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TESSERA CONFIDENTIAL EXHIBIT 10.33
TESSERA, INC.
TCC(R) LICENSE AGREEMENT
This Agreement is entered into as of this 23rd day of April, 1998
("Effective Date"), between TESSERA INC., a corporation organized under the laws
of Delaware, having a principal place of business at 3099 Orchard Drive, San
Jose CA 95134 ("Tessera") and Integrated Packaging Assembly Corporation, a
corporation organized under the laws of Delaware, having a principal place of
business at 221 Old Oakland Road, San Jose, CA 95131-1402 and its Affiliates
("Licensee") with reference to the following facts:
Scope:
WHEREAS, Tessera owns certain semiconductor integrated circuit ("IC")
packaging technology it calls TCC technology along with related IC tape mounting
technology, where said technologies include manufacturing processes, package
device designs and specifications, including design rules and certain other
proprietary information and technology required to manufacture TCC packages or
related IC packages, and
WHEREAS, Licensee wishes to use the Technology and Technical Information
(as hereinafter defined) to assemble said TCC or related IC packages and to sell
same in accordance with the terms hereof.
WHEREAS, Tessera wishes to provide Licensee with technology transfer and
training with respect to certain face down variants of TCC or related IC
packages.
WHEREAS, Licensee wishes to provide Tessera certain package development
services, technology transfer and training with respect to certain face up
variants of TCC packages to be further developed by Licensee and made by the
parties using the TCC Technology in trade or exchange for Tessera waiving its
standard up front licensing and training fees;
The Parties Hereto Agree:
I. DEFINITIONS
As used herein, the following terms shall have the following meaning:
A. The term "TCC" is an acronym for Tessera Compliant Chip, a type of
integrated circuit ("IC") package developed by Tessera and which is the subject
matter of certain Tessera Patents licensed hereunder. By way of non-limiting
example, such TCC packages may include IC packages that are in a fan-in
arrangement (where external electrical terminals overlie a surface of an IC
device) or are in a fan-out arrangement (where external electrical terminals are
arranged beyond the periphery of an IC device) or are in a fan-in/fan-out
arrangement (where external electrical terminals both overlie a surface of an IC
device and extend beyond the periphery of the IC device). In such examples, the
contact bearing surface of the IC device may face either towards or away from
the external electrical terminals.
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TESSERA CONFIDENTIAL
B. The term "(mu)BGA(R)" is a type of TCC package where the package
terminals are disposed in or over a compliant structure attached to the face,
contact bearing surface of the IC and the term "F-(mu)BGA(TM)" refers to a type
of TCC package where the package terminals are disposed in or over a compliant
structure attached to the back, non-contact bearing surface of the IC.
C. The term "Technology" means Tessera Patents, trade secrets to the
extent not embraced within the definition of technical information and/or
copyrights relating to design, manufacture, and assembly of TCC or related IC
packages and Tape Conversion (excluding Batch Technology as defined herein).
Technology shall also include Tessera rights to TCC or related IC package and
Tape Conversion derivatives, modifications, or improvements made by Tessera, for
Tessera or on behalf of Tessera and licensable by Tessera under the terms of
this Agreement without payment of royalty or other consideration to a third
party during the term of this Agreement, excluding any derivatives,
modifications, or improvements under Batch Technology as defined herein.
D. The term "Technical Information" means design, manufacture and/or
assembly know-how relating to Tessera Tape Conversion and TCC or related IC
packages (excluding Batch Technology) which may be proprietary and/or
confidential in nature and which may include, without limitation, material
specifications, current best method of assembly, tooling specifications, design
methods and techniques, proprietary software, process data, yields, reliability
data, and other Tessera engineering data and test results needed by Licensee
(the foregoing by mutual agreement, but not unreasonably withheld by Tessera) to
exercise the rights, licenses and privileges granted hereunder.
E. The term "Patent" means letters patents, utility models, allowances
and applications therefor in all countries of the world, including re-issues,
re-examinations, continuations, continuations-in-part, divisionals, and all
corresponding foreign patents.
F. The term "Tessera Patent" means Patent(s) which arise out of
inventions, discoveries or improvements based on the design, manufacture and/or
assembly know-how relating to Tessera Tape Conversion and TCC or related IC
packages (excluding Batch Technology) made and/or acquired by Tessera prior to
expiration or termination of this Agreement. The term Tessera Patent shall
further include any third party patent based on the Technology under which
Tessera or any successor thereof owns or controls the right to grant licenses of
the scope granted herein, as of the Effective Date or at any time during the
term of this Agreement, without the payment of royalty or other consideration
to such third parties except for payment to third parties for inventions made by
said parties while employed by Tessera or any successor thereof, consisting of
US patents and US patent applications set forth in Attachment A attached and
Improvements thereto which had or have a first effective filing date in any
country prior to expiration or termination of this Agreement. Tessera has sole
discretion in the prosecution of the Tessera patent applications prospectively
licensed hereunder, non-exclusively including filing continuations,
continuations-in-part, divisionals, filing corresponding foreign patents
applications and/or abandoning one or more of such patent applications.
G. The term "Batch Technology" as used herein means Patents and
Technical Information relating to or including: (i) any method or result of U.S.
Patent Number 5,518,964 (and
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related Patents) for making flexible electrically conducting element(s), joining
said elements to electrical contact(s) on a substantially planar electrical
element such as a semiconductor integrated circuit, undiced IC wafer, or
interconnect substrate, and forming said element(s) away from the plane of said
contacts in a predetermined fashion into the flexible electrical lead(s) of a
TCC package; (ii) any method or result of U.S. Patent 5,455,390 (and related
Patents) for making and forming flexible conducting element(s) on a dielectric
film and then simultaneously joining said elements to electrical contacts on a
substantially planar electrical element such as a semiconductor integrated
circuit, undiced IC wafer or interconnect substrate to produce the flexible
electrical leads of a TCC package; and/or (iii) any method or result of further
invention or Patent made or acquired by Tessera during the term hereof covering
any batch processing method for simultaneously forming, producing and/or
connecting a plurality of flexible electrical leads of a TCC package.
