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REDACTED FOR CONFIDENTIALITY
EXHIBIT 10.17
PATENT CROSS LICENSE AGREEMENT
BETWEEN
TOSHIBA CORPORATION
AND
CHARTERED SEMICONDUCTOR MANUFACTURING LTD
Toshiba/CSM Confidential
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PATENT CROSS LICENSE AGREEMENT
This Agreement is made and entered into by and between Toshiba Corporation, a
corporation duly organized and existing under the laws of Japan, having its
principal place of business at 1-1, ▇▇▇▇▇▇▇▇ ▇-▇▇▇▇▇, ▇▇▇▇▇▇-▇▇, ▇▇▇▇▇ ▇▇▇-▇▇▇▇,
▇▇▇▇▇ (hereinafter "Toshiba"), and Chartered Semiconductor Manufacturing Ltd., a
limited company duly organized and existing under the laws of the Republic of
Singapore, having its principal place of business at ▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ ▇ ▇▇▇▇▇▇ ▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ (hereinafter "CSM").
WHEREAS, Toshiba and CSM own various patents and patent applications in the
field of semiconductor products throughout the world; and
WHEREAS, Toshiba and CSM each desires to acquire licenses under such other
party's patents and patent applications in accordance with the terms and
conditions hereinafter provided.
NOW, THEREFORE, in consideration of the mutual covenants and premises contained
herein, the parties agree as follows:
ARTICLE 1. DEFINITIONS
1.1 "Effective Date" shall mean the date of execution of this Agreement by both
parties.
1.2 "Subsidiary(ies)" shall mean any corporation, company or other legal entity
more than fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other managing
authority) are, now or hereafter, owned or controlled, directly or indirectly,
by either party hereto, but such corporation, company or other entity shall be
deemed to be a Subsidiary only so long as such ownership or control exists.
1.3 "Toshiba Patents" shall mean (a) any patent (including any utility model,
design patent, patent of importation, patent of addition, certificate of
addition), the application for which has the first effective filing date prior
to the date of expiration or termination of this Agreement in any country, (b)
any patent application for such patent, (c) any reissue, continuation, parent,
division, extension, renewal or continuation-in-part of any of the foregoing,
and (d) any counterpart of any of the foregoing anywhere in the world; and which
are now owned or controlled or may hereafter during the term of this Agreement
be owned or controlled by Toshiba or its Subsidiaries, or under which and to the
extent to which and subject to the conditions under which Toshiba or its
Subsidiaries may have, or may hereafter during the term of this Agreement
acquire, the right to grant licenses or rights of the scope granted herein
without paying royalties or any other compensation to a third party (except for
payments to Subsidiaries, payments to a person for his
Toshiba/CSM Confidential 1
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REDACTED CONFIDENTIAL TREATMENT REQUESTED
The asterisked portions of this document have been omitted and
are filed separately with the Securities and Exchange Commission
inventions made while employed by Toshiba or any of its Subsidiaries and
payments necessary for acquiring the right to grant licenses or rights of the
scope granted herein).
1.4 "CSM Patents" shall mean (a) any patent (including any utility model, design
patent, patent of importation, patent of addition, certificate of addition), the
application for which has the first effective filing date prior to the date of
expiration or termination of this Agreement in any country, (b) any patent
application for such patent, (c) any reissue, continuation, parent, division,
extension, renewal or continuation-in-part of any of the foregoing, and (d) any
counterpart of any of the foregoing anywhere in the world; and which are now
owned or controlled or may hereafter during the term of this Agreement be owned
or controlled by CSM or its Subsidiaries, or under which and to the extent to
which and subject to the conditions under which CSM or its Subsidiaries may
have, or may hereafter during the term of this Agreement acquire, the right to
grant licenses or rights of the scope granted herein without paying royalties or
any other compensation to a third party (except for payments to Subsidiaries,
payments to a person for his inventions made while employed by CSM or any of its
Subsidiaries and payments necessary for acquiring the right to grant license or
rights of the scope granted herein).
1.5 "Licensed Products" shall mean any semiconductor devices, including
electronic circuitry, parts, materials, components, packages and circuits
thereof, ********************* *************.
1.6 ****
ARTICLE 2. MUTUAL RELEASES
2.1 Toshiba hereby releases, acquits and forever discharges CSM and its
Subsidiaries from any and all claims or liability for infringement or alleged
infringement of any Toshiba Patents, which may have occurred prior to the
Effective Date to the extent a license is herein granted by Toshiba.
