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EXHIBIT 10.19
TESSERA, INC.
ADDENDUM TO
TCC MASTER LICENSE AGREEMENT
This Addendum Agreement ("Addendum") entered into between TESSERA, INC., a
corporation organized under the laws of Delaware ("Tessera") and SHINKO ELECTRIC
INDUSTRIES CO., LTD, a corporation organized under the laws of Japan
("Licensee") shall be effective as of the last date signed below. The parties to
this Addendum agree to the following terms:
I. SUPPLEMENT TO AGREEMENT: This Addendum merely supplements certain
provisions of the TCC Master License Agreement ("Agreement"). All
provisions, including Definitions, contained within the Agreement are
therefore incorporated herein. In the event any of the provisions of the
Agreement and this Addendum conflict, the provisions contained in this
Addendum shall supersede the conflicting provisions set forth in the
Agreement.
II. DEFINITIONS:
A. The term "High Performance" refers to TCMT, TCCs, MCMs, MCM Components,
or other package or material made under or using the Technology, if
permitted hereunder, which incorporates, on an element other than a
semiconductor chip, an array of electrical contacts or bumps having a
contact pitch less than 0.5 millimeter. The term "High Performance"
further refers to any wafer level packaging using the Technology.
B. "Licensee's "Improvements" means device design modifications,
derivatives, improvements, inventions or enhanced device specifications,
relating to the TCC, TLS, TCMT, and MCMs, that may be made by Licensee
(or Licensee's Supplier) based on Technology or arising out of technical
information provided under the Agreement, or that may be proposed for
incorporation into the Tessera Specifications during the term of the
Agreement. Improvements shall not include any inventions of Licensee, (or
patent for such invention) except to the extent that (1) such invention
arises out of technical information or Technology hereunder, or (2) the
use of such invention would infringe any patent of Tessera.
III. LICENSEE'S IMPROVEMENTS:
A. Licensee hereby grants to Tessera a (a) fully-paid,
non-sublicensable, non-transferable, perpetual, right to use
Licensee's Improvements, which includes rights under Licensee's
Patents that are included within Licensee's Improvements as set
forth in Paragraph II.B., above, and that have a first effective
filing date during the term of the Agreement, to manufacture, have
manufactured for Tessera, use or sell TCC, TLS, TCMT, MCM, and MCM
Components.
B. Tessera agrees that Licensee may use any Licensee's Improvements
to which Licensee has granted to Tessera the rights and licenses
described in this Paragraph III, and Licensee agrees that it shall
not use Licensee's Improvements that have not been licensed in
accordance with this Paragraph III.
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C. Licensee agrees to grant to the other licensees of Tessera a
non-exclusive, nontransferable, non-sublicensable license under
Licensee's Patents covering any inventions contained in such
Licensee's Improvements which will have a first effective filing
date during the term of the Agreement, on seasonable terms and
conditions, provided that such other licensees grant to Licensee
similar licenses under any of such other licensees' patents
relating to any improvements developed by such other licensee on
similar terms and conditions. In no event shall Licensee be under
an obligation to grant such licenses to other licensees of
Tessera, unless said Licensee's Improvements are used in items
licensed hereunder which are sold externally to nonaffiliates or
proposed for incorporation into the Tessera Specifications.
IV. CUSTOMER WAIVER: Tessera hereby grants Licensee a waiver of the
requirement that Licensee's Customers must first execute and deliver to
Tessera a Limited Second Source MCM Assembly License before receiving,
assembling or using any Fine Pitch or High Performance TCC or any MCM
Component containing Fine Pitch or High Performance TCC. Said Limited
Second Source MCM Assembly Agreement shall hereinafter be deemed null and
void.
V. OPTIONAL CUSTOMER STRATEGIC PARTNERSHIP PLAN: Licensee agrees to advise
and distribute to Licensee's Customers an optional Strategic Partnership
Plan, attached hereto as Schedule B.