Notwithstanding, the parties expressly agree that any TCC package made and/or
connected individually on a semiconductor integrated circuit or undiced wafer by
traditional wire bonding methods and/or tape automated bonding ("TAB") gang
bonding methods, is NOT included in Batch Technology.
H. The term "Billable Pin" means any electrical connection to an IC bond
pad made or contained in any TCC or related IC package licensed hereunder.
I. The term "Licensee Improvements" means derivatives, improvements,
modifications, or enhanced specifications relating to the TCC package, or
related materials, that infringes a Tessera Patent or may be made or
incorporated in a TCC or related IC package by Licensee (not including the
derivatives, improvements, modifications, or enhanced specifications in the
packaged semiconductor chip itself).
J. The term "Standards" means those minimum standards as set forth in
Attachment C pursuant to which Licensee may sell any TCC or related IC package
under a Mark (as defined in Paragraph VIII.).
K. The term "Affiliate" means any company which agrees to be bound by
the terms and conditions of this Agreement and is more than fifty percent (50%)
of the voting stock is owned or controlled by Licensee. A company shall be
considered an Affiliate only so long as such majority ownership or control
exists.
L. The term "TCMT" means Converted Tape incorporated into the
manufacture of a TCC or related IC package.
M. The term "Tape" shall mean any flexible film circuit starting
material that may be made under certain of Tessera's Patents, including but not
limited to TAB tape, flex-circuit film, and substantial equivalents commonly
available in the industry.
N. The verbs "Convert" and "Converted" and the noun, "Conversion" refer
to Tessera's process or method by which Tape (whether or not made under the
Technology) is converted into TCMT using the Technology, where such Converted
Tape is configured with a Compliant die mounting layer, possible die attach
adhesive layer, or otherwise disposed for subsequent packaging of an IC in a TCC
or related IC package.
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TESSERA CONFIDENTIAL
II. LICENSEE RIGHTS
A. License Grant. Subject to the terms and conditions hereinafter set
forth, Licensee's agreement to the provisions hereof including all attachments
hereto, and Licensee's satisfaction of its obligations and/or payment of the
fees and royalties stated herein in Paragraph III, Tessera hereby grants
Licensee a non-exclusive, non-transferable, non-sublicensable, world-wide,
limited license to use the Technology and Technical Information to make or have
made Tape and Convert or have Converted such Tape into TCMT (such Tape and
Conversion rights pursuant to Paragraph IX) for Licensee to package and/or
assemble ICs into TCC or related IC packages and use or sell such TCC or related
IC packages (the foregoing license grant includes the right for Licensee to make
Licensee Improvements and combine or incorporate such Licensee Improvements with
a TCC or related IC package). Except as may be expressly set forth herein,
Licensee specifically is NOT granted any "have made" rights which would allow
Licensee to have non-Affiliates package and/or assemble ICs into TCC or related
IC packages for Licensee.
B. Batch Technology Excluded. Notwithstanding anything herein to the
contrary, Batch Technology is excluded from the scope of this Agreement, and
Licensee's rights herein expressly exclude any right to package and/or assemble,
or sell any TCC or related IC package made using Batch Technology.
C. No Implied License. Notwithstanding the foregoing, nothing in this
Agreement shall be construed to grant Licensee, its subsidiaries or Affiliates,
successors or assigns or any third parties an implied license under any patent
owned by Tessera other than the Tessera Patents.
III. LICENSEE'S FEES AND ROYALTY
A. License Fee Option. As consideration for the licenses and the
assembly rights and privileges of section II. A., hereof, Licensee shall perform
the package development services, technology transfer and training of Tessera's
personnel called for in Paragraph VI.A. within two (2) years of the Effective
Date. Notwithstanding, the parties shall consult regularly with each other
concerning Licensee's progress and schedule attainment, and if Licensee is
unable to reasonably meet its obligations under Paragraph VI.A. within [*] of
the Effective Date, the parties agree that Licensee shall have the following
options: 1). Licensee may elect to pay Tessera's standard TCC Assembly License
Fee of [*] US Dollars ($US [*]) for the licenses and assembly rights and
privileges of section II. A. (plus interest at [*]% per annum accrued from the
Effective Date) [*].
B. Royalty. In addition to the Licensee obligations in Paragraph III.A.
above, Licensee shall pay running royalties for the license granted in Paragraph
II.A. four times annually (as set forth in Paragraph V.) to Tessera during the
term of this Agreement. Licensee shall pay a royalty to
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Tessera in the amount of [*] US[*] (US$[*]) per Billable Pin for TCC or related
IC packages made by or for Licensee hereunder, whether sold, transferred or used
internally; provided however, that no royalty shall be due Tessera for TCC or
related IC packages that are warranty replacements for defective units or unit
that are used by Licensee internally for test and quality assurance purposes.
C. Volume Adjustments. Royalty payments due Tessera hereunder shall be
adjusted by multiplying Licensee's total base royalty calculated under Paragraph
III.B. above (i.e. US[*] per number of Billable Pins per reporting period) by a
factor of [*] ([*]) until Licensee has paid Tessera [*] US Dollars (US$[*]) in
aggregate royalties, and then by a factor of [*] ([*]) until Licensee has paid
Tessera an additional [*] US Dollars (US$[*]) in royalties (hereinafter "Volume
Adjustments"). DISCOUNT FOR PREPAYMENT: At any time, Licensee may elect to pay
Tessera [*] US Dollars (US$[*]) in lieu of any such Volume Adjustments, in which
event said Licensee shall notify Tessera and tender such payment and henceforth
pay royalties at the lowest level (as set forth in Paragraph III.B., above)
without any such Volume Adjustments.
