Exhibit 10.11
CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT
HAVE BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION.
AUDIO TECHNOLOGY LICENSING AGREEMENT
This Audio Technology Licensing Agreement (the "Agreement") is made this
26th day of June, 1997 (the Effective Date") between T-Square Design, Inc., a
California corporation with its principal place of business at 0000 Xxx
Xxxxxxxxx Xxxxx, Xxx. 000, Xxxxx Xxxxx, Xxxxxxxxxx 00000 ("T-Square") and
InteGraphics Systems, Inc., a California Corporation with its principal place of
business at 0000 Xxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000, ("IGS"). (As used
herein, "party" or Parties" will refer to T-Square Design, Inc., InteGraphics
Systems, or both, as the case may be.)
RECITALS
T-Square Design, Inc. has developed and is developing certain proprietary
semiconductor technology and products, including but not limited to *** Audio
Technology.
IGS has developed and is developing certain graphics controller-based
products and technology targeting the Multimedia Technology Industry which
includes the integration of Graphics and Audio products, (Audio/Graphics
Integrated Circuit), and is in the business of manufacturing Graphics/Multimedia
Products, and marketing, selling and supporting these Graphics/Multimedia
Products.
Both Parties desire that IGS be licensed to develop, manufacture, market
and sell integrated circuit based Audio/Graphics Products which incorporate T-
Square Design, Inc.'s *** Audio Technology implemented in the Audio Engine,
Software Drivers, Source Code, and technical/marketing support described herein.
TERMS AND CONDITIONS
1. Definitions:
The following terms when used in this Agreement shall have the meanings
ascribed to them in Section 1;
1.1 "*** Audio Technology" shall mean:
The Audio Engine hardware, software specifications, and marketing/technical
support as more completely described in Section 4, that enables the
incorporation of the Audio function on to the Graphics Controller Chip,
including but not limited to the items defined below in Sections 1.2, 1.3, 1.4,
1.5, and 1.6
All information, inventions, ideas, concepts, discoveries, algorithms,
procedures, techniques, solutions, technology, technical documentation, designs
(including circuit designs), simulation and other models, materials and know-how
associated with the design, development, testing, construction, use and
distribution of such *** Audio Technology with IGS Graphics Controller Designs
as part of Integrated Audio/Graphics Controller Chips, whether developed by IGS
or T-Square Design.
1.2 "T-Square Design, Inc. *** Audio Product Specification" shall mean the
hardware and software product specifications developed by T-Square Design,
Inc. for the IGS Graphics/Audio Integrated Circuit.
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EXCHANGE COMMISSION.
1.3 "Compatible" or "Compatibility" shall mean that T-Square's Audio Engine
hardware and all necessary supporting Software is compatible with IGS's
Graphic Controller Integrated Circuit such that the resulting
Audio/Graphics Integrated Circuit can perform both graphics and audio
functions at a *** Marketplace level of acceptability in a *** and ***
environment.
1.4 "Intellectual Property Rights" of a Party means any and all rights of the
Party in and to all patents, patent applications, copyrights, trademarks,
trade secrets and know-how, mask work rights, industrial design and other
proprietary rights of any kind, recognised in any country of the world,
whether or not perfected, owned (or licensed by the Party with the right to
grant sub-licenses of the scope granted herein) as of the Effective Date or
hereafter acquired (whether by creation, transfer, license with right of
sub-license or by any other means) during the term of this Agreement.
1.5 "Unit Shipments" shall mean the gross number of Integrated Circuits using
the T-Square *** Audio Technology, shipped to customers of IGS, less any
returned units for which a refund or credit is given.
1.6 Licensed ICs or Licensed Technology. shall mean any and all of the ***
Audio Technology hardware and software licensed by T-Square to IGS under
this Agreement.
2. Grant of Rights
2.1 Marketing Rights: IGS shall have non-exclusive marketing rights of the T-
Square *** Audio Technology as integrated with graphics controllers.
2.2 Integration Rights: Subject to the terms and conditions of this Agreement,
T-Square Design, Inc. hereby grants to IGS a non-exclusive license to use
this licensed Audio Technology for products other than Graphics/Audio
integration after March 31, 1998.
2.3 Manufacturing and Distribution Rights: Subject to the terms and conditions
of this Agreement, T-Square Design, Inc. hereby grants to IGS a non-
exclusive, world-wide, non-transferable, non-assignable, royalty-bearing
license to make, have made, manufacture, reproduce, use, market, distribute
and sell the *** Audio Technology, solely in connection with making, having
made, manufacturing, reproducing, using, marketing, distributing and
selling licensed ICs.
2.4 Sub-licensing Rights: Neither IGS nor its customers can sub-licensing the
licensed audio technology.
