
unaffiliated third parties.
- - "Compliant Portion" means portions of products (hardware, software or
combinations thereof) that implement and are compliant with the Digital
Display Interfaces.
2. RECIPROCAL LICENSE
- - Each Fellow Adopter grants to each other Fellow Adopter a nonexclusive,
royalty-free, irrevocable, nontransferable, non-sublicenseable,
worldwide license under its Interface Claims to make, have made, use,
import, offer to sell and sell products which implement and comply with
the Digital Display Interfaces; provided that such license under
Interface Claims shall not extend to features of a product which are
not required to implement and comply with the Digital Display
Interfaces.
- - Adopter hereby accepts the licenses granted by the Fellow Adopters.
3. GENERAL LEGAL POINTS
- - NOT PARTNERS. The Parties are independent companies and are not
partners or joint venturers with each other. Intel is not acting on
behalf of any other entity including, but not limited to, other
adopters or promoters of the Digital Display Interface Specification.
2 of 3
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
- - NO WARRANTY. The Digital Display Interface Specification is provided
"AS IS" WITH NO WARRANTIES WHATSOEVER, WHETHER EXPRESS, IMPLIED OR
STATUTORY, INCLUDING, BUT NOT LIMITED TO ANY WARRANTY OF
MERCHANTABILITY, NONINFRINGEMENT OF THIRD-PARTY INTELLECTUAL PROPERTY,
FITNESS FOR ANY PARTICULAR PURPOSE, OR ANY WARRANTY OTHERWISE ARISING
OUT OF ANY PROPOSAL, SPECIFICATION, OR SAMPLE.
- - DAMAGES. Neither Party will 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
laws of Delaware. Any litigation arising out of this Agreement shall
take place in Delaware, and the Parties irrevocably consent to
jurisdiction of the state and Federal courts there.
- - COMPLETE AGREEMENT, NO OTHER LICENSES. This Agreement sets forth the
Parties' entire agreement regarding its subject matter. Except for the
rights expressly provided by this Agreement, neither Party grants or
receives, by implication, or estoppel, or otherwise, any rights under
any patents or other intellectual property rights. No modifications or
additions to or deletions from this Agreement shall be binding unless
accepted in writing by an authorized representative of both Parties.
Silicon Image, Inc.
By:
----------------------------------
Vice-President
Date:
----------------------------------
INTEL CORPORATION ADOPTER
By:
---------------------------------- -----------------------------
Vice-President (Company Name)
Date: By:
---------------------------------- ------------------------
Address: Name:
Intel Corporation -----------------------
Digital Display Interface Office Title:
M/S: -----------------------
2200 Mission College Blvd. Date:
Santa Clara, CA 95052-8119 -----------------------
3 of 3
<PAGE>
[***]
Amended Exhibit D of the BCA
[***]
1 of 3
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
[***]
Amended Exhibit E of the BCA
[***]
1 of 3
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
CONFIDENTIAL TREATMENT REQUESTED
INTEL AND SILICON IMAGE CONFIDENTIAL
BUSINESS COOPERATION AGREEMENT
BETWEEN
SILICON IMAGE, INC. AND INTEL CORPORATION
This Agreement ("Agreement") is entered into as of September 16, 1998
("Effective Date") by and between Silicon Image, Inc. a California
corporation, having an office at 10131 Bubb Road, Cupertino, CA 95134, U.S.A,
("SiI") and Intel Corporation, a Delaware corporation, having an office at
2200 Mission College Blvd., Santa Clara, California 95052, U.S.A. ("Intel").
RECITALS
WHEREAS, Intel and SiI desire to share certain design, technical
information, and know-how to further the development and industry adoption of
a complete digital display interface method between the PC system and digital
desktop displays;
WHEREAS, Intel and SiI desire to document the digital display
interfaces in specifications and publish the specifications to the PC
industry along with associated reciprocal patent licenses;
WHEREAS, Intel and SiI desire to promote the specifications and an
associated technology roadmap to encourage industry adoption of the digital
display interface specifications;
NOW THEREFORE, in consideration of the mutual covenants and promises
contained herein, the parties agree as follows:
AGREEMENT
1. DEFINITIONS
1.1. "Advanced Transmitter" shall mean the layout of the most recent
version of SiI's proprietary transmitter circuit and 1/O
circuit (which SiI makes generally available to SiI's
customers) which encodes, formats and transfers Video Data from
graphics controller circuitry to a Receiver in accordance with
the [***], such that the Advanced Transmitter can transmit to
and be understood by the then most recent version (at the time
Intel requests the Advanced Transmitter under the agreement of
Section 9.2) of the Receiver generally released by SiI. The
Advanced Transmitter shall not include any technology or
products that implement functionality not included within the
[***].
1.2. "Current Transmitter" shall mean the layout of the most recent
version of SiI's proprietary transmitter circuit and 1/O circuit
(which SiI makes generally available to SiI's customers) which
encodes, formats and transfers Video Data from graphics controller
circuitry to a Receiver in accordance with the TMDS protocol
specification as expressed or incorporated in the VESA Plug n
Display, Digital Flat Panel (DFP) group specifications or the
[***] Digital Display Interface Specification, such that the
1
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
Current Transmitter can transmit to and be understood by the then
most recent (at the time Intel requests the Current Transmitter
under the agreement of Section 9.1) version of the Receiver
generally released by SiI. The Current Transmitter supports, at a
minimum, XGA resolution. The Current Transmitter shall not include
any technology or products that implement functionality not
included within the specification corresponding to the Current
Transmitter.
1.3. "Digital Display Interface Roadmap" shall mean a chart that sets
forth the key technology features for the [***] Digital Display
Interface Specifications.
1.4. "DDI Technical Information" shall mean design, technical
information, and know-how about the current TMDS interface that
is relevant to the [***] Digital Display Interface
Specifications and design, technical information, and know-how
about future enhancements to the TMDS interface relevant to the
[***] Digital Display Interface Specification, where such
design, technical information and know-how include, but are not
limited to, the bus protocols, coding and signaling protocols,
signal set, electricals (e.g., V-I curves, timings), mechanical
interfaces (e.g., cables, connectors), and the
architecture/environment in which interface compatible devices
operate.
1.5. "IDF" shall mean an Intel Developers Forum event.
1.6. "Receiver" shall mean integrated circuitry that is dedicated to
providing support logic for a display device and that receives
serial-form encoded digital graphic information from a Current
Transmitter or Advanced Transmitter and decodes and de-serializes
the digital graphic information for display on the display device.
1.7. "[***] Draft Digital Display Interface Specification" shall
mean a draft specification that documents the current TMDS
interface, including, but not limited to, the bus protocols,
coding and signaling protocols, signal set, electricals (e.g., V-1
curves, timings), mechanical interfaces (e.g., cables,
connectors), and the architecture/environment in which interface
compatible devices operate.
1.8. "[***] Digital Display Interface Specification" shall mean a
final-version specification that documents the current TMDS
interface, including, but not limited to, the bus protocols,
coding and signaling protocols, signal set, electricals (e.g., V-I
curves, timings), mechanical interfaces (e.g., cables,
connectors), and the architecture/environment in which interface
compatible devices operate.
1.9. [***]
2
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
2. DIGITAL MONITOR INTERFACE SPECIFICATION DEVELOPMENT
2.1. Intel and SiI each agree to use reasonable and diligent efforts to
collaborate in the development of the [***] Digital Display
Interface Specifications [***]. Intel intends to [***]. However,
[***].
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[***]
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2.2. Intel and SiI each agree to use reasonable and diligent efforts to
identify enhancements to the current TMDS interface [***].
2.3. Between the Effective Date and the public release of the [***]
Digital Display Interface Specification, Intel and SiI each agree
to provide appropriate technical resources to develop, draft, and
review the [***].
2.4. [***], Intel and SiI each agree to provide appropriate
technical resources to develop, draft, and review the [***].
2.5. Intel and SiI each agree to use reasonable and good faith
efforts to agree on [***] development of the [***] Digital
Display Interface Specifications. [***]. In the event that
Intel and SiI cannot agree on [***], Intel and SiI each agree
that either party may exercise the termination provision of
Subsection 10.3.
2.6. TECHNICAL INFORMATION
2.6.1. Intel and SiI each agree to collaborate in good
faith on the identification and sharing of the DDI
Technical Information as needed for the development
of the [***] Digital Display Interface
Specifications.
3
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
2.6.2. Intel and SiI each agree that the technical
information to be exchanged in accordance with
Sections 2.6.1 and 3.1 shall be provided under:
2.6.2.1. the current Corporate Non Disclosure
Agreement (CNDA), Number 94185 dated
September 24, 1997 (included in
Exhibit F), or
2.6.2.2. separate agreements mutually agreed
upon by the parties.
2.6.3. Intel and SiI each acknowledge that certain
technical information may have been obtained from
third parties with confidentiality obligations
thereby restricting disclosure without approval of
the appropriate third party. Intel and SiI each
agree to make a reasonable effort to obtain third
party approval for disclosure of such relevant DDI
Technical Information to the other party.
3. TECHNOLOGY ROADMAP DEVELOPMENT
3.1. Intel and SiI each agree to use reasonable and diligent efforts to
collaborate in the development of the Digital Display Interface
Roadmap.
3.2. Intel and SiI each agree to use reasonable and good faith
efforts to agree on [***] development of the Digital Display
Interface Roadmap. [***]. In the event that Intel and SiI
cannot agree on [***], Intel and SiI each agree that either
party may exercise the termination provision of Subsection 10.3.
4. CONTENT AND PUBLICATION OF THE ROADMAP AND SPECIFICATIONS
4.1. Providing that SiI substantially contributes to the development
of the respective [***] Digital Display Interface
Specifications, as provided in Section 2, Intel agrees to
include a statement in the respective [***] Digital Display
Interface Specifications recognizing SiI's technical
contribution to the respective specifications.
4.2. SPECIFICATION CONTENT AND APPROVAL.
4.2.1. Intel and SiI each agree to use reasonable and good
faith efforts to agree on the content of the Digital
Display Interface Roadmap and [***] Digital Display
Interface Specifications before their public release by
Intel. In the event that Intel and SiI cannot agree on
the content of the Digital Display Interface Roadmap, or
the [***] Digital Display Interface Specifications before
their public release, Intel and SiI each
4
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
agree that either party may exercise the termination
provision of Subsection 10.3.
4.2.2. In preparing the [***] Digital Display Interface
Specifications for publication, Intel will provide SiI
(along with other specification developers) various
draft specifications for review and comment and approval
by Intel and SiI. Such draft specifications will be
marked with the header "DRAFT SPECIFICATION FOR REVIEW
AND COMMENT." Intel and SiI each agree that if within
fourteen (14) days after receiving a draft specification
they do not provide to the other party any written
objection to the content of the draft specification, the
draft specification shall be deemed an "Approved
Specification." If within the fourteen (14) days, any
written objections are provided to the other party, only
the content of the draft specification not specifically
objected to by either party shall be deemed "Approved
Content."
4.3. Intel and SiI agree that Intel will be responsible to publish
[***] Digital Display Interface Specifications to the industry.
