EXHIBIT 10.13
CONFIDENTIAL TREATMENT REQUESTED
INTEL AND SILICON IMAGE CONFIDENTIAL
PATENT LICENSE AGREEMENT
BETWEEN
SILICON IMAGE, INC. AND INTEL CORPORATION
This Agreement ("Agreement") is entered into as of SEPTEMBER 16, 1998
("Effective Date") by and between Silicon Image, Inc. a California corporation,
having an office at ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, U.S.A., ("SiI") and
Intel Corporation, a Delaware corporation, having an office at ▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇.▇.▇. ("Intel").
IN CONSIDERATION OF THE MUTUAL COVENANTS AND PROMISES CONTAINED HEREIN, THE
PARTIES AGREE AS FOLLOWS:
1. DEFINITIONS
1.1. "Capture Period" shall mean any time on or prior to the [***]
anniversary of the Effective Date.
[***] shall mean an Integrated Circuit that is dedicated to (i)
providing support logic for a [***] digital information [***]
digital information for use by a [***]; and/or (ii) providing
support for a [***], and that [***] contained within a [***]. If
a single Integrated Circuit contains circuitry that meets the
definition of [***] and circuitry that does not, only that
portion of the circuitry that meets the definition of [***] shall
be deemed [***].
[***] shall mean an Integrated Circuit that is dedicated to (i)
providing support logic for a [***] digital information [***]
Integrated Circuit, such as, but not limited to, an [***] digital
information [***]; and/or (ii) providing support for a [***],
and that [***]. If a single Integrated Circuit contains
circuitry that meets the definition of [***] and circuitry that
does not, only that portion of the circuitry that meets the
definition of [***] shall be deemed [***].
1.4. "Display" shall mean an LCD, CRT or similar display device used
for displaying video and/or graphics data.
[***] shall mean one or more Integrated Circuits that alone or together
are dedicated to providing support logic for a [***] graphic
information [***] the graphic information and [***]
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[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
[***], and may also perform the following functions: [***]. If
the one or more Integrated Circuits contain circuitry that meets
the definition of [***] and circuitry that does not, only that
portion of the circuitry that meets the definition of [***] shall
be deemed [***].
[***] shall mean one or more Integrated Circuits that alone or together
are dedicated to providing support logic for implementing the
[***], including the [***]. The [***] may also implement a
portion of the [***] including the assembly of [***], assembly of
[***], and/[***]. If the one or more Integrated Circuits contain
circuitry that meets the definition of [***] and circuitry that
does not, only that portion of the circuitry that meets the
definition of [***] shall be deemed [***].
[***] shall mean one or more Integrated Circuits that alone or together
are dedicated to providing support logic for implementing the
[***], including the [***]. The [***] may also implement a
portion of the [***]: separation of [***], separation of [***],
and reconstruction and/or distribution of data [***]. If the one
or more Integrated Circuits contain circuitry that meets the
definition of [***] and circuitry that does not, only that
portion of the circuitry that meets the definition of [***] shall
be deemed [***].
[***] shall mean an Integrated Circuit that contains [***].
[***] shall mean one or more Integrated Circuits that alone or together
are designed and optimized for providing support logic for an
[***] and that include at least a [***] (but may also include a
[***] digital information [***] one or more devices [***], and
also includes logic that provides the information [***] to enable
and enhance the use of the information by the [***]; provided
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[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
that if the [***] resides on one or more Integrated Circuits
separate from the [***], each Integrated Circuit having [***]
must utilize the [***] as its primary means for [***] from the
one or more devices [***]. If the one or more Integrated Circuits
contain circuitry that meets the definition of Peripheral
Controller and circuitry that does not, only that portion of the
circuitry that meets the definition of [***] shall be deemed
[***].
[***] shall mean a device that: (i) provides one or more of the [***]
functions of [***]; (ii) provides one or more of the [***]
functions of [***]; and/or (iii) is capable of providing [***].
[***] shall mean one or more Integrated Circuits that alone or together
[***] needed for transmission and then sends them along the
appropriate transmission medium, [***] and includes within the
[***] that perform these tasks including the [***]. The [***]
also includes the [***].