D. Adjustments for CPI Changes. Licensee's royalty payments shall be
further adjusted by multiplying amounts due under Paragraph III.C. above by a
factor based on changes in the US Consumer Price Index ("CPI"). Said factor is
deemed to be equal to one (1.0) for the first three years of the term of this
Agreement. During said term or any extension hereof, said factor shall be
recalculated every three years by dividing the average of the actual CPI during
the three (3) years previous to such date of recalculation in effect on each
third anniversary by the actual CPI in effect on the Effective Date of this
Agreement. However, any change in the CPI pursuant to this provision shall not
cause an adjustment of more than a 50% increase or decrease from the royalty
rate set forth in this Agreement.
E. Equitable License for Identical Licensees. As of the Effective Date,
Tessera, in good faith, intends that any agreement that Tessera enters into
henceforth with another similarly situated licensee, whereby such licensee
receives identical rights, privileges, obligations, terms and conditions as
contained in this Agreement, shall be on royalty rate terms no more favorable to
such other licensee than the royalty terms set forth in this Agreement. The
following shall not be deemed agreements subject to this Paragraph: (i)
agreements between Tessera and its subsidiaries or affiliates; (ii) agreements
with governmental or educational agencies; or (iii) agreements in settlement of
litigation. In the event that Tessera grants another such identical license,
then Tessera shall promptly provide written notification to Licensee of the
financial terms of such other license. Upon issuance of such notice by Tessera,
Licensee shall have thirty (30) days to choose to amend this Agreement to
substitute all of the royalty terms of such other license for the royalty terms
of this Agreement, provided that (a) Licensee must accept all of the royalty
terms of such other license, and may not select particular terms; and (b) such
amendment shall not affect Tessera's rights with respect to royalties or other
moneys accrued and/or paid prior to such amendment.
IV. TAXES
All payments or royalties due Tessera under this Agreement shall be
deemed payments or royalties for goods, services, Technology and/or Technical
Information provided and delivered by
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the Commission. Confidential treatment has been requested with respect to the
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Tessera free on board (f.o.b.) Tessera's San Jose, California facility. As such,
payments and royalties due hereunder shall be calculated and paid by Licensee to
Tessera on a "net cash" basis per the terms hereof and shall be free of and not
reduced in any way by any imposed taxes or other assessments that may be levied
by any government or country except for those taxes that may be imposed and
collected by the United States and/or the State of California.
V. QUARTERLY ROYALTY REPORTS & PAYMENTS
Beginning on the Effective Date of this Agreement, royalties shall be
calculated and paid in full in quarter annual payment periods ending December
31, March 31, June 30 and September 30 of each year. Beginning with the first
such royalty calculation and payment, Licensee shall deliver a written report
(as shown in Attachment B) describing the basis upon and containing the
information sufficient to determine the royalties due Tessera for the applicable
payment period. All payments under this Paragraph shall be made in US Dollars by
wire transfer to Union Bank of California, 99 Almaden Blvd., San Jose, CA 95113,
Account Name: Tessera, Account No.: 6450148359, Routing No. 122000496,
International Swift Code: UBLAUS66, or such other bank or account as Tessera may
from time to time designate in writing. Payments shall be considered to be made
as of the day on which they are received in Tessera's designated bank or
account. Licensee will further submit with each such calculation report, an
accounting of the total quantity of TCC or related IC packages manufactured by
Licensee as compared to the total quantity of TCC or related IC packages
manufactured for Licensee by a separate Tessera TCC assembly licensee.
VI. TECHNICAL TRANSFERS
A. Licensee Development Services. Licensee, solely at its own expense,
shall develop assembly processes and device structures needed by Licensee and/or
Tessera (as mutually agreed upon by Tessera and Licensee) to efficiently
manufacture certain F-(mu)BGA packages and shall install sufficient capacity in
its facilities to manufacture a minimum of [*] ([*]) such F-(mu)BGA packages per
month for sale to Tessera and Licensee's own customers (all as soon as
practicable; however, both parties understand that time is of the essence for
such F-(mu)BGA package development). Upon achieving monthly volume shipments
averaging one million F-(mu)BGA packages per month (at commercially acceptable
yields, costs and reliability test results) or at a point and time mutually
acceptable to both Tessera and Licensee, Licensee, at its own expense, shall
transfer its entire device and process technology for making such F-(mu)BGA
packages to Tessera on a mutually agreeable schedule. For a period of twelve
(12) months commencing from the date of first training of Tessera by Licensee
under this Agreement, and according to a mutually agreeable time schedule and
manpower assignment schedule, Licensee will make certain of its engineering
staff available at its San Jose facilities for transfer activities, including
joint activities with Tessera's engineers, as may be necessary in accordance
with mutual agreement of the parties to successfully complete the transfer
pursuant to this Paragraph; however, Licensee shall not be obligated to provide
more than sixty (60) working man days of engineering support during the first
twelve month period. Tessera agrees to pay all reasonable coach class air travel
and hotel charges incurred by Licensee personnel in connection with engineering
support performed at any of Tessera's facilities outside of San Jose. Additional
engineering interactions, conducted to collaborate on technical issues of mutual
concern, shall be supported by each party at its own expense. Additional
engineering support (not to exceed sixty (60) working days) beyond the initial
twelve month period
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for an additional twelve (12) month period may be made available, according to a
mutually agreeable time schedule and manpower assignment schedule, at a per diem
rate of US $[*] per support engineer, plus reasonable air travel and hotel
charges. Any support or other services required thereafter may be provided upon
terms mutually agreeable to the parties.