4.4. After Intel has posted one of the [***] Digital Display
Interface Specifications on an Intel supported web site, SiI
shall have the right to provide a web link to the posted
specification(s), or reproduce and distribute exact electronic
copies of the posted specification(s), or reproduce and
distribute exact paper copies of the printed file(s) thereof.
4.5. SiI agrees not to assert any copyright claim with respect to
content of the Digital Display Interface Roadmap or the [***]
Digital Display Interface Specifications regarding SiI
contributions included in an Approved Specification or that are
Approved Content (see Subsection 4.2.2).
5. SEPARATE INTELLECTUAL PROPERTY AGREEMENTS
5.1. [***] SPECIFICATION LICENSE AGREEMENT FOR THE INDUSTRY. The
DIGITAL DISPLAY INTERFACE SPECIFICATION, [***] AGREEMENT in
Exhibit B is entirely separate from this Agreement. Intel and
SiI each agree to jointly make the agreement of Exhibit B, or a
substantially similar agreement, available, on a
non-discriminatory basis, to the industry coincident with the
public release of the Approved Specification, [***] Digital
Display Interface Specification. Intel and SiI each agree to
execute the Exhibit B agreements that are signed and returned
to Intel or SiI by third parties with regard to Approved
Specifications. Intel shall retain the executed original
agreements and promptly provide copies to SiI.
[***]
5
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
6. PRODUCT ROADMAPS
6.1. Intel and SiI each agree to use reasonable and good faith efforts
to develop their respective product development plans in support
of the Approved Specifications in the Digital Display Interface
Roadmap, including the Approved Specification, [***] Digital
Display Interface Specification.
6.2. Intel and SiI each understand that rate of adoption of the
Digital Display Interface Roadmap, the [***] Digital Display
Interface Specifications, and their associated respective
product development is dependent to a large degree on the
relative prices and availability of flat panel displays, as
well as other market conditions, over which neither company has
any material control.
7. PROMOTION OF THE ROADMAP AND DIGITAL MONITOR INTERFACE SPECIFICATIONS
7.1. Intel and SiI each agree that any of their respective public
statements regarding support of digital display interfaces will
indicate complete support of the Digital Display Interface Roadmap
and the associated [***] Digital Display Interface Specifications.
7.2. Intel and SiI each agree that the other party may publicize their
respective contributions (including providing intellectual
property) to the development of the Digital Display Interface
Roadmap and the [***] Digital Display Interface Specifications.
7.3. Intel and SiI each agree to use reasonable and good faith efforts
to coordinate their respective public messages regarding the
Digital Display Interface Roadmap, the associated [***] Digital
Display Interface Specifications, and their products that are
compatible with the [***] Digital Display Interface
Specifications.
7.4. Intel agrees to disclose at an Intel sponsored or co-sponsored
event, the Digital Display Interface Roadmap and SiI's role as a
technical contributor. Intel intends to publicly
6
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
disclose the Digital Display Interface Roadmap [***].
7.5. Intel and SiI each agree to support and promote a mutually
approved Digital Display Interface Roadmap in their respective
customer and industry digital desktop display interface initiative
efforts.
7.6. Upon public disclosure of the Approved Specification, [***]
Digital Display Interface Specification, Intel and SiI agree to
use reasonable and good faith efforts to support and promote
industry migration to the Approved Specification, [***] Digital
Display Interface Specification.
8. PROGRAM MANAGEMENT
8.1. Intel and SiI each agree to designate respective project managers
to coordinate their respective development efforts, and to hold
regular management review meetings to review the program's status,
progress and issues, as well as the exchange of DDI Technical
Information. Intel and SiI shall also attempt to identify and
agree on those additional elements to be included in the
development efforts under this Agreement.
8.2. Within ten (10) days after the Effective Date, and thereafter no
less than once a quarter during the term of the agreement, each
party will deliver copies of any items identified as being part of
the DDI Technical Information which have not already been
delivered to the other party.
8.3. It is understood by both parties that some elements of the
collaborative efforts may have been overlooked or that the
identified elements will evolve, be modified and/or enhanced
during the course of the parties' relationship. Both parties
agree to work together to ensure any omissions, modifications
and/or enhancements are quickly identified and raised for
reasonable resolution, with the intention of cooperating to ensure
timely completion of both parties' development efforts. In
addition, updates by either party to their respective development
efforts that could affect the other party's efforts will be
reasonably made available in a timely manner so as to help
facilitate the activities contemplated hereunder.
9. [***]
7
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
10. EFFECTIVE DATE, TERM AND TERMINATION
10.1. TERM. This Agreement will become effective upon the Effective
Date, and shall continue in effect for a term of four (4) years,
unless otherwise terminated under the terms of this Agreement.
10.2. TERMINATION FOR CONVENIENCE. One (1) year after the public
release of the [***] Digital Display Interface Specification,
thereafter either party shall have the right to terminate this
Agreement for any reason or for no reason upon six (6) months
prior written notice to the other party.
10.2.1. In the event of termination under Subsection 10.2,
the terminating party agrees not to publish a
competing display interface specification or
publicly promote a competing display interface
initiative for a period of one (1) year after
termination; provided that the terminating and
non-terminating party are free to design and market
products that support another display interface.
10.2.2. Upon termination under Subsection 10.2, the
terminating party agrees not to assert any copyright
in the [***] Digital Display Interface
Specification with respect to material in any
Approved Specification or that is Approved Content
(as set forth in 4.2.2).
10.2.3. Upon termination under Subsection 10.2, the
terminating party agrees to execute the
respective Exhibit B and C specification license
agreements that are signed and returned to Intel
or SiI by third parties; provided that at the
time of termination, the respective [***] Digital
Display Interface Specification has been publicly
released and are respectively Approved
Specifications under Subsection 4.2.2. The
terminating party agrees to thereafter timely
provide the signed agreements to the
non-terminating party.
10.2.4. The terms defined in quotes (e.g., "ABC" means) in
this Subsection 10.2.4 apply only to this
Subsection 10.2.4 and not the rest of this
Agreement. Effective upon termination under
Subsection 10.2, the terminating party grants to the
non-terminating party a non-exclusive, royalty-free,
nontransferable, world-wide license, with rights to
sublicense under LICENSED CLAIMS, to make, have
made, use, sell, offer to sell, and import products
which implement and comply with the [***] Digital
Display Interface Specification, including described
options in that specification; provided that such
license under Interface Claims shall not extend to
features of a product which are not required to
implement and comply with the Digital Display
Interfaces; and provided that such license under
[***] shall not extend to features of a product
which are not used to implement and comply with the
Digital Display Interfaces. "LICENSED CLAIMS" means
Interface Claims,
8
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
[***]. "INTERFACE CLAIMS" means claims of a
patent or patent application, which are owned or
controlled by a party, that must be infringed in
order to comply with the Digital Display
Interfaces. "Interface Claims" does not include
claims relating to manufacturing technology,
claims not required to be infringed in complying
with the Digital Display Interfaces (even if in
the same patent as Interface Claims), or claims
which, if licensed, would require a payment of
royalties to unaffiliated third parties. The
"DIGITAL DISPLAY INTERFACES" are the electrical
interfaces, mechanical interfaces, signals,
signaling and coding protocols, and bus protocols
disclosed in, and required by, the most recent
(at the time of termination under Subsection
10.2) Approved Specification (as provided in
Subsection 4.2.2) (hereinafter "Convenience
Specification"), including described options in
the Convenience Specification. [***] means
claims of a patent or patent application, which
are owned or controlled by a party, to the extent
that such claims read on [***] does not include
claims relating to manufacturing technology, or
claims which, if licensed, would require a
payment of royalties to unaffiliated third
parties. [***] means claims of a patent or
patent application, which are owned or controlled
by a party, to the extent that such claims read
on [***] does not include claims relating to
manufacturing technology, or claims which, if
licensed, would require a payment of royalties to
unaffiliated third parties. [***].
10.3. TERMINATION FOR DISAGREEMENT. [***], Intel and SiI shall
have the right to terminate this Agreement upon thirty (30) days
prior written notice to the other party.
10.3.1. Upon termination under Subsection 10.3, both
Intel and SiI shall have the right under each
party's copyrights to publish derivative
specifications based on the most recent (at the
time of termination under Subsection 10.3)
Approved Specification (as provided in Subsection
4.2.2) (hereinafter "Disagreement
Specification"). Intel and SiI each agree not to
assert any copyright claim in the Disagreement
Specification or derivative specifications
thereof.
10.3.2. Upon termination under Subsection 10.3, Intel and
SiI each agree to execute the Exhibit B and C
agreements that are signed and returned to Intel or
SiI by third
9
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
parties provided that at the time of termination,
the respective [***] Digital Display Interface
Specification has been publicly released and are
respectively Approved Specifications under
Subsection 4.2.2. Intel and SiI each agree to
provide the other with copies of the fully
executed Exhibit B and C agreements.
10.3.3. The terms defined in quotes (e.g., "ABC" means)
in this Subsection 10.3.3 apply only to this
Subsection 10.3.3 and not the rest of this
Agreement. Effective upon termination under
Subsection 10.3, Intel and SiI each grant to the
other party a non-exclusive, royalty-free,
non-transferable, worldwide license, with rights
to sublicense under LICENSED CLAIMS, to make,
have made, use, sell, offer to sell, and import
products which implement and comply with each
party's next publicly released digital display
interface specification which is each party's
equivalent to the [***] Digital Interface
Specification, including described options in
their respective specification; provided that
such license under Interface Claims shall not
extend to features of a product which are not
required to implement and comply with the Digital
Display Interfaces; and provided that such
license under [***] shall not extend to features
of a product which are not used to implement and
comply with the Digital Display Interfaces.
"Licensed Claims" means Interface Claims, [***].
"INTERFACE CLAIMS" means claims of a patent or
patent application, which are owned or controlled
by a party, that must be infringed in order to
comply with the Digital Display Interfaces.
"Interface Claims" does not include claims
relating to manufacturing technology, claims not
required to be infringed in complying with the
Digital Display Interfaces (even if in the same
patent as Interface Claims), or claims which, if
licensed, would require a payment of royalties to
unaffiliated third parties. The "DIGITAL DISPLAY
INTERFACES" are the electrical interfaces,
mechanical interfaces, signals, signaling and
coding protocols, and bus protocols disclosed in,
and required by, the Disagreement Specification,
including described options in that
specification. [***] means claims of a patent or
patent application, which are owned or controlled
by a party, to the extent that such claims read
on [***] does not include claims relating to
manufacturing technology, or claims which, if
licensed, would require a payment of royalties to
unaffiliated third parties. [***] means claims of
a patent or patent application, which are owned
or controlled by a party, to the extent that such
claims read on [***] does not include claims
relating to manufacturing technology, or claims
which, if licensed, would require a payment of
royalties to unaffiliated third parties. [***]
10
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
[***].
