CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTEDAND FILED
SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
TECHNOLOGY LICENSE AGREEMENT
------------------------------------
This Technology License Agreement ("Agreement") is made as of this 29th day of
June, 1990 by and between WEITEK Corporation, a corporation with a principal
place of business at ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("WEITEK")
and MIPS Computer Systems, Inc., a California corporation with a principal place
of business at ▇▇▇ ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("MIPS"). WEITEK
and MIPS are sometimes referred to singly as "party" and collectively as the
"parties."
1. DEFINITIONS
The following terms shall have the following meanings for purposes of this
Agreement:
1.1 ASP - means the average selling price during the fiscal quarter for which
compensation is being computed. The ASP shall be computed by dividing the Net
Revenue received by WEITEK from the sale of each type of MIPS Chip (on a
component basis) or Modified MIPS Chip (on a component basis) by the total
number of each type of MIPS Chip or Modified MIPS Chip thereof sold during the
applicable fiscal quarter.
1.2 DESIGNATED PROCESS TECHNOLOGY - means any technology for the design and
manufacture of integrated circuit products that incorporates a type of circuit
structure containing both p-channel and n-channel MOS devices on the same
silicon substrate (CMOS OR Bi-CMOS).
1.3 EFFECTIVE DATE - means the date first above written.
1.4 GENERATION - means a MIPS Architecture and its Lineal Descendants, a MIPS
Chip and its Lineal Descendants and/or a WEITEK Chip and its Lineal Descendants,
all in the same Designated Process Technology.
1.5 INTERNAL USE - means the use of a product (whether hardware, software or
combination thereof) to perform its intended and customary function by and for
the benefit of the party using the product and not for sale, distribution or
sublicensing to others. Internal Use includes, but is not limited to,
evaluation, development, maintenance, customer support, employee training and
the like.
1.6 LINEAL DESCENDANT - means changes and/or modifications within the same
Process Technology of MIPS Architecture, MIPS Chip, or WEITEK Chip containing
common design parameters and substantially similar functions and/or
capabilities. Such changes and/or modifications includes as examples, without
limitation, whether singly or in combination, such items as changes to improve
manufacturability, process yield, or reliability, changes to fix functional
design errors, and changes of speed and/or pin-out.
1.7 MIPS - means MIPS Computer Systems, Inc., a California corporation and each
of its subsidiaries which, except for MIPS Computer Systems, Inc., 50% or more
of the voting stock or controlling equity is directly owned by MIPS Computer
Systems, Inc., or 100% of the voting stock or controlling equity interest of
which is directly owned by a corporation which is itself at least 50% or more
owned by MIPS Computer Systems, Inc.
1.8 MIPS-BASED SYSTEM - means a computer system containing a CPU which employs
MIPS Architecture and/or MIPS Instruction Set.
1.9 MIPS ARCHITECTURE - means the organization, structure, and content of any
CPU or CPU support chips, or portions thereof, as designed and enhanced by MIPS,
including but not limited to, MIPS Instruction Set (for example, the
architecture set forth in the book entitled, MIPS RISC ARCHITECTURE) and
interface specifications.
1.10 MIPS CHIP(S) - mean(s) (a) the CPU product(s) designed and/or modified by
or on behalf of MIPS; (b) the CO-processor product(s) designed and/or modified
by or on behalf of MIPS to connect with and operate with the CPU'S; and (c) any
other integrated circuit product(s) designed, developed, and/or acquired by MIPS
during the Term of this Agreement which (i) is offered by MIPS for sale on a
component basis to third parties in the ordinary course of business or (ii) is
offered to other MIPS architecture licensees for manufacture and sale on a
component basis to third parties in the ordinary course of business.
Notwithstanding the foregoing, nothing in this definition shall require MIPS, or
be deemed to create an obligation on the part of MIPS, to create, develop, or
acquire any particular MIPS Chip referred to above. MIPS Chips do not include
those custom MIPS Chips designed by or on behalf of MIPS exclusively for a third
party.
1.11 MIPS COMMERCIAL DOCUMENTATION - means the manuals, user guides, and other
documentation relating to MIPS Architecture, MIPS Chips, MIPS Commercial
Software or MIPS Systems, as applicable, including all modifications, Patches,
New Releases, Updates, derivations of and any other changes thereto, whether in
written, graphical, human readable or machine-readable form, and on any medium,
when MIPS offers for sale or distribution to third parties in the ordinary
course of business, as set forth in MIPS then current price list or similar
publication.
1.12 MIPS COMMERCIAL SOFTWARE - means the software in both source code form and
object code form owned, licensed or otherwise acquired by MIPS as of the
Effective Date or thereafter during the Term including all modifications,
Patches, New Releases, Updates, derivations of and any other changes thereto,
whether in written, graphical, human readable, machine-executable or
machine-readable form, and on any medium, which MIPS offers for licensing by
third parties in the ordinary course of business, as set forth in MIPS then
current price list or similar publication. MIPS Commercial Software includes
MIPS Binary Software and MIPS Source Code Software.
1.13 MIPS DOCUMENTATION - means MIPS Commercial Documentation and MIPS
Architecture License Documentation.
1.14 MIPS INSTRUCTION SET - means all or a portion of MIPS instruction set as
implemented in MIPS Chips, as applicable (for example, the instruction set
specified in the book entitled "MIPS RISC ARCHITECTURE").
1.15 MIPS ARCHITECTURE LICENSE DOCUMENTATION - means the manuals, user guides
and other documentation relative to the MIPS Architecture, MIPS Chips or MIPS
Software, as applicable, including all modifications, Patches, New Releases,
Updates, derivations of and other changes thereto, whether in written graphical,
human readable or machine readable form, and on any medium, which MIPS makes
available to architecture licensees, which is not set forth in MIPS then current
price list or similar publication and which is provided by MIPS to WEITEK for
any of the activities contemplated to be performed by WEITEK pursuant to this
Agreement.
1.16 MIPS ARCHITECTURE LICENSE SOFTWARE - means the software in source code form
or object code form owned, licensed or otherwise acquired by MIPS as of the
Effective Date or thereafter during the Term including all modifications,
Patches, New Releases, Updates, derivations of and any other changes thereto,
whether in written, graphical, human readable or machine-readable form, and on
any medium, which MIPS licenses to architecture licensees, provided by MIPS to
WEITEK for any of the activities contemplated to be performed by WEITEK pursuant
to this Agreement.
1.17 MIPS BINARY SOFTWARE - means MIPS Commercial Software in object code form
(also called binary or executable code).
1.18 MIPS SOFTWARE - means MIPS Commercial Software and MIPS Architecture
License Software.
1.19 MIPS SOURCE CODE SOFTWARE - means MIPS Commercial Software in source code
form, or in a form from which a human readable form can be produced without
reverse compilation.
1.20 MIPS SYSTEM - means a computer system manufactured by or on behalf of MIPS
and containing one or more MIPS Chips.
1.21 MIPS TECHNOLOGY - means all patents (including utility models), copyrights,
mask work rights, trademarks, trade secrets and know-how or portions thereof
owned, licensed or otherwise acquired by MIPS as of the Effective Date or
thereafter during the Term with respect to the technology licensed by MIPS to
WEITEK pursuant to this Agreement. MIPS Technology includes MIPS Architecture,
MIPS Chips, MIPS Documentation, MIPS Software and MIPS Systems.
1.22 MODULE - means two (2) or more integrated circuit products on a substrate.
1.23 NET REVENUE - means the gross revenue received by WEITEK for products
incorporating and/or based upon MIPS Technology which are sold, licensed or
otherwise distributed by or on behalf of WEITEK, accounted for in accordance
with generally accepted accounting principles consistently applied, and after
deduction for discounts, returns, freight, insurance, taxes and duties, if any,
and after deduction of payments for any compensation or other consideration
payable by WEITEK to a third party upon the grant of sublicenses with respect to
MIPS Technology or prerequisites thereto (such as an AT&T UNIX license).