B. Licensee Supply of F-(mu)BGA Packages. Licensee shall agree to
provide reasonable volumes of F-(mu)BGA packages to Tessera for sales to
Tessera's customers at a price not to exceed the lowest price Licensee charges
any third party customer for similar volumes of a substantially identical
package. (Notwithstanding, the parties may negotiate in good faith a reciprocal
formula for pricing any F-(mu)BGA or (mu)BGA package sales occurring between
themselves.) Moreover, Licensee shall NOT be required to pay Tessera the
royalties set forth in Paragraph III.B. for F-(mu)BGA packages supplied by
Licensee to Tessera if Licensee shall reduce Tessera's price as determined above
by the amount of royalties otherwise due Tessera for similar sales to its best
third party customer.
C. Licensee Reports. Throughout the term of this Agreement, Licensee
agrees to provide at least semiannually to Tessera on or about the dates set
forth in Paragraph V (Licensee Reports and Payments) written reports on all
Licensee Improvements during the term of this Agreement. Notwithstanding the
foregoing, Licensee is under no obligation to transfer and/or license any
information whether confidential, proprietary or otherwise that it may be
prohibited from transferring to Tessera by contract with a third party or
applicable law. Notwithstanding any provision to the contrary, Licensee shall
not be under any obligation to disclose actual patent applications to Tessera.
D. Tessera Training Services. In addition to granting of the aforesaid
licenses under the Technology and upon completion of Licensee's transfer of
F-(mu)BGA technology to Tessera set forth in Paragraph VI.A., Tessera will
transfer to Licensee the Technical Information on a mutually agreeable schedule,
including TCC package assembly know-how, specifications and Standards for the
(mu)BGA packages licensed herein. However, it is understood and agreed by both
parties that Licensee will not require Technology transfer from Tessera in order
to manufacture Tape under this Agreement and Tessera shall not transfer such
Tape Technology to Licensee. For a period of up to twelve (12) months commencing
from the date of first training of Licensee by Tessera under this Agreement, and
according to a mutually agreeable time schedule and manpower assignment
schedule, Tessera will make certain of its engineering staff available at its
San Jose facilities for transfer activities, including joint activities with
Licensee's engineers, as may be necessary in accordance with mutual agreement of
the parties to successfully complete the Technical Information transfer;
however, Tessera shall not be obligated to provide more than sixty (60) working
man days of engineering support during the first twelve month period. Licensee
agrees to pay all reasonable coach class air travel and hotel charges incurred
by Tessera personnel in connection with engineering support performed at any of
Licensee's facilities outside of San Jose. Additional engineering interactions,
conducted to collaborate on technical issues of mutual concern, shall be
supported by each party at its own expense. Additional engineering support (not
to exceed sixty (60) working days) beyond the initial twelve month period for an
additional twelve (12) month period may be made available, according to a
mutually agreeable time schedule and manpower assignment schedule, at a per diem
rate of US $[*] per support engineer, plus reasonable air travel
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and hotel charges. Any support or other services required thereafter may be
provided upon terms mutually agreeable to the parties.
E. Tessera Supply of (mu)BGA Packages. For a limited period of up to 36
months or until the training and technology transfer of VI.D., above, have been
successfully completed, Tessera shall agree to provide reasonable volumes of
(mu)BGA packages to Licensee for sales to Licensee's customers at a price no
less favorable than the lowest price Tessera charges any third party customer
for similar volumes of a substantially identical package. (Notwithstanding, the
parties may negotiate in good faith a reciprocal formula for pricing any
F-(mu)BGA or (mu)BGA package sales occurring between themselves.)
F. Licensee Third Party Training Services. After Licensee has provided
F-(mu)BGA training and technology transfer to Tessera, Licensee and Tessera
shall negotiate in good faith the terms and conditions under which Licensee
shall either offer reasonable assistance to Tessera for training and
transferring F-(mu)BGA package processes and technology to other Tessera TCC
licensees or provide third party training and technology transfer services
related to Licensee's F-(mu)BGA package processes and technology directly to
such other Tessera TCC licensees (on cost plus subcontract basis).
VII. IMPROVEMENTS AND IMPROVEMENT GRANTBACK
A. Tessera Improvements. Tessera will make available on at least a
semiannual basis, improvements to the Technology and Technical Information which
have been reduced to practice including changes and modifications in Standards,
methods, materials and specifications during the term of this Agreement through
Tessera's regularly published Technical Briefing Bulletin or substantially
equivalent method. Notwithstanding the foregoing, Tessera is under no obligation
to transfer and/or license any information whether confidential, proprietary or
otherwise that it may be prohibited from transferring to Licensee by contract
with a third party or applicable law. Notwithstanding any provision to the
contrary, Tessera shall not be under any obligation to transfer or disclose
actual patent applications or related documents to Licensee.
B. Licensee Improvements. Licensee shall use its best efforts to perfect
ownership or control over any technology it develops or uses to make F-(mu)BGA
packages and hereby grants Tessera a fully-paid, sublicensable, transferable,
perpetual, right to use Licensee's Improvements and Licensee's Patents covering
any inventions contained in such F-(mu)BGA package Licensee Improvements to
manufacture, have manufactured for Tessera, use or sell products. Further,
Licensee hereby grants to Tessera a fully-paid, non-sublicensable,
non-transferable, perpetual, right to use Licensee's Improvements and Licensee's
Patents covering any inventions contained in such Licensee's Improvements to
manufacture, have manufactured for Tessera, use or sell products.
C. Cross Licensing With Other Tessera Licensees. Licensee agrees to
grant to the other licensees of Tessera on commercially reasonable terms a
non-exclusive, non-transferable, nonsublicensable license under Licensee's
Patents covering any inventions contained in such Licensee's Improvements unless
such other licensees refuse to grant to Licensee similar licenses under any of
such other licensees' patents relating to any improvements developed by such
other licensee on similar commercially reasonable terms. In no event shall
Licensee be under any obligation to grant
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such licenses to other licensees of Tessera, unless Licensee's Improvements are
used in TCC or related IC packages sold externally to non-Affiliates or proposed
by Licensee for incorporation into the Standards.