10.4. TERMINATION FOR BREACH. This Agreement may be terminated by either
party upon written notice to the other, if the other party
breaches any material term or condition of this Agreement and
fails to remedy the breach within sixty (60) days after being
given written notice thereof; provided however, that if such
breach cannot be cured within such sixty (60) day period, but
(x) the breach is capable of cure, (y) the breaching party
commences to effect a cure within such sixty (60) day period and
(z) the breaching party diligently pursues such cure, the
breaching party will have so much time as is reasonably necessary
to cure such default.
10.4.1. In the event of termination under Subsection 10.4,
the breaching party agrees not to publish a
competing display interface specification or
publicly promote a competing display interface
initiative for a period of one (1) year after
termination; provided that the breaching and
nonbreaching party are free to design and market
products that support another display interface.
10.4.2. Upon termination under Subsection 10.4, the
breaching party agrees not to assert any copyright
in the [***] Digital Display Interface
Specification with respect to material in any
Approved Specification or that is Approved Content
(as set forth in Subsection 4.2.2).
10.4.3. Upon termination under Subsection 10.4, the
breaching party agrees to execute the respective
Exhibit B and C specification license agreements
that are signed and returned to Intel or SiI by
third parties; provided that at the time of
termination, the respective [***] Digital Display
Interface Specification has been publicly
released and are respectively Approved
Specifications under Subsection 4.2.2. The
breaching party agrees to thereafter timely
provide the signed agreements to the
non-terminating party.
10.4.4. The terms defined in quotes (e.g., "ABC" means)
in this Subsection 10.4.4 apply only to this
Subsection 10.4.4 and not the rest of this
Agreement. Effective upon termination under
Subsection 10.4, the breaching party grants to
the non-breaching party a non-exclusive,
royalty-free, nontransferable, world-wide
license, with rights to sublicense under LICENSED
CLAIMS, to make, have made, use, sell, offer to
sell, and import products to the extent such
products incorporate circuitry which is used to
implement and comply with the [***] Digital
Display Interface Specification, including
described options in that specification.
"LICENSED CLAIMS" means Interface Claims, [***].
"INTERFACE CLAIMS" means claims of a patent or
patent application, which are owned or controlled
by a party, that must be infringed in order to
comply with the Digital Display Interfaces.
"Interface Claims" does not include claims
relating to manufacturing technology, claims not
required to be infringed in complying with the
Digital Display Interfaces (even if in the same
patent as Interface Claims), or claims which, if
licensed, would require a payment of royalties to
unaffiliated third parties. The "DIGITAL DISPLAY
INTERFACES" are the electrical interfaces,
mechanical interfaces, signals, signaling and
coding protocols, and bus protocols
11
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this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
disclosed in, and required by, the most recent
(at the time of termination under Subsection
10.2) Approved Specification (as provided in
Subsection 4.2.2) (hereinafter "Convenience
Specification"), including described options in
the Convenience Specification. [***] means claims
of a patent or patent application, which are
owned or controlled by a party, to the extent
that such claims read on [***] does not include
claims relating to manufacturing technology, or
claims which, if licensed, would require a
payment of royalties to unaffiliated third
parties. [***] means claims of a patent or patent
application, which are owned or controlled by a
party, to the extent that such claims read on
[***] does not include claims relating to
manufacturing technology, or claims which, if
licensed, would require a payment of royalties to
unaffiliated third parties. [***].
10.5. EFFECT OF TERMINATION. The provisions of Sections 1, 4.1, 4.4,
4.5, 7.2, 9. 1, 10, 11, 12, 13, and 5.1 and 5.3 if the [***]
Digital Interface Specification has been publicly released and is
an Approved Specification, and 5.2 and 5.4 if the [***] Digital
Interface Specification has been publicly released and is an
Approved Specification will survive any termination or expiration
of this Agreement.
11. WARRANTY DISCLAIMER
Each party acknowledges that the development efforts to be taken
hereunder are speculative in nature and that there is no guarantee that the
materials contributed by either party will be error free or sufficient to
complete all of its development objectives. THEREFORE, EACH PARTY PROVIDES
TECHNICAL INFORMATION OR OTHER MATERIALS OR INFORMATION PROVIDED HEREUNDER TO
THE OTHER PARTY "AS IS," AND NEITHER PARTY MAKES ANY WARRANTIES, EXPRESS,
IMPLIED, STATUTORY OR OTHERWISE WITH RESPECT TO TECHNICAL INFORMATION, AND
EXPRESSLY DISCLAIMS ALL IMPLIED WARRANTIES OF MERCHANTABILITY, NON
INFRINGEMENT OF THIRD PARTY RIGHTS, AND FITNESS FOR A PARTICULAR PURPOSE. In
the event that either party discovers defects or errors in the DDI Technical
Information or other materials or information delivered hereunder, that
party's sole and exclusive remedy will be for both parties to use their
reasonable efforts to cooperate to correct any such defects or errors.
12. LIMITATION OF LIABILITY
IN NO EVENT WILL EITHER PARTY BE LIABLE FOR LOST PROFITS, LOSS OF
DATA, OR FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, OR INCIDENTAL DAMAGES,
HOWEVER CAUSED, ON ANY THEORY OF LIABILITY AND WHETHER OR NOT SUCH PARTY
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[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, ARISING UNDER ANY CAUSE
OF ACTION AND IN ANY WAY OUT OF THIS AGREEMENT OR THE DESIGNS, PRODUCTS,
INFORMATION OR OTHER TECHNOLOGY PROVIDED PURSUANT TO THIS AGREEMENT. THE
PROVISIONS OF THIS SECTION 10 WILL APPLY NOTWITHSTANDING THE FAILURE OF ANY
LIMITED REMEDIES HEREUNDER.
13. MISCELLANEOUS PROVISIONS
13.1. NO ASSIGNMENT. This Agreement may not be assigned or otherwise
transferred, nor, except as expressly provided herein, may any
right or obligation hereunder be assigned or transferred, to a
third party by either party without the prior written consent of
the other party hereto. Notwithstanding the foregoing or anything
contained herein to the contrary, either party may transfer or
assign its licenses, rights and obligations under this Agreement
to (i) a wholly owned subsidiary who has sufficient resources and
rights to fulfill the terms of this Agreement or (ii) a successor
to all or substantially all of its business or assets relating to
this Agreement who has sufficient resources and rights to fulfill
the terms of this Agreement whether by sale, merger, operation of
law or otherwise.
13.2. NOTICE. All notices required or permitted to be given hereunder
shall be in writing and shall be delivered by hand, or if
dispatched by prepaid air courier or by registered or certified
airmail, postage prepaid, addressed as follows:
If to SiI: If to Intel:
President General Counsel
Silicon Image, Inc. Intel Corporation
2200 Mission College Blvd.
10131 Bubb Road Santa Clara, CA 95052
Cupertino, CA 95134 United States of America
United States of America
Such notices shall be deemed to have been served when received by
addressee or, if delivery is not accomplished by reason of some
fault of the addressee, when tendered for delivery. Either party
may give written notice of a change of address and, after notice
of such change has been received, any notice or request shall
thereafter be given to such party as above provided at such
changed address.
13.3. NO RULE OF STRICT CONSTRUCTION. Regardless of which party may have
drafted this Agreement, no rule of strict construction shall be
applied against either party. If any provision of this Agreement
is determined by a court to be unenforceable, the parties shall
deem the provision to be modified to the extent necessary to allow
it to be enforced to the extent permitted by law, or if it cannot
be modified, the provision will be severed and deleted from this
Agreement, and the remainder of the Agreement will continue in
effect.
13.4. TAXES. Each party shall be responsible for the payment of its own
tax liability arising from this transaction.
13
<PAGE>
13.5. ENTIRE AGREEMENT. This Agreement embodies the entire understanding
of the parties with respect to the subject matter hereof, and
merges all prior discussions between them, and neither of the
parties shall be bound by any conditions, definitions, warranties,
understandings, or representations with respect to the subject
matter hereof other than as expressly provided herein. No oral
explanation or oral information by either party hereto shall alter
the meaning or interpretation of this Agreement.
13.6. MODIFICATION; WAIVER. No modification or amendment to this
Agreement, nor any waiver of any rights, will be effective unless
assented to in writing by the party to be charged, and the waiver
of any breach or default will not constitute a waiver of any other
right hereunder or any subsequent breach or default.
13.7. GOVERNING LAW. This Agreement and matters connected with the
performance thereof shall be construed, interpreted, applied and
governed in all respects in accordance with the laws of the United
States of America and the State of California, without reference
to conflict of laws principles.
13.8. JURISDICTION. Intel and SiI agree that all disputes and litigation
regarding this Agreement and matters connected with its
performance shall be subject to the exclusive jurisdiction of the
courts of the State of California or of the Federal courts sitting
therein.
13.9. CONFIDENTIALITY OF TERMS. The parties hereto shall keep the terms
of this Agreement confidential and shall not now or hereafter
divulge these terms to any third party except:
13.9.1. with the prior written consent of the other party;
or
13.9.2. to any governmental body having jurisdiction to call
therefor; or
13.9.3. subject to 13.9.4 below, as otherwise may be
required by law or legal process, including to legal
and financial advisors in their capacity of advising
a party in such matters; or
13.9.4. during the course of litigation so long as the
disclosure of such terms and conditions are
restricted in the same manner as is the confidential
information of other litigating parties and so long
as (a) the restrictions are embodied in a
court-entered Protective Order and (b) the
disclosing party informs the other party in writing
at least ten (10) days in advance of the disclosure;
or
13.9.5. in confidence to legal counsel, accountants, banks
and financing sources and their advisors solely in
connection with complying with financial
transactions.
The parties shall cooperate in preparing and releasing an
announcement, if any, relating to this Agreement.
13.10. PRESS RELEASES.
13.10.1. No publicity or information regarding this Agreement
will be given or released by either party without
the express authorization of the other party, which
authorization shall not be unreasonable withheld.
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<PAGE>
13.10.2. Neither party shall make or authorize any news
release, advertisement, or other public disclosure
which shall deny or confirm the existence of this
Agreement, without the written consent of the other
party which consent shall not be unreasonably
withheld.
13.11. COMPLIANCE WITH LAWS. Anything contained in this Agreement to the
contrary notwithstanding, the obligations of the parties hereto
and of the Subsidiaries of the parties shall be subject to all
laws, present and future, of any government having jurisdiction
over the parties hereto or the Subsidiaries of the parties, and to
orders, regulations, directions or requests of any such
government.
13.12. EXPORT CONTROLS. Each party understands and acknowledges that DDI
Technical Information, software, and other information and
materials transferred hereunder are subject to the export
licensing requirements of the U.S. Government. If any of these are
to be exported by either party, it is that parties sole
responsibility to make timely application in its own name for any
export license required by U.S. export control laws and
regulations.
13.13. FORCE MAJEURE. The parties hereto shall be excused from any
failure to perform any obligation hereunder to the extent such
failure is caused by war, acts of public enemies, strikes or other
labor disturbances, fires, floods, acts of God, or any causes of
like or different kind beyond the control of the parties.
13.14. COUNTERPARTS. This Agreement may be executed in two (2) or more
counterparts, all of which, taken together, will be regarded as
one and the same instrument.
