"Confidential treatment has been granted or requested with respect to
portions of this exhibit, and such portions have been replaced with "**".
Such confidential portions have been deleted and separately filed with
the Securities and Exchange Commission pursuant to Rule 24b-2."
FRAM LICENSE AGREEMENT
THIS FRAM LICENSE AGREEMENT (the "Agreement"), effective as of the 20 day of
December 1996, is entered into by and between RAMTRON INTERNATIONAL
CORPORATION ("Ramtron"), a Delaware corporation having its principal office at
0000 Xxxxxxx Xxxxx, Xxxxxxxx Xxxxxxx, Xxxxxxxx 00000, XXX, and SAMSUNG
ELECTRONICS CO., LTD. ("SEC"), a Korean corporation having its registered
office at San #24 Nongseo-Ri, Kiheung-Eup, Yongin-City, Kyungki-Do, KOREA.
RECITALS
A. Ramtron is the owner and/or controls certain United States and foreign
patents and patent applications related to the proprietary design, development
and architecture of state-of-the-art ferroelectric semiconductor technology.
B. SEC wishes to obtain from Ramtron, and Ramtron is willing to grant to SEC
a license to said ferroelectric patents and patent applications for use in the
manufacture and sale of licensed products (defined below).
NOW, THEREFORE, in consideration of the recitals and the mutual covenants
contained herein and for good and valuable consideration, the receipt and
adequacy of which are hereby acknowledged, Ramtron and SEC hereby agree as
follows:
ARTICLE 1 - DEFINITIONS
When used in this Agreement, the following terms have the following meanings:
1.1 "Dollars" or "$" means the United States currency unless otherwise
specified.
1.2 "Effective Date" means the date of approval of this Agreement by the
Korean Government.
1.3 "FRAM Technology" means that certain thin-film ferroelectric technology
developed and/or owned by Ramtron, the patents and patent applications to
which Ramtron has the right to grant a license to SEC without payment of any
compensation to third parties except its employees, and which consist of
technology pertaining to the manufacture and production of nonvolatile, random
access semiconductor memory devices that utilize binary polarization states on
the hysteresis curve of ferroelectric material.
1.4 "Licensed RF/ID Products" means a device using FRAM Technology and/or
Ramtron's Improvements and/or other memory, and embedded with RF/ID analog
circuitry in a single chip ("RF/ID Products").
1.5 "Licensed FRAM Products" means nonvolatile ferroelectric semiconductor
memory devices with no density limitation, whether in standard or embedded
form, but which specifically excludes RF/ID Products.
1.6 "Ramtron Intellectual Property Rights" ("Ramtron IPR") means all claims
of all United States and foreign patents and patent applications, their
continuations, divisions and reissues in all countries of the world relating
to FRAM Technology and/or Ramtron's Improvements owned and/or controlled by
Ramtron and which are created or have filing dates prior to the date of
expiration or termination of this Agreement, and which Ramtron has the right
to grant a license to SEC hereunder without payment of any compensation to
third parties except its employees as of the Effective Date or thereafter
during the term of this Agreement.
1.7 "Ramtron's Improvements" means United States and foreign patent and
patent applications, their continuations, divisions and reissues to all
improvements, enhancements and developments to the FRAM Technology made by
Ramtron and owned and/or controlled by Ramtron during a term not exceeding a
period of ten (10) years after the first commercial sale by SEC of Licensed
FRAM Products or Licensed RF/ID Products. Ramtron Improvements shall not
include any such improvements, enhancements, and developments if Ramtron is
prohibited from making the license to same available to SEC pursuant to any
judicial order or proceeding.
1.8 "SEC's Improvements" means all improvements, enhancements and
developments to the FRAM Technology made by SEC, independent of Ramtron,
during a term not exceeding a period of ten (10) years after the first
commercial sale by SEC of Licensed FRAM Products or Licensed RF/ID Products.
SEC's Improvements shall not include any such improvements, enhancements, and
developments if SEC is prohibited from making the license to same available to
Ramtron pursuant to any judicial order or proceeding.
1.9 "Joint Improvements" means all improvements, enhancements and
developments to the FRAM Technology made jointly by the parties hereto during
the term of this Agreement, should the parties choose to collaborate on
certain aspect of ferroelectric design and/or development, where at least one
(1) employee each from both Ramtron and SEC is involved in such improvements,
enhancements and developments.