2.2 CSM hereby releases, acquits and forever discharges Toshiba and its
Subsidiaries from any and all claims or liability for infringement or alleged
infringement of any CSM Patents, which may have occurred prior to the Effective
Date to the extent a license is herein granted by CSM.
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REDACTED CONFIDENTIAL TREATMENT REQUESTED
The asterisked portions of this document have been omitted and
are filed separately with the Securities and Exchange Commission
ARTICLE 3. GRANT OF LICENSE
3.1 Toshiba hereby grants to CSM and CSM's Subsidiaries a *********************
***************************** license, without right to sublicense third
parties, under Toshiba Patents to make, have made, use, import, market, offer
for sale, sell or otherwise dispose of Licensed Products, and to use
manufacturing or testing processes covered by Toshiba Patents to make, have
made, test and have tested Licensed Products, during the term of this Agreement.
3.2 CSM hereby grants to Toshiba and Toshiba's Subsidiaries a
******************************************* license, without right to sublicense
third parties, under CSM Patents to make, have made, use, import, market, offer
for sale, sell or otherwise dispose of Licensed Products, and to use
manufacturing or testing processes covered by CSM Patents to make, have made,
test and have tested Licensed Products, during the term of this Agreement.
3.3 The releases or licenses granted under Articles 2, 3.1 and 3.2 shall not be
extended to any architecture or circuit which are designed by a third party, and
incorporated in Licensed Products manufactured by either party and sold to such
third party by either party for such third party's sale, use or other
disposition of such Licensed Products under the trade name or trademark of such
third party. It is agreed that each party or its Subsidiaries shall not assert
any unlicensed patent rights against the other party or its Subsidiaries that
apply to such architecture or circuit designed by such third party but such
party or its Subsidiaries shall retain the right to assert its patents against
such third party.
3.4 No release or license under any copyrights, mask work rights, trademark or
other intellectual property rights other than Patents of either CSM or Toshiba
or any of their Subsidiaries is granted under this Agreement.
3.5 No release or license is granted by either party or any Subsidiaries, either
directly or by implication, estoppel or otherwise, under any patent licensed
hereunder, to the other party or its Subsidiaries, or third parties acquiring
product from either party or any Subsidiaries, for the combination of any
Licensed Products with any other product which is not a Licensed Product.
ARTICLE 4. PAYMENTS
4.1 In consideration of the releases and licenses herein granted to CSM and its
Subsidiaries by Toshiba under this Agreement, CSM shall pay to Toshiba the sum
of ********************************** in accordance with the following payment
schedule:
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REDACTED CONFIDENTIAL TREATMENT REQUESTED
The asterisked portions of this document have been omitted and
are filed separately with the Securities and Exchange Commission
Amount Due Date
------ --------
**** ****
4.2 All payments required to be made by CSM under Article 4.1 shall be paid in
U.S. dollar by telegraphic transfer to:
Toshiba Corporation Account No. ▇▇▇▇▇▇▇
The Sakura Bank, Ltd. Tokyo Main Office
▇-▇-▇, ▇▇▇▇▇▇-▇▇▇, ▇▇▇▇▇▇▇-▇▇, ▇▇▇▇▇ ▇▇▇-▇▇▇▇ ▇▇▇▇▇
Any amount payable by CSM hereunder which remains unpaid after the payment date
thereof shall be subject to a late charge equal to 1.0% per month, or the
maximum amount permitted by law, whichever is less, from the due date until such
amount is paid.
4.3 Any and all payments by CSM under this Agreement shall be made without any
deduction of taxes or charges of any kind and CSM shall bear all such taxes and
charges, if any; provided, however, that in the event any withholding income tax
is imposed on the payment hereunder by Singapore tax authorities under Japan and
Singapore Income Tax Convention, CSM may withhold such income tax from such
payment hereunder. CSM shall, without undue delay, obtain and send to Toshiba
tax certificates evidencing the tax amount withheld and paid to Singapore tax
authorities.
ARTICLE 5. TERM AND TERMINATION
5.1 This Agreement shall become effective on the Effective Date and continue in
full force and effect for a period of ten (10) years thereafter, unless earlier
terminated as hereinafter provided.
5.2 If either party commits a material breach of this Agreement and fails to
remedy such breach within thirty (30) days after written notice complaining
thereof is given to such party, the other party shall have the right to
terminate this Agreement forthwith by giving written notice. In the event of
such termination, the licenses granted hereunder to the party in breach and its
Subsidiaries shall terminate forthwith as of the date of such termination of
this Agreement, but the license granted to the party not in breach and its
Subsidiaries shall survive such termination and shall extend for the full term
of this Agreement.