1.24 NEW RELEASE - means any revision of MIPS Documentation and/or MIPS Software
which contains major enhancements and which may include new features and/or new
functions and which is offered for sale or license by MIPS on a general
commercial basis in the ordinary course of business.
1.25 PATCHES - means any revision to MIPS Documentation and/or MIPS Software
which contains bug fixes only and which contains no enhancements and no new
features or new functions.
1.26 RUNTIME - means any software which (a) has been compiled, assembled or
interpreted by WEITEK or any of its sublicensees using MIPS Commercial Software,
or (b) incorporates a runtime library portion of a MIPS compiler or substantial
portion thereof, or (c) incorporates Systems Programmer's Package (SPP) or a
substantial portion thereof.
1.27 SOURCE MATERIALS - means MIPS Source Code Software, MIPS Architecture
License Software and/or MIPS Architecture License Documentation.
1.28 TERM - means the term of this Agreement, commencing upon the Effective Date
and extending for a period of time of five (5) years thereafter, unless
terminated or cancelled sooner in accordance with the provisions of this
Agreement.
1.29 UPDATE(S) - means any revision to MIPS Documentation and/or MIPS Software
which contains Patches and certain enhancements and/or new features and/or new
functions but is not a sufficient revision to constitute a New Release.
1.30 WEITEK - means WEITEK Corporation, a California corporation and each of its
subsidiaries which, except for WEITEK Corporation, 50% or more of the voting
stock or controlling equity is directly owned by WEITEK Corporation, or 100% of
the voting stock or controlling equity interest of which is directly owned by a
corporation which is itself at least 50% or more owned by WEITEK Corporation.
1.31 WEITEK CHIP(S) - mean(s) an integrated circuit product which embodies or is
based upon part or all of MIPS Technology licensed by MIPS to WEITEK and
implemented in Designated Process Technology and which is not pin-compatible
with MIPS Chips.
2. TECHNOLOGY LICENSE
2.1 ARCHITECTURE
2.1.1 ▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ - ▇▇▇▇▇▇▇▇▇ ▇▇▇▇. Subject to the
terms and conditions of this Agreement, upon payment by WEITEK to MIPS
of the fees set forth in section 3.1.1, below, and subject to payment
to MIPS of the royalties set forth in section 3.1.2, below, MIPS shall
grant to WEITEK and WEITEK shall accept a worldwide, personal,
non-exclusive, non-transferable, royalty-bearing (as set forth in
section 3, below), non-assignable and revocable right and license to
use (without the right to sublicense, transfer or convey such rights,
in whole or in part) MIPS Technology, only as set forth in Exhibit A,
for the purposes of designing, modifying, manufacturing, having
manufactured, marketing, selling and otherwise disposing of integrated
circuits which embody or are based upon part or all of MIPS Technology
licensed by MIPS to WEITEK and implemented in Designated Process
Technology and which are not pin-compatible with MIPS Chips, in WEITEK
products, as components or Modules. The deliverables set forth on
Exhibit A are the same as those provided to all Level 2 Architecture
Licensees for the same Generation in the same Designated Process
Technology. MIPS agrees, during the Term of this Agreement, to provide
to WEITEK the deliverables which are provided to ▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇ for the same Generation in the same Process Technology
provided that WEITEK is entitled to receive said deliverables under the
terms of this Agreement. WEITEK Chips shall not be eligible for
certification by MIPS. WEITEK shall bear the entire expense of all
development, manufacturing, sale and support activities and WEITEK
shall be responsible for performing all work involved. When referring
to WEITEK Chips, WEITEK shall state that such chips incorporate MIPS
Architecture.
2.1.1.1 LINEAL DESCENDANTS. Subject to the terms and
conditions of this Agreement, MIPS shall, [*] provide to
WEITEK all rights, licenses, and deliverables with respect to
Lineal Descendants of the then current Generation of MIPS Chip
licensed by MIPS to WEITEK and for which WEITEK has paid a
fee.
2.1.1.2 NEW GENERATIONS. Subject to the terms and conditions
of this Agreement, upon payment to MIPS of the fees set forth
in section 3.1.1.2, below, and subject to payment to MIPS of
applicable royalties as set forth in section 3.1.2, MIPS shall
provide to WEITEK all rights, licenses and deliverables for
new Generations of MIPS Chips after the first Generation
licensed by WEITEK, provided that WEITEK has acquired and paid
for each previous Generation.
2.1.1.3 NEW PROCESS TECHNOLOGIES. Subject to the terms and
conditions of this Agreement, upon payment to MIPS of the fees
set forth in section 3.1.1.3, below, subject to payment to
MIPS of applicable royalties as set forth in section 3.1.2,
and subject to such additional terms and conditions as are
necessary as a function of technical aspects of the proposed
new process technology implementation. MIPS shall provide to
WEITEK all rights, licenses, and deliverables regarding any
then current Generation of MIPS Architecture implemented in a
process technology other than Designated Process Technology.
2.1.2 R5000 OPTION
Subject to the terms and conditions of this Agreement, and upon payment
of the fees set forth in section 3.2, below, MIPS shall grant to WEITEK
and WEITEK shall accept the same rights, licenses and obligations with
respect to the deliverables set forth in Exhibit B, as those rights and
licenses set forth in section 2.1.1, above.
2.1.3 ARCHITECTURE MAINTENANCE
Subject to the terms and conditions of this Agreement and upon payment
of the fees set forth in section 3.3, below, MIPS shall provide WEITEK
with corrections and modifications to the Exhibit A deliverables and,
if applicable, the Exhibit B deliverables, for the Designated Process
Technology which MIPS makes available in the ordinary course of
business to its licensees.
2.2 SOFTWARE LICENSE
2.2.1 MIPS SOURCE CODE SOFTWARE. Subject to the terms and conditions of
this Agreement and the MIPS Source Code Use License Agreement, and upon
payment by WEITEK to MIPS of the applicable license fees, MIPS shall
grant to WEITEK and WEITEK shall accept a world-wide, personal,
non-exclusive, non-transferable, non-sublicenseable, non-assignable and
revocable right and license, without any right to market, sublicense or
distribute, to use, copy, and modify (except as set forth in section
2.2.5, below) for Internal Use only and only with MIPS Chips in
Designated Process Technology and/or MIPS Systems, certain MIPS Source
Code Software as set forth on the Source Code Use License Agreement.
WEITEK shall be entitled to market, sublicense and distribute WEITEK
modifications to MIPS Source Code Software licensed by WEITEK from MIPS
Integrated with MIPS Source Code Software subject to each sublicensee
(a) having signed a MIPS Source Code Use License Agreement which is
then currently in full force and effect and (b) having licensed the
equivalent release of MIPS Source Code Software from MIPS. WEITEK may
request that MIPS license MIPS Source Code Software to certain WEITEK
customers on MIPS then current terms, conditions and prices. Modified
MIPS Binary Software may be generated by MIPS Source Code Software
modified by or on behalf of WEITEK for use in and sublicense in
accordance with section 2.2.2, below and in connection with WEITEK
products containing WEITEK Chips in Designed Process Technology (except
as specified in section 2.2.5 below).
2.2.2 MIPS BINARY SOFTWARE. Subject to the terms and conditions of this
Agreement and the MIPS Binary Software License Agreement and upon
payment by WEITEK to MIPS of the applicable license fees, distribution
fees and sublicense fees. MIPS shall grant to WEITEK and WEITEK shall
accept a world-wide, personal, non-exclusive, non-transferable,
fee-bearing, non-assignable and revocable right and license to use for
Internal Use and for sublicensing, copy for Internal Use and for
sublicensing, market, grant non-exclusive sublicenses for use and
distribute certain MIPS Binary Software, as set forth on the Binary
Software License Agreement all for use only with WEITEK Chips in
Designated Process Technology and/or MIPS-based Systems.
2.2.3 FUTURE SOFTWARE RELEASES. Updates and Patches to MIPS Source Code
Software modified by WEITEK may be distributed without charge to
sublicensees by WEITEK provided (1) WEITEK has a then current MIPS
Source Code Use License Agreement with rights to distribute Binaries of
such software and a then current Software Maintenance Agreement with
MIPS for the specific MIPS Software at the equivalent release level,
(2) the sublicensee has signed a MIPS Source Code Use License Agreement
which is then currently in full force and effect and (3) the
sublicensee has licensed the equivalent release of unmodified MIPS
Source Code Software from MIPS. Updates and Patches to MIPS Binary
Software may be distributed to WEITEK's sublicensees, without charge to
WEITEK, provided WEITEK has the then current release of MIPS Binary
Software and a Software Maintenance Agreement with MIPS regarding such
software which is then currently in full force and effect.
New Releases, distributed by WEITEK to new sublicensees or to
sublicensees who do not have the next prior release, are subject to the
full New Release fee less discounts applicable to WEITEK, New Releases
supplied to current sublicensees who have the next prior release are
supplied as upgrades to New Releases at a fee, which is a percentage of
the New Release fee (less discounts applicable to WEITEK) specified in
MIPS then current price list.
2.2.4 MIPS ARCHITECTURE LICENSE SOFTWARE. Subject to the terms and
conditions of this Agreement and the Source Code Use License Agreement
and upon payment by WEITEK to MIPS of the compensation set forth in
section 3.1.1, MIPS shall grant to WEITEK and WEITEK shall accept a
worldwide, personal, non-exclusive, non-transferable,
non-sublicenseable, non-assignable and revocable right and license
without any right to market, distribute or sublicense, to use, copy and
modify (except as set forth in section 2.2.5, below), all for Internal
Use only and only with MIPS Systems, certain MIPS Architecture License
Software, as set forth in Exhibit A.
2.2.5 LIMITATIONS. Neither WEITEK nor any sublicensee of WEITEK shall
be authorized or permitted, unless MIPS has agreed in writing in
advance, to (a) sublicense or distribute Source Materials, (b) operate
(including, without limitation, store, compile and/or edit) Source
Materials on systems other than MIPS Systems and/or MIPS Chips in
Designated Process Technology, (c) rehost Source Materials with the
result that they operate with systems other than MIPS Systems and/or
MIPS Chips in Designated Process Technology, (d) retarget Source
Materials with the result that Binaries may be generated which are
capable of operating with systems other than MIPS Systems and/or MIPS
Chips in Designated Process Technology and/or MIPS-based Systems, (e)
modify Source Materials or Binaries in order to incorporate any portion
of MIPS compiler back end including the optimizer with any compiler
front end other than the compiler front ends licensed by WEITEK from
MIPS, (f) retarget System Programmer's Package with the result that it
models or simulates any computer architecture other than MIPS
Architecture, (g) modify, adapt, reverse engineer, decompile,
disassemble or create derivative works based on MIPS Binary Software,
(h) in lieu of a sublicense, lease, rent, loan, or sell MIPS Binary
Software on a temporary or permanent basis or, (i) sublicense,
distribute or make available to any third party Source Materials.
2.3 DOCUMENTATION RIGHTS
2.3.1 MIPS ARCHITECTURE LICENSE DOCUMENTATION. Subject to the terms and
conditions of this Agreement and upon payment by WEITEK to MIPS of the
fees set forth in section 3.1.1 MIPS shall grant to WEITEK and WEITEK
shall accept a worldwide, personal, non-exclusive, fully-paid,
non-transferable, non-assignable and revocable right and license, to
use, modify, copy and distribute, all for Internal Use only, without
any right to market, copy or distribute outside of WEITEK, MIPS
Architecture License Documentation as set forth in Exhibit A.
2.3.2 MIPS COMMERCIAL DOCUMENTATION. Subject to the terms and
conditions of this Agreement and upon payment by WEITEK to MIPS of the
fees set forth in section 3.1.1, MIPS shall grant to WEITEK and WEITEK
shall accept a world-wide, personal, fully-paid, non-exclusive,
non-transferable, non-assignable and revocable (only in accordance with
section 8) right and license, to use, modify and distribute all for
Internal Use and for distribution outside of WEITEK. MIPS Commercial
Documentation, WEITEK shall be responsible for creating and publishing
in a timely manner technical documentation to assist WEITEK's
customers.
2.4 UPDATES/MAINTENANCE/SUPPORT
2.4.1 ARCHITECTURE LICENSE. MIPS shall, at no additional charge to the
compensation set forth in section 3.1.1, provide to WEITEK, for one (1)
year from the Effective Date, all corrections and modifications to the
same Generation of MIPS Architecture licensed by MIPS to WEITEK which
MIPS makes available in the ordinary course of its business to its
architecture licensees for Designated Process Technology.
Upon payment of the fees set forth in section 3.3, MIPS shall provide
to WEITEK, updates and maintenance support to the Deliverables set
forth in Exhibit A, with respect to each Generation of MIPS
Architecture for Designated Process Technology for which WEITEK has
paid the applicable fee.
2.4.2 ARCHITECTURE LICENSE SOFTWARE. WEITEK shall bear the sole and
complete responsibility for maintaining and supporting MIPS
Architecture License Software unless the parties mutually agree
otherwise. MIPS shall promptly after availability, provide to WEITEK
Updates for MIPS Architecture License Software, in accordance with
section 2.4.1 above.
2.4.3 MIPS SOFTWARE. Subject to the terms and conditions of this
Agreement and MIPS then current standard Software Maintenance Agreement
and upon payment by WEITEK to MIPS of the fees set forth in section
3.4.4, MIPS shall periodically provide to WEITEK all Patches and
Updates made by MIPS to MIPS Software licensed by WEITEK (except as
otherwise specified herein).
2.5 RESERVATION
MIPS reserves all rights and licenses not expressly granted to WEITEK.
2.6 NO CONTEST
WEITEK shall not contest or take any action to impair MIPS ownership or the
validity of MIPS Technology for which WEITEK is a licensee or holder of rights
under this Agreement.
2.7 NO SUPPORT
MIPS shall have no responsibility or obligation, unless specifically provided
otherwise herein or unless otherwise mutually agreed, to provide any maintenance
or support whatsoever to any person or entity, including WEITEK, regarding (a)
MIPS Chips, (b) WEITEK Chips, (c) MIPS Architecture License Software, (d)
WEITEK's modifications to MIPS Commercial Software, (e) WEITEK's modifications
to MIPS Commercial Documentation, (f) WEITEK's modifications to MIPS
Architecture License Documentation, (g) any other modification by or on behalf
of WEITEK to MIPS Technology, (h) WEITEK software or (i) third party products
including software.
2.8 WEITEK PURCHASES OF MIPS PRODUCTS
MIPS agrees to negotiate with WEITEK in good faith a Volume Purchase Agreement.
Said agreement will allow WEITEK to purchase MIPS Products at the then current
discount levels offered to other Level 2 Architecture Licensees purchasing under
similar terms and conditions.
3. COMPENSATION
3.1 LEVEL 2 ARCHITECTURE LICENSE - COMPONENT SALES. In consideration of the
Level 2 Architecture License-Component Sales set forth in section 2.1.1, above,
WEITEK shall pay MIPS as follows:
3.1.1 TECHNOLOGY LICENSE FEE
3.1.1.1 INITIAL FEE. WEITEK shall pay MIPS a non-refundable
license fee of [*] of which shall constitute prepaid royalties
and such [*] shall be payable within forty-five (45) days of the
Effective Date, [*] shall constitute a non-refundable licensee
fee, in payment of which MIPS shall accept [*] in engineering
services from WEITEK and a credit in an amount of [*] from WEITEK
which shall be applied pro-rata as payment against [*] of WEITEK
products purchased by MIPS for use in MIPS Systems. This credit
and the right to take engineering services shall expire at a date
to be mutually agreed but in no event later than the Term of this
Agreement.