[***] shall mean one or more Integrated Circuits that alone or
together [***], includes as a main component the [***], which
transforms data units [***] and determines how a device [***]
data transmission across the transmission medium.
[***] shall mean [***] Integrated Circuits that are [***] and that are
used for the [***].
1.14. "Integrated Circuit" shall mean an integral unit comprising one or
more active and/or passive circuit elements associated on one or
more substrates, such unit forming, or contributing to the
formation of, a circuit for performing electrical functions and,
if provided therewith, housing, packaging, and/or supporting
means.
[***] shall mean one or more Integrated Circuits (that may include one
or more digital logic products), which in use are generally
integrated on an [***], that alone or together (i) [***]
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[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
[***]; or (ii) provide the [***]. Provided that any Integrated
Circuit, or combination of Integrated Circuits, shall not be
deemed an [***] unless such Integrated Circuit standing alone,
or such combination of Integrated Circuits, provide the
above-specified [***] functionality.
[***] shall mean one or more Integrated Circuits (that may include one
or more digital logic products), which in use are generally
integrated on a [***], that alone or together (i) [***] and any
other device including, without limitation, [***]; or (ii)
communicating with any [***].
[***] shall mean a [***], or equivalent, that includes a [***] that
are connected to the [***].
[***] shall mean a [***], or equivalent, that includes a [***] that are
connected to the [***].
[***] shall mean [***], or equivalent, that includes a [***] that are
connected to the [***] and in use is generally coupled to an
[***].
[***] shall mean [***], or equivalent, that includes a [***] that are
connected to the [***] and in use is generally coupled to a
Computer Motherboard.
1.21. "Intel Licensed Products" shall mean any product that is sold
by Intel as Intel's own product (as further defined in Section
3.4); provided that Intel Licensed Products shall not include
any Network Devices or any SiI Proprietary Products.
Notwithstanding the foregoing if an Intel product contains
circuitry that is Network Device, [***] and circuitry that is
not, only that portion of the circuitry that does not meet the
definition of Network Device, [***]
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[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
[***] shall be deemed Intel Licensed Products.
[***] shall mean [***] first developed by, for or with substantial
participation by [***], including without limitation the [***].
[***] shall also include the [***].
[***] shall mean [***] capable of connecting one or more [***],
together with the set of [***] defining the [***].
1.24. "Intel Proprietary Product" shall mean [***].
[***] shall mean one or more Integrated Circuits that alone or
together perform [***]. Provided that any Integrated Circuit,
or combination of Integrated Circuits, shall not be deemed a
[***] unless such Integrated Circuit standing alone, or such
combination of Integrated Circuits, provide the above-specified
[***] functionality.
1.26. "Licensed Product" shall mean a SiI Licensed Product or an Intel
Licensed Product as applicable.
1.27. "Network Device" shall mean one or more Integrated Circuits
that, alone or together, provide high-speed communication
between [***] according to (i) one or more [***] networking
protocols, including without limitation [***].
1.28. "Patents" shall mean all classes or types of patents, utility
models and design patents (including, without limitation,
originals, divisions, continuations, continuations-in-part,
extensions or reissues), and applications for these classes or
types of patent rights in all countries of the world (collectively
"Patent Rights") that are owned or controlled by the applicable
party or any of its Subsidiaries during the term of this
Agreement, that have a first effective filing date during the
Capture Period and to the extent that the applicable party or its
Subsidiaries has the right to grant licenses within and of the
scope set forth herein and without the requirement to pay
consideration to any third party (other than employees of the
5
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
applicable party or its Subsidiaries) for the grant of a license
under this Agreement.
[***] shall mean one or more Integrated Circuits that alone or
together, perform [***]. Provided that any Integrated
Circuit, or combination of Integrated Circuits, shall not be
deemed [***] unless such Integrated Circuit standing alone, or
such combination of Integrated Circuits, provide the
above-specified [***] functionality.
1.30 "SiI Licensed Products" shall mean [***] that are
sold by SiI as SiFs own product (as further defined in Section
3.4); provided that SiI Licensed Products shall not include any
Network Devices or any Intel Proprietary Products.