2.5 Use of Documentation: T-Square Design, Inc. grants to IGS a non-exclusive,
world-wide, fully paid-up, non-transferable, non-assignable license under
T-Square Design. Inc. Intellectual Property Rights to use, copy, modify and
distribute information other than Confidential Information as defined in
Section 8 of this Agreement for IGS's internal use and for creating and
publishing technical documentation to assist IGS's customers to use the
Audio/Graphics Chips. Notwithstanding anything in this Agreement to the
contrary, IGS will not disclose T-Square's Confidential Information without
the prior written consent of T-Square Design, Inc.
2.6 Limitations: No license or right is granted, by implication or otherwise,
to IGS, under any patents, confidential information or other intellectual
property rights now or hereafter owned or controlled by T-Square Design,
Inc. except for licenses and rights expressly granted in this Agreement.
2.7 Notification On Licensing: T-Square shall notify IGS if T-Square license
this *** Audio Technology for purposes of integrating *** Audio Technology
with Graphics Integrated Circuit technology to any newly licensed IC
company, designer, developer, manufacturer, or technology entity, prior to
March 31, 1998.
*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION.
2.8 Licensing And Distribution: IGS shall have the right to distribute the
object code of the software for T-Square's *** Audio Technology only with
the licensed IC. IGS may sub-license the software source code to OEM
customers of IGS for use with the licensed IC only.
3. Obligations
3.1 IGS Support. Notwithstanding the obligations of T-Square to provide
adequate engineering human resources for the delivery of the *** Audio
Technology as contained herein, IGS will provide additional necessary human
resources and all financial resources necessary to promote and support this
licensed technology.
3.2 Engineering Support. IGS will supply reasonable resources and support to
adapt the audio engine hardware and software core from T-Square. 3.3 Other
Support. IGS will provide all necessary equipment for layout, tape out,
revisions and debug of the sample silicon.
3.4 Modifications or Improvements. T-Square agrees that any modifications or
improvements it makes or receives, limited to changes of the existing logic
and circuit design that are offered to other *** Audio Technology licensees
at no charge, including those made by other Graphics Controller companies
but exclusive of any similarly granted licensee-specific layout
optimizations, process migrations, or improvements in technology covered by
other patents or patent applications, which are now or hereafter owned or
controlled by T-Square but not as yet made to the IGS Graphics/Audio chip,
shall be made immediately available to IGS at no additional charge if those
improvements will, in T-Square's and IGS's judgement, place IGS's products
in a non-competitive or non-compatibility position. Any modifications or
improvements for which T-Square must pay a license fee or royalty, and T-
Square acquires sub-license rights to, will be made available to IGS at a
similar license fee and royalty schedule.
4. *** Audio Technology Delivery and Support
4.1 Hardware. T-Square will deliver to IGS a complete package of *** Audio
Technology which shall include but is not limited to the following:
(a) Complete Verilog, RTL level and behaviour model of the Audio Engine
(b) Low level schematics and/or netlist of the Audio Engine
(c) Test vectors for verifying the audio engine prior to tape out (which
will be used for IC mass production.
(d) Debug the sample silicon and solve any problem relative to
functionality, compatibility and stability of the Audio Engine.
(e) Provide demo board schematics and debugging assistance
4.2 Software. T-Square shall provide the following software deliverables as
part of the *** Audio Technology:
(a) Source code of ***, *** and *** drivers
(b) Source code of audio chip level diagnostics and board testing software
(c) Complete set of wave sample for General *** compatible synthesizer
(d) Source code for General *** interpreter for *** games (***)
(e) Source code of *** to *** converter for *** games (***)
4.3 Marketing Support. T-Square shall supply the following:
(a) Product training for the Audio Market
(b) Product specification and comparison for Audio segment
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EXCHANGE COMMISSION.
(c) Hardware and software compatibility testing on audio feature
(d) Customer support in the form of joint visits to IGS's customers with
IGS's Sales, Marketing, and Engineering personnel.
5. Royalties and Other Payment Terms
The royalty license fee schedule as enumerated below shall pertain to all chips
sold by IGS which are a derivative of the *** Audio Technology with audio engine
hardware and/or software licensed from T-Square under this Agreement.
5.1 Royalty Payments. Royalties as specified under this Agreement, shall be
payable to T Square by IGS within 30 (thirty) days of the close of each
fiscal quarter for all licensed ICs incorporating the *** Audio Technology
licensed under this Agreement at $*** per unit.
5.2 Non-Recurring Expanse. A total of $*** design transfer fee will be paid by
IGS to T-Square upon the date of execution of this Agreement.