13.15. SECTION HEADINGS. The section headings contained in this Agreement
are for reference purposes only and will not affect in any way the
meaning or interpretation of this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by duly authorized officers or representatives on the date below
written.
INTEL CORPORATION Silicon Image, Inc.
By: /s/ Patrick P. Gelsinger By: /s/ David D. Lee
------------------------------- -----------------------------
Patrick P. Gelsinger David D. Lee
- ---------------------------------- --------------------------------
Printed Name Printed Name
Vice President, General Manager CEO
- ---------------------------------- --------------------------------
Title Title
9-14-98 September 16, 1998
- ---------------------------------- --------------------------------
Date Date
[SIGNATURE PAGE TO BUSINESS COOPERATION AGREEMENT
BETWEEN SILICON IMAGE, INC. AND INTEL CORPORATION]
15
<PAGE>
EXHIBIT A
DEVELOPMENT AGREEMENT FOR THE
DIGITAL DISPLAY INTERFACE SPECIFICATIONS
16
<PAGE>
DEVELOPMENT AGREEMENT FOR THE DIGITAL DISPLAY INTERFACE SPECIFICATIONS
Intel and Silicon Image, Inc. are developing a digital display technology
roadmap and draft specifications which may become appropriate for publication
and industry-wide adoption and seeks the counsel, advice, and input of ABC
COMPANY ("ABC"). In order to facilitate consultations between ourselves and
with other industry participants, this Agreement sets out the legal terms
which will govern those consultations.
TERMS. "INTEL" refers to Intel Corporation. "SII" REFERS TO SILICON IMAGE,
INC. "PARTICIPANT" refers to the industry participant named above. "FELLOW
PARTICIPANTS" refers to other industry participants identified by Intel who
have executed appropriate confidentiality agreements. "DRAFT SPECIFICATIONS"
refers to the "PRELIMINARY VERSIONS OF EACH OF THE FOLLOWING SPECIFICATIONS:
THE DIGITAL DISPLAY INTERFACE SPECIFICATIONS, [***]" being prepared by Intel
and generally relating to the subject of an interface for integrating digital
display devices in a computer system environment.
CONSULTATION. Intel, SiI, and Participant may consult with each other on the
content, feasibility, and other aspects of one or more revisions of the Draft
Specifications. Intel shall be free to incorporate the suggestions of
Participant into the Draft Specifications, and also into the Digital Display
Interface Specifications, [***] and the digital display technology roadmap
which Intel intends to publicly release. Participant agrees not to assert any
copyright claim related to the Specifications.
IN CONFIDENCE. Participant will maintain the Draft Specifications 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
Draft Specifications except as necessary for its employees with a need to
know. 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 on DECEMBER 31, 2003. A party will not be
liable for the disclosure of any information as required by law or which is:
included in the final, publicly released, version of one of
the Specifications, or rightfully in the public domain
other than by such party's breach of a duty; or rightfully
received from a third party without any obligation of
confidentiality; or independently developed by employees of
the receiving party.
FELLOW PARTICIPANTS. Intel may invite additional parties to become Fellow
Participants. When Intel identifies such a Fellow Participant, and such
Fellow Participant has executed a similar confidentiality agreement, the
Participant shall be free to exchange information relating to the Draft
Specification with such party, and such information shall be treated as
confidential as provided above.
EARLY TERMINATION. Any party may terminate this agreement at any time without
cause upon written notice to the other. All obligations of confidentiality,
rights to incorporate the suggestions of Participant into the Specifications,
and non-assertion of copyright claims 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, nor an obligation to buy or
sell products implementing the Specifications. This Agreement will be
governed by the laws of Delaware. All parties understand and acknowledge
that, except as expressly granted herein in writing, no other license under
any patent, copyrights, or other intellectual property right is granted to or
conferred upon either party in this
17
[***] Confidential Treatment has been requested for certain portions of
this document. Such portions have been filed separately with the
Securities and Exchange Commission.
<PAGE>
Agreement or by the transfer of any information by one party to the other
party as contemplated hereunder, either by implication, inducement, estoppel
or otherwise.
AGREED:
INTEL CORPORATION PARTICIPANT
By: By:
----------------------------- ----------------------------
- -------------------------------- -------------------------------
Printed Name Printed Name
- -------------------------------- -------------------------------
Title Title
- -------------------------------- -------------------------------
Date Date
SILICON IMAGE, INC.
By:
-----------------------------
- --------------------------------
Printed Name
- --------------------------------
Title
- --------------------------------
Date
18
<PAGE>
EXHIBIT B
DIGITAL DISPLAY INTERFACE SPECIFICATION [***] AGREEMENT
FOR THE INDUSTRY
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
- --------------------------------------------------------------------------------
THIS IS A ROYALTY-FREE, RECIPROCAL PATENT LICENSE PROVIDED BY INTEL AND
SILICON IMAGE FOR ADOPTERS OF THE DIGITAL DISPLAY INTERFACE SPECIFICATION,
[***] WHO WISH TO MAKE USE OF THE DIGITAL DISPLAY INTERFACES ("DDI")
DESCRIBED IN THE DIGITAL DISPLAY INTERFACE SPECIFICATIONS, IN THEIR
DDI-COMPLIANT PRODUCTS. WHEN ADOPTER'S AUTHORIZED REPRESENTATIVE DURING
THE ADOPTION PERIOD SIGNS THIS AGREEMENT AND DELIVERS IT TO INTEL AT THE
ADDRESS BELOW, THIS AGREEMENT WILL BE LEGALLY BINDING AND WILL EXTEND TO ALL
FELLOW ADOPTERS.
- --------------------------------------------------------------------------------
1. Definitions: AS USED IN THIS AGREEMENT,
- - "Adoption Period" means any time prior to the later of (1) the date six (6)
months after [INSERT the public release date of the Digital Display
Interface Specification] or (2) the date six (6) months after Adopter first
sells a product that includes a Compliant Portion.
- - "Adopter" is the party identified at the end of this Agreement.
- - "Fellow Adopters" are Intel Corporation ("Intel"), Silicon Image, Inc.
("SiI"), and any other entity which during the Adoption Period executes and
delivers or has executed and delivered to Intel Corporation a substantially
identical counterpart of this Agreement, including any of the party's
Affiliates.
- - "Affiliate" means any entity which directly or indirectly controls, is
controlled by, or is under common control with the subject party, so long
as such control exists.
- - The "Digital Display Interface Specification" is the document entitled
DIGITAL INTERFACE SPECIFICATION, [***], published by Intel.
- - The "Digital Display Interfaces" are the electrical interfaces, mechanical
interfaces, signals, signaling and coding protocols, and bus protocols
disclosed in, and required by, the Digital Display Interface Specification,
including described options in that specification.
- - "Interface Claims" means claims of a patent or patent application, which
are owned or controlled by a party, that must be infringed in order to
comply with the Digital Display Interfaces. "Interface Claims" does not
include claims relating to manufacturing technology, claims not required to
be infringed in complying with the Digital Display Interfaces (even if in
the same patent as Interface Claims), or claims which, if licensed, would
require a payment of royalties to unaffiliated third parties.
- - "Compliant Portion" means portions of products (hardware, software or
combinations thereof) that implement and are compliant with the Digital
Display Interfaces.
2. Reciprocal License
- - Each Fellow Adopter grants to each other Fellow Adopter a nonexclusive,
royalty-free, irrevocable, nontransferable, non-sublicenseable, worldwide
license under its Interface Claims to make, have made, use, import, offer
to sell and sell products which implement and comply with the Digital
Display Interfaces; provided that such license under Interface Claims shall
not extend to features of a product which are not required to implement and
comply with the Digital Display Interfaces.
- - Adopter hereby accepts the licenses granted by the Fellow Adopters.
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
3. General Legal Points
- - NOT PARTNERS. The Parties are independent companies and are not partners or
joint venturers with each other. Intel is not acting on behalf of any other
entity including, but not limited to, other adopters or promoters of the
Digital Display Interface Specification.
- - NO WARRANTY. The Digital Display Interface Specification is provided "AS
IS" WITH NO WARRANTIES WHATSOEVER, WHETHER EXPRESS, IMPLIED OR STATUTORY,
INCLUDING, BUT NOT LIMITED TO ANY WARRANTY OF MERCHANTABILITY,
NONINFRINGEMENT OF THIRD-PARTY INTELLECTUAL PROPERTY, FITNESS FOR ANY
PARTICULAR PURPOSE, OR ANY WARRANTY OTHERWISE ARISING OUT OF ANY PROPOSAL,
SPECIFICATION, OR SAMPLE.
- - DAMAGES. Neither Party will 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 laws
of Delaware. Any litigation arising out of this Agreement shall take place
in Delaware, and the Parties irrevocably consent to jurisdiction of the
state and Federal courts there.
- - COMPLETE AGREEMENT, NO OTHER LICENSES. This Agreement sets forth the
Parties' entire agreement regarding its subject matter. Except for the
rights expressly provided by this Agreement, neither Party grants or
receives, by implication, or estoppel, or otherwise, any rights under any
patents or other intellectual property rights. No modifications or
additions to or deletions from this Agreement shall be binding unless
accepted in writing by an authorized representative of both Parties.
SILICON IMAGE, INC.
By:_________________________________
Vice-President
Date:_______________________________
INTEL CORPORATION ADOPTER
By:_________________________________ _____________________________________
Vice-President (Company Name)
Date:_______________________________ By:__________________________________
Address: Name:________________________________
Intel Corporation
Digital Display Interface Office Title: ______________________________
M/S:
2200 Mission College Blvd. Date:________________________________
Santa Clara, CA 95052-8119
<PAGE>
EXHIBIT C
DIGITAL DISPLAY INTERFACE SPECIFICATION, [***] AGREEMENT
FOR THE INDUSTRY
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
- --------------------------------------------------------------------------------
THIS IS A ROYALTY-FREE, RECIPROCAL PATENT LICENSE PROVIDED BY INTEL AND
SILICON IMAGE FOR ADOPTERS OF THE DIGITAL DISPLAY INTERFACE SPECIFICATION,
[***] WHO WISH TO MAKE USE OF THE DIGITAL DISPLAY INTERFACES ("DDI")
DESCRIBED IN THE DIGITAL DISPLAY INTERFACE SPECIFICATIONS, IN THEIR
DDI-COMPLIANT PRODUCTS. WHEN ADOPTER'S AUTHORIZED REPRESENTATIVE DURING
THE ADOPTION PERIOD SIGNS THIS AGREEMENT AND DELIVERS IT TO INTEL AT THE
ADDRESS BELOW, THIS AGREEMENT WILL BE LEGALLY BINDING AND WILL EXTEND TO ALL
FELLOW ADOPTERS.
- --------------------------------------------------------------------------------
1. Definitions: AS USED IN THIS AGREEMENT,
- - "Adoption Period" means any time prior to the later of (1) the date
six (6) months after [INSERT the public release date of the Digital Display
Interface Specification] or (2) the date six (6) months after Adopter first
sells a product that includes a Compliant Portion.
- - "Adopter" is the party identified at the end of this Agreement.
- - "Fellow Adopters" are Intel Corporation ("Intel"), Silicon Image, Inc.