Notwithstanding the foregoing if a SiI product contains
circuitry that is [***] Network Device, [***] only that portion
of the circuitry that meets the definition of [***] but does
not meet the definition of Network Device, [***] shall be deemed
SiI Licensed Products.
1.31. "SiI Proprietary Products" shall mean [***]. As used in this
Section, "Discrete" means that such product is the primary
functionality contained on a discrete SiIicon chip.
1.32. "Subsidiary" shall mean any corporation, partnership or other
entity, now or hereafter, (i) at least fifty percent (50%) of
whose outstanding shares or securities entitled to vote for the
election of directors or similar managing authority is directly or
indirectly owned or controlled by a party hereto, or (ii) that
does not have outstanding shares or securities but at least fifty
percent (50%) of whose ownership interest representing the right
to make the decisions for such entity is directly or indirectly
owned or controlled by a party hereto; provided, however, that in
each case such corporation, partnership or other entity shall be
deemed to be a Subsidiary only so long as such ownership or
control exists and is at least fifty percent (50%).
6
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
2. MUTUAL RELEASES
2.1. SII. SiI on behalf of itself and its Subsidiaries, hereby
releases, acquits and forever discharges Intel, its Subsidiaries
that are Subsidiaries as of the Effective Date, and its and their
distributors and customers, direct and indirect, from any and all
claims or liability for infringement of any SiI Patents that arose
prior to the Effective Date of this Agreement, to the extent such
infringement would have been licensed under the license granted to
Intel hereunder if such license had been in existence at the time
of such infringing activity. SiI, on behalf of itself and its
Subsidiaries, hereby releases, acquits and forever discharges
Intel and its Subsidiaries that are Subsidiaries as of the
Effective Date from any and all claims or liability for inducement
to infringe any SiI Patents that arose prior to the Effective Date
of this Agreement.
2.2 BY INTEL. Intel, on behalf of itself and its Subsidiaries, hereby
releases, acquits and forever discharges SiI, its Subsidiaries
that are Subsidiaries as of the Effective Date, and its and their
distributors and customers, direct and indirect, from any and all
claims or liability for infringement of any Intel Patents that
arose prior to the Effective Date of this Agreement, to the extent
such infringement would have been licensed under the license
granted to SiI hereunder if such license had been in existence at
the time of such infringing activity. Intel, on behalf of itself
and its Subsidiaries, hereby releases, acquits and forever
discharges SiI and its Subsidiaries that are Subsidiaries as of
the Effective Date, from any and all claims or liability for
inducement to infringe any Intel Patents that arose prior to the
Effective Date of this Agreement.
3. GRANT OF RIGHTS
3.1. SII LICENSE TO INTEL. Subject to the terms and conditions of
this Agreement, SiI hereby grants to Intel a non-exclusive,
non-transferable, [***] worldwide license, without the
right to sublicense, under SiI's Patents to:
3.1.1. make, have made (subject to Section 3.3 below), use, and
import, and directly or indirectly sell, offer to sell and
otherwise dispose of Intel Licensed Products;
3.1.2. make, have made, use and/or import any equipment and
practice any method or process for use in the manufacture
of Intel Licensed Products.
3.2. INTEL LICENSE TO SII. Subject to the terms and conditions of this
Agreement, Intel hereby grants to SR a non-exclusive,
non-transferable, [***] worldwide license, without the
right to sublicense, under Intel's Patents to:
3.2.1 make, have made (subject to Section 3.3 below), use, and
import, and directly or indirectly sell, offer to sell and
otherwise dispose of SiI Licensed Products;
7
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
3.2.2. make, have made, use and/or import any equipment and
practice any method or process for use in the manufacture
of SiI Licensed Products;
3.3 HAVE MADE RIGHTS.
3.3.1. Each party's rights to have products manufactured for them
by third parties under the licenses granted under
Sections 3.1 and 3.2 above shall apply only when the
following conditions are met:
3.3.1.1. the designs, specifications and working
drawings for the manufacture of the product,
to be manufactured by such third party
("Foundered Product") are furnished by (as
between the licensed party under this
Agreement and the third party manufacturer)
the licensed party; and
3.3.1.2. except as provided in Section 3.3.1.1 above,
said designs, specifications and working
drawings are in sufficient detail that no
additional designing by the manufacturer is
required other than adaptation to the
production processes and standards normally
used by the manufacturer which changes the
characteristics of the Foundered Products
only to a negligible extent.
