EXHIBIT 2.17
LICENSE ASSIGNMENT AGREEMENT
THIS LICENSE ASSIGNMENT AGREEMENT (this "Agreement"), is made this 13th day
of August, 1999, by and between ▇▇▇▇▇▇ CORPORATION, a Delaware corporation
("▇▇▇▇▇▇"), ▇▇▇▇▇▇ SEMICONDUCTOR PATENTS, INC. ("HSPI"), a Delaware corporation,
and INTERSIL HOLDING CORPORATION, a Delaware corporation ("Parent").
WHEREAS, ▇▇▇▇▇▇, Intersil Corporation, a Delaware corporation, and Parent
have entered into an Amended and Restated Master Transaction Agreement dated as
of June 2, 1999 (the "Master Agreement"), which provides for the sale by Sellers
(as defined in Exhibit A to the Master Agreement) and the purchase by Buyer of
certain of the assets used in the operations of the Business (as defined in
Exhibit A to the Master Agreement);
WHEREAS, the Business has entered into certain patent and technology
licenses with third parties ("Third Parties") either through the Business
operations or by other components of the Business Entities on behalf of the
Business; and
WHEREAS, pursuant to the Master Agreement and the additional agreements
contemplated thereby, Buyer is to become the owner, either directly or through
its subsidiaries, of such patent and technology license agreements.
NOW THEREFORE, in consideration of the mutual promises contained herein and
in the Master Agreement, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties agree as
follows:
1. Definitions and Rules of Construction. Exhibit A to the Master Agreement
is incorporated herein by reference.
2. Representations and Warranties of ▇▇▇▇▇▇.
(a) To the Sellers' IP Knowledge, except for the License Agreements
listed in Schedule 8 the lists of License Agreements in Schedules 1-6 list all
the License Agreements primarily used in the Business.
(b) To the Sellers' IP Knowledge, except for the License Agreements
listed in Schedule 8, Schedules 1-6 list all royalty bearing License Agreements
primarily used in the Business that have provided royalty revenue, if any, to
the Business as of the Closing Date.
(c) To the Sellers' IP Knowledge, except for the License Agreements
listed in Schedules 1-8 and licenses granted in connection with sales of
Products in the ordinary course of business, no other material License
Agreements pertaining to the Business have been entered into with Third Parties
by the Business Entities.
(d) To the Sellers' IP Knowledge, the License Agreements listed on
Schedules 1-3 do not require consent by the Third Party for assignment to Buyer,
nor will these License Agreements be subject to termination by the Third Party
when such assignment is made.
(e) To the Sellers' IP Knowledge, the License Agreements listed on
Schedules 4-6 require consent from the Third Party for assignment to Buyer, are
not assignable, or terminate when assignment is made.
3. Identification of License Agreements.
(a) Schedules 1-3 list License Agreements primarily used in the Business
under which the rights and obligations of the Business Entities may be
transferred without the consent of a Third Party.
(b) Schedules 4-6 list License Agreements primarily used in the Business
under which the rights and obligations of the Business Entities may not be
transferred without the consent of a Third Party, are not assignable, or
terminate when assignment is made.
(c) Schedule 7 lists certain License Agreements relevant to the Business
as well as other products or operations of the Business Entities.
(d) Schedule 8 lists certain License Agreements primarily used in the
Business but which are being retained by Sellers (the "Retained License
Agreements").
4. Assignment of Agreements Not Requiring Third-Party Consents. Subject to
Section 2(d), Sellers hereby assign to Buyer their entire right, title, and
interest in and to the License Agreements listed on Schedules 1-3. If any of the
License Agreements listed in Schedules 1-3 are found to be not assignable to
Buyer and are material to the Business as conducted by Buyer, ▇▇▇▇▇▇ will use
commercially reasonable efforts as requested by Buyer in writing to provide the
economic benefit of such License Agreements to Buyer, and upon doing such, shall
be deemed to have satisfied the requirements of Section 2(d) and this Section 4.
5. Assignment of Agreements Requiring Third Party Consents. If Buyer
determines in good faith that any of the License Agreements listed on Schedules
4-6 are material to the Business as conducted by Buyer, ▇▇▇▇▇▇ will use
commercially reasonable efforts as requested by Buyer in writing to provide to
Buyer the economic benefit of such License Agreements in relation to the
Business, and upon doing such, shall be deemed to have satisfied the
requirements of this Section 5.