D. Joint Improvements. Any improvement that is made through the joint
efforts of Tessera and Licensee shall be deemed a "Joint Improvement" hereunder
and shall be the joint property of both Tessera and Licensee, and both Tessera
and Licensee shall have a fully-paid, nonassessable, transferable, perpetual,
sub-licensable right and license to use such Joint Improvements without an
accounting to the other party, but such right and license shall not include any
right of license by implication with respect to any part of the Technology.
Licensee and Tessera shall reasonably consult with one another with respect to
applying for and maintaining jointly owned patents with respect to such Joint
Improvements at shared expense. In the event that one party hereto (the
"Notifying Party") notifies the other party that the Notifying Party wishes to
apply for or maintain a patent in any country for any such Joint Improvement and
the other party hereto does not confirm to the Notifying Party, within thirty
(30) days thereafter, that such other party will join in such patent application
and share the cost thereof, the Notifying Party shall have a right, at its own
expense, to apply for or maintain such patent, in which case Tessera and
Licensee shall be joint owners of the patent; however, the Notifying Party shall
automatically be granted an exclusive, sublicensable, worldwide license from the
other party for any such patent for which the other party did not jointly share
the costs of the patent application's application, prosecution or maintenance.
The parties hereto shall execute such documents and render such assistance as
may be appropriate to enable the party properly having title to such
Improvements to maintain or obtain patents for the same.
VIII. TRADEMARKS & LICENSE NOTICE
A. Trademark Ownership. Licensee acknowledges the ownership the Tessera
trademarks TESSERA BLOCK LOGO, TCC, COMPLIANT CHIP, uBGA and F-uBGA (hereinafter
"Marks"), and agrees that it will do nothing inconsistent with such ownership
and that all use of the Marks by Licensee shall inure to the benefit of and be
on behalf of Tessera. Licensee agrees that nothing in this Agreement shall give
Licensee any right, title or interest in the Marks other than the right to use
the Marks in accordance with this Agreement to make and sell TCC packages and
related IC packages according to the Standards.
B. Trademark License Grant. Subject to the IC packages manufactured
pursuant to this Agreement meeting all of the Standards, Licensee's agreement
and compliance with to other provisions of this Agreement including all
attachments hereto, and Licensee's payment of the fees and royalties stated
herein in Paragraph III, Tessera hereby grants Licensee a non-exclusive, non
transferable, non-sublicensable limited license to use the Marks to identify and
distinguish Licensee's royalty bearing TCC or related IC packages that are sold
by Licensee under this Agreement, subject to the proper use of such Marks (as
set forth in this Paragraph below) and the acknowledgement of ownership of such
Marks in documentation, articles and promotional material; to wit, each such use
shall contain the following text: "____________ (List of the Marks used in the
item) are trademarks of Tessera, Inc." or a suitable variant thereof to account
for a singular use of one or more of the Marks.
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C. Trademark Form of Use. Licensee shall use its best efforts to use the
Marks as modifiers in conjunction with generic nouns, e.g. the uBGA(R) package.
Further, all of the Marks, except "Micro BGA" and "F-uBGA", are federally
registered by the U.S. Trademark Office. As such, Licensee shall use the "(R)"
symbol adjacent the Marks in all titles and headings and other prominent uses of
the Marks and shall also use its best efforts to use the "(R)" symbol on at
least the first and most obvious use of each of the Marks within the text of any
printed material. "Micro BGA" and "F-uBGA" are common law trademarks of Tessera.
As such, Licensee shall use the "TM" symbol adjacent this Mark in all titles and
headings and other prominent uses of the Micro BGA marks and shall also use its
best efforts to use the "TM" symbol on at least the first and most obvious use
of each such mark within the text of any printed material.
D. License Notice. Licensee promotional material and advertisements
referring to royalty bearing TCC or related IC devices shall include a written
notice that "These products are made under a license from Tessera, Inc.".
IX. MATERIAL SUPPLIERS & EQUIPMENT VENDORS
Licensee may enter agreements ("Subcontract") with suppliers or vendors
of materials and equipment ("Supplier"), provided that: (a) prior to any
disclosure of Tessera confidential information, Licensee and Supplier shall
execute a Non-Disclosure Agreement having substantially similar terms as
Paragraph XIV herein (Non-Disclosure); (b) Licensee shall obligate the Supplier
to agree that the Supplier will receive no property rights to the Technology or
Technical Information transferred under Subcontract and that the rights to any
improvements to the Technology made by Supplier shall be Licensee Improvements
as set forth in this Agreement; (c) Licensee shall obligate the Supplier to
agree that the Supplier will respect Licensee's duty to affix the appropriate
license notices, trademarks and other designations to each product or material
made using the Technology as set forth under this Agreement; and (d) Licensee
shall indemnify and hold harmless Tessera and its successors and assigns against
any breach or any damages, costs, or expenses arising from or related to any
breach by Licensee or Supplier of the foregoing obligations.
X. TERM AND TERMINATION
A. Term. This Agreement shall become effective on the Effective Date
and, unless earlier terminated as provided for elsewhere in this Agreement,
shall remain in full force until the expiration of the last to expire of any
Tessera Patent.
B. Termination for Breach. Either party may terminate this Agreement due
to the other party's breach of this Agreement, such as failure to perform its
duties, obligations, or responsibilities herein (including, without limitation,
failure to pay royalties and provide reports as set forth herein). The parties
agree that such breach may cause substantial damages to the party not in breach.
