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EXHIBIT 10.15
TESSERA CONFIDENTIAL
TESSERA, INC.
TCC(R) LICENSE AGREEMENT
This Agreement is entered into as of this 22nd day of December, 1998 ("Effective
Date"), between TESSERA INC., a corporation organized under the laws of
Delaware, having a principal place of business at 0000 Xxxxxxx Xxxxx, Xxx Xxxx
XX 00000 and the Tessera Affiliates ("Tessera") and CHIPPAC, INC., a corporation
organized under the laws of California, having a principal place of business at
0000 Xxxxxxxx Xxxxx, Xxxxx Xxxxx, XX 00000 and the Licensee 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 design and
mounting technology it calls TCMT 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, and
WHEREAS, Licensee wishes to use the Tessera patented technology and Technical
Information to assemble said TCC packages and to sell same in accordance with
the terms hereof.
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 which is the subject matter of certain
Tessera Patents licensed hereunder. By way of non-limiting examples, 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.
B. The term "Tape" shall mean any flexible film circuit starting
material that may be made under certain of the Tessera Patents, including but
not limited to TAB tape, flex-circuit film, and substantial equivalents commonly
available in the industry.
C. The verbs "Convert" and "Converted" and the noun, "Conversion"
refer to a process or method by which Tape (whether or not made under the
Tessera Patents) is configured with a compliant die mounting layer, die attach
adhesive layer, or otherwise disposed for subsequent packaging of an IC in a TCC
package.
D. The term "TCMT" means Converted Tape capable of being
incorporated into the manufacture of a TCC package.
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TESSERA CONFIDENTIAL
E. The term "Technical Information" means Tessera Tape Conversion
and package assemble know-how relating to the relating to design, manufacture
and assembly of TCC packages (excluding Batch Technology as defined herein)
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) to exercise
the rights, licenses and privileges granted hereunder.
F. 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 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 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.
G. 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.
H. The term "Tessera Patent" means Patent(s) assigned to Tessera
that arise out of inventions based on the Technical Information made and/or
acquired by Tessera prior to expiration or termination of this Agreement
(excluding Batch Technology as defined herein). The term Tessera Patent shall
further include any third party patent based on Technical Information (excluding
Batch Technology as defined herein) under which Tessera or any successor thereof
has 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. As of the Effective Date of this Agreement, Tessera Patents,
as defined above, consist of those Patents set forth in Attachment A. 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.
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TESSERA CONFIDENTIAL
I. The term "Billable Pin" means any electrical connection to an IC
bond pad made or contained in any TCC package licensed hereunder.
J. The term "Licensee Improvements" means derivatives,
improvements, modifications, or enhanced specifications relating to a TCC
package, or related materials, that may infringe a Tessera Patent or may be made
or incorporated in a TCC package by or for Licensee.
K. The term "Standards" means those minimum standards as set forth
in Attachment C pursuant to which Licensee may sell any TCC package under a Xxxx
(as defined in Paragraph VIII.).
L. The term "Licensee Affiliate" means any company which agrees to
be bound by the terms and conditions of this Agreement and has more than fifty
percent (50%) of the voting stock owned or controlled by Licensee. A company
shall be considered a Licensee Affiliate only so long as such majority ownership
or control exists. Licensee shall be ultimately responsible for the actions of
the Licensee Affiliates pursuant to this Agreement.
M. The term "Tessera Affiliate" means any company which agrees to
be bound by the terms and conditions of this Agreement and has more than fifty
percent (50%) of the voting stock owned or controlled by Tessera. A company
shall be considered a Tessera Affiliate only so long as such majority ownership
or control exists.
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 payment of the fees and royalties stated
herein in Paragraph III, Tessera hereby grants Licensee a world-wide,
non-exclusive, non-transferable, non-sublicensable, limited license to the
Tessera Patents 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 packages
and use or sell such TCC packages. Licensee specifically is NOT granted any
"have made" rights which would allow Licensee to have non-Affiliates package
and/or assemble ICs into TCC 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 package made using Batch Technology.
C. No Implied License. Notwithstanding the foregoing, nothing in
this Agreement shall be construed to grant Licensee or its Affiliates,
successors or assigns or any third parties an implied license under any patent
owned by Tessera other than the Tessera Patents (as defined above).