3.3.2. Notwithstanding the foregoing, a licensed party's have made
rights shall include the right to have made a product
(i) which was designed and developed by a third party and
(ii) which such licensed party had been purchasing from
such third party, where such manufacture is done (x) by a
manufacturer other than such third party or any affiliate
of such third party and (y) pursuant to a back-up or second
source manufacturing license triggered when such third
party breaches or otherwise fails to meet its obligations
to the licensed party.
3.3.3. Upon written request, the licensed party shall inform the
other party whether, and if so to what extent, any
manufacturer identified by the other party is operating
under the license granted to the licensed party by the
other party hereunder.
3.4. FOUNDRY RIGHTS The parties understand and acknowledge that the
licenses granted hereunder are intended to cover only the products
of the two parties to this Agreement, and are not intended to
cover foundry activities that either party may undertake on behalf
of third parties. Therefore, for the licenses granted in
Sections 3.1 and 3.2, the definition of Licensed Products of a
party hereto shall exclude products (including without limitation
Application Specific Integrated Circuits ("ASICs")) manufactured
on behalf of a third party from designs received in a
substantially completed form from a third party for resale to or
on behalf of that party. The limitations on the definition of
Licensed Products set forth in this
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Section 3.4 shall not apply to manufacturing methods and
processes as licensed hereunder pursuant to Sections 3.1.2 and
3.2.2.
3.5. LICENSES AND SUBSIDIARIES.
3.5.1. Except as provided below, the parties intend that this
Agreement shall extend to all of each party's Subsidiaries,
and the parties shall use their reasonable and diligent
efforts to ensure that all such Subsidiaries are bound by
the terms of this Agreement. Upon written request by a
party, the other party will give it written notice to
identify any Subsidiary to which it believes that such a
license has been extended.
3.5.2. Notwithstanding the foregoing, the licenses granted
hereunder by the licensing party may not be extended to a
Subsidiary acquired by the other party ("Acquiring Party")
on or after the Effective Date unless such extension is
approved by the licensing party in writing (which approval
shall be at the licensing party's sole discretion) if,
immediately prior to such acquisition, either or both of
the total assets or market value of such newly acquired
entity are greater than [***] of those of the Acquiring
Party.
3.5.3. The extension of license rights to a Subsidiary shall apply
only during the time period when such a business entity
meets all requirements of a Subsidiary. However, if a
Subsidiary of a party that holds any Patents that are
licensed to the other party hereunder ceases to be a
Subsidiary, the licenses granted to the other party
hereunder under such Patents hereunder shall continue for
the life of such Patents even after such entity ceases to
be a Subsidiary. Upon written request by a party, the
other party will give it written notice to identify any
Subsidiary to which it believes that such a license has
been extended.
3.5.4. Each party intends to acquire the right to grant to the
other party licenses under any Patents that may be created
covering inventions conceived and/or reduced to practice by
the licensing party's and its Subsidiaries' employees with
use of its or its Subsidiaries' funds or other assets.
Accordingly, each party agrees to take all steps that are
reasonable under the circumstances so that Patents covering
inventions that are made by one or more of its and/or its
Subsidiaries' employees and contractors for which the
funding is provided by it and/or its Subsidiaries, are
included among the patents licensed by it hereunder. This
requirement shall not apply to Patents which may apply to
inventions that arise out of development projects funded in
significant part by third parties or undertaken with the
significant assistance of the employees of a third party.
9
[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
3.6. FULL RIGHTS.
3.6.1. In the event that neither a party nor any of its
Subsidiaries has the right to grant a license under any
particular Patent Right of the scope set forth herein, then
the license granted herein under such Patent shall be of
the broadest scope which the licensing party or any of its
Subsidiaries has the right to grant.