1.10 "Joint Patent Rights" means the patents where the claimed invention is
developed as a Joint Improvement by at least one (1) employee each from
Ramtron and SEC during the terms of this Agreement. The Parties shall jointly
own such Joint Patent Rights with each party having an undivided equal
ownership in such Patent.
1.11 "Net Sales" means the total of all gross amounts received by SEC with
regard to the sale or other transfer of Licensed FRAM Products and Licensed
RF/ID Products for value accounted for in accordance with generally accepted
accounting principles, less costs of packing, transportation, shipping or
insurance incident to such transportation and shipping charges, excise or
other taxes and customs duties and allowances for actual returns, if any.
Should SEC sell Licensed FRAM Products and/or Licensed Ferroelectric RF/ID
Products in combination with other components or equipment, then the
calculation of Net Sales shall be based on the price normally charged by such
party for Licensed FRAM Products and/or Licensed RF/ID Products when
separately invoiced or priced or if no such separately invoiced or priced
sales of such Licensed FRAM Products and/or Licensed RF/ID Products have been
made, then the calculation of Net Sales shall be based on the price which SEC
would charge for such Licensed FRAM Products and/or Licensed RF/ID Products in
an arm's-length commercial sale transaction for cash; provided, however, that
in either case such price shall be reduced by the amount of any percentage
discount applicable to the transaction in which such Licensed FRAM Products
were sold, used or otherwise transferred.
1.12 "Technology License" has the meaning set forth in Section 2.1.
1.13 "Royalty Period" means the period of three (3) months ending on the last
day of March, June, September and December of each year this Agreement is in
effect following the expiration of the immediately preceding Royalty Period.
1.14 "Royalty Year" means the calendar year.
1.15 "Licensed Trademark" means Ramtron's trademark, "FRAM."
1.16 "Subsidiary" means a corporation or other entity of which more that
fifty percent (50%) of the outstanding stock or other equity interest entitled
to vote for the election of directors or equivalent governing body is now or
hereinafter controlled, directly or indirectly, by a party, but such
corporation or other entity shall be deemed to be a Subsidiary only so long as
such ownership exists.
ARTICLE II - TECHNOLOGY LICENSE
2.1 Grant of License:
2.1.1 Ramtron hereby grants, subject to the payments and reporting
provisions of Article 3 and the other provisions of this Agreement, to SEC and
SEC's Subsidiary a worldwide, perpetual, nonexclusive, nontransferable,
nonsublicensable, right and license to use the Ramtron IPR and Ramtron
Improvements in connection with the sale of Licensed FRAM Products and
Licensed RF/ID Products thereto, but only for the development, manufacture,
make, sale, use, lease and transfer and other disposition of value of Licensed
FRAM Products and Licensed RF/ID Products. This Technology License may not be
used by SEC for any purpose other than those specifically stated in this
Section 2.1.
(a) Exception to Limitation of Use. Ten (10) years after the
Effective Date SEC may utilize those Ramtron patents having an issue date or
application date earlier than the Effective Date without limitation to use.
SEC use of Ramtron patents having an issue date or application date later than
the Effective Date will be limited to the purposes specifically stated in this
Section 2.1.
(b) Ramtron Proprietary Intellectual Property. All Ramtron IPR
and Ramtron Improvements licensed to SEC hereunder shall remain the sole and
exclusive property of Ramtron.
(c) Exception to License. The Technology License shall
specifically exclude a sublicense of Symetrix Y-1 based technology. ** SEC
shall ** of the ** FRAM Technology from Ramtron without the
requirement for SEC ** provided, however, that (i) SEC agrees to comply
with all of the terms and conditions ** of ** rights and (ii) SEC
expressly acknowledges that until such time SEC ** to have a ** based
technology. Ramtron ** and is free to ** as may be agreed between
Ramtron ** at any time and from time to time.
2.1.2 Ramtron hereby grants to SEC and SEC's Subsidiary, subject to the
timely payments set forth herein and compliance with all of the other terms
and conditions of this Agreement, a worldwide, perpetual, non-exclusive, non-
transferable, non-sublicensable, license and right to use the Licensed
Trademark solely on FRAM Products and/or Licensed RF/ID Products which are
(i) manufactured by or for SEC and (ii) distributed and/or sold under SEC's
name.