Therefore, the parties agree to work together to mitigate the effect of any such
breach; however, the non-breaching party may terminate this Agreement if such
breach is not cured or sufficiently mitigated (to the non-breaching party's
reasonable satisfaction) within sixty (60) days of notice thereof.
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TESSERA CONFIDENTIAL
C. Termination for Assignment. In the event that (i) a party either
sells or assigns substantially all of its assets or business to a third party
("Selling Party") or (ii) a third party acquires more than fifty percent (50%)
of the capital stock entitled to vote for directors of such party ("Purchasing
Party"), the Selling Party shall notify the other party hereto of such sale or
assignment of assets or the Purchasing Party's acquisition. In any case of sale,
assignment or acquisition, the Selling Party shall provide to the other party a
written confirmation from such Purchasing Party stating that such Purchasing
Party shall expressly undertake all the terms and conditions of this Agreement
to be performed by Selling Party. In the event that Licensee is the Selling
Party and the Purchasing Party does not agree to fulfill such obligations under
this Agreement, Tessera shall reserve a right to terminate this Agreement. In
the event Tessera is the Selling Party, the Purchasing Party shall be bound to
the terms and obligations of this Agreement.
D. Termination for Bankruptcy. In the event that one party becomes
insolvent or bankrupt, permanently ceases doing business, makes an assignment
for the benefit of its creditors, commits an act of bankruptcy, commences any
bankruptcy proceedings or other proceedings in the nature of bankruptcy
proceedings, or has commenced against it any bankruptcy proceedings or other
proceedings in the nature of bankruptcy proceedings that are not dismissed
within sixty (60) days, then the other party shall have the right to terminate
this Agreement immediately upon its notice.
E. Any termination of this Agreement pursuant to this paragraph X shall
be deemed a termination of this Agreement in accordance with its terms
(including termination of any payments of royalties to Tessera and any rights of
Licensee to use any Technology or Tessera Patent licensed hereunder).
F. Survival Clause. Unless otherwise provided elsewhere in this
Agreement, the following provisions shall survive the termination or expiration
of this Agreement:
1. Licensee's obligation to make payments to Tessera accrued
under this Agreement on or prior to expiration or termination.
2. Licensee's obligation to submit written reports stipulated
in Paragraph V, Licensee Reports and Payment, and to permit the inspection and
audit of its account record stipulated in Paragraph XI, Reasonable Audit, shall
continue for a period of three (3) years following a termination or expiration
of this Agreement.
3. After the termination of this Agreement by Licensee based
upon a breach of the Agreement by Tessera, the License Grant of Paragraph II.A.
shall continue for a period of one (1) year to the extent necessary for Licensee
to fulfill any pre-existing, written contractual obligations in Agreement
entered into prior to Licensee's termination of this Agreement so long as the
royalty payments of Paragraph III et seq. continue to be paid by Licensee during
such period.
4. Paragraph VII.B., Licensee Improvements.
5. Paragraph X, Term and Termination.
6. Paragraph XII, No Warranties
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TESSERA CONFIDENTIAL
7. Paragraph XIII, Limitation on Damages
8. Paragraph XIV, Non-Disclosure.
9. Paragraph XV, Indemnity
10. Paragraph XVI, Miscellaneous
XI. REASONABLE AUDIT
A. Financial Audit. Upon reasonable written prior notice, Tessera shall
have the right to examine and audit through an independent third party CPA firm
retained on a non-contingent fee basis and acceptable to Licensee (such
acceptance not to be unreasonably withheld), not more frequently than once per
year, all relevant records of Licensee that may contain information bearing upon
the amount of fees payable under this Agreement; provided, that the said auditor
shall have agreed in advance in writing to maintain in confidence and not to
disclose to Tessera or any third party any Licensee proprietary information
obtained during the course of such audit. All such audits shall be conducted
during Licensee's regular business hours in a manner and fashion that does not
interfere with Licensee's normal business operations. The results of any such
audit shall be final, and within thirty (30) days after receiving the auditor's
report, Licensee shall make payment to Tessera of any amount which may be found
to be payable, if any, or Tessera shall make a payment to Licensee if Licensee
has overpaid the royalties due Tessera. Tessera shall bear the expenses of such
audit examinations unless royalties due and owing to Tessera are determined by
the auditor to be at least five percent (5%) greater than such similar amounts
as calculated and/or paid by Licensee, in which case Licensee shall bear such
expenses,
B. Standards Audit. Prior to the first shipment of TCC or related IC
packages to a third party by Licensee upon which Licensee intends to bear the
Marks under the license set forth in Paragraph VIII.B. pursuant to this
Agreement, Licensee shall provide Tessera with sufficient quantities of such
packages to enable Tessera to determine if such packages are in compliance with
the Standards. Upon receipt of such packages, Tessera shall promptly perform the
tests set forth in Attachment C and provide a written report to Licensee
detailing the results of the tests so performed. After the Licensee manufactured
TCC or related IC packages have passed Tessera's testing requirements, Licensee
may use the Marks as set forth in Paragraph VIII. To ensure the ongoing, future
minimum quality and reliability of the TCC or related IC packages sold by
Licensee under any of the Marks pursuant to this Agreement, Tessera shall have a
right to perform the tests set forth in Attachment C at any time during the term
of this Agreement upon 60 day written notice by Tessera to Licensee of Tessera's
intention to perform such Standards testing. Upon Licensee's receipt of such
written notice from Tessera, Licensee shall promptly provide sufficient
quantities of TCC or related IC packages for such testing. Upon receipt of such
packages, Tessera shall promptly perform the tests and provide a written report
to Licensee detailing the results of the tests so performed.