WEITEK and MIPS shall mutually agree upon the scope of the work
to be performed by WEITEK and schedule therefor. Engineering
services performed by WEITEK shall be valued at [*] per day in
1990 and 1991. This value shall increase by 10% per year after
1991. These services shall be performed by senior architecture,
software, logic or circuit design engineers, or others as may be
mutually agreed. Both parties agree that it is preferable that
MIPS purchase WEITEK product rather than WEITEK services and MIPS
agrees to use its best efforts to achieve this objective. Despite
using its best efforts, if MIPS is unable to purchase [*] of
WEITEK products by December 31, 1992, then MIPS shall have the
right to accept additional engineering services in lieu of any
unutilized portions of the [*] WEITEK product purchase credit.
All work products shall be subject to reasonable acceptance by
MIPS.
To the fullest extent permitted bylaw, the work product of all
engineering services performed by WEITEK for MIPS in lieu of cash
payments hereunder shall be a "Work Made for Hire." Accordingly,
WEITEK hereby: (a) makes an assignment of copyright to MIPS; (b)
grants to MIPS all right, title and interest including, without
limitation, the right of MIPS to grant licenses and sublicenses
to others and to file for copyright and patent with respect
thereto, without accounting to WEITEK, in and to all such work
products and all patents, copyrights, mask work rights, trade
secrets and other proprietary rights therein or based thereon.
3.1.1.2 NEW GENERATION RELEASES. If during the Term of the
Technology License WEITEK desires to receive any new Generation
releases; i.e., beyond the R5000, then WEITEK shall pay MIPS a
one-time, up-front, non-recoverable license fee of [*] for each
new Generation within thirty (30) days of delivery of the
release. Included in the fee for any such new Generation releases
will be one (1) year of maintenance comparable to what is
provided herein in connection with the initial Deliverables. [*]
WEITEK may not skip a Generation.
3.1.1.3 OTHER PROCESS TECHNOLOGIES.
3.1.1.3.1 If during the Term of the Agreement WEITEK desires to
implement MIPS Chips, based on the deliverables provided in CMOS
specified in Exhibit A in any Process Technology other than CMOS
or Bi-CMOS, then WEITEK shall pay to MIPS a onetime, up-front,
non-recoverable license fee of [*] for each additional Process
Technology other than CMOS or Bi-CMOS per new Generation in which
WEITEK intends to implement. Said fee shall be payable within
thirty (30) days of notice by WEITEK to MIPS that WEITEK intends
to commence work to implement the deliverables provided in CMOS
in another Process Technology.
3.1.1.3.2 If during the Term of this Agreement WEITEK desires to
implement MIPS Chips based upon deliverables which may be
subsequently available from MIPS in any Process Technology other
than CMOS, then WEITEK shall pay to MIPS, MIPS then current
license fee for each additional Process Technology per new
Generation. Said fee shall be payable within thirty (30) days of
receipt by WEITEK from MIPS of the deliverables implemented in
any Process Technology other than CMOS.
3.1.2 ROYALTIES. WEITEK shall pay royalties to MIPS regarding
WEITEK Chips manufactured by or on behalf of WEITEK (for WEITEK's
Internal Use and for external sales) in an amount equal to the
following:
(a) [*], the royalty rate shall be [*] of the Net Revenue
received by WEITEK per WEITEK Chip sold as a component or in a
Module, which is based upon the Exhibit A Architecture License
deliverables.
(b) For all other WEITEK Chips the royalty rate shall be [*] of
the Net Revenue received by WEITEK.
WEITEK must pay a royalty on each WEITEK Chip manufactured by or
on behalf of WEITEK and sold or used internally but only one
royalty shall be payable for each such WEITEK Chip. WEITEK shall
pay the same royalty on a dollar per unit basis, regarding WEITEK
Chips used by WEITEK for internal purposes, as WEITEK pays
regarding sales of the same grade WEITEK Chips to unaffiliated
third parties during the same period of time. No royalty shall be
payable by WEITEK to MIPS for any WEITEK Chip purchased by MIPS
from WEITEK in accordance with this Agreement.
3.2 R5000 OPTION
Upon exercise of the option as set forth in section 2.1.2, above, WEITEK shall
pay MIPS [*], which MIPS shall accept in the form of engineering services to be
provided by WEITEK to MIPS, as mutually agreed by the parties, or other
compensation as mutually agreed by the parties. WEITEK shall pay royalties to
MIPS with respect to WEITEK Chips based upon the Exhibit B deliverables upon the
same terms, conditions and prices as set forth in section 3.1.2. with respect to
the Exhibit A deliverables, except that the royalty rate for WEITEK Chips as
specified in section 3.1.2.(a) shall be [*] and for section 3.1.2(b) the royalty
shall be [*].
3.3 ARCHITECTURE MAINTENANCE
In consideration of the grant of rights set forth in section 2.1.3., above,
WEITEK shall pay MIPS [*] per year in advance for architecture maintenance.
Architecture Maintenance is provided to Weitek at no cost for the first 12
months from the date of delivery of deliverables in Exhibit A, and if applicable
in Exhibit B. Weitek is under no obligation to buy support thereafter.
3.4 SOFTWARE FEES
3.4.1 MIPS SOURCE CODE SOFTWARE. WEITEK shall pay to MIPS, MIPS then
current standard license fees for each license of MIPS Source Code
Software which WEITEK wishes to obtain as set forth on the Source Code
Use License Agreement. WEITEK may license MIPS Source Code Software on
a single user, site or corporate basis.
3.4.2 MIPS BINARY SOFTWARE. WEITEK shall pay to MIPS, MIPS then current
standard license fees, distribution fees and sublicense fees for each
sublicense and/or Internal Use copy of MIPS Binary Software as set
forth on the Binary Software License Agreement. If WEITEK sublicenses,
MIPS Binary Software as modified by WEITEK, WEITEK shall pay MIPS the
same sublicense fee as if WEITEK were sublicensing unmodified MIPS
Binary Software.
3.4.3 RUNTIME FEES. WEITEK shall pay to MIPS, MIPS then current
applicable Runtime Fee for each Runtime used or distributed by
WEITEK.
3.4.4 MAINTENANCE. WEITEK shall pay to MIPS, MIPS then current standard
software maintenance fees regarding all MIPS Software on which WEITEK
desires to obtain Patches, Upgrades and/or New Releases, as applicable.
3.5 PAYMENT
Except as otherwise explicitly provided in section 3.1.1, WEITEK shall make
payments of all compensation due to MIPS within thirty (30) days following the
end of each WEITEK fiscal quarter for the payment due during the quarter. On any
overdue payments, WEITEK shall pay a one and one-half percent (1-1/2%) per month
finance charge, of, if lower, the highest rate then permitted by law, upon the
unpaid balance until the date of payment.
3.6 RECORDS AND REPORTS
3.6.1 RECORDS. WEITEK shall keep accurate records reasonably necessary
in accordance with generally accepted accounting principles
consistently applied to ascertain the amount of fees, royalties and
other compensation payable to MIPS relating to (a) the total amount of
Net Revenue regarding WEITEK Chips sold as components or in Modules,
(b) the total amount of royalties payable in connection with WEITEK
Chips, (c) the total number of licenses and sublicenses of MIPS
Commercial Software and the total amount of license, sublicense,
distribution and New Release fees payable therefor and (d) copies of
WEITEK sublicense agreements. Notwithstanding the foregoing, WEITEK
shall not be obligated to keep copies of actual binary licenses other
than a standard form of such binary license.