(a) SEC shall not use the Licensed Trademark in any country
unless and until SEC has given at least ninety (90) days prior written notice
to Ramtron. During such ninety (90) day period Ramtron may, where it deems
appropriate in its sole discretion, effect recordation of SEC as a registered
user of such xxxx in such country and/or recordation of the Agreement or other
license agreements which meet appropriate local standards with appropriate
authorities. SEC shall assist Ramtron as appropriate in carrying out such
recording process.
(b) To defray Ramtron's expenses for charges imposed on Ramtron
by such country and by local associates for the recording activities
contemplated in Sub-section 2.1.2 (a), Ramtron shall invoice SEC a recordal
fee per country in which recordal is effected. Such invoice shall be payable
to Ramtron within thirty (30) days after receipt of the applicable invoice.
Upon the termination or expiration of this Agreement or SEC's right to use the
Licensed Trademark in any country to which this paragraph applies, Ramtron and
SEC shall cancel the registered user registration or licensed recordal in such
country, and to this end SEC agrees to execute any documents that may be
necessary to restore Ramtron to its former position in all respects.
2.1.3 SEC shall grant to Ramtron a royalty-free, nonexclusive,
nontransferable, nonsublicensable, worldwide and perpetual license to use any
and all SEC's Improvements to design, develop, manufacture, make, use, lease,
sell, transfer or otherwise dispose of ferroelectric memory products.
(a) SEC Proprietary Information. All Proprietary Information and
technology, including SEC's Improvements, provided or disclosed by SEC to
Ramtron hereunder and all inventions or technologies made or developed solely
by SEC in the performance of this Agreement shall remain the property of SEC.
2.2 Status Review Meeting. During the term of this Agreement each party
hereto shall, from time to time but not less than at least twice each year,
dispatch its pertinent personnel and/or counsel to the facilities of the other
party for the purpose of expediting the manufacture and sale of Licensed FRAM
Products and/or Licensed RF/ID Products by SEC ** of Licensed FRAM
Products and/or Licensed RF/ID Products by SEC. Each party hereto shall bear
its own costs and expense for such meetings. ** .
ARTICLE III - COMPENSATION
3.1 License Fees. In consideration of the license to the Ramtron IPR and
Ramtron's Improvements made available to SEC during the term of this
Agreement, SEC shall pay to Ramtron, net of any Korean or other applicable
withholding tax, the following in accordance with the schedule described
below:
3.1.1 Lump Sum Payment:
(a) License Execution Fee. Within thirty (30) days after the
Effective Date of this Agreement, SEC shall pay Ramtron ** .
3.1.2 Lump Sum Payment:
(a) Paid-Up License Fee. Within thirty (30) days after the first
commercial sale of Licensed FRAM Product and/or Licensed RF/ID Product, or
within one (1) year following the Effective Date of this Agreement, whichever
occurs first, SEC shall pay Ramtron ** .
3.2 Royalty Payments.
3.2.1 Licensed FRAM Products. SEC shall pay Ramtron a royalty on all
Licensed FRAM Products based upon and/or which use the FRAM Technology and/or
Ramtron's Improvement and sold by SEC commencing upon the first commercial
sale of Licensed FRAM Products by SEC. ** . The start
date for the royalty rate schedule is the date of the first commercial sale of
Licensed FRAM Products by SEC **
(hereinafter, "Royalty Schedule Start Date"), according to the following
schedule:
(i) ** of the net sales by SEC from the sale or
other transfer for value of Licensed FRAM Products **
after the Royalty Schedule Start Date.
(ii) ** of the net sales by SEC from the sale or
other transfer for value of Licensed FRAM Products **
after the Royalty Schedule Start Date.
(iii) ** of net sales by SEC for the sale or other transfer
for value of Licensed FRAM Products ** after the Royalty Schedule Start
Date.
All Licensed FRAM Products manufactured and/or sold by SEC after expiration of
such ten (10) year period shall no longer be subject to any royalty payment to
Ramtron.
3.2.2 Licensed RF/ID Products. SEC shall pay Ramtron a royalty on all
Licensed RF/ID Products sold by SEC commencing upon the first commercial sale
of Licensed RF/ID Products by SEC. The royalty rate for Licensed RF/ID
Products is ** of the net sales by SEC from the sale or other
transfer for value of Licensed RF/ID Products for life of the governing
Ramtron IPR.