3.6.2. Notwithstanding anything to the contrary contained herein,
in the event that either party or any of its Subsidiaries
obtains rights to any Patents that would be included within
the Patents licensed hereunder but for the fact that such a
license would require the party granting such license to
make payments to a third party, such Patents shall be
included within the SiI Patents or the Intel Patents, as
the case may be, if the party to whom such would be
licensed under this Agreement agrees in a separate written
agreement to be bound by, and protect such grantor against,
those payment obligations.
3.7. NO OTHER RIGHTS. No other rights are granted hereunder, by
implication, estoppel, statute or otherwise, except as expressly
provided herein. Specifically, (i) except as expressly provided
in Section 3, nothing in the licenses granted hereunder or
otherwise contained in this Agreement shall expressly or by
implication, estoppel or otherwise give either party any right to
license the other party's Patents to others, and (ii) no license
or immunity is granted by either party hereto directly or by
implication, estoppel or otherwise to any third parties acquiring
items from either party for the combination of Licensed Products
with other items or for the use of such combination.
4. EFFECTIVE DATE, TERM AND TERMINATION
4.1. TERM. This Agreement and the rights and licenses granted
hereunder shall become effective on the Effective Date, and shall
continue in effect until the expiration of the last patent
licensed hereunder to expire, unless such rights and licenses are
sooner terminated as provided below.
4.2. TERMINATION.
4.2.1. A party may terminate the other party's rights and licenses
hereunder upon notice if the other party hereto commits a
material breach of this Agreement and does not correct such
breach within sixty (60) days after receiving written
notice complaining thereof. In the event of such
termination, the rights and licenses granted to the
defaulting party shall terminate, but the rights and
licenses granted to the party not in default shall survive
such termination of this Agreement subject to its continued
compliance with the terms and conditions of this Agreement.
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4.2.2. A party hereto may terminate this Agreement upon sixty (60)
days written notice of termination to the other party given
at any time upon or after:
4.2.2.1. the filing by the other party of a petition
in bankruptcy or insolvency;
4.2.2.2. any adjudication that the other party is
bankrupt or insolvent;
4.2.2.3. the filing by the other party of any petition
or answer seeking reorganization,
readjustment or arrangement of its business
under any law relating to bankruptcy or
insolvency;
4.2.2.4. the appointment of a receiver for all or
substantially all of the property of the
other party;
4.2.2.5. the making by the other party of any
assignment for the benefit of creditors;
4.2.2.6. the institution of any proceedings for the
liquidation or winding up of the other
party's business or for the termination of
its corporate charter, provided that the
other party shall have sixty (60) days to
cure;
In the event of such termination, the fights and licenses granted
to the terminated party shall terminate, but the fights and
licenses granted to the other shall survive such termination of
this Agreement subject to its continued compliance with the terms
and conditions of this Agreement.
4.2.3. CHANGE OF CONTROL.
4.2.3.1. For purposes of this Section 4.2.3, the
following terms shall have the following
meanings:
4.2.3.1.1. "Change of Control" means any
transaction between a party and a third
party after which:
4.2.3.1.1.1. the third party would own,
directly or indirectly, beneficially
or of record, voting securities
representing more than fifty percent
(50%) of the total voting power (a
"Majority Interest") of the party,
unless persons previously owning a
Majority Interest of the party
continue to own a Majority Interest
of such third party;
4.2.3.1.1.2. the party would become a party
to a merger with the third party in
which the party is not the surviving
corporation, unless persons
previously owning a
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Majority Interest of the party
continue to own a Majority Interest
of such surviving corporation; or
4.2.3.1.1.3. the party would transfer all or
substantially all of its business
and assets to the third party,
unless persons previously owning a
Majority Interest of the party
continue to own a Majority Interest
of such transferee.
4.2.3.2. If a party has undergone a Change of Control,
the party shall notify the other party in
writing within thirty (30) business days.
4.2.3.3. If a party is considering a Change of Control
it may notify the other party in writing of
such potential Change in Control and the
notified party shall have thirty (30) days
from the receipt of such notice in which to
indicate in writing whether it would elect to
terminate or not terminate this Agreement in
accordance with this Section 4 upon the
actual occurrence of such Change of Control.
The notified party's determination shall be
effective for a period of ninety (90) days
from the date such notice is received,
provided that there is no material change in
the acquirer or target during such period.
Any such disclosure of a potential Change of
Control and of the potential acquirer shall
be provided under the current Corporate Non
Disclosure Agreement (CNDA), Number 94185
dated September 24, 1997 or a separate
confidentiality agreement mutually agreed
upon by the parties.
4.2.3.4. For thirty (30) days after notification under
Subsection 4.2.3.2, the notified party shall
have the right to terminate this Agreement by
written notice to the other party. Failure
by the notified party to provide any written
notice within the thirty (30) days shall be
deemed an election of non-termination.
4.2.3.5. If the notified party elects termination
under Subsection 4.2.3.4, [***], effective
on the date of the Change of Control.
4.2.3.6. If the notified party does not elect
termination under Subsection 4.2.3.4, the
third party shall have thirty (30) days after
the notified party elects not to terminate to
assume all of the rights and obligations of
this Agreement by written notice to the
notified party. Failure by the third party
to provide any written notice within the
thirty (30) days shall be deemed an election
to not assume.
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[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
4.2.3.7. If within the thirty day (30) period of
Subsection 4.2.3.6, the third party elects to
assume all of the rights and obligations of
this Agreement and within an additional
thirty (30) days executes a legally binding
agreement to assume such rights and
obligations, [***].
4.2.3.8. If the third party does not assume the rights
and obligations of this Agreement under
Subsection 4.2.3.7, [***].
4.3. SURVIVAL. The provisions of Sections 1, 2, 4, 5, and 6 will
survive any termination or expiration of this Agreement.
5. DISCLAIMER
5.1. Nothing contained in this Agreement shall be construed as:
5.1.1. a warranty or representation by either of the parties to
this Agreement as to the validity, enforceability or scope
of any class or type of Patent Right; or
5.1.2. a warranty or representation that any manufacture, sale,
lease, use or other disposition of Licensed Products
hereunder will be free from infringement of any Patents
other than those under which licenses have been granted
hereunder; or
5.1.3. 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
5.1.4. 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
5.1.5. conferring by implication, estoppel or otherwise, upon any
party licensed hereunder, any license or other right under
any Patent Rights, copyright, maskwork, trade secret,
trademark other intellectual property right except the
licenses and rights expressly granted hereunder; or
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[***] Confidential Treatment has been requested for certain portions of this
document. Such portions have been filed separately with the Securities
and Exchange Commission.
5.1.6. an obligation to furnish any technical information or
know-how.
5.2. NO IMPLIED WARRANTIES. EACH PARTY HEREBY DISCLAIMS ANY IMPLIED
WARRANTIES WITH RESPECT TO THE PATENTS LICENSED HEREUNDER,
INCLUDING WITHOUT LIMITATION, THE WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
6. MISCELLANEOUS PROVISIONS
6.1. AUTHORITY. Each of the parties hereto represents and warrants
that it has the right to grant the other the licenses granted
hereunder.
6.2. NO ASSIGNMENT. This Agreement is personal to the parties, and the
Agreement or any right or obligation hereunder is not assignable
(except as provided in Subsection 4.2.3.4), whether in conjunction
with a change in ownership, merger, acquisition, the sale or
transfer of all, or substantially all or any part of a party's
business or assets or otherwise, either voluntarily, by operation
of law, or otherwise, without the prior written consent of the
other party, which consent may be withheld at the sole discretion
of such other party. Any such purported assignment or transfer
(except as provided in Subsection 4.2.3.4) shall be deemed a
breach of this Agreement and shall be null and void. This
Agreement shall be binding upon and inure to the benefit of the
parties and their permitted successors and assigns.
6.3. NOTICE. All notices required or permitted to be given hereunder
shall be in writing and shall be delivered by hand, or if
dispatched by prepaid air courier or by registered or certified
airmail, postage prepaid, addressed as follows:
If to SiI: If to Intel:
--------- -----------
President General Counsel
Silicon Image, Inc. Intel Corporation
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇.