5.3 Software Source Code Sub-Licensees Fee: Each sub-licensee must sign a
software license agreement with T-Square and pay a one-time software source
code license fee of $***. Software source code license fees shall be waived
by T-Square or refunded to any IGS customer when said fee has been paid in
advance whenever such customer has purchased in excess of *** licensed ICs
in any given fiscal quarter. IGS will treat T-Square's source code with the
same care and protective measures as it would treat it's own source code.
5.4 Fair Market Price Consideration. In the event IGS sells chips using the
licensed technology at a price substantially lower than the fair market
price, or in such event that the fair market price should fall below the
level of sufficient margin to the extent that royalty payments to T-Square
by IGS would cause a loss to IGS, T-Square is not obligated but will
consider waive the royalty payment requirement or issue a credit to IGS as
is mutually agreed upon.
6. Confidential Information:
6.1 Definition. T-Square and IGS acknowledge that, in the course of performing
their respective obligation hereunder, each may obtain information relating
to the other and the other's products that is of a confidential and
proprietary nature to such other Party("Confidential Information"). Such
Confidential Information includes without limitation the Graphics
Controller Technology, *** Audio Technology, trade secrets, know-how
formulas, composition of matter, inventions, techniques, process, programs,
diagrams, schematics, technical information, customer and financial
information, sales and marketing plans and the terms of this Agreement.
6.2 Obligation. Each of T-Square and IGS agrees, for itself and its
subcontractors that it will
(a) use the other Party's Confidential Information only in connection with
fulfilling its obligations under this Agreement;
(b) hold the other Parties Confidential Information in strict confidence
and exercise due care with respect to its handling and protection,
consistent with its own policies concerning protection of its own
Confidential Information of like importance;
(c) not disclose, divulge or publish the other Party's Confidential
information except to such of its responsible employees and
subcontractors who have a bona fide need to know to the extent
necessary to fulfil such Party's obligations under this Agreement; and
(d) instruct all such employees not to disclose the other Party's
Confidential Information to third parties, including consultants,
without the prior written permission of the other party.
*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION.
6.3 Exceptions The obligations set forth in Section 8.2 above will not apply
to either Party's Confidential Information which
(a) is or becomes public knowledge without the fault or action of the
other Party;
(b) received by the other Party from a third party, without restriction as
to use or disclosure;
(c) the other Party can document was independently developed by it;
(d) is required to be disclosed pursuant to law provided the other Party
uses reasonable efforts to give the Party owning the Confidential
Information reasonable notice of such required disclosure; or
(e) is or becomes available to the other Party on an unrestricted basis
from the Party owning the Confidential Information.
6.4 Employer Non-Disclosure Agreement
IGS represents that to the best of its knowledge, at the Effective Date,
all IGS employees with access to all or part of the T-Square's confidential
document have executed written IGS employee non-disclosure agreements or are
otherwise under written obligation of non-disclosure which, inter alia, require
such employees to maintain the confidentiality of confidential Information of
third parties received by IGS. IGS agrees that during the Term of this
Agreement, it shall use reasonable efforts to assure that all additional IGS
employees will execute IGS employee non-disclosure agreements prior to having
access to the T-Square *** Audio Technology. Signed employee non-disclosure
agreements are to be retained by IGS for a period of no less than three (3)
years from the date of the employee's termination.
T-Square represents that to the best of its knowledge, at the Effective
Date, all T-Square employees with access to the IGS Graphics Controller
Technology have executed written T-Square employee non-disclosure agreements or
are otherwise under written obligation of non-disclosure agreements which, inter
alia, require such employees to maintain the confidentiality of Confidential
Information of third parties received by T-Square Design, Inc. T-Square Design,
Inc. agrees that during the Term if this Agreement, it shall use reasonable
efforts to assure that all additional T-Square employees will execute T-Square
employee non-disclosure agreements prior to having access to the IGS Graphics
Controller Technology. Signed employee non-disclosure agreements are to be
retained by T-Square for a period of no less than three (3) years from the date
of the employee's termination.
7. Intellectual Property Rights
7.1 *** Audio Technology. The *** Audio Technology and all Intellectual
Property Rights therein will be the sole and exclusive property of T-
Square, and IGS hereby transfers and assigns to T-Square all right, title
and interest that IGS may have in the *** Audio Technology and all
Intellectual Property Rights therein based on the T-Square Audio
Technology. IGS will provide reasonable assistance and co-operation to T-
Square to acquire, transfer, maintain, perfect and enforce the Intellectual
Property Rights in the *** Audio Technology including but not limited to
execution of such documents as may reasonable be requested by T-Square
7.2 Intellectual Property Indemnification. T-Square will apply its best effort
to defend IGS against any claim that the *** Audio Technology and/or
supporting software source code, object code, or drivers, as supplied by T-
Square infringes or misappropriates the intellectual Property Rights of any
third party.