VI. SUPPLIERS: Pursuant to the "Suppliers" Paragraph of the Agreement,
Licensee may at its option enter agreements with a subcontracting
supplier ("Supplier") for the manufacture of any TCC or TCMT or other
package, material or service covered under the Technology. Moreover, as
an alternative for Licensee's convenience, Tessera hereby agrees that
Licensee will comply with its obligations with respect to its Suppliers,
if Licensee and each such Supplier use the "Supplier's Supplemental
Agreement" attached as Schedule A. In which case the following provisions
apply:
A. Licensee and any Supplier shall execute the Supplier's
Supplemental Agreement attached hereto as Schedule A; and
B. Licensee shall use its best efforts to ensure that each Supplier
performs its duties and responsibilities under the attached
Supplier's Supplemental Agreement; and
C. Prior to any disclosure of Tessera technical information or prior
to the manufacture of any item covered by the Technology, Licensee
shall deliver an executed copy of such Supplier's Supplemental
Agreement to Tessera.
VII. CONSIDERATION: Both Tessera and Licensee wish to improve upon the
business relationship bound by the provisions of the Agreement. This
Addendum's Limited Waiver (Paragraph IV) and Supplier Provision
(Paragraph VI) are in furtherance of that goal. In consideration of the
granting of these provisions, Licensee agrees to: (1) offer and
distribute to Customers the optional Strategic Partnership Plan (Schedule
B); and (2) accept the newly defined terms in Section II.
VIII. ENTIRE UNDERSTANDING: This Addendum along with the Agreement
("Addendum/Agreement") embodies the entire understanding between the
parties relating to the subject matter hereof, whether written or oral,
and there are no prior
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representations, warranties or agreements between the parties not
contained in this Addendum/Agreement. Any amendment or modification of
any provision of this Addendum/Agreement must be in writing, dated and
signed by both parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this Addendum
as of the last date signed below.
TESSERA, INC. SHINKO ELECTRIC INDUSTRIES CO., LTD.
By: /s/ JOHN W. SMITH By: /s/ SUGIO UCHIDA
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Name: John W. Smith Name: Sugio Uchida
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Title: President Title: Managing Director
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Date: 11/17/94 Date: 11/22/94
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SCHEDULE A
SHINKO ELECTRIC INDUSTRIES CO., LTD.
80 Oshimada-Machi
Nagano City, 381-22
Japan
SUPPLIER'S SUPPLEMENTAL AGREEMENT
This Agreement is entered into as of this __ day of _________, 19__ (the
"Effective Date"), between SHINKO ELECTRIC INDUSTRIES CO., LTD., a corporation
organized under the laws of Japan ("Shinko") and Supplier, as identified below,
for the manufacture or supply of materials, components and/or services using
Tessera technical information or Technology licensed to Shinko by TESSERA, INC.,
a corporation of Delaware having a principal place of business at San Jose,
California ("Tessera").
I. Scope:
WHEREAS, Shinko wishes to purchase and Supplier wishes to supply certain
materials, components and/or services which may be made using Tessera
Technology, technical information, or other intellectual property of Shinko
and/or Tessera under provisions pertaining to such contained in that certain
Master TCC License Agreement and any rightful addendum thereto (the "Master
Agreement") between Tessera and Shinko; and,
WHEREAS, Shinko and Supplier wish to enter into a purchase order agreement or
similar subcontract agreement (the "Subcontract") which complies with said
Master Agreement for the manufacture or supply by Supplier to Shinko of such
items and/or services;
IN CONSIDERATION OF RIGHTS GRANTED SUPPLIER HEREIN AND IN THE SUBCONTRACT,
SUPPLIER AGREES TO THE FOLLOWING TERMS:
II. DEFINITIONS: The following terms shall have the following meaning:
"Packaging-Related", as applied to any item (including any information,
idea, invention or know-how) means that such item is substantially
related to the physical structures and/or stages of assemblies,
components and/or methods for packaging, mounting or connecting
semiconductor chips. Items which relate only to the electrical circuitry
embodied in semiconductor chips or assemblies, and which do not relate to
said physical structures or stages are not Packaging-Related.
"Technology" means the inventions claimed under US Patents and US Patent
applications set forth in any attached schedule, including re-issues,
continuations, and corresponding foreign patents, as they relate to the
manufacture, packaging and use of TCC, TLS, TCMT and MCMs, including all
Packaging-Related know-how owned or controlled by Tessera and used by it
as of the Effective Date for producing TCCs, TLS, TCMT and MCMs, and all
Improvements to each of the foregoing during the term of this
Subcontract.