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America United States of America
Such notices shall be deemed to have been served when received by
addressee or, if delivery is not accomplished by reason of some
fault of the addressee, when tendered for delivery. Either party
may give written notice of a change of address and, after notice
of such change has been received, any notice or request shall
thereafter be given to such party as above provided at such
changed address.
6.4. NO RULE OF STRICT CONSTRUCTION. Regardless of which party may
have drafted this Agreement, no rule of strict construction shall
be applied against either party. If any provision of this
Agreement is determined by a court to be unenforceable, the
parties shall deem the provision to be modified to the extent
necessary to allow it to be enforced to the extent permitted by
law, or if it cannot be modified, the
14
provision will be severed and deleted from this Agreement, and
the remainder of the Agreement will continue in effect.
6.5. TAXES. Each party shall be responsible for the payment of its own
tax liability arising from this transaction.
6.6. ENTIRE AGREEMENT. This Agreement embodies the entire
understanding of the parties with respect to the subject matter
hereof, and merges all prior discussions between them, and neither
of the parties shall be bound by any conditions, definitions,
warranties, understandings, or representations with respect to the
subject matter hereof other than as expressly provided herein. No
oral explanation or oral information by either party hereto shall
alter the meaning or interpretation of this Agreement.
6.7. MODIFICATION; WAIVER. No modification or amendment to this
Agreement, nor any waiver of any rights, will be effective unless
assented to in writing by the party to be charged, and the waiver
of any breach or default will not constitute a waiver of any other
right hereunder or any subsequent breach or default.
6.8. GOVERNING LAW. This Agreement and matters connected with the
performance thereof shall be construed, interpreted, applied and
governed in all respects in accordance with the laws of the United
States of America and the State of California, without reference
to conflict of laws principles.
6.9. JURISDICTION. Intel and SiI agree that all disputes and
litigation regarding this Agreement and matters connected with its
performance shall be subject to the jurisdiction of the courts of
the States of California and Oregon or of the Federal courts
sitting therein.
6.10. CONFIDENTIALITY OF TERMS. The parties hereto shall keep the terms
of this Agreement confidential and shall not now or hereafter
divulge these terms to any third party except:
6.10.1. with the prior written consent of the other party;
or
6.10.2. to any governmental body having jurisdiction to call
therefor; or
6.10.3. subject to 6.10.4 below, as otherwise may be
required by law or legal process. including to legal
and financial advisors in their capacity of advising
a party in such matters; or
6.10.4. during the course of litigation so long as the
disclosure of such terms and conditions are
restricted in the same manner as is the confidential
information of other litigating parties and so long
as (a) the restrictions are embodied in a
court-entered Protective Order and (b) the
disclosing party
15
informs the other party in writing at least
ten (10) days in advance of the disclosure; or
6.10.5. in confidence to legal counsel, accountants, banks
and financing sources and their advisors solely in
connection with complying with financial
transactions.
The parties shall cooperate in preparing and releasing an
announcement, if any, relating to this Agreement.
6.11. COMPLIANCE WITH LAWS. Anything contained in this Agreement to the
contrary notwithstanding, the obligations of the parties hereto
and of the Subsidiaries of the parties shall be subject to all
laws, present and future, of any government having jurisdiction
over the parties hereto or the Subsidiaries of the parties, and to
orders, regulations, directions or requests of any such
government.
6.12. FORCE ▇▇▇▇▇▇. The parties hereto shall be excused from any
failure to perform any obligation hereunder to the extent such
failure is caused by war, acts of public enemies, strikes or other
labor disturbances, fires, floods, acts of God, or any causes of
like or different kind beyond the control of the parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by duly authorized officers or representatives on the date below
written.
INTEL CORPORATION Silicon Image, Inc.
By: /s/ ▇▇▇ ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇. ▇▇▇
---------------------------- ---------------------------------
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇. ▇▇▇
---------------------------- ---------------------------------
Printed Name Printed Name
Vice-President and GM GCO CEO
---------------------------- ---------------------------------
Title Title
9/16/98 9/16/98
---------------------------- ---------------------------------
Date Date
[SILICON PAGE TO PATENT LICENSE AGREEMENT BETWEEN
SILICON IMAGE, INC. AND INTEL CORPORATION]
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