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TESSERA CONFIDENTIAL
XII. LIMITED WARRANTIES
Tessera represents that the United States government and other foreign
governments have granted Tessera ownership rights under the issued Tessera
Patents licensed hereunder. Tessera further represents that it is the owner of
any copyrights licensed hereunder. Further, to the best of Tessera's knowledge
and belief as of the Effective Date of this Agreement, Tessera hereby represents
that: (i) Tessera is the owner of the non-issued Tessera Patents licensed
hereunder and that Tessera has the right to grant the scope of the license
contemplated within this Agreement; and (ii) Tessera has not granted any rights
in the Technology and Technical Information to any third party that are
inconsistent with the rights and licenses granted herein.
Except as provided in this Paragraph above, Licensee acknowledges and
agrees that the rights and licenses, Technology, Technical Information and
specifications granted or otherwise provided hereunder are provided to Licensee
"AS IS", with no warranty of any kind. TESSERA MAKES NO WARRANTY, EXPRESS,
IMPLIED, STATUTORY OR OTHERWISE, CONCERNING THE SUBJECT MATTER OF THIS
AGREEMENT, INCLUDING WITHOUT LIMITATION, WARRANTIES OF FITNESS FOR A PARTICULAR
PURPOSE, QUALITY, USEFULNESS OR NONINFRINGEMENT. Tessera makes no warranty that
the Technology, Technical Information, specifications or Standards will be
sufficient to yield any particular result.
Licensee make no representation or warranty as to the amount of
royalties Tessera may receive or that the Licensee Improvements will be
sufficient to yield a particular result. Licensee Improvements are provided "AS
IS" with no warranty of any kind.
XIII. LIMITATION ON DAMAGES
IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR ANY OTHER
PERSON OR ENTITY (UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER
THEORY) FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR
RELATED TO THE SUBJECT MATTER OF THIS AGREEMENT, EVEN IF THE PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR LOSSES.
XIV. NON-DISCLOSURE
A. Confidential Information Definition. "Confidential Information"
includes all information disclosed prior to the expiration or termination of
this Agreement by one party to another hereunder including, without limitation,
ideas, inventions (whether patentable or not), designs, product concepts,
improvements, manufacturing tolerances, quality standards, business strategies,
forecasts, customer lists, product development plans and marketing plans,
provided that such information is designated and marked as being confidential in
nature by the disclosing party at the time of disclosure to the receiving party
and provided further that such information, if disclosed orally, is reduced to
writing, marked as being confidential, and delivered to the receiving party
within thirty (30) days after such disclosure.
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TESSERA CONFIDENTIAL
B. Exclusions. Notwithstanding, Confidential Information shall not
include any information which: (1) was lawfully in possession prior to receipt
from disclosing party; (2) is or becomes a matter of public knowledge through no
fault of the receiving party; (3) is lawfully obtained by the receiving party
from a third party under no obligation of confidentiality; (4) is independently
invented by the receiving party without reference to the disclosed Confidential
Information; or (5) the receiving party receives prior written consent from the
disclosing party for disclosure of certain Confidential Information to a third
party.
C. Standard of Care. The receiving party shall hold in confidence and
protect the disclosed Confidential Information by using the same degree of care
as they would use to protect their own Confidential Information, but no less
than a reasonable degree of care, to prevent unauthorized use, dissemination, or
publication of the Confidential Information. The parties hereto agree that there
is a duty to promptly advise the disclosing party of any unauthorized disclosure
or use of Confidential Information. The receiving party agrees the damages to
the disclosing party for improper disclosure of Confidential Information may
result in irreparable harm to the disclosing party and that therefore the
disclosing party may be entitled to equitable relief, including but not limited
to injunctive relief. Notwithstanding, the receiving party shall not be liable
for any disclosure resulting from the sale of any physical product or component;
further, the receiving party may disclose the other party's Confidential
Information to the receiving party's Suppliers or consultants where necessary
for the manufacture, use or sale of products by the receiving party so long as a
suitable non-disclosure agreement has been signed between such parties which has
substantially similar terms as this Paragraph XIV.
D. Confidentiality Period. The parties agree that Confidential
Information shall be maintained in confidence by the receiving party for a
period of five (5) years from the date of first disclosure to the receiving
party by the disclosing party and shall not be used by the receiving party
except in furtherance of this the rights and licenses granted pursuant to this
Agreement.
E. Early Termination & Return of Confidential Information. In the event
this Agreement is terminated for any reason other than pursuant to Paragraph
X.A. and upon a request by a disclosing party, the receiving party will promptly
return or certify the destruction of all Confidential Information it received
from the disclosing party along with all copies made by the receiving party.
Upon such a request, the disclosing party's Confidential Information contained
on data storage media shall be certified as being deleted therefrom.
F. Promotional Materials. The parties hereto shall consult with each
other from time to time and mutually approve promotional materials, including
samples, technical data, or otherwise containing any proprietary and/or
confidential information of the parties, for disclosure to customers by either
party or jointly under a mutually agreeable and reciprocal non-disclosure
agreement. Notwithstanding the parties' obligations hereunder with respect to
timely reports and/or disclosures to the other containing confidential
information, breach of this Paragraph XIV by either party shall be deemed
sufficient cause for the other party to terminate any further obligation to make
confidential disclosures to the breaching party without limiting any other
remedy at law. If such a breach occurs, the non-breaching party shall send a
written notification to the breaching party. The breaching party will then have
fifteen (15) days from the mailing date of the notification within which to
mitigate the effects of the wrongful disclosure amounting to a breach hereunder.
If such
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TESSERA CONFIDENTIAL
actions are sufficient to mitigate the effects of the wrongful disclosure, the
obligation of the Non-breaching party to make confidential disclosures shall
resume.
G. Employee Agreements. Both parties hereto represent that all of their
employees, including contract employees, shall have executed agreements
obligating such employees to assign ideas and inventions to their respective
employer prior to having access to Confidential Information received hereunder.