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"Suppliers Improvements" means all modifications, derivatives,
improvements, inventions or enhanced specifications upon device design or
manufacture, relating to the TCC, TLS, TCMT, and MCMs, that may be made
by Supplier based on Technology or arising out of technical information
provided under this Subcontract, or that may be proposed for
incorporation into the Tessera Specifications during the term of this
Subcontract. Improvements shall not include any inventions of Supplier,
(or Patent of Supplier for such invention) except to the extent that (1)
such invention arises out of technical information or Technology
hereunder; or (2) the use of such invention would infringe any patent of
Shinko (or Tessera).
A "TCC" is an IC device which is made or packaged under or using the
Technology with an array of coplanar electrical contacts or bumps on a
grid spacing ("BGA"). The package for a TCC is a thin compliant
multi-layer structure mounted to the bonding pad side of an IC die, with
permanent flexible electrical connections between at least certain ones
of said bumps and corresponding bonding pad(s) on said IC die, where said
pad(s) can be arranged on the perimeter, or the interior, or in an area
array on the surface of said IC die.
"TLS" means proprietary Tessera Laminated Substrates for MCMs and IC
interconnect and/or packaging made under or using the Technology
comprised of sub laminate signal layers and interconnecting interposer
layers that may be individually personalized and assembled by means of
lamination into electrical interconnecting substrates.
"TCMT" for ICs is a flexible film made under or using the Technology made
of one or more layers comprising a first layer of flexible film with
electrical contact bumps arranged in an array, at least certain ones of
said bumps being connected to one or more flexible conductors terminating
in featured disposed and suitable for bonding to bonding pads of said IC.
An "MCM" is an IC sub assembly, made under or using the Technology
comprising at least one TCC, including the first wiring substrate it may
be attached to, whether permanently attached or not, and further
including those ICs, TCCs, components, heat spreaders, sealing caps, and
sub assemblies that are ultimately attached or connected to the same
first wiring substrate (all of the foregoing and nothing else), and where
said IC Sub assembly is designed and intended for permanent or detachable
connection, by means of a socket or other suitable method, to a greater
electronic system for one or more of data, I/O, instructions, control
signals, and access to system power and ground.
An "MCM Component" is a partially completed MCM incorporating at least
one TCC, whether permanently attached or not, and which may be arranged
to allow for later removal of said TCC(s) and/or further incorporation of
other TCCs, chips, passives, heat spreaders, sealing caps, or other
components.
"Tessera Specifications" means the specifications for TCMT, TCC, TLS,
MCMs, and related packages and materials, a copy of which is attached
hereto in its current form as Appendix A, as the same may be modified or
amended from time to time by Tessera.
III. MANAGEMENT OF TRADE SECRETS AND INTELLECTUAL PROPERTY: Supplier agrees
that Supplier shall appoint a bona fide manager and shall manage as a
fiduciary any and all intellectual property rights such as patents or
copyrights, or other confidential
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information or trade secrets, disclosed or granted for use under this
Subcontract, whether said Intellectual property, trade secret or
confidential information is owned by Shinko or by others, including
Tessera. Supplier further agrees to comply with the following;
A. Supplier shall not exercise any Intellectual Property Right and/or
Trade Secret Right for purpose other than manufacturing for Shinko
as stipulated herein.
B. Unless otherwise agreed in a writing by Tessera, Shinko or another
owner of such trade secret, Supplier shall not disclose any Trade
Secret including Tessera's trade secrets to any third party.
Supplier also shall not grant any license or right to use same
without prior written permission from Tessera or Shinko as the
rightful owner of such trade secret or intellectual property.
IV. OWNERSHIP OF TRADE SECRETS AND INTELLECTUAL PROPERTY RIGHTS: In the event
that Supplier manufactures materials or provides services based on
Shinko's technology, technical information and/or patents, such as, but
not limited to: specifications, drawings, programs, processes, then all
Improvements, inventions, trade secret rights and/or intellectual
property rights arising from such Supplier's manufacturing of materials
or processes under such Subcontract shall be owned by Shinko, (or Tessera
in the case of such arising out of Supplier's manufacturing based on
Tessera's Technology, technical information and/or patents), or jointly
by Shinko and Tessera if said information is jointly Shinko's and
Tessera's.