III. FEE AND ROYALTY
A. License Fee. As consideration for the licenses and privileges of
Paragraph II.A. hereof, Licensee shall pay to Tessera the sum of [*] US DOLLARS
(US$[*]) within thirty (30) days of the Effective Date of this Agreement.
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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B. Royalty. In addition to the License Fee, Licensee shall pay
running royalties for the license granted in Paragraph II.A. four times annually
(as set forth in Paragraph V) to Tessera during the term of this Agreement.
Licensee shall pay a starting royalty of [*]. (US$[*]) per Billable Pin for TCC
packages made by Licensee hereunder, whether sold, transferred or used
internally. After Licensee has paid to Tessera [*] US DOLLARS (US$[*]) in
royalties, the Licensee shall begin paying a mid-range royalty of [*] (US$[*])
per Billable Pin for TCC packages made by Licensee hereunder, whether sold,
transferred or used internally. After Licensee has paid to Tessera [*] US
DOLLARS (US$[*]) in cumulative royalties, Licensee shall begin paying a base
royalty of [*] (US$[*]) per Billable Pin for TCC packages made by Licensee
hereunder, whether sold, transferred or used internally for the remainder of
this Agreement.
C. Royalty Buy-Down Payment. At any time, Licensee may elect to pay
Tessera [*] US DOLLARS (US$[*]) in which event said Licensee shall notify
Tessera of Licensee's intent to exercise the option under this Paragraph and
tender such payment and henceforth pay royalties at the base royalty level OF
[*] (US$[*]) per Billable Pin (as set forth in Paragraph III.B., above). Such
royalty buy-down payment shall not affect the royalties Licensee has paid to
Tessera prior to Licensee's exercise of the royalty buy-down set forth in this
Paragraph.
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 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. If Tessera receives any tax credits by the U.S.
Government based upon the tax paid on the royalties paid to Tessera by Licensee,
Tessera will reimburse Licensee for in the amount corresponding to such U.S. tax
credit.
V. LICENSEE REPORTS AND PAYMENT
A. Quarterly Royalty Payments. Beginning on the Effective Date of
this Agreement, royalties shall be calculated and paid in full in quarter annual
payment periods ending March 31, June 30, September 30 and December 31 of each
year. Beginning with the first such royalty 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, 00 Xxxxxxx Xxxx.,
Xxx Xxxx, XX 00000, Account Name: Tessera, Account No.: 6450148359, Routing No.
000000000, International Swift Code: XXXXXX00, or such other bank or account as
Tessera may from time to time designate in writing. The payments of royalties
and submission such reports from Licensee to Tessera under this
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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Paragraph shall be made within thirty (30) days from the end of each quarter
annual payment period and shall be considered to be made as of the day on which
such payments are received in Tessera's designated bank account.
VI. TESSERA TRAINING SERVICES
Licensee may request engineering support (not to exceed forty (40)
working days) in the first twelve (12) month period of this Agreement, 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 engineering support or other services required thereafter may be
provided upon terms mutually agreeable to the parties. 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 Xxxx. Engineering interactions, conducted to
collaborate on technical issues of mutual concern, shall be supported by each
party at its own expense.
VII. TCC IMPROVEMENT CROSS-LICENSE
A. Tessera Improvements. Tessera will make available TCC package
improvements which have been reduced to practice including changes and
modifications in Standards, methods, materials and specifications relating to
TCC packages during the term of this Agreement. 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 hereby grants to Tessera a
world-wide, fully-paid, non-exclusive, non-sublicensable, non-transferable,
perpetual, right to use Licensee Improvements and Licensee's Patents covering
any inventions contained in such Licensee Improvements to manufacture, have
manufactured for Tessera, use or sell TCC packages.
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, non-sublicensable license under Licensee's
Patents covering any inventions contained in such Licensee Improvements that are
discoverable from an examination of the TCC packages made by Licensee 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 such licenses to other licensees of
Tessera, unless Licensee Improvements are used in IC packages sold externally to
non-Affiliates or proposed by Licensee and adopted for incorporation into a TCC
packaging standard.
D. Joint Improvements. Any improvement that is made through the
joint inventive 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,
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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non-assessable, transferable, perpetual, sub-licensable right and license to use
such Joint Improvements, but such right and license shall not include any right
of license by implication with respect to any part of the Tessera Patents.