3.6.2 REPORTS. WEITEK shall report to MIPS on a WEITEK fiscal quarterly
basis for each WEITEK Chip manufactured by or on behalf of WEITEK, the
Net Revenues for WEITEK Chips so manufactured, each type of MIPS
Commercial Software reproduced/licensed/sublicensed by WEITEK, the
quantity of MIPS Commercial Software so
reproduced/licensed/sublicensed, and the total amount of royalties,
distribution fees, license fees and sublicense fees due and owing to
MIPS for such WEITEK fiscal quarter. The reports described in this
section 3.6.2. shall be made to MIPS no later than thirty (30) days
after the close of each WEITEK fiscal quarter.
3.6.3 AUDIT. MIPS shall have the right, through a nationally recognized
independent CPA firm, to make an examination and audit, at its own
expense, not more frequently than once per year, during normal business
hours, of WEITEK's records and accounts as may contain information
bearing upon the amounts due hereunder for a period of time up to five
(5) years prior to the date of the audit. Prompt adjustment shall be
made by WEITEK for any underpayments disclosed by such audit. In the
event that any quarterly report understates the compensation due to
MIPS for any fiscal quarter by more than ten percent (10%), WEITEK
shall pay any shortfall plus reimburse MIPS for the cost of such audit,
but in no case shall the amount reimbursed for the audit exceed the
amount identified as shortfall, nor shall any auditor be compensated or
incentivized based on the number of errors found. Any and all
information regarding Weitek sales or customers shall be treated as
Proprietary and Confidential Information and shall not be disclosed to
any third party unless legally required to do so.
3.7 TAXES
In addition to the compensation set forth above, WEITEK shall exclusively bear
and pay all sales, use, VAT or other taxes, fees, duties, tariffs and levies
imposed as a result of payment of the compensation set forth above, other than
taxes measured by MIPS income.
4. INTELLECTUAL PROPERTY RIGHTS
All right, title and interest in and to all MIPS Technology, including any MIPS
modifications, enhancements or derivations thereof, and any copies of all or any
part thereof, all know-how and all proprietary rights, including patents, patent
applications, copyrights, mask work rights and trade secrets, shall at all times
be and remain with MIPS or its suppliers, as applicable, WEITEK shall have no
ownership of MIPS Technology, other than ownership of the physical media.
All right, title and interest in and to all WEITEK technology, including any
WEITEK modifications, enhancements or derivations thereof, and any copies of all
or any part thereof, all know-how and all proprietary rights, including patents,
patent applications, copyrights, mask work rights and trade secrets, shall at
all times be and remain with WEITEK or its suppliers, as applicable. MIPS shall
have no ownership of WEITEK technology, other than ownership of the physical
media.
All proprietary notices, labels or marks relating to MIPS intellectual property
rights ("Notices") incorporated in, marked on, or fixed to MIPS Chips, MIPS
Software, MIPS Documentation or MIPS Technology or products incorporating or
based upon MIPS Technology by MIPS or its suppliers shall not be removed,
altered or obliterated by WEITEK and WEITEK shall, where appropriate, duplicate
any such Notices on any copies, in whole or in part, in any form. In addition,
WEITEK shall, where appropriate, incorporate adequate notices to protect MIPS
intellectual property rights on any MIPS Technology or products incorporating or
based upon MIPS Technology or any modifications to MIPS Technology or products
incorporating or based upon MIPS Technology made by or on behalf of WEITEK.
WEITEK shall not delivery any MIPS Technology or products incorporating or based
upon MIPS Technology or modifications to MIPS Technology made by or on behalf of
WEITEK or any portion thereof, or any technical data relating thereto, to any
branch or agency of the United States Government without a written
predetermination that such items will be protected by limited or restricted
rights as set forth in DOD FAR 52.227-7013 or equivalent rights and without
taking all required actions to preserve such rights including, without
limitation: (a) marking MIPS Software or modified MIPS Software with the then
currently prescribed Restricted Rights Legend, (b) marking technical data with
the then currently prescribed Limited Rights Legend, and (c) ensuring that the
contract with the U.S. Government or agency thereof contains the standard
Department of Defense "Rights in Technical Data and Computer Software" clause at
DOD FAR 52.227-7013 and the "Restrictive Markings on Technical Data" clause at
DOD FAR 52.227-7018 or the equivalent clauses for other government agencies.
5. PROGRAM MANAGEMENT
5.1 LIAISON
Each party will identify an individual employee ("Program Manager") who shall be
responsible for interfacing with the other party. The Program Manager shall be
technically knowledgeable about his employer's products and design and
manufacturing activities and possess adequate communication skills to keep the
other party fully informed relative to his employer's performance under this
Agreement. Each party will notify the other in writing or any successor or
designee of the Program Manager. The Program Manager shall be responsible for
fielding inquiries and facilitating the administration of this Agreement. The
parties agree to conduct regular discussions as and when appropriate.
5.2 ON-SITE
Both parties shall permit appropriate employees of the other party to visit
their facilities for the purpose of conducting program discussions. Both parties
shall be required to give reasonable notice of their intent to visit and shall
conduct such visits during normal business hours, subject to mutual convenience
of the parties.
Employees of one party visiting the site of the other party (a) shall not be
deemed to be employees of the party at the site being visited and (b) shall
observe the rules and regulations (as to safety and security) of the party at
the site being visited.
Each party shall indemnify the other party against all loss and liability for
personal injury and property damage caused by the negligence and/or willful acts
or omissions of its employees at the site of the other party.
5.3 OTHER TECHNOLOGY
It is expressly contemplated by the parties that WEITEK [*]. WEITEK, in its
discretion, may disclose to MIPS summary technical information regarding any
such [*]. MIPS may identify to WEITEK areas of technology which MIPS considers
will be useful, for the achievement of the mutual goals and objectives of the
parties and this Agreement, for MIPS to obtain a license from WEITEK in such
area. If the parties determine that such a license may be appropriate, the
parties will negotiate in good faith regarding whether WEITEK will license MIPS
as to any such proprietary [*] any portions thereof, including the applicable
terms, conditions and fees of such license.
6. TRAINING
6.1 ARCHITECTURE
MIPS shall provide to WEITEK, at no charge to WEITEK additional to the
compensation set forth in section 3.1.1, twenty (20) person hours of training to
assist WEITEK in understanding MIPS Architecture. The parties agree to negotiate
in good faith as to WEITEK's additional training needs.
6.2 MIPS COMMERCIAL SOFTWARE TRAINING
WEITEK may purchase training from MIPS in accordance with the then current MIPS
Customer Services price list.
7. PROPRIETARY INFORMATION AGREEMENT
All information, documentation and devices exchanged between the parties
hereunder other than Proprietary Information shall be received and treated by
the receiving party on a nonconfidential and unrestricted basis, subject,
however, to the restrictions imposed by the Patent, Mask Work Right and
Copyright Laws through the grant of valid patents, mask work rights and
copyrights; provided, however, the parties agree, for a period of ten (10) years
from the date of disclosure, without the prior written consent of the other
party regarding a specific contemplated transaction:
7.1 not to disclose Proprietary Information of the other party outside of the
receiving party unless such Proprietary Information is produced or disclosed
pursuant to applicable laws, regulations or court order, provided the receiving
party has given the disclosing party prompt notice of such request so that the
disclosing party has an opportunity to defend, limit or protect such production
or disclosure; and
7.2 to limit dissemination of the other party's Proprietary Information to only
those of the receiving party's officers, directors and employees who require
access thereto to perform their functions regarding the purposes of this
Agreement; and
7.3 not to use Proprietary Information of the other party except for purposes of
this Agreement. The standard of care to be exercised by the receiving party to
meet these obligations shall be the standard exercised by the receiving party
with respect to its own proprietary information of a similar nature, but in no
event less than due care.