V. DAMAGES SUFFERED THROUGH SUPPLIER'S BREACH OF ITS OBLIGATIONS: Supplier
agrees that it shall indemnify and hold harmless Shinko and Tessera from
any and all costs and damages arising from any breach by Supplier of
Supplier's foregoing obligations.
VI. TERM: This Subcontract shall become effective on the Effective Date and
shall remain in full force until ________________________.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Subcontract as of the Effective Date.
Supplier: By:
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Address: Name:
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Title:
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Date:
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SHINKO ELECTRIC INDUSTRIES CO., LTD.
By:
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Name:
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Title:
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Date:
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SCHEDULE B
TESSERA, INC.
3099 Orchard Drive
San Jose, CA 95134
USA
STRATEGIC PARTNERSHIP PLAN
This Strategic Partnership Plan ("Plan") is entered into as of this __ day of
_______, 19__ (the "Effective Date"), between TESSERA, INC., a corporation
organized under the laws of Delaware, USA ("Tessera") and Strategic Partner, as
identified below, to aid in the dissemination of information which will give
Customer a material advantage in designing and building assemblies using
Technology developed by Tessera, with reference to the following facts:
I. SCOPE
WHEREAS, Tessera and Strategic Partner wish to ensure the most up-to-date
information reasonably possible regarding products containing TCMT, TCCs, and
MCMs made with TCCs; and
WHEREAS, Tessera and Strategic Partner wish to ensure and maintain TCMT,
TCC, TLS and MCM made with TCCs Specifications and Standards along with
manufacturing specifications and quality standards for same;
The Parties Hereto Agree:
II. DEFINITIONS: As used herein, the following terms shall have the following
meaning:
A. A "TCC" is an IC device which is made or packaged under or using
the Technology with an array of coplanar electrical contacts or
bumps on a grid spacing ("BGA") having a contact pitch less than
1.0 millimeter. The package for a TCC is a thin compliant
multilayer structure mounted to the bonding pad side of an IC die,
with permanent flexible electrical connections between at least
certain ones of said bumps and corresponding bonding pad(s) on
said IC die, where said pad(s) can be arranged on the perimeter,
or the interior, or in an area array on the surface of said IC
die.
B. "TLS" means proprietary Tessera Laminated Substrates for MCMs and
IC interconnect substrates made under or using the Technology
comprised of sub laminate signal layers and interconnecting
interposer layers that may be individually personalized and
assembled by means of lamination into electrical interconnecting
substrates for use in MCMs or other IC packages.
C. "TCMT" for ICs is Tessera Compliant Mounting Tape, a multi-layer
flexible film made under or using the Technology comprising a
first layer of flexible film with electrical contacts arranged in
an area array, each connected to one or more flexible conductors
terminating in features disposed and suitable for direct wire
bonding to bonding pads of said IC, plus possible optional signal
or ground plane wiring layers, and a possible layer
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of compliant material attached to first said layer on the side
opposite the bumps on the BGA.
D. An "MCM" is a Multi-Chip Module, an IC sub assembly (Daughter
Board), made under or using the Technology comprising at least one
TCC, including the first wiring substrate it may be attached to,
whether permanently attached or not, and further including those
ICs, TCCs, components, heat spreaders, sealing caps, and sub
assemblies that are ultimately attached or connected to the same
first wiring substrate (all of the foregoing and nothing else),
and where said IC sub assembly is designed and intended for
connection, by means of a socket or other suitable method, to a
greater electronic system for data I/O, instructions, control
signals, and access to system power and ground:
III. STRATEGIC PARTNER'S RIGHTS: Strategic Partner has an non-assignable right
to the following information:
A. TECHNICAL BRIEFS: Technical Briefs will be non-publicly disclosed,
multi-page technical publications published at least quarterly and
setting forth improvements and advanced applications in the
Technology, pre-announcement information regarding new Tessera
technologies and tips on using the Technology.
