[*] 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.
Exhibit 10.47
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 0000 Xxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000
("WEITEK") and MIPS Computer Systems, Inc., a California corporation with a
principal place of business at 000 xx Xxxxxx Xxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000
("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 XXXXX 0 XXXXXXXXXXXX XXXXXXX - XXXXXXXXX XXXX. 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 Xxxxx 0 Xxxxxxxxxxxx Xxxxxxxxx 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 Xxxxx 0 Xxxxxxxxxxxx Xxxxxxx-Xxxxxxxxx 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 $2,000,000, $1,000,000 of which shall constitute
prepaid royalties and such $1,000,000 shall be payable within forty-five (45)
days of the Effective Date, $1,000,000 shall constitute a non-refundable
licensee fee, in payment of which MIPS shall accept $500,000 in engineering
services from WEITEK and a credit in an amount of $500,000 from WEITEK which
shall be applied pro-rata as payment against $1,500,000 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 $2,000 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 $1,500,000 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 $500,000 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 $1,000,000 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. The above fee
includes Lineal Descendants to the same Generation releases. 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 $1,000,000 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 othecr 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 may develop
WEITEK proprietary modifications to MIPS Technology. WEITEK, in its discretion,
may disclose to MIPS summary technical information regarding any such
modifications. 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 modifications 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
10.2.2 MIPS shall use reasonable best efforts to:
10.2.2.1 procure the right to continue using the unmodified MIPS
Technology,
10.2.2.2 modify the MIPS Technology so that becomes
non-infringing, or
10.2.2.3 replace the unmodified MIPS Technology, or infringing
portions thereof, with reasonably equivalent non-infringing products.
10.2.3 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:
10.2.3.1 procure the right to continue using the process,
modification, marking branding or use in combination 10.2.3.2 modify the
process, modification, marking, branding or use in combination so that it
becomes non-infringing, or
10.2.3.3 replace the process, modification, marking, branding or
use in combination, or infringing portions thereof, with reasonably equivalent
non-infringing products or processes.
10.2.4 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\ Xxxx Xxxxxx By: \s\
Title: V.P. Development Title: Vice President and
Treasurer
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
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.
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.
5.5 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. Xxxxxx By: \s\ Xxxxxx X. Xxxxxxx
Name: R.I.S. Xxxxxx Name: Xxxxxx X. Xxxxxxx
Title: President Title: President
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.
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\ Xxxx Xxxxxxx By: \s\ Xxxxxx X. Xxxxxxx
Name: Xxxx Xxxxxxxx Name: Xxxxxx X. Xxxxxxx
Title: President, MTI Title: President
Date: 3/31/97 Date: 31 March 97