8. Term and Termination
8.1 Both Parties are binding by this agreement which can only be terminated by
mutual agreeable terms in written signed by both Parties' officers.
8.2 Return of Confidential Information. 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. At the
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EXCHANGE COMMISSION.
request of either Party, an officer of the other Party will certify in
writing that such other Party has complied with this obligation.
9. Warranties and Liability
9.1 Limited Warranty. T-Square warrants to IGS that the *** Audio Technology,
Software Source Code and Object Code will perform in all material respects
in accordance with T-Square's specifications as contained herein. IGS's
sole remedy is that T-Square will, at no extra charge, correct any defect
discovered in the Audio/Graphics chip design so that it performs in
accordance with such specification in all material respects. In case the
Audio/Graphics chip does not meet its functional specification, T-Square
will apply its best effort to correct any defect.
9.2 Liability. Neither Party is liable to the other party for any damage or
loss cost by the usual risks, delays and malfunction of the licensed
products.
10. Miscellaneous
10.1 Governing Law. This Agreement shall be governed by and interpreted in
accordance with the substantive laws of the State of California or the
United States, as applicable. Except for claims regarding either Party's
Intellectual Property Rights or Confidential Information, all claims will
be resolved through mediation by a mutually acceptable mediator to be
chosen by the parties within 30 days after written notice by one Party to
the other demanding mediation. Neither Party may unreasonably withhold
consent to the selection of a mediator, and the parties will share the
costs of mediation equally. Claims regarding Intellectual Property Rights
or Confidential information may be brought immediately in the state or
federal courts having personal jurisdiction over the Party defending the
claim. Each of the parties acknowledges that unauthorised disclosure or use
of the other Party's Confidential Information or infringement or
misappropriation of the other Party's Intellectual Property Rights could
cause irreparable harm and significant injury that would be difficult to
ascertain and may not be compensated by damages alone. Accordingly, the
parties agree that, in addition to any and all legal remedies, claims
regarding Intellectual Property Rights or Confidential Information may be
remedied by appropriate equitable relief.
10.2 Assignment. IGS shall not assign this Agreement and all of it's rights
pertaining thereto to other party without prior written approval from T-
Square's officer.
10.3 Modification and Waiver. 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.
10.4 Notices. Any required or permitted notices hereunder must be given in
writing at the address of each Party set forth below, 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 nationally-recognised 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 recognised private express courier, and five (5)
days after being sent by registered or certified mail.
If to T-Square:
Xxxx Xxx, President & CTO
T-Square Design, Inc.
0000 Xxx Xxxxxxxxx Xx. Xxx 000 Xxxxx Xxxxx, XX 00000
If to IGS
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EXCHANGE COMMISSION.
Xxxxx Xxx, President
InteGraphics Systems, Inc.
0000 Xxxxxx Xxxxx, Xxxxx Xxxxx, XX 00000
10.5 Force Majeure. Nether Party shall be responsible for delay or failure in
performance caused by any government act, law, regulation, order or
decree, by communication line or power failures beyond its control, or by
fire, flood or other natural disasters or by other causes beyond its
reasonable control, nor shall any such delay or failure be considered to
be a breach of this agreement. In any such event, performance shall take
place as soon thereafter as is reasonably feasible.
10.6 Attorney's Fees. In the event of any dispute resolution proceeding between
the parties hereunder, the prevailing party shall be entitled to recover
its costs and reasonable attorney's fees therein. A "prevailing party"
shall mean a party who receives all or substantially all of the relief
sought by such party.
10.7 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.
10.8 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.
10.9 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
provision will be deemed not to be a part of this Agreement
10.10 Headings. The heading 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 Section and subsections.
10.11 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.
Attachment
T-Square Game-Audio Engine Data Sheet
IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective
Date.
T-Square Design, Inc. InteGraphics Systems, Inc.
By: By:
/s/ Xxxx Xxx /s/ Xxxxx Xxx
Xxxx Xxx, President & CTO Xxxxx Xxx, President
7/30/1997
CONFIDENTIAL INTERNAL USE ONLY T/2/DESIGN
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1 INTRODUCTION:
FEATURES:
* *** v2.0 interface
* *** Variable Sample Rate support
* Up to ***Hz Double Sample Rate support
* 32-*** synthesis
* *** positioning sound acceleration
* Legacy *** compatible
* Virtual *** emulation
* Virtual *** interpretation
* *** interface
* Enhanced digital *** interface
* *** receiver & transmitter
* *** transmitter
* Sample Bank resides in Main Memory or Local Memory
* Interface with *** BIU or other Host BIU
1.1 OVERVIEW:
Powered with T-Square *** Synthesizer engine ***, Cyber5050 is a
versatile audio processor which can be integrated in costumed CE product and
also can be utilized on *** platform.
*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION.