B. TESSERA STANDARDS AND SPECIFICATIONS GROUPS: A "Standards
Committee" established by Tessera will consist of Tessera, its
Licensees and its Strategic Partners. The Standards Committee is
intended to establish and promulgate uniform TCMT, TCC, TLS and
MCM using TCCs Standards for use by all suppliers, licensees and
customers throughout the industry through meetings held at least
bi-annually and technical area user groups held more frequently
but at times to be determined by the membership of the particular
user group. Strategic Partners will have the opportunity to
participate in the creation of new standards for applying the
Technology and will have better access to other Strategic
Partners. Strategic Partners will further have the opportunity to
obtain current engineering specifications and participate in the
creation of new or modification of current standardized
engineering specifications used to describe in detail, materials
and dimensions for TCMT, TCCs, TLS and MCM using TCCs sold
commercially.
C. ADVANCED TECHNOLOGIES: Strategic Partners will further be allowed
specific access to Tessera's prototype line for special projects
at times and pricing to be determined, in good faith, at a later
time between Tessera and Strategic Partner.
IV. CONSIDERATION: In consideration for the grant of Strategic Partner's
Rights in Section III, Strategic Partner agrees, in good faith, to sell
its products containing the Technology to Tessera at a price either: (1)
not to exceed the lowest proposed price offered or paid commercially on a
direct OEM-based purchase within 90 days before or after a Tessera
purchase request; or (2) a lower purchase price than under subsection (1)
of this clause independently negotiated between Tessera and Strategic
Partner.
V. TERM: This Plan shall become effective on the Effective Date and shall
remain in full force until it automatically expires on the Fifth (5th)
anniversary of the Effective Date. Prior to expiration, Strategic Partner
shall have the right to extend the term of this Plan for
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an additional five (5) years provided Strategic Partner gives Tessera
written notice of its intention to so extend.
VI. NOTICE: All Technical Briefs, notices, required documentation and
correspondence in connection herewith shall be in the English language,
shall be provided in writing and shall be disseminated at the Standards
Committee meeting or shall be given by facsimile transmission or by
registered or certified letter to Strategic Partner or to Tessera at the
addresses and/or facsimile numbers set forth below.
V. LIMITATION ON DAMAGES: IN NO EVENT SHALL TESSERA BE LIABLE TO STRATEGIC
PARTNER OR ANY OTHER PERSON OR ENTITY UNDER ANY CONTRACT, OR NEGLIGENCE,
STRICT LIABILITY OR OTHER THEORY OR FOR SPECIAL, INCIDENTAL OR
CONSEQUENTIAL DAMAGES ARISING OUT OF OR RELATED TO THE SUBJECT MATTER OF
THIS PLAN, EVEN IF TESSERA HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES OR LOSSES, AND IN NO EVENT SHALL TESSERA'S AGGREGATE LIABILITY
EXCEED ONE THOUSAND UNITED STATES DOLLARS.
VI. MISCELLANEOUS: This Plan embodies the entire understanding between the
parties relating to the subject matter hereof as of the time of its
execution. Any amendment or modification of any provision of this Plan
must be in writing, dated and signed by both parties hereto. In the event
that any provision of this Plan is declared invalid, illegal or
unenforceable by a court or other tribunal of competent jurisdiction,
such provisions shall be limited or eliminated to the minimum extent
necessary so that this Plan shall otherwise remain in full force and
effect. All notices if given or made by registered or certified letter
shall be deemed to have been received on the earlier of the date actually
received and the date three days after the same was posted and if given
or made by facsimile, transmission shall be deemed to have been received
at the time of dispatch, unless such date of deemed receipt is not a
business day, in which case the date of deemed receipt shall be the next
succeeding business day. Strategic Partner certifies that no confidential
information will be exported to any country in violation of the United
States Export Administration Act and regulations thereunder.
IN WITNESS WHEREOF, the parties hereto have caused this Plan to be executed by
their duly authorized representatives on the Effective Date.
Strategic
Partner: By:
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Address: Name:
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Title:
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Date:
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Facsimile:
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TESSERA, INC.
By: 3099 Orchard Drive
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Name: San Jose, California 95134
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Title: Facsimile No.: 408-894-0768
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