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5.3 Either party shall have the right to terminate this Agreement by giving
written notice of termination to the other party upon the occurrence of any of
the following:
(a) the filing by such other party of a petition in bankruptcy or
insolvency; or
(b) any adjudication that such other party is bankrupt or
insolvent; or
(c) the filing by such other party of any legal action or document
seeking reorganization, readjustment or arrangement of its
business under any law relating to bankruptcy or insolvency;
or
(d) the appointment of a receiver for all or substantially all of
the property of such other party; or
(e) the making by such other party of any assignment of whole or
substantial assets for the benefit of creditors;
and this Agreement shall terminate on the thirtieth (30) day after such notice
of termination is given.
In the event of such termination, the licenses granted to such terminating party
and its Subsidiaries shall survive such termination and shall extend for the
full term of this Agreement, but the licenses granted to such other party and
its Subsidiaries shall terminate forthwith as of the date of such termination of
this Agreement.
5.4 Upon expiration of this Agreement as provided in Article 5.1, all rights and
licenses granted and obligations undertaken hereunder shall terminate forthwith.
5.5 Upon request of either party at least sixty (60) days prior to the date of
expiration of this Agreement, both parties shall negotiate in good faith the
renewal of this Agreement upon reasonable terms and conditions.
5.6 Notwithstanding any provision of this Agreement, the following rights and
obligations shall survive any termination or expiration of this Agreement:
(i) The provisions of Article 6.
(ii) CSM's obligations to pay any unpaid amount under this
Agreement in the event of termination caused by CSM's material
breach. For avoidance of doubt, in the event of termination
caused by Toshiba's material breach in accordance with Article
5.2, CSM shall not be required to make further payments on any
unpaid amount not due and payable as of the date of such
termination.
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ARTICLE 6. GENERAL PROVISIONS
6.1 Each of the parties hereto represents and warrants that it has the right to
grant the other party the rights and licenses hereunder.
6.2 Nothing contained in this Agreement shall be construed as:
(a) a warranty or representation by any of the parties hereto as
to the validity, scope or enforceability or any class or type
of patent or utility model; or
(b) a warranty or representation that any acts licensed hereunder
will be free from infringement of patents, or utility models
other than those under which license have been granted
hereunder; or
(c) an agreement to bring or prosecute actions or suits against
third parties for infringement or conferring any right to
bring or prosecute actions or suits against third parties for
infringement; or
(d) conferring any right to use in advertising, publicity, or
otherwise, any trademark, trade name or names, or any
contraction, abbreviation or simulation thereof, of either
party; or
(e) conferring upon any party any obligation to file any patent
application or to secure any patent or maintain any patent in
force; or
(f) an obligation to furnish any technical information or
know-how.
6.3 All notices required or permitted to be given hereunder shall be in writing
by prepaid air express or registered airmail, postage prepaid or by telefax, if
confirmed or acknowledged, to the following or to such changed address as may
have been previously specified in writing by the addressed party:
If to Toshiba: If to CSM
Toshiba Corporation Chartered Semiconductor Manufacturing
1-1, Shibaura, 1-chome Ltd.
Minato-ku, Tokyo 105-8001 ▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇
▇▇▇▇▇ ▇▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Attn.: Legal Affairs and Contracts Div. Attn.: Legal Department
Semiconductor Company
6.4 This Agreement and the performance of the parties hereunder shall be
construed in accordance with and governed by the laws of the State of New York
of the United States.
6.7 Neither party shall assign this Agreement or any of its rights or privileges
hereunder to any third party without the prior written consent of the other
party, except to a third party which
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such party has merged or which has otherwise succeeded to all or substantially
all of the semiconductor business and assets of such party, and which has
assumed in writing to be bound by the obligations of this Agreement.
6.8 This Agreement sets forth the entire agreement between the parties as to the
subject matter hereof and supersedes all previous negotiations, agreements and
writings in respect thereto, and shall not be extended, supplemented or amended
in any manner, except by an instrument in writing duly executed by authorized
officers or representatives of both parties hereto.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
in duplicate, as of the last date written below, by their duly authorized
officers or representatives.
TOSHIBA CORPORATION CHARTERED SEMICONDUCTOR
MANUFACTURING LTD
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇▇▇▇▇
---------------------------------- -------------------------------
Name: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇ ▇▇▇▇▇
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Corporate Senior Vice President
and Director
President and CEO
Title: Semiconductor Company Title: President & CEO
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Date: August 12, 1999 Date: August 3, 1999
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