TESSERA INC
S-1, EX-10.6, 2000-09-05
Previous: TESSERA INC, S-1, EX-10.5, 2000-09-05
Next: TESSERA INC, S-1, EX-10.7, 2000-09-05



<PAGE>   1
TESSERA CONFIDENTIAL

                                                                    EXHIBIT 10.6

                                First Addendum to
                        Limited TCC(R) License Agreement

This First Addendum Agreement ("First Addendum") is entered into as of this 10th
day of March, 1997 (First Addendum Effective Date) between TESSERA, INC., a
corporation organized under the laws of Delaware ("Tessera") and AMKOR
ELECTRONICS, INC. a corporation organized under the laws of Pennsylvania
("Licensee") and modifies the Limited TCC License Agreement ("Agreement")
entered into by and between the parties having an Effective Date of 5/9/96 with
reference to the following facts:

I.    SUPPLEMENT TO THE AGREEMENT: This First Addendum merely supplements
      certain provisions of the Agreement. All provisions, including
      Definitions, contained within the Agreement are therefore incorporated
      herein. In the event any of the provisions Agreement and this First
      Addendum conflict, the provisions contained in this First Addendum shall
      supersede the conflicting provisions an the Agreement.

II.   DEFINITIONS:

A.    The term "Tessera Trademarks" includes, for the purposes of this
      Agreement, the following Tessera marks: COMPLIANT CHIP, TCC, uBGA and the
      TESSERA BLOCK LOGO as shown below:

      [TESSERA BLOCK LOGO]

B.    The term "Material Modifications" means any modification other than a
      purely aesthetic modification.

II.   TRADEMARK LICENSE:

A.    License to Tessera Trademarks. Subject to the terms and conditions set
      forth within this Agreement and Licensee's agreement to the provisions
      hereof including all attachments hereto, Tessera hereby grants Licensee a
      non-exclusive, non-transferable, non-sublicensable, non-royalty bearing
      license to use the Tessera Trademarks on printed materials for the
      marketing and promotion of TCC and related IC packages. This license of
      the Tessera Trademarks shall continue for the life of any TCC and related
      IC packages that the Tessera Trademarks are used to market or promote at
      the termination of the Agreement. Licensee agrees that it will do nothing
      inconsistent with Tessera's ownership of the Tessera Trademarks and that
      all use of the Tessera Trademarks by Licensee shall inure to the benefit
      of and be on behalf of Tessera. Licensee further agrees that nothing in
      this Agreement shall give Licensee any right, title or interest in the
      Tessera Trademarks other than the right to use the Tessera Trademarks in
      accordance with this First Addendum for the marketing and promotion of TCC
      and related IC packages.


                                  Page 1 of 2
<PAGE>   2

TESSERA CONFIDENTIAL

B.    Consent. Licensee agrees that prior to using any Tessera Trademark in the
      marketing or promotion of TCC and related IC packages, Licensee shall
      obtain Tessera's consent for each use of a Tessera Trademark, but only as
      to the first use in a particular marketing or promotional item. Material
      Modifications to a marketing or promotional item subsequent to Tessera's
      consent shall require a new consent from Tessera.

C.    Form of Use. All of the Tessera Trademarks are federally registered by the
      U.S. Trademark Office. As such, Licensee shall use the "(R)" symbol
      adjacent the Tessera Trademarks in all titles and headings and other
      prominent uses of the Tessera Trademarks and shall also use its best
      efforts to use the "(R)" symbol on at least the first and most obvious use
      of each Tessera Trademark within the text of any printed material.

      Each such marketing or promotional item shall further contain the
      following text: "_____________ (List of the Tessera Trademarks used in the
      marketing item) are registered trademarks of Tessera, Inc." or a suitable
      variant thereof to account for a singular use of a Tessera Trademark.
      Further, Licensee shall use its best efforts to use the Tessera Trademarks
      as modifiers in conjunction with generic nouns, e.g. the uBGA(R) package.

IV.   ENTIRE UNDERSTANDING: This First Addendum embodies the entire
      understanding between the parties relating to the subject matter hereof
      whether written or oral, and there are no prior representations,
      warranties or agreements between the parties not contained in this First
      Addendum. Any amendment or modification of any provision of this First
      Addendum must be in writing, dated and signed by both parties hereto.

IN WITNESS WHEREOF, the parties hereto have executed and delivered this First
Addendum as of the date first above written.


TESSERA, INC.                               AMKOR ELECTRONICS, INC.:

By: /s/ JOHN W. SMITH                       By: /s/ GIL OLACHEA
    ------------------------------              ------------------------------

Print Name: John W. Smith                   Print Name: Gil Olachea
            ----------------------                      ----------------------

Title: President                            Title: Vice President Corp. Mktg.
       ---------------------------                 ---------------------------

Date: 3-10-97                               Date: 3/5/97
      ----------------------------                ----------------------------


                                   Page 2 of 2


© 2022 IncJournal is not affiliated with or endorsed by the U.S. Securities and Exchange Commission