H. Superceding Prior Confidentiality Terms. This supersedes all prior
written or oral understandings or agreements with respect to non-disclosure or
confidentiality issues.
XV. INDEMNITY
A. Licensee agrees to defend, indemnify and hold Tessera harmless from
and against any and all claims, damages, liabilities, costs and expenses
(including reasonable attorney's fees and expenses) arising out of or related to
Licensee's use of Technology or Technical Information. Notwithstanding, Licensee
shall not bear the obligation or expense of defending the validity of any
Tessera Patent. Tessera shall have sole control over and bear the expense for so
defending the validity of the Tessera Patents.
B. Tessera agrees to defend, indemnify and hold Licensee harmless from
and against any and all claims, damages, liabilities, costs and expenses
(including reasonable attorney's fees and expenses) arising out of or related to
Tessera's use of Licensee Improvements. Notwithstanding, Tessera shall not bear
the obligation or expense of defending the validity of any Licensee Patent.
Licensee shall have sole control over and bear the expense for so defending the
validity of the Licensee Patents.
XVI. MISCELLANEOUS
The following additional terms shall apply to this Agreement:
A. Governing Law. This Agreement shall be governed, interpreted and
construed in accordance with the laws of the State of California, irrespective
of choice of laws provisions. Both parities shall use their best efforts to
resolve by mutual agreement any disputes, controversies, claims or difference
which may arise from, under, out of or in connection with this Agreement. If
such disputes, controversies, claims or differences cannot be settled between
the parties, any litigation between the parties relating to this Agreement shall
take place in San Jose, California. The parties hereby consent to personal
jurisdiction and venue in the state and federal courts of California.
B. No Waiver. Any waiver, express or implied, by either of the parties
hereto of any right hereunder or default by the other party, shall not
constitute or be deemed a continuing waiver or a waiver of any other right or
default. No failure or delay on either party in the exercise of any right or
privilege hereunder shall operate as waiver thereof, nor shall any single or
partial exercise of such right or privilege preclude other or further exercise
thereof or any other right or privilege.
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TESSERA CONFIDENTIAL
C. Equitable Relief: Nothing herein shall preclude either party from
taking whatever actions are necessary to prevent immediate, irreparable harm to
its interests. Otherwise, these procedures are exclusive and shall be fully
exhausted prior to the initiation of any litigation.
D. Notices. All notices, required documentation, and correspondence in
connection herewith shall be in the English language, shall be provided in
writing and shall be given by facsimile transmission or by registered or
certified letter to Tessera and Licensee at the addresses and facsimile numbers
set forth below:
Tessera: Tessera, Inc.
3099 Orchard Dr.
San Jose, California 95134
Facsimile No.: 408-894-0768
Attn.: Chief Executive Officer
Licensee: Integrated Packaging Assembly Corporation
2221 Old Oakland Rd
San Jose CA 95131-1402
Facsimile: 408-321-0311
Attn.: Chief Executive Officer
Either Party may change its address and/or facsimile number by giving
the other party notice of such new address and/or facsimile number. 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.
E. Documentation Managers. Both Licensee and Tessera shall designate a
Documentation Manager to perform the task of logging and tracking the
confidential documents transferred between the companies. If possible, each
transfer of confidential information should be first transferred between the
respective Documentation Managers before disclosure in a meeting or via
mail/fax. If the information is first disclosed between representatives of the
parties, an effort should be made to send a copy of the disclosed information to
the receiving party's Documentation Manager along with the date of the
disclosure. Tessera's Documentation Manager is Christopher M. Pickett, Director
of Intellectual Property and may be contacted at the Tessera fax and street
address. Licensee's Documentation Manager is Gerald K. ("Skip") Fehr, Vice
President, Packaging Technology and may be contacted at the above street address
and at the following fax number: (408) 321- 3603. Either party may change its
Documentation Manager or the associated address and/or facsimile number by
giving the other party notice of such new information.
F. Invalidity. If any provision of this Agreement is declared invalid or
unenforceable by a court having competent jurisdiction, it is mutually agreed
that this Agreement shall endure except for the part declared invalid or
unenforceable by order of such court. The parties shall consult and use their
best efforts to agree upon a valid and enforceable provision which shall be a
reasonable substitute for such invalid or unenforceable provision in light of
the intent of this Agreement.
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TESSERA CONFIDENTIAL
G. Assignment. Neither party may assign this Agreement or any of its
rights or obligations hereunder without the prior written consent of the other
party.
H. Export Regulations. Both parties shall comply with the laws and
regulations of the government of the United States, and of any other country as
applicable relating to the export of commodities and technical data, any direct
product of such data, or any product received the other, to any proscribed
country listed in such laws and regulations unless properly authorized by the
appropriate government, and not knowingly export, or allow the export or
re-export of any Technology or Technical Information, or any system, component,
item, material or package made under or using the foregoing, in violation of any
restrictions, laws or regulations, or without all required licenses and
authorizations, to Afghanistan, the People's Republic of China or any Group Q,
S, W, Y or Z country specified in the then current Supplement No. 1 to Section
770 of the US Export Administration Regulations (or any successor supplement or
regulations).
I. Section Headings. The headings and captions used herein shall not be
used to interpret or construe this Agreement.
J. Entire Understanding. This Agreement 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 Agreement. Any amendment or
modification of any provision of this Agreement must be in writing, dated and
signed by both parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this
Agreement as of the date first above written.
TESSERA, INC. INTEGRATED PACKAGING ASSEMBLY
CORPORATION
By: /s/ JOHN SMITH By: /s/ P. VERDERICO
------------------------- -------------------------------------
Print Name: John Smith Print Name: Patrick Verderico
----------------- -----------------------------
Title: President Title: CEO
---------------------- ----------------------------------
Date: 4/23/98 Date: 23 Apr 98
----------------------- -----------------------------------
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