("SiI"), and any other entity which during the Adoption Period executes and
delivers or has executed and delivered to Intel Corporation a substantially
identical counterpart of this Agreement, including any of the party's
Affiliates.
- - "Affiliate" means any entity which directly or indirectly controls, is
controlled by, or is under common control with the subject party, so long
as such control exists.
- - The "Digital Display Interface Specification" is the document entitled
DIGITAL INTERFACE SPECIFICATION, [***] published by Intel.
- - The "Digital Display Interfaces" are the electrical interfaces, mechanical
interfaces, signals, signaling and coding protocols, and bus protocols
disclosed in, and required by, the Digital Display Interface Specification,
including described options in that specification.
- - "Interface Claims" means claims of a patent or patent application, which
are owned or controlled by a party, that must be infringed in order to
comply with the Digital Display Interfaces. "Interface Claims" does not
include claims relating to manufacturing technology, claims not required to
be infringed in complying with the Digital Display Interfaces (even if in
the same patent as Interface Claims), or claims which, if licensed, would
require a payment of royalties to unaffiliated third parties.
- - "Compliant Portion" means portions of products (hardware, software or
combinations thereof) that implement and are compliant with the Digital
Display Interfaces.
2. RECIPROCAL LICENSE
- - Each Fellow Adopter grants to each other Fellow Adopter a nonexclusive,
royalty-free, irrevocable, nontransferable, non-sublicenseable, worldwide
license under its Interface Claims to make, have made, use, import, offer
to sell and sell products which implement and comply with the Digital
Display Interfaces; provided that such license under Interface Claims shall
not extend to features of a product which are not required to implement and
comply with the Digital Display Interfaces.
- - Adopter hereby accepts the licenses granted by the Fellow Adopters.
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
3. General Legal Points
- - NOT PARTNERS. The Parties are independent companies and are not partners or
joint venturers with each other. Intel is not acting on behalf of any other
entity including, but not limited to, other adopters or promoters of the
Digital Display Interface Specification.
- - NO WARRANTY. The Digital Display Interface Specification is provided "AS
IS" WITH NO WARRANTIES WHATSOEVER, WHETHER EXPRESS, IMPLIED OR STATUTORY,
INCLUDING, BUT NOT LIMITED TO ANY WARRANTY OF MERCHANTABILITY,
NONINFRINGEMENT OF THIRD-PARTY INTELLECTUAL PROPERTY, FITNESS FOR ANY
PARTICULAR PURPOSE, OR ANY WARRANTY OTHERWISE ARISING OUT OF ANY PROPOSAL,
SPECIFICATION, OR SAMPLE.
- - DAMAGES. Neither Party will 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 laws
of Delaware. Any litigation arising out of this Agreement shall take place
in Delaware, and the Parties irrevocably consent to jurisdiction of the
state and Federal courts there.
- - COMPLETE AGREEMENT, NO OTHER LICENSES. This Agreement sets forth the
Parties' entire agreement regarding its subject matter. Except for the
rights expressly provided by this Agreement, neither Party grants or
receives, by implication, or estoppel, or otherwise, any rights under any
patents or other intellectual property rights. No modifications or
additions to or deletions from this Agreement shall be binding unless
accepted in writing by an authorized representative of both Parties.
SILICON IMAGE, INC.
By:_________________________________
Vice-President
Date:_______________________________
INTEL CORPORATION ADOPTER
By:_________________________________ _____________________________________
Vice-President (Company Name)
Date:_______________________________ By:__________________________________
Address: Name:________________________________
Intel Corporation
Digital Display Interface Office Title: ______________________________
M/S:
2200 Mission College Blvd. Date:________________________________
Santa Clara, CA 95052-8119
<PAGE>
EXHIBIT D
[***]
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
EXHIBIT E
[***]
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
EXHIBIT F
COPY OF CORPORATE NON DISCLOSURE AGREEMENT (CNDA), NUMBER 94185
BETWEEN INTEL AND SII
20
<PAGE>
AGREEMENT DATE: , 199 CNDA# 94185
--------------- -- --------------------------
CORPORATE NON-DISCLOSURE AGREEMENT
This Corporate Non-Disclosure Agreement ("Agreement") is entered into and
made effective as of the date set forth above, by and between Intel
Corporation ("Intel"), and the Participant identified below ("Participant").
Unless the Participant indicates that this Agreement will apply only to a
specific division or location, this Agreement will apply to the Participant's
entire company.
THE PARTIES AGREE AS FOLLOWS:
1. CONFIDENTIAL INFORMATION TRANSMITTAL FORM. This confidential
proprietary and trade secret information of the disclosing party
("Confidential Information") to be disclosed hereunder is that
information which (i) is described in the Confidential Information
Transmittal Record ("CITR") excluded from time to time hereinafter
and (ii) is marked with "confidential", "proprietary", or similar
legend. CITRs are subject to the terms of this Agreement. CITRs
will be executed by the parties prior to the disclosure of
Confidential Information. All Confidential Information received
from the disclosing party will be in tangible form. To be
considered Confidential Information, non-tangible disclosures must
be identified as confidential prior and [reduced in writing],
marked as provided above and delivered to the receiving party
within thirty (30) days of the original date of disclosure. The
CITR will indicate the disclosing party, a description of the
Confidential Information disclosed, the names of the
representatives of the parties and the date when the disclosure
covered by the CITR commenced.
2. OBLIGATIONS OF RECEIVING PARTY. The receiving party will maintain
the confidentiality of the Confidential Information of the
disclosing party 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. The
receiving party will not disclose any of the disclosing party's
confidential information to any employees or to any third parties
except the receiving party's employees, parent company and
majority-owned subsidiaries who have a need to know and who agree
to abide by non-disclosure terms at least as comprehensive as those
set forth herein provided that the receiving party will be liable
for breach by any such entity. The receiving party will not make
any copies of the Confidential Information received from the
disclosing party except as necessary for employees, parent company
and majority-owned subsidiaries with a need to know. Any copies
which are made will be identified as belonging to the disclosing
party and marked "confidential", "proprietary", or with a similar
legend.
3. PERIOD OF NON-ASSERTION. Unless a shorter period is indicated in
the applicable CITR, the disclosing party will not assert any
claims of breach of this Agreement or misappropriation of trade
secrets against the receiving party arising from the receiving
party's disclosure or the disclosing party's Confidential
Information made more than five (5) years from the date of the CITR
under which such Confidential Information was disclosed. However,
unless at least one of the exceptions set forth in Section 4 below
has occurred, the receiving party will continue to treat such
Confidential Information as the confidential information of the
disclosing party and only disclose any such Confidential
Information to third parties under the terms of a non-disclosure
agreement.
4. TERMINATION OF OBLIGATION OF CONFIDENTIALITY. The receiving party
will not be liable for the disclosure of any Confidential
Information which is
(a) rightfully in the public domain other than by a breach of a duty
in the disclosing party;
(b) rightfully received from third party without any obligation of
confidentiality;
(c) rightfully known to the receiving party without any limitation on
use or disclosure prior to its receipt from the disclosing party;
(d) independently developed by employees of the receiving party; or
(e) generally made available to third parties by the disclosing
party without restriction on disclosure.
5. TITLE. Title or the right to possess Confidential Information as
between the parties will remain in the disclosing party.
6. NO OBLIGATION OF DISCLOSURE, TERMINATION. Neither party has any
obligation to disclose Confidential Information to the other.
Either party may terminate this Agreement at any time without cause
upon written notice to the other party; provided that each party's
obligations with respect to Confidential Information disclosed
during the term of this Agreement will survive any such
termination. Either party may, at any time, (a) cease giving
Confidential Information to the other party without any liability;
and/or (b) request in writing the return or destruction of all or
part of its Confidential Information previously disclosed, and all
copies thereof, and the receiving party will promptly comply with
such request and certify in writing its compliance.
7. RESIDUALS. Notwithstanding anything herein to the contrary, either
party may use the Residuals for any purpose, including without
limitation, use in development, manufacture, promotion, sale and
maintenance of its products and services; provided that this right
in Residuals does not represent a license under any patents,
copyrights or other intellectual property rights of the disclosing
party. The term "Residual" means any information retained in the
unaided memories of the receiving party's employees who have had
access to the disclosing party's Confidential Information pursuant
to the terms of this Agreement. An employee's memory is unaided if
the employee has not intentionally memorized the Confidential
Information for the purpose of retaining and subsequently using or
disclosing it.
8. GENERAL.
(a) This Agreement is neither intended to nor will it be construed
as creating a joint venture, partnership or other form of
business association between the parties nor an obligation
to buy or sell products using or incorporating the Confidential
Information.
(b) Both parties understand and acknowledge that no license under
any patent, copyright, trade secret or other intellectual
property right is granted to or conferred upon either party
in this Agreement or by the disclosure of any Confidential
Information by one party to the other party as contemplated
hereunder, either expressly, by implication, inducement,
estoppel or otherwise, and that an license under such
intellectual property rights must be express and in writing.
(c) The failure of either party to enforce any right resulting
from breach of any provision of this Agreement by the other
party will not be deemed a waiver of any right relating to
a subsequent breach of such provision or any other right
hereunder.
<PAGE>
(d) This Agreement will be governed by the laws of the State
of Delaware without reference to conflict of law principles.
(e) This Agreement, any accompanying CITR and CITRs executed from
time to time hereafter which incorporate the terms of this
Agreement, constitutes the entire agreement between the
parties with respect to the disclosure(s) of Confidential
Information described in each CITR, and may not be amended
except in a writing signed by a duly authorized representative
of the respective parties. Any other agreement between the
parties, including non-disclosure agreements, will not be
affected by this Agreement.
<TABLE>
<CAPTION>
<S> <C> <C>
INTEL CONTACT: MICHAEL HAMANN M/S: TEL. NO.
------------------- ------------------------------- ------------------------
AGREED: PARTICIPANT AND INTEL AGREE THAT PARTICIPANT: SILICON IMAGE
INTEL CORPORATION THIS AGREEMENT SHALL SUPERCEDE 10131 BUBB RD.
2200 Mission College Blvd. SECTION 1.2 OF PARTICIPANT'S THIRD Address
Santa Clara, CA 95052-8119 AMENDED AND RESTATED INVESTORS CUPERTINO CA 95014
RIGHTS AGREEMENT DATED JULY 29, 1998. (city) (state) (zip)
</TABLE>
--------------------------
Intel
<TABLE>
<S> <C>
/s/ [Illegible] /s/ Scott A. Macomber
- --------------------------------------------------------- --------------------------------------
Signature (V.P.) Signature of Authorized Representative
(e.g, President or Vice President)
Vice President Director of Sales Scott A. Macomber
- --------------------------------------------------------- --------------------------------------
Printed Name Printed Name
President
- --------------------------------------------------------- --------------------------------------
Title Title
</TABLE>
PARTICIPANT
<PAGE>
EXHIBIT 10.13
CONFIDENTIAL TREATMENT REQUESTED
INTEL AND SILICON IMAGE CONFIDENTIAL
PATENT LICENSE AGREEMENT
BETWEEN
SILICON IMAGE, INC. AND INTEL CORPORATION
This Agreement ("Agreement") is entered into as of SEPTEMBER 16, 1998
("Effective Date") by and between Silicon Image, Inc. a California corporation,
having an office at 10131 Bubb Road, Cupertino, CA 95134, U.S.A., ("SiI") and
Intel Corporation, a Delaware corporation, having an office at 2200 Mission
College Blvd., Santa Clara, California 95052, U.S.A. ("Intel").