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 its own name, in which case
such patent shall be the sole property of the Notifying Party, and the Joint
Invention in the country covered by such patent shall be treated as an
improvement made solely by the Notifying Party, and shall be subject to the
provisions of this Agreement covering such party improvements. 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 Tessera's ownership
of the following trademarks: TESSERA BLOCK LOGO, TCC, COMPLIANT CHIP, uBGA,
Micro BGA and F-uBGA (hereinafter "Marks"). Licensee 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 according to the Standards.
B. Trademark License Grant. Subject to the IC packages manufactured
pursuant to this Agreement meeting all of the Standards (as defined in Paragraph
I.K and listed in Attachment C), 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 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.
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
Xxxx in all titles and headings and other prominent uses of the Micro BGA
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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 xxxx within the text of any printed
material.
D. License Notice. Licensee promotional material and advertisements
referring to royalty bearing TCC packages shall include a prominent written
notice that "These products are made under a license from Tessera, Inc.".
IX. MATERIAL SUPPLIERS
Licensee may enter agreements ("Subcontract") with suppliers of Tape,
TCMT and other related packaging materials ("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 ensure that
Supplier receives no property rights to the Technical Information transferred
under Subcontract and that the rights to any improvements to the Technical
Information made by Supplier shall be Licensee Improvements as set forth in this
Agreement; (c) Licensee shall ensure that Supplier respects Licensee's duty to
affix the appropriate notices, trademarks and other designations to each product
or material made using the Technical Information 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. Notwithstanding, this Paragraph does not apply to any technology
independently developed by a Supplier.
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 will 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 satisfaction) within sixty (60) days of notice thereof.
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 acquire 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 fulfil) such obligations under
this Agreement, Tessera shall
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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 unaccrued royalties to Tessera and any
rights of Licensee to use any Tessera Patent or Technical Information 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.
3. Paragraph VII.B., Licensee Improvements
4. Paragraph X, Term and Termination.
5. Paragraph XII, No Warranties
6. Paragraph XIII, Limitation on Damages
7. Paragraph XIV, Non-Disclosure.
8. Paragraph XV, Indemnity
9. 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, not more frequently than once per year, all 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
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information obtained during the course of such audit. 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. 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 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 packages have passed
Tessera's testing requirements. Licensee may use the Marks as set forth in
Paragraph VIII. To ensure the on-going, future minimum quality and reliability
of the TCC 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 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.
XII. NO WARRANTIES
Licensee acknowledges and agrees that the rights and licenses, Tessera
Patents, 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 Tessera Patents, Technical Information,
specifications or Standards will be sufficient to yield any particular result.
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.
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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.
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 will result in irreparable harm to the disclosing party
and that therefore the disclosing party will 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 Affiliates,
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 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.
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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.
G. Breach of Confidentiality. 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 thirty (30) 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 actions are sufficient to mitigate the
effects of the wrongful disclosure, the obligation of the non-breaching party to
make confidential disclosures shall resume.
H. 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.
I. 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 damages, liabilities, costs and expenses (including
reasonable attorney's fees and expenses) arising out of or related to Licensee's
use of Tessera Patents 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 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 reasonable efforts to
resolve by mutual agreement any disputes, controversies,
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TESSERA CONFIDENTIAL
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 the part of 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.
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.
0000 Xxxxxxx Xx.
Xxx Xxxx, Xxxxxxxxxx 00000
Facsimile No.: 000-000-0000
Attn.: Chief Executive Officer
Licensee: ChipPAC, Inc.
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, XX 00000
Facsimile No.: 000-000-0000
Attn.: President
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
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
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TESSERA CONFIDENTIAL
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 Xxxxxxxxxxx X. Xxxxxxx, Director of Intellectual
Property and may be contacted at the Tessera fax and street address. Licensee's
Documentation Manager is Xxxx Xxxxx, Director of Substrate Products and may be
contacted at the Licensee fax and street address. 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.
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
relevant to each party hereto relating to the export of commodities and
technical data.
I. Section Headings. The headings and captions used herein shall
not be used to interpret or construe this Agreement.
K. 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. CHIPPAC, Inc. (Company Name)
By: /s/ XXXX X. XXXXX By: /s/ XXXXXX XXXXXXX
---------------------------- ----------------------------
Print Name: Xxxx X. Xxxxx Print Name: Xxxxxx Xxxxxxx
Title: President Title: President/CEO
Date: 12/22/98 Date: 12/23/98
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