Proprietary Information shall not include any data, information or device that
is: (a) in the possession of the receiving party prior to its disclosure by the
disclosing party and not subject to other restrictions on disclosure; (b)
independently developed by the receiving party without access to Proprietary
Information; (c) publicly disclosed by the disclosing party; (d) rightfully
received by the receiving party from a third party without restrictions on
disclosures; or (e) approved in writing for unrestricted release or unrestricted
disclosure by the disclosing party.
8. GENERAL TERMS AND CONDITIONS
8.1 GOVERNING LAW
This Agreement shall be governed by the laws of the State of California,
excluding its conflict of laws rules. The parties consent to the personal and
exclusive jurisdiction and value of the California federal and state courts, as
applicable.
8.2 DISCLAIMER OF WARRANTY
MIPS TECHNOLOGY IS BEING PROVIDED TO WEITEK BY MIPS ON AN "AS IS" BASIS. MIPS
MAKES NO REPRESENTATION OR WARRANTY OF ANY KIND, EXPRESS, IMPLIED OR STATUTORY,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
8.3 TERM, CANCELLATION AND TERMINATION
8.3.1 TERM
The Term of this Agreement shall be for five (5) years commencing upon the
Effective Date, unless earlier cancelled or terminated in accordance with the
provisions hereof.
8.3.2 TERMINATION
Either party may terminate or suspend this Agreement effective immediately and
without liability upon written notice to the other party if any one of the
following events occurs:
8.3.2.1 the other party files a voluntary petition in bankruptcy or
otherwise seeks protection under any law for the protection of
debtors;
8.3.2.2 a proceeding is instituted against the other party under any
provision of any bankruptcy law which is not dismissed within ninety
(90) days;
8.3.2.3 the other party is adjudged a bankrupt;
8.3.2.4 a court assumes jurisdiction of all or a substantial
portion of the assets of the other party under a reorganization law;
8.3.2.5 a trustee or receiver is appointed by a court for all or a
substantial portion of the assets of the other party;
8.3.2.6 the other party becomes insolvent, ceases or suspends
business;
8.3.2.7 the other party makes an assignment of all or a majority of
its assets for the benefit of its creditors; or
8.3.2.8 the other party admits in writing its inability to pay its
debts as they become due.
8.3.3 CANCELLATION FOR CAUSE
If either party fails to perform or violates any material obligation pursuant to
this Agreement, then, upon thirty (30) days written notice to the breaching
party specifying such default (the "Default Notice"), the non-breaching party
may terminate or suspend this Agreement, without liability, unless:
8.3.3.1 The breach specified in the Default Notice has been cured
within the thirty (30) day period; or
8.3.3.2 The default reasonably requires more than thirty (30) days to
correct (specifically excluding any failure to pay money), and the
defaulting party has begun substantial corrective action to remedy the
default within such thirty (30) day period and diligently pursues such
action, in which event, termination shall not be effective unless
ninety (90) days has expired from the date of the Default Notice
without such corrective action being completed and the default
remedied.
8.3.4 CONTINUATION
Notwithstanding the expiration, termination or cancellation of this
Agreement for any reason except for cancellation for cause attributable
to WEITEK in accordance with section 8.3.3, above, the rights and
licenses granted to WEITEK pursuant to section 2 of this Agreement,
with respect to MIPS Technology, shall survive the expiration,
termination or cancellation of this Agreement subject to WEITEK's (a)
having paid to MIPS the fees set forth in section 3 which have become
due and payable prior to the expiration, termination or cancellation of
this Agreement, (b) compliance with its non-disclosure obligations and
(c) payment to MIPS of all applicable royalties, distribution fees,
sublicense fees and other software fees as and when such amounts become
due and payable. The right of WEITEK to receive from MIPS (a) new
Generations of MIPS Technology, (b) information on future Generations
of MIPS Technology and (c) information on new technology shall
terminate upon the expiration or earlier cancellation or termination of
this Agreement.
8.4 PUBLIC ANNOUNCEMENTS
The parties shall, after the Effective Date, make joint announcements regarding
this transaction and their relationship in mutually agreeable forms and at a
mutually agreeable times. Such announcements shall include a statement, among
others, that WEITEK is adopting MIPS Architecture and MIPS Technology for future
RISC products.
Prior to such announcements, the parties agree to keep confidential and not to
disclose to the public or any third party other than external auditors and
disclosures required by law (regarding which the disclosing party shall, in all
instances other than regarding necessary approvals of United States government
and authorities, give the other party advance written notice of the material
circumstances which require the disclosure and the information to be disclosed)
any information regarding this matter without the prior consent of the other
party.
8.5 EXPORT
Before exporting or reexporting any MIPS Technology, including Updates, or any
technical information, technical data (including any confidential information)
or the direct product of such technical data of either party, the receiving
party must fully comply with all then current laws of the United States
including, without limitation, rules and regulations of the United States Office
of Export Administration and other applicable U.S. governmental agencies.
8.6 ASSIGNMENT
Neither party shall assign this Agreement or any of the licenses or rights, or
delegate any duties created hereunder to any person or entity without the prior
written consent of the other party, except as expressly set forth herein, and
except that (1) MIPS may assign this Agreement to a person or entity with which
it has merged or which has otherwise succeeded to all or substantially all of
the business and assets of MIPS, and which has assumed in writing or by
operation of law its obligations under this Agreement; and (2) WEITEK may assign
this Agreement to a person or entity with which it has merged or which has
otherwise succeeded to all or substantially all of the business and assets of
WEITEK, and which has assumed in writing or by operation of law its obligations
under this Agreement, provided said person or entity is not a competitor of MIPS
in that it produces non-MIPS RISC-based products. Any attempt of assignment or
delegation without the required consent shall be void. This section is not
intended to prohibit either party from reasonably subcontracting work in the
course of exercising its rights or complying with its obligations pursuant to
this Agreement.
8.7 LIMITATION OF DAMAGES
IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR COSTS OF PROCUREMENT OF SUBSTITUTE
GOODS OR SERVICES, LOSS OF USE, DATA OR PROFITS, INTERRUPTION OF BUSINESS OR ANY
SPECIAL, INCIDENTAL, INDIRECT, EXEMPLARY, OR CONSEQUENTIAL DAMAGES, ARISING OUT
OF OR IN CONNECTION WITH THIS AGREEMENT, HOWEVER CAUSED AND ON ANY THEORY OF
LIABILITY, WHETHER IN AN ACTION FOR CONTRACT, STRICT LIABILITY OR TORT
(INCLUDING NEGLIGENCE) OR OTHERWISE, AND WHETHER OR NOT THE PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGE. EACH AND EVERY PROVISION OF THIS
AGREEMENT WHICH PROVIDES FOR A LIMITATION OF LIABILITY, DISCLAIMER OF WARRANTY
OR EXCLUSION OF DAMAGES IS INTENDED BY THE PARTIES TO BE SEVERABLE AND
INDEPENDENT OF ANY OTHER SUCH PROVISION. FURTHER, IN THE EVENT THAT ANY REMEDY
HEREUNDER IS DETERMINED TO HAVE FAILED OF ITS ESSENTIAL PURPOSE, ALL LIMITATIONS
OF LIABILITY AND EXCLUSIONS OF DAMAGES SHALL REMAIN IN EFFECT.
THE LIABILITY OF EACH PARTY, RESPECTIVELY, IN ANY SINGLE EVENT OR IN THE
AGGREGATE, SHALL NOT EXCEED U.S. $1,000,000.
8.8 SURVIVAL
The provisions of section 3 (Compensation), section 4 (Intellectual Property
Rights), section 7 (Proprietary Information), section 8.1 (Governing Law),
section 8.2 (Disclaimer of Warranty), section 8.5 (Export), section 8.6
(Assignment), section 8.7 (Limitation of Damages), section 9 (Inventions),
section 10 (Indemnification) and section 11 (Entire Agreement) shall survive the
expiration, cancellation or termination of this Agreement.
9. INVENTIONS
9.1 WEITEK. All discoveries, improvements and inventions conceived or
first reduced to practice exclusively by or on behalf of WEITEK
(collectively, "WEITEK Inventions") shall be the property of WEITEK
exclusively throughout the world, WEITEK shall have the exclusive,
world-wide right, title and interest in and to all intellectual
property rights relating to WEITEK Inventions.
9.2 MIPS. All discoveries, improvements and inventions conceived or
first reduced to practice exclusively by or on behalf of MIPS
(collectively, "MIPS Inventions") shall be the property of MIPS
exclusively throughout the world. MIPS shall have the exclusive,
world-wide right, title and interest in and to all intellectual
property rights relating to MIPS Inventions.
10. PROPRIETARY RIGHTS INDEMNIFICATION
10.1 INDEMNIFICATION
10.1.1 INDEMNIFICATION BY MIPS. MIPS shall indemnify and hold WEITEK
harmless against any action based on a claim that MIPS Technology when
used in accordance with this Agreement infringes a United States patent
or copyright, shall defend at MIPS expense all suits against WEITEK
based upon such a claim and shall pay all costs and damages finally
awarded against WEITEK in such suit, provided that WEITEK shall notify
MIPS promptly in writing of such suit and at MIPS request and at MIPS
expense MIPS is given sole control of such suit and all information and
assistance for defense of same reasonably requested by MIPS. MIPS shall
not be liable for any costs or expenses incurred by WEITEK after MIPS
has assumed the defense of such action. WEITEK shall have the right to
be represented by its own attorney at WEITEK's expense. This indemnity
does not extend to any suit based upon an infringement or alleged
infringement of any patent, copyright, mask work right or trademark by
WEITEK's manufacturing process or modification of MIPS Technology made
by or on behalf of WEITEK; the use of MIPS Technology in combination
with other technology or software not provided by MIPS or a
modification or enhancement to MIPS Technology not made by MIPS, if
such claim would not have occurred but for such combination,
modification or enhancement; any marking or branding applied to MIPS
Technology or modification or design of MIPS Technology by or at the
request of WEITEK, except any such marking or branding in accordance
with MIPS written instructions; or any infringement based upon third
party software except as to any modifications or enhancements to such
software made by MIPS and delivered to WEITEK. The foregoing states the
entire liability of MIPS for trade secret, patent, mask work right,
copyright, trademark or other proprietary rights infringement.
10.1.2 INDEMNIFICATION BY WEITEK. WEITEK shall indemnify and hold MIPS
harmless against any action based on a claim that (1) the process used
by or on behalf of WEITEK in manufacturing products incorporating or
based upon MIPS Technology, or (2) any WEITEK modification of MIPS
Technology, if such claim would not have occurred but for such
modification or (3) the use of MIPS Technology in combination with
other equipment, software, data or technology not provided by MIPS, if
such claim would not have occurred but for such use in combination or
(4) any marking or branding applied to MIPS Technology by or at the
request of WEITEK except any such marking or branding in accordance
with MIPS written instructions, or (5) any infringement based upon
third party software except as to any modifications or enhancements to
such software made by MIPS and delivered to WEITEK, has infringed a
United States patent or copyright, shall defend at WEITEK's expense all
suits against MIPS based upon such a claim and shall pay all costs and
damages finally awarded against MIPS in such suit, provided that MIPS
shall notify WEITEK's expense WEITEK is given sole control of such suit
and all information and assistance for defense of same reasonably
requested by WEITEK. WEITEK shall not be liable for any costs or
expenses incurred by MIPS after WEITEK has assumed the defense of such
action. MIPS shall have the right to be represented by its own attorney
at MIPS expense. The foregoing states the entire liability of WEITEK
for trade secret, patent, mask work right, copyright, trademark or
other proprietary rights infringement.
10.2 REMEDY FOR INFRINGEMENT
10.2.1 If any MIPS Technology or any portion thereof, for which MIPS is
responsible as set forth in section 10.1.1, is finally adjudged to
infringe a United States patent or copyright as to which MIPS is
obligated to indemnify WEITEK in accordance with section
10.1.1, MIPS shall use reasonable best efforts to:
10.2.1.1 procure the right to continue using the
unmodified MIPS Technology,
10.2.1.2 modify the MIPS Technology so that becomes
non-infringing, or
10.2.1.3 replace the unmodified MIPS Technology, or infringing
portions thereof, with reasonably equivalent non-infringing
products.
10.2.2 If any WEITEK manufacturing process, any modification to MIPS
Technology, any use of MIPS Technology in combination, any marking or
branding of MIPS Technology, or any infringement based upon third party
software for which WEITEK is responsible as set forth in section
10.1.2, is finally adjudged to infringe a United States patent or
copyright as to which WEITEK is obligated to indemnify MIPS in
accordance with section 10.1.2, WEITEK shall use reasonable best
efforts to:
10.2.2.1 procure the right to continue using the process,
modification, marking branding or use in combination
10.2.2.2 modify the process, modification, marking,
branding or use in combination so that it becomes
non-infringing, or
10.2.2.3 replace the process, modification, marking, branding
or use in combination, or infringing portions thereof, with
reasonably equivalent non-infringing products or processes.
10.2.3 In the event that there is a final adjudication of infringement,
the liability of the indemnifying party for infringement
indemnification shall terminate with respect to all damages regarding
the infringing intellectual property arising after the date of such
final adjudication.
11. ENTIRE AGREEMENT
This Agreement and the exhibits attached hereto contain and constitute the sole,
complete and entire agreement and understanding of the parties concerning the
matters contained herein and may not be altered, modified or changed in any
manner except by writing duly executed by the parties. No statements, promises
or representations have been made by any party to another, or are relied upon,
and no consideration has been or is offered, promised, expected or held out,
other than as stated in this Agreement. No party is relying on any
representations other than those expressly set forth herein. No conditions
precedent to the effectiveness of this Agreement exist, other than as may be
expressly provided herein. There are no oral or written collateral agreements.
All prior and contemporaneous discussions and negotiations have been, and are,
merged and integrated into, and superseded by, this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representative. WEITEK CORPORATION MIPS COMPUTER SYSTEMS,
INC.
"WEITEK" "MIPS"
By: \s\ ▇▇▇▇ ▇▇▇▇▇▇ By: \s\
Title: V.P. Development
Title: Vice President and Treasurer
Date: 8-10-90 Date: August 14, 1990
EXHIBIT A
ARCHITECTURE LICENSE DELIVERABLES
A. MIPS R Series Architecture Specification including the Instruction
Set descriptions for the R4000 Series.
B. MIPS Instruction Set and System Performance Simulator (SABLE).
C. MIPS R4000 Test Program
1. Source code in Teradyne J953 format
2. Pattern source code (Assembly language)
D. MIPS R4000 RTL Model
1. All RTL equations for each chip (ASCII, on tape)
2. Binary, executable copy of the MIPS simulator for the R4000
(SLOGAN)
3. Overview block diagrams of the R4000
EXHIBIT B
ARCHITECTURE LICENSE DELIVERABLES
A. MIPS R5000 Architecture Specification (superscalar)
B. MIPS R5000 Instruction Set and System Performance Simulator (SABLE)
C. MIPS R5000 Test Programs
1. Source code in MIPS then current tester format
2. Pattern source code (Assembly language)
D. MIPS R5000 RTL Model
1. All RTL equations for each chip (ASCII, on tape)
2. Binary, executable copy of the MIPS simulator for the MIPS
Chip
E. MIPS R5000 Diagnostics
F. Interface Specifications
ASSIGNMENT AGREEMENT
This Assignment Agreement ("Agreement") is made and entered into as of
the 19th day of June, 1996 (the "Effective Date") between Weitek Corporation, a
California corporation ("Weitek"), and Quantum Effect Design, Inc. ("Quantum").
WHEREAS, Weitek and MIPS Technologies, Inc. ("MIPS") are parties to
that certain Technology License Agreement dated as of June 29, 1990 (the
"License Agreement"); and
WHEREAS, Weitek desires to assign the License Agreement to Quantum, and
Quantum desires to accept such assignment; and
WHEREAS, MIPS has consented to such assignment;
NOW THEREFORE, in consideration of the mutual promises made herein,
Weitek and Quantum hereby agree as follows:
1. ASSIGNMENT AND ASSUMPTION. Weitek hereby assigns to Quantum all of
Weitek's rights and interest in and to the License Agreement, and Quantum hereby
accepts such assignment and assumes and agrees to perform all of the obligations
of the licensee under the License Agreement. (The assignment of the rights and
obligations under the License Agreement provided for in this Section 1 is
referred to as the "Assignment.")
2. CONSIDERATION. In consideration for the Assignment, Quantum hereby
agrees to pay to Weitek the [*] as follows: concurrent with the execution of
this Agreement, (i) Quantum shall pay to Weitek by wire transfer the [*] and
(ii) shall execute and deliver to Weitek, and pay when due, a promissory note
in the form attached hereto as Exhibit A.
3. INDEMNIFICATION. Weitek hereby agrees to indemnify and hold harmless
Quantum, its officers, directors and stockholders from any and all royalties,
fees, payments and other liabilities owing to MIPS under the License Agreement
from the effective date of the License Agreement to the Effective Date hereof.
Quantum hereby agrees to indemnify and hold harmless Weitek, its officers,
directors and stockholders from any and all royalties, fees payments and other
liabilities owing to MIPS under the License Agreement from and after the
Effective Date hereof.
4. NO WARRANTIES GIVEN. Weitek's assignment hereunder is made with no
representation or warranty of any type (other than to represent to Quantum that
the Assignment has been approved by MIPS). Quantum acknowledges that it has
reviewed and understands the scope of the License Agreement, and is not relying
any representation of Weitek with respect to the execution and delivery of this
Agreement.
5. MISCELLANEOUS.
5.1 COMPLETE AGREEMENT; NO ORAL MODIFICATION. This Agreement
constitutes the entire Agreement between the parties with respect to the subject
matter hereof, and supersedes all other communications or negotiations relating
thereto between the parties. No amendment or change hereof or addition to this
Agreement shall be effective unless reduced to a writing signed by authorized
representatives of the parties.
5.2 COUNTERPARTS. This Agreement may be executed in
counterparts, each of which shall be deemed to be an original and both together
shall be deemed to be one and the same agreement.
IN WITNESS WHEREOF THE PARTIES HAVE EXECUTED THIS LICENSE AGREEMENT AS OF THE
EFFECTIVE DATE SET FORTH ON THE FIRST PAGE HEREOF. WEITEK CORPORATION QUANTUM
EFFECT DESIGN, INC.
By: \s\ R.I.S. ▇▇▇▇▇▇ By: \s\ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Name: R.I.S. ▇▇▇▇▇▇ Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: President Title: President
AMENDMENT No. 1 TO THE
TECHNOLOGY LICENSE AGREEMENT
This Amendment No. 1 to the Technology License Agreement (this "Amendment")
is entered into between MIPS Technologies, Inc. ("MIPS") and Quantum Effect
Design, Inc. ("QED"), effective March 31, 1997.
WHEREAS, MIPS Computer Systems, Inc. ("MCSI") and Weitek Corporation ("Weitek")
entered into a Technology License Agreement, dated June 19, 1990 (the "Weitek
Technology License Agreement"), under which MCSI licensed to Weitek certain
technology, including the MIPS(R) Instruction Set Architecture;
WHEREAS, MCSI merged into Silicon Graphics, Inc. ("SGI") effective on June 29,
1992, and MIPS, as the surviving business entity to MCSI, succeeded to the
rights and obligations of MCSI under the Weitek Technology License Agreement;
WHEREAS, Effective June 19, 1996, Weitek assigned to QED all of Weitek's
rights and interests in and to the Weitek Technology License Agreement and
QED accepted such assignment and assumed and agreed to perform all of the
obligations of Weitek under the. Weitek Technology License Agreement;
WHEREAS, MIPS consented to such assignment; and
WHEREAS, QED has exercised the R5000 Option described in Section 2.1.2 of the
Weitek Technology License Agreement and QED and MIPS have agreed to the form of
compensation, valued at [*], which QED owes MIPS for the exercise of such option
as required by Section 3.2 of the Weitek Technology License Agreement.
NOW THEREFORE. the parties agree as follows:
A. The parties acknowledge and agree that MIPS and QED are bound by the terms
and conditions of the Weitek Technology License Agreement, in the manner
specified in Section 8.3.4, to the same extent that each party's predecessor in
interest (i.e., MCSI and Weitek) was bound as of the expiration date of the
Weitek Technology License Agreement. Further, all references to Weitek in the
Weitek Technology License Agreement will be deemed references to QED. For
convenience of drafting, references in this Amendment to defined terms which are
used in the Weitek Agreement and which contain "Weitek" will include `QED"
instead of "Weitek". For example, "Weitek Chips" are referred to as "QED Chips"
in this Amendment.
B. The parties acknowledge and agree that (a) the R5000 Option described in
Section 2.1.2 constitutes a license to the MIPS IV Instruction Set Architecture,
(b) the scope of QED's license rights to the MIPS IV Instruction Set
Architecture are specified in Section 2.1.1, and (c) the license is effective in
the manner specified in Section 8.3.4. Further, since QED already has the
technology required to exercise such license rights, the parties acknowledge and
agree that MIPS is not required to provide QED with any deliverables,
notwithstanding anything contained in the Weitek Technology License Agreement or
Exhibit B to the contrary.
C. Notwithstanding anything contained in Section 3.2 of the Weitek Technology
License Agreement to the contrary, the parties acknowledge and agree that as
compensation for the R5000 Option as set forth in Section 2.1.2, QED will pay
MIPS [*], in the following manner:
(i) QED will pay MIPS [*] by April 30, 1997, in immediately available
funds in the manner specified by MIPS.
(ii) The remaining [*] will be paid by QED to MIPS in the form of
incremental royalties (i.e., increased royalties paid in addition to those
otherwise payable under the Weitek Technology License Agreement) on each of the
specified QED Chips in accordance with the following schedule:
QED Chip Incremental Royalty %
-------- ---------------------
RM5230 [*]
RM5260 [*]
RM7000 [*]
(iii) Incremental royalties for other QED Chips will be mutually agreed
upon in writing based on the likeness of such QED Chips to the above QED Chips
considering the similarity of the core processor design and ASP. So-called
"ASSP" (highly integrated derivatives) of a QED Chip will be subject to the
incremental royalty rate applicable to the QED Chip from which it was derived.
The parties must make good faith efforts to agree to the appropriate incremental
royalty prior to the shipment of any of the QED Chips described in this Section
C(iii).
(iv) At any time prior to April 30, 2000, QED may compensate MIPS for
the then-current outstanding balance of the [*] compensation for the R5000
Option by means of engineering services that are mutually agreed upon in writing
by MIPS and QED.
(v) If the entire [*] compensation has not been paid by April 30, 2000,
QED will pay in full to MIPS the remaining balance of the [*] compensation in a
lump sum by that date. QED's obligation to pay the [*] compensation will survive
any expiration or termination of the Weitek Technology License Agreement.
MIPS Technologies Quantum Effect Design, Inc.
By: \s\ ▇▇▇▇ ▇▇▇▇▇▇▇ By: \s\ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Name: ▇▇▇▇ ▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: President, MTI Title: President
Date: 3/31/97 Date: 31 March 97
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