6. Royalty-Bearing Agreements Requiring Consent. Subject to Section 2(e),
Sellers hereby assign to Buyer, and agree to use commercially reasonable steps
necessary to effect such assignment, any revenue received under the License
Agreements listed on Schedule 4. If requested by Buyer, Sellers will use
commercially reasonable efforts to obtain the consent of the Third Parties to
such agreements to allow Sellers to assign all of their rights to royalties
thereunder to Buyer, and to make such assignment if such consent is obtained.
7. Schedule 7 License Agreements. No rights are transferred hereby to Buyer
under the License Agreements between Sellers and Third Parties listed in
Schedule 7, which are not specific to the Business.
8. Lemelson License Agreement. Notwithstanding anything herein to the
contrary, with respect to the License Agreement between ▇▇▇▇▇▇ and ▇▇▇▇▇▇▇▇
Medical, Education &
Research Foundation, Limited Partnership dated April 30, 1999, ▇▇▇▇▇▇ agrees, at
Buyer's written request, to sublicense to Buyer such License Agreement to the
extent that (a) ▇▇▇▇▇▇ is authorized to do so under such License Agreement and
(b) such License Agreement is relevant to the Business as of the Closing Date.
9. Subsequent Assignment to Buyer. If it is determined after the Closing
Date that one or more License Agreements owned by Sellers, but not included in
Schedules 1-6, were intended to be transferred to Buyer pursuant to this
Agreement but were not transferred, as the sole remedy for such failure to
transfer, Sellers agree to make such transfer to Buyer, to the extent Sellers
would otherwise be required to do so in accordance with the appropriate
classification of License Agreements in this Agreement, upon discovery by
Sellers or upon the written request of Buyer.
10. Assignment of Retained License Agreements. At such time as all
licensees under a Retained License Agreement have paid all amounts that are due,
or are to become due, to Sellers pursuant to such Retained License Agreement,
Sellers will assign to Buyer their entire right, title and interest in and to
such Retained License Agreement if such Retained License Agreement can be
transferred without the consent of a Third Party. If any such Retained License
Agreement is not so assignable and if Buyer determines in good faith that any
such nonassignable Retained License Agreement is material to the Business as
conducted by Buyer, ▇▇▇▇▇▇ will use commercially reasonable efforts as requested
by Buyer to provide to Buyer the economic benefit of such nonassignable Retained
License Agreement in relation to the Business and, upon doing such, shall be
deemed to have satisfied the requirements of this Section 10 with respect to
such nonassigned Retained License Agreement.
11. Acceptance of Assignments; Assumption of Liabilities. Buyer hereby
accepts and agrees to accept any assignments or transfers effected under or as a
result of this Agreement, and to assume the Liabilities of Sellers relative to
each such License Agreement so assigned or transferred, provided that such
License Agreement is not the subject of a reassignment to ▇▇▇▇▇▇ under
Section 12.
12. Reassignment to Sellers. Any License Agreement that may be
inadvertently transferred by Sellers to Buyer which License Agreement does not
relate to the Business shall be reassigned by Buyer to ▇▇▇▇▇▇ or its designated
Subsidiary.
13. Survival. The representations and warranties of Sellers in this
Agreement, including the Schedules hereto, shall survive until the fifth
anniversary of the Closing Date.
14. Agreement Conventions. Exhibit B to the Master Agreement is
incorporated herein by reference.
IN WITNESS WHEREOF, the parties each have caused this Agreement to be duly
executed and delivered in its name and on its behalf, all as of the day and year
first above written.
▇▇▇▇▇▇ CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Vice President
▇▇▇▇▇▇ SEMICONDUCTOR PATENTS, INC.
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Vice President
INTERSIL HOLDING CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: CEO
Schedules to License Assignment Agreement
Schedule 1 Licenses to Third Parties Primarily Used in the Business Not Requiring Consent to Assign
Schedule 2 Licenses From Third Parties Primarily Used in the Business Not Requiring Consent to Assign
Schedule 3 Cross Licenses With Third Parties Primarily Used in the Business Not Requiring Consent to Assign
Schedule 4 Licenses to Third Parties Primarily Used in the Business Requiring Consent to Assign
Schedule 5 Licenses From Third Parties Primarily Used in the Business Requiring Consent to Assign
Schedule 6 Cross Licenses With Third Parties Primarily Used in the Business Requiring Consent to Assign
Schedule 7 Licenses Relevant to the Business and Other ▇▇▇▇▇▇ Operations
Schedule 8 Licenses and Cross Licenses Primarily Used in the Business and Not Being Transferred