IN CONSIDERATION OF THE MUTUAL COVENANTS AND PROMISES CONTAINED HEREIN, THE
PARTIES AGREE AS FOLLOWS:
1. DEFINITIONS
1.1. "Capture Period" shall mean any time on or prior to the [***]
anniversary of the Effective Date.
[***] shall mean an Integrated Circuit that is dedicated to (i)
providing support logic for a [***] digital information [***]
digital information for use by a [***]; and/or (ii) providing
support for a [***], and that [***] contained within a [***]. If
a single Integrated Circuit contains circuitry that meets the
definition of [***] and circuitry that does not, only that
portion of the circuitry that meets the definition of [***] shall
be deemed [***].
[***] shall mean an Integrated Circuit that is dedicated to (i)
providing support logic for a [***] digital information [***]
Integrated Circuit, such as, but not limited to, an [***] digital
information [***]; and/or (ii) providing support for a [***],
and that [***]. If a single Integrated Circuit contains
circuitry that meets the definition of [***] and circuitry that
does not, only that portion of the circuitry that meets the
definition of [***] shall be deemed [***].
1.4. "Display" shall mean an LCD, CRT or similar display device used
for displaying video and/or graphics data.
[***] shall mean one or more Integrated Circuits that alone or together
are dedicated to providing support logic for a [***] graphic
information [***] the graphic information and [***]
1
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
[***], and may also perform the following functions: [***]. If
the one or more Integrated Circuits contain circuitry that meets
the definition of [***] and circuitry that does not, only that
portion of the circuitry that meets the definition of [***] shall
be deemed [***].
[***] shall mean one or more Integrated Circuits that alone or together
are dedicated to providing support logic for implementing the
[***], including the [***]. The [***] may also implement a
portion of the [***] including the assembly of [***], assembly of
[***], and/[***]. If the one or more Integrated Circuits contain
circuitry that meets the definition of [***] and circuitry that
does not, only that portion of the circuitry that meets the
definition of [***] shall be deemed [***].
[***] shall mean one or more Integrated Circuits that alone or together
are dedicated to providing support logic for implementing the
[***], including the [***]. The [***] may also implement a
portion of the [***]: separation of [***], separation of [***],
and reconstruction and/or distribution of data [***]. If the one
or more Integrated Circuits contain circuitry that meets the
definition of [***] and circuitry that does not, only that
portion of the circuitry that meets the definition of [***] shall
be deemed [***].
[***] shall mean an Integrated Circuit that contains [***].
[***] shall mean one or more Integrated Circuits that alone or together
are designed and optimized for providing support logic for an
[***] and that include at least a [***] (but may also include a
[***] digital information [***] one or more devices [***], and
also includes logic that provides the information [***] to enable
and enhance the use of the information by the [***]; provided
2
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
that if the [***] resides on one or more Integrated Circuits
separate from the [***], each Integrated Circuit having [***]
must utilize the [***] as its primary means for [***] from the
one or more devices [***]. If the one or more Integrated Circuits
contain circuitry that meets the definition of Peripheral
Controller and circuitry that does not, only that portion of the
circuitry that meets the definition of [***] shall be deemed
[***].
[***] shall mean a device that: (i) provides one or more of the [***]
functions of [***]; (ii) provides one or more of the [***]
functions of [***]; and/or (iii) is capable of providing [***].
[***] shall mean one or more Integrated Circuits that alone or together
[***] needed for transmission and then sends them along the
appropriate transmission medium, [***] and includes within the
[***] that perform these tasks including the [***]. The [***]
also includes the [***].
[***] shall mean one or more Integrated Circuits that alone or
together [***], includes as a main component the [***], which
transforms data units [***] and determines how a device [***]
data transmission across the transmission medium.
[***] shall mean [***] Integrated Circuits that are [***] and that are
used for the [***].
1.14. "Integrated Circuit" shall mean an integral unit comprising one or
more active and/or passive circuit elements associated on one or
more substrates, such unit forming, or contributing to the
formation of, a circuit for performing electrical functions and,
if provided therewith, housing, packaging, and/or supporting
means.
[***] shall mean one or more Integrated Circuits (that may include one
or more digital logic products), which in use are generally
integrated on an [***], that alone or together (i) [***]
3
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
[***]; or (ii) provide the [***]. Provided that any Integrated
Circuit, or combination of Integrated Circuits, shall not be
deemed an [***] unless such Integrated Circuit standing alone,
or such combination of Integrated Circuits, provide the
above-specified [***] functionality.
[***] shall mean one or more Integrated Circuits (that may include one
or more digital logic products), which in use are generally
integrated on a [***], that alone or together (i) [***] and any
other device including, without limitation, [***]; or (ii)
communicating with any [***].
[***] shall mean a [***], or equivalent, that includes a [***] that
are connected to the [***].
[***] shall mean a [***], or equivalent, that includes a [***] that are
connected to the [***].
[***] shall mean [***], or equivalent, that includes a [***] that are
connected to the [***] and in use is generally coupled to an
[***].
[***] shall mean [***], or equivalent, that includes a [***] that are
connected to the [***] and in use is generally coupled to a
Computer Motherboard.
1.21. "Intel Licensed Products" shall mean any product that is sold
by Intel as Intel's own product (as further defined in Section
3.4); provided that Intel Licensed Products shall not include
any Network Devices or any SiI Proprietary Products.
Notwithstanding the foregoing if an Intel product contains
circuitry that is Network Device, [***] and circuitry that is
not, only that portion of the circuitry that does not meet the
definition of Network Device, [***]
4
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
[***] shall be deemed Intel Licensed Products.
[***] shall mean [***] first developed by, for or with substantial
participation by [***], including without limitation the [***].
[***] shall also include the [***].
[***] shall mean [***] capable of connecting one or more [***],
together with the set of [***] defining the [***].
1.24. "Intel Proprietary Product" shall mean [***].
[***] shall mean one or more Integrated Circuits that alone or
together perform [***]. Provided that any Integrated Circuit,
or combination of Integrated Circuits, shall not be deemed a
[***] unless such Integrated Circuit standing alone, or such
combination of Integrated Circuits, provide the above-specified
[***] functionality.
1.26. "Licensed Product" shall mean a SiI Licensed Product or an Intel
Licensed Product as applicable.
1.27. "Network Device" shall mean one or more Integrated Circuits
that, alone or together, provide high-speed communication
between [***] according to (i) one or more [***] networking
protocols, including without limitation [***].
1.28. "Patents" shall mean all classes or types of patents, utility
models and design patents (including, without limitation,
originals, divisions, continuations, continuations-in-part,
extensions or reissues), and applications for these classes or
types of patent rights in all countries of the world (collectively
"Patent Rights") that are owned or controlled by the applicable
party or any of its Subsidiaries during the term of this
Agreement, that have a first effective filing date during the
Capture Period and to the extent that the applicable party or its
Subsidiaries has the right to grant licenses within and of the
scope set forth herein and without the requirement to pay
consideration to any third party (other than employees of the
5
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
applicable party or its Subsidiaries) for the grant of a license
under this Agreement.
[***] shall mean one or more Integrated Circuits that alone or
together, perform [***]. Provided that any Integrated
Circuit, or combination of Integrated Circuits, shall not be
deemed [***] unless such Integrated Circuit standing alone, or
such combination of Integrated Circuits, provide the
above-specified [***] functionality.
1.30 "SiI Licensed Products" shall mean [***] that are
sold by SiI as SiFs own product (as further defined in Section
3.4); provided that SiI Licensed Products shall not include any
Network Devices or any Intel Proprietary Products.
Notwithstanding the foregoing if a SiI product contains
circuitry that is [***] Network Device, [***] only that portion
of the circuitry that meets the definition of [***] but does
not meet the definition of Network Device, [***] shall be deemed
SiI Licensed Products.
1.31. "SiI Proprietary Products" shall mean [***]. As used in this
Section, "Discrete" means that such product is the primary
functionality contained on a discrete SiIicon chip.
1.32. "Subsidiary" shall mean any corporation, partnership or other
entity, now or hereafter, (i) at least fifty percent (50%) of
whose outstanding shares or securities entitled to vote for the
election of directors or similar managing authority is directly or
indirectly owned or controlled by a party hereto, or (ii) that
does not have outstanding shares or securities but at least fifty
percent (50%) of whose ownership interest representing the right
to make the decisions for such entity is directly or indirectly
owned or controlled by a party hereto; provided, however, that in
each case such corporation, partnership or other entity shall be
deemed to be a Subsidiary only so long as such ownership or
control exists and is at least fifty percent (50%).
6
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
2. MUTUAL RELEASES
2.1. SII. SiI on behalf of itself and its Subsidiaries, hereby
releases, acquits and forever discharges Intel, its Subsidiaries
that are Subsidiaries as of the Effective Date, and its and their
distributors and customers, direct and indirect, from any and all
claims or liability for infringement of any SiI Patents that arose
prior to the Effective Date of this Agreement, to the extent such
infringement would have been licensed under the license granted to
Intel hereunder if such license had been in existence at the time
of such infringing activity. SiI, on behalf of itself and its
Subsidiaries, hereby releases, acquits and forever discharges
Intel and its Subsidiaries that are Subsidiaries as of the
Effective Date from any and all claims or liability for inducement
to infringe any SiI Patents that arose prior to the Effective Date
of this Agreement.
2.2 BY INTEL. Intel, on behalf of itself and its Subsidiaries, hereby
releases, acquits and forever discharges SiI, its Subsidiaries
that are Subsidiaries as of the Effective Date, and its and their
distributors and customers, direct and indirect, from any and all
claims or liability for infringement of any Intel Patents that
arose prior to the Effective Date of this Agreement, to the extent
such infringement would have been licensed under the license
granted to SiI hereunder if such license had been in existence at
the time of such infringing activity. Intel, on behalf of itself
and its Subsidiaries, hereby releases, acquits and forever
discharges SiI and its Subsidiaries that are Subsidiaries as of
the Effective Date, from any and all claims or liability for
inducement to infringe any Intel Patents that arose prior to the
Effective Date of this Agreement.
3. GRANT OF RIGHTS
3.1. SII LICENSE TO INTEL. Subject to the terms and conditions of
this Agreement, SiI hereby grants to Intel a non-exclusive,
non-transferable, [***] worldwide license, without the
right to sublicense, under SiI's Patents to:
3.1.1. make, have made (subject to Section 3.3 below), use, and
import, and directly or indirectly sell, offer to sell and
otherwise dispose of Intel Licensed Products;
3.1.2. make, have made, use and/or import any equipment and
practice any method or process for use in the manufacture
of Intel Licensed Products.
3.2. INTEL LICENSE TO SII. Subject to the terms and conditions of this
Agreement, Intel hereby grants to SR a non-exclusive,
non-transferable, [***] worldwide license, without the
right to sublicense, under Intel's Patents to:
3.2.1 make, have made (subject to Section 3.3 below), use, and
import, and directly or indirectly sell, offer to sell and
otherwise dispose of SiI Licensed Products;
7
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
3.2.2. make, have made, use and/or import any equipment and
practice any method or process for use in the manufacture
of SiI Licensed Products;
3.3 HAVE MADE RIGHTS.
3.3.1. Each party's rights to have products manufactured for them
by third parties under the licenses granted under
Sections 3.1 and 3.2 above shall apply only when the
following conditions are met:
3.3.1.1. the designs, specifications and working
drawings for the manufacture of the product,
to be manufactured by such third party
("Foundered Product") are furnished by (as
between the licensed party under this
Agreement and the third party manufacturer)
the licensed party; and
3.3.1.2. except as provided in Section 3.3.1.1 above,
said designs, specifications and working
drawings are in sufficient detail that no
additional designing by the manufacturer is
required other than adaptation to the
production processes and standards normally
used by the manufacturer which changes the
characteristics of the Foundered Products
only to a negligible extent.
3.3.2. Notwithstanding the foregoing, a licensed party's have made
rights shall include the right to have made a product
(i) which was designed and developed by a third party and
(ii) which such licensed party had been purchasing from
such third party, where such manufacture is done (x) by a
manufacturer other than such third party or any affiliate
of such third party and (y) pursuant to a back-up or second
source manufacturing license triggered when such third
party breaches or otherwise fails to meet its obligations
to the licensed party.
3.3.3. Upon written request, the licensed party shall inform the
other party whether, and if so to what extent, any
manufacturer identified by the other party is operating
under the license granted to the licensed party by the
other party hereunder.
3.4. FOUNDRY RIGHTS The parties understand and acknowledge that the
licenses granted hereunder are intended to cover only the products
of the two parties to this Agreement, and are not intended to
cover foundry activities that either party may undertake on behalf
of third parties. Therefore, for the licenses granted in
Sections 3.1 and 3.2, the definition of Licensed Products of a
party hereto shall exclude products (including without limitation
Application Specific Integrated Circuits ("ASICs")) manufactured
on behalf of a third party from designs received in a
substantially completed form from a third party for resale to or
on behalf of that party. The limitations on the definition of
Licensed Products set forth in this
8
<PAGE>
Section 3.4 shall not apply to manufacturing methods and
processes as licensed hereunder pursuant to Sections 3.1.2 and
3.2.2.
3.5. LICENSES AND SUBSIDIARIES.
3.5.1. Except as provided below, the parties intend that this
Agreement shall extend to all of each party's Subsidiaries,
and the parties shall use their reasonable and diligent
efforts to ensure that all such Subsidiaries are bound by
the terms of this Agreement. Upon written request by a
party, the other party will give it written notice to
identify any Subsidiary to which it believes that such a
license has been extended.
3.5.2. Notwithstanding the foregoing, the licenses granted
hereunder by the licensing party may not be extended to a
Subsidiary acquired by the other party ("Acquiring Party")
on or after the Effective Date unless such extension is
approved by the licensing party in writing (which approval
shall be at the licensing party's sole discretion) if,
immediately prior to such acquisition, either or both of
the total assets or market value of such newly acquired
entity are greater than [***] of those of the Acquiring
Party.
3.5.3. The extension of license rights to a Subsidiary shall apply
only during the time period when such a business entity
meets all requirements of a Subsidiary. However, if a
Subsidiary of a party that holds any Patents that are
licensed to the other party hereunder ceases to be a
Subsidiary, the licenses granted to the other party
hereunder under such Patents hereunder shall continue for
the life of such Patents even after such entity ceases to
be a Subsidiary. Upon written request by a party, the
other party will give it written notice to identify any
Subsidiary to which it believes that such a license has
been extended.
3.5.4. Each party intends to acquire the right to grant to the
other party licenses under any Patents that may be created
covering inventions conceived and/or reduced to practice by
the licensing party's and its Subsidiaries' employees with
use of its or its Subsidiaries' funds or other assets.
Accordingly, each party agrees to take all steps that are
reasonable under the circumstances so that Patents covering
inventions that are made by one or more of its and/or its
Subsidiaries' employees and contractors for which the
funding is provided by it and/or its Subsidiaries, are
included among the patents licensed by it hereunder. This
requirement shall not apply to Patents which may apply to
inventions that arise out of development projects funded in
significant part by third parties or undertaken with the
significant assistance of the employees of a third party.
9
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
3.6. FULL RIGHTS.
3.6.1. In the event that neither a party nor any of its
Subsidiaries has the right to grant a license under any
particular Patent Right of the scope set forth herein, then
the license granted herein under such Patent shall be of
the broadest scope which the licensing party or any of its
Subsidiaries has the right to grant.
3.6.2. Notwithstanding anything to the contrary contained herein,
in the event that either party or any of its Subsidiaries
obtains rights to any Patents that would be included within
the Patents licensed hereunder but for the fact that such a
license would require the party granting such license to
make payments to a third party, such Patents shall be
included within the SiI Patents or the Intel Patents, as
the case may be, if the party to whom such would be
licensed under this Agreement agrees in a separate written
agreement to be bound by, and protect such grantor against,
those payment obligations.
3.7. NO OTHER RIGHTS. No other rights are granted hereunder, by
implication, estoppel, statute or otherwise, except as expressly
provided herein. Specifically, (i) except as expressly provided
in Section 3, nothing in the licenses granted hereunder or
otherwise contained in this Agreement shall expressly or by
implication, estoppel or otherwise give either party any right to
license the other party's Patents to others, and (ii) no license
or immunity is granted by either party hereto directly or by
implication, estoppel or otherwise to any third parties acquiring
items from either party for the combination of Licensed Products
with other items or for the use of such combination.
4. EFFECTIVE DATE, TERM AND TERMINATION
4.1. TERM. This Agreement and the rights and licenses granted
hereunder shall become effective on the Effective Date, and shall
continue in effect until the expiration of the last patent
licensed hereunder to expire, unless such rights and licenses are
sooner terminated as provided below.
4.2. TERMINATION.
4.2.1. A party may terminate the other party's rights and licenses
hereunder upon notice if the other party hereto commits a
material breach of this Agreement and does not correct such
breach within sixty (60) days after receiving written
notice complaining thereof. In the event of such
termination, the rights and licenses granted to the
defaulting party shall terminate, but the rights and
licenses granted to the party not in default shall survive
such termination of this Agreement subject to its continued
compliance with the terms and conditions of this Agreement.
10
<PAGE>
4.2.2. A party hereto may terminate this Agreement upon sixty (60)
days written notice of termination to the other party given
at any time upon or after:
4.2.2.1. the filing by the other party of a petition
in bankruptcy or insolvency;
4.2.2.2. any adjudication that the other party is
bankrupt or insolvent;
4.2.2.3. the filing by the other party of any petition
or answer seeking reorganization,
readjustment or arrangement of its business
under any law relating to bankruptcy or
insolvency;
4.2.2.4. the appointment of a receiver for all or
substantially all of the property of the
other party;
4.2.2.5. the making by the other party of any
assignment for the benefit of creditors;
4.2.2.6. the institution of any proceedings for the
liquidation or winding up of the other
party's business or for the termination of
its corporate charter, provided that the
other party shall have sixty (60) days to
cure;
In the event of such termination, the fights and licenses granted
to the terminated party shall terminate, but the fights and
licenses granted to the other shall survive such termination of
this Agreement subject to its continued compliance with the terms
and conditions of this Agreement.
4.2.3. CHANGE OF CONTROL.
4.2.3.1. For purposes of this Section 4.2.3, the
following terms shall have the following
meanings:
4.2.3.1.1. "Change of Control" means any
transaction between a party and a third
party after which:
4.2.3.1.1.1. the third party would own,
directly or indirectly, beneficially
or of record, voting securities
representing more than fifty percent
(50%) of the total voting power (a
"Majority Interest") of the party,
unless persons previously owning a
Majority Interest of the party
continue to own a Majority Interest
of such third party;
4.2.3.1.1.2. the party would become a party
to a merger with the third party in
which the party is not the surviving
corporation, unless persons
previously owning a
11
<PAGE>
Majority Interest of the party
continue to own a Majority Interest
of such surviving corporation; or
4.2.3.1.1.3. the party would transfer all or
substantially all of its business
and assets to the third party,
unless persons previously owning a
Majority Interest of the party
continue to own a Majority Interest
of such transferee.
4.2.3.2. If a party has undergone a Change of Control,
the party shall notify the other party in
writing within thirty (30) business days.
4.2.3.3. If a party is considering a Change of Control
it may notify the other party in writing of
such potential Change in Control and the
notified party shall have thirty (30) days
from the receipt of such notice in which to
indicate in writing whether it would elect to
terminate or not terminate this Agreement in
accordance with this Section 4 upon the
actual occurrence of such Change of Control.
The notified party's determination shall be
effective for a period of ninety (90) days
from the date such notice is received,
provided that there is no material change in
the acquirer or target during such period.
Any such disclosure of a potential Change of
Control and of the potential acquirer shall
be provided under the current Corporate Non
Disclosure Agreement (CNDA), Number 94185
dated September 24, 1997 or a separate
confidentiality agreement mutually agreed
upon by the parties.
4.2.3.4. For thirty (30) days after notification under
Subsection 4.2.3.2, the notified party shall
have the right to terminate this Agreement by
written notice to the other party. Failure
by the notified party to provide any written
notice within the thirty (30) days shall be
deemed an election of non-termination.
4.2.3.5. If the notified party elects termination
under Subsection 4.2.3.4, [***], effective
on the date of the Change of Control.
4.2.3.6. If the notified party does not elect
termination under Subsection 4.2.3.4, the
third party shall have thirty (30) days after
the notified party elects not to terminate to
assume all of the rights and obligations of
this Agreement by written notice to the
notified party. Failure by the third party
to provide any written notice within the
thirty (30) days shall be deemed an election
to not assume.
12
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
4.2.3.7. If within the thirty day (30) period of
Subsection 4.2.3.6, the third party elects to
assume all of the rights and obligations of
this Agreement and within an additional
thirty (30) days executes a legally binding
agreement to assume such rights and
obligations, [***].
4.2.3.8. If the third party does not assume the rights
and obligations of this Agreement under
Subsection 4.2.3.7, [***].
4.3. SURVIVAL. The provisions of Sections 1, 2, 4, 5, and 6 will
survive any termination or expiration of this Agreement.
5. DISCLAIMER
5.1. Nothing contained in this Agreement shall be construed as:
5.1.1. a warranty or representation by either of the parties to
this Agreement as to the validity, enforceability or scope
of any class or type of Patent Right; or
5.1.2. a warranty or representation that any manufacture, sale,
lease, use or other disposition of Licensed Products
hereunder will be free from infringement of any Patents
other than those under which licenses have been granted
hereunder; or
5.1.3. an agreement to bring or prosecute actions or suits against
third parties for infringement or conferring any right to
bring or prosecute actions or suits against third parties
for infringement; or
5.1.4. 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; or
5.1.5. conferring by implication, estoppel or otherwise, upon any
party licensed hereunder, any license or other right under
any Patent Rights, copyright, maskwork, trade secret,
trademark other intellectual property right except the
licenses and rights expressly granted hereunder; or
13
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
<PAGE>
5.1.6. an obligation to furnish any technical information or
know-how.
5.2. NO IMPLIED WARRANTIES. EACH PARTY HEREBY DISCLAIMS ANY IMPLIED
WARRANTIES WITH RESPECT TO THE PATENTS LICENSED HEREUNDER,
INCLUDING WITHOUT LIMITATION, THE WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
6. MISCELLANEOUS PROVISIONS
6.1. AUTHORITY. Each of the parties hereto represents and warrants
that it has the right to grant the other the licenses granted
hereunder.
6.2. NO ASSIGNMENT. This Agreement is personal to the parties, and the
Agreement or any right or obligation hereunder is not assignable
(except as provided in Subsection 4.2.3.4), whether in conjunction
with a change in ownership, merger, acquisition, the sale or
transfer of all, or substantially all or any part of a party's
business or assets or otherwise, either voluntarily, by operation
of law, or otherwise, without the prior written consent of the
other party, which consent may be withheld at the sole discretion
of such other party. Any such purported assignment or transfer
(except as provided in Subsection 4.2.3.4) shall be deemed a
breach of this Agreement and shall be null and void. This
Agreement shall be binding upon and inure to the benefit of the
parties and their permitted successors and assigns.
6.3. NOTICE. All notices required or permitted to be given hereunder
shall be in writing and shall be delivered by hand, or if
dispatched by prepaid air courier or by registered or certified
airmail, postage prepaid, addressed as follows:
<TABLE>
<CAPTION>
If to SiI: If to Intel:
--------- -----------
<S> <C>
President General Counsel
Silicon Image, Inc. Intel Corporation
10131 Bubb Road 2200 Mission College Blvd.
Cupertino, CA 95134 Santa Clara, CA 95052
United States of America United States of America
</TABLE>
Such notices shall be deemed to have been served when received by
addressee or, if delivery is not accomplished by reason of some
fault of the addressee, when tendered for delivery. Either party
may give written notice of a change of address and, after notice
of such change has been received, any notice or request shall
thereafter be given to such party as above provided at such
changed address.
6.4. NO RULE OF STRICT CONSTRUCTION. Regardless of which party may
have drafted this Agreement, no rule of strict construction shall
be applied against either party. If any provision of this
Agreement is determined by a court to be unenforceable, the
parties shall deem the provision to be modified to the extent
necessary to allow it to be enforced to the extent permitted by
law, or if it cannot be modified, the
14
<PAGE>
provision will be severed and deleted from this Agreement, and
the remainder of the Agreement will continue in effect.
6.5. TAXES. Each party shall be responsible for the payment of its own
tax liability arising from this transaction.
6.6. ENTIRE AGREEMENT. This Agreement embodies the entire
understanding of the parties with respect to the subject matter
hereof, and merges all prior discussions between them, and neither
of the parties shall be bound by any conditions, definitions,
warranties, understandings, or representations with respect to the
subject matter hereof other than as expressly provided herein. No
oral explanation or oral information by either party hereto shall
alter the meaning or interpretation of this Agreement.
6.7. MODIFICATION; WAIVER. No modification or amendment to this
Agreement, nor any waiver of any rights, will be effective unless
assented to in writing by the party to be charged, and the waiver
of any breach or default will not constitute a waiver of any other
right hereunder or any subsequent breach or default.
6.8. GOVERNING LAW. This Agreement and matters connected with the
performance thereof shall be construed, interpreted, applied and
governed in all respects in accordance with the laws of the United
States of America and the State of California, without reference
to conflict of laws principles.
6.9. JURISDICTION. Intel and SiI agree that all disputes and
litigation regarding this Agreement and matters connected with its
performance shall be subject to the jurisdiction of the courts of
the States of California and Oregon or of the Federal courts
sitting therein.
6.10. CONFIDENTIALITY OF TERMS. The parties hereto shall keep the terms
of this Agreement confidential and shall not now or hereafter
divulge these terms to any third party except:
6.10.1. with the prior written consent of the other party;
or
6.10.2. to any governmental body having jurisdiction to call
therefor; or
6.10.3. subject to 6.10.4 below, as otherwise may be
required by law or legal process. including to legal
and financial advisors in their capacity of advising
a party in such matters; or
6.10.4. during the course of litigation so long as the
disclosure of such terms and conditions are
restricted in the same manner as is the confidential
information of other litigating parties and so long
as (a) the restrictions are embodied in a
court-entered Protective Order and (b) the
disclosing party
15
<PAGE>
informs the other party in writing at least
ten (10) days in advance of the disclosure; or
6.10.5. in confidence to legal counsel, accountants, banks
and financing sources and their advisors solely in
connection with complying with financial
transactions.
The parties shall cooperate in preparing and releasing an
announcement, if any, relating to this Agreement.
6.11. COMPLIANCE WITH LAWS. Anything contained in this Agreement to the
contrary notwithstanding, the obligations of the parties hereto
and of the Subsidiaries of the parties shall be subject to all
laws, present and future, of any government having jurisdiction
over the parties hereto or the Subsidiaries of the parties, and to
orders, regulations, directions or requests of any such
government.
6.12. FORCE MAJURE. The parties hereto shall be excused from any
failure to perform any obligation hereunder to the extent such
failure is caused by war, acts of public enemies, strikes or other
labor disturbances, fires, floods, acts of God, or any causes of
like or different kind beyond the control of the parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by duly authorized officers or representatives on the date below
written.
INTEL CORPORATION Silicon Image, Inc.
By: /s/ Jim Stafford By: /s/ David D. Lee
---------------------------- ---------------------------------
Jim Stafford David D. Lee
---------------------------- ---------------------------------
Printed Name Printed Name
Vice-President and GM GCO CEO
---------------------------- ---------------------------------
Title Title
9/16/98 9/16/98
---------------------------- ---------------------------------
Date Date
[SILICON PAGE TO PATENT LICENSE AGREEMENT BETWEEN
SILICON IMAGE, INC. AND INTEL CORPORATION]
16
<PAGE>
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
1
<PAGE>
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.
2
<PAGE>
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.
3
<PAGE>
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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<PAGE>
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
5
<PAGE>
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
6
<PAGE>
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.
8
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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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<PAGE>
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:
<TABLE>
- ------------------------------------------------------------------------------------------------------
<S> <C> <C>
Intel Corporation Silicon Image, Inc. Compaq Computer Corporation
2200 Mission College Blvd. 10131 Bubb Road 20555 SH 249
Santa Clara, CA 95052 Cupertino, CA 95134 Houston, TX 77070
Attn: General Counsel Attn: President Attn: General Counsel
- ------------------------------------------------------------------------------------------------------
Dell Corporation Fujitsu Limited Hewlett-Packard Company
9505 Arboretum Blvd. 1-1, Kamikodanaka 4-chome, 3000 Hanover Street
Austin, TX 78759-7299 Nakahara-ku Palo Alto, CA 94304-1126
Attn: General Counsel Kawasaki-shi, Kanagawa-ken 211-8588 Attn: Director, Intellectual
JAPAN Property Law
Attn: General Manager, Industry
Relations Division (H043)
- ------------------------------------------------------------------------------------------------------
International Business Microsoft Corporation NEC Corporation
Machines Corp. One Microsoft Way 1-10 Nissincho
Redmond, WA 98052-6399 Fuchu Tokyo
Attn: Legal Department 183-8501
JAPAN
- ------------------------------------------------------------------------------------------------------
</TABLE>
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<PAGE>
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:
<TABLE>
<CAPTION>
INTEL CORPORATION SILICON IMAGE, INC. COMPAQ COMPUTER CORPORATION
<S> <C> <C>
By: /s/ Patrick P. Gelsinger By: /s/ David D. Lee By: /s/ Greg Memo
-------------------------- ---------------------- -------------------------
Name: Patrick P. Gelsinger Name: David D. Lee Name: Greg Memo
-------------------------- -------------------- -----------------------
Title: V.P., General Manager Title: CEO Title: V.P. Module Division
------------------------- -------------------- ----------------------
Date: 2/19/99 Date: 2/5/99 Date: 1/14/99
------------------------- -------------------- -----------------------
DELL CORPORATION FUJITSU LIMITED HEWLETT-PACKARD COMPANY
By: By: /s/ Koichi Inoue By: /s/ Edward G. Yang
---------------------------- ---------------------- ------------------------
Name: Name: Koichi Inoue Name:
-------------------------- -------------------- -----------------------
Title: Title: General Manager, Title:
------------------------- ------------------- ----------------------
Desktop Products Division Date:
-------------------------- ----------------------
Date: Date: February 12th, 1999
--------------------------- --------------------
INTERNATIONAL BUSINESS MACHINES MICROSOFT CORPORATION NEC CORPORATION
CORPORATION
By: /s/ Jan M. Janick By: By: /s/ Katsuichi Tomita
-------------------------- ----------------------- ------------------------
Name: Jan M. Janick Name: Name: Katsuichi Tomita
------------------------ --------------------- ----------------------
Title: Vice President Desktop Title: Title: Executive General Manager
----------------------- --------------------- --------------------------
Systems Development
------------------------------
Date: 1/19/99 Date: Date: April 23, 1999
------------------------- ----------------------- -----------------------
</TABLE>
SIGNATURE PAGE
FOR THE
DIGITAL VISUAL INTERFACE SPECIFICATION REVISION 1.0
PROMOTER'S AGREEMENT
12
<PAGE>
CONFIDENTIAL
DIGITAL VISUAL INTERFACE SPECIFICATION REVISION 1.0 ADOPTER'S AGREEMENT
- -----------------------------------------------------------------------------
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
- -----------------------------------------------------------------------------
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
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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
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<PAGE>
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
5200 N.E. Elam Young Parkway
Hillsboro, OR 97124
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<PAGE>
- - 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 ----------------
5200 N.E. Elam Young Parkway ----------------
Hillsboro, OR 97124 ----------------
ADOPTER: PROMOTER:
BY: BY:
--------------------- ----------------------
NAME: NAME
------------------- --------------------
TITLE: TITLE:
------------------ -------------------
DATE: DATE:
------------------- --------------------
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<PAGE>
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
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<PAGE>
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,
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<PAGE>
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,
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<PAGE>
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
5200 N.E. Elam Young Parkway
Hillsboro, OR 97124
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 ----------------------
5200 N.E. Elam Young Parkway ----------------------
Hillsboro, OR 97124 ----------------------
AGREED:
PARTICIPANT PROMOTER
Corp. Name: Corp. Name:
----------------- -------------------------
Signed: Signed:
--------------------- -----------------------------
Name: Name:
----------------------- -------------------------------
Title: Title:
---------------------- ------------------------------
Date: Date:
----------------------- -------------------------------
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