3.3 Payment and Certification of Royalties by SEC. All payments for each
Royalty Period under this Agreement is made, on or before April 30, July 31,
October 31 and January 31, immediately after the preceding Royalty Period, by
SEC in the United States dollars through wire transfer directly to Ramtron's
bank account: Colorado National Bank, 1125 Garden of the Xxxx Xxxx, Xxxxxxxx
Xxxxxxx, Xxxxxxxx 00000, Bank Routing Number-000000000, Account Number-
127100003459, Account Name-Ramtron International Corporation. As for Royalty
Payments under Section 3.2 above, SEC shall, on or before April 30, July 31,
October 31 and January 31 in each year during which royalties are payable
under this Agreement, furnish to Ramtron a statement, signed by the
appropriate SEC authority, concerning the Net Sales by or on behalf of SEC of
FRAM Products and/or Licensed RF/ID Products sold by or on behalf of SEC, its
Subsidiaries or SEC Third Party during the preceding Royalty Period in
sufficient detail to permit the computation of the royalties due for such
Royalty Period.
3.4 Records. SEC shall keep true and accurate records, files and books of
accounts reasonably necessary in accordance with generally accepted accounting
principles to ascertain the amount of the royalties payable to Ramtron under
Section 3.2 above for three (3) years from the end of each reporting Royalty
Period.
3.5 Audit. Ramtron shall have the right, through a certified independent
public accountant of international reputation with a branch office in Korea to
be designated by Ramtron and reasonably acceptable to SEC, to make an
examination and audit, not more frequently than once per year, during normal
business hours acceptable to SEC, of SEC's records, files and books of
accounts as may contain information bearing upon the amounts due to Ramtron
under Section 3.2 above. Prompt adjustment shall be made between the parties
for any underpayments or overpayments disclosed by such audit. In the event
that any royalty report(s) understates in total the royalties due to Ramtron
for the relevant audited Royalty Period(s) by more than five percent (5%), SEC
shall pay any shortfall and, upon request of Ramtron, reimburse Ramtron for
the cost of such audit. Ramtron assures SEC that said public certified
accountant's report to Ramtron shall provide only the amount of royalties
actually payable to Ramtron and any information in said SEC's records, files
and books of accounts shall be treated as confidential by said certified
public accountant and shall not be disclosed to Ramtron or to any third party.
ARTICLE IV - CONFIDENTIALITY
4.1 Confidentiality. During the term of this Agreement and for a period of
five (5) years thereafter, the parties hereto agree that all data, drawings,
materials, prototypes, designs, processes, procedures, formulae, improvements,
financial data, marketing information, technical information, engineering
data, manufacturing specifications and other trade secrets and confidential
information disclosed by one party to the other, which is on written, graphic,
machine-readable or other tangible form and is marked "Confidential Data,"
which relates to FRAM Technology, Ramtron IPR, Ramtron's Improvements, SEC's
Improvements, Licensed FRAM Products or Licensed RF/ID Products (hereinafter
"Confidential Data"), shall be regarded and treated by the parties in
strictest confidence and shall not be disclosed to any third party without the
express written consent of the disclosing party. The parties hereto further
acknowledge and agree that all information disclosed to the other party
hereunder and all other information to which the other party may have access
by virtue of any such disclosure shall be presumed by the parties to be
Confidential Data, unless the disclosing party shall advise the receiving
party that any such item or items need not be regarded or treated as
Confidential Data. However, the parties hereto confirm that confidential data
may be used to the extent necessary for implementing any of the recording
party's activities to be contemplated under this Agreement.
4.2 Exclusions. Confidential Data shall not include: (i) information which
is in the possession of the recipient at the time it is received from the
disclosing party, where the possession of such information can be established
from documentation generated prior to the disclosure of such information by
the disclosing party; (ii) information which is in the public domain through
no act or omission of the parties hereto or their respective representatives;
(iii) information lawfully received from others who are not under restrictions
similar to those identified in Section 5.1 hereof or who are not in breach of
any confidentiality agreement with Ramtron or SEC; (iv) information that is
developed or derived by the recipient independent of any disclosure hereunder;
or (v) information of which five (5) years elapses from the disclosure by the
disclosing party. Also, the parties hereto may disclose confidential data to
(a) any government or judicial body having jurisdiction to request and to
review the same, and (b) legal counsel representing the parties hereto.
4.3 Marking of Documents and Materials. In furtherance, but not in
limitation, of the provisions of Section 4.1, each party shall use its
reasonable endeavors to cause all written materials and other physical
documents and materials of all types relating to or containing Confidential
Data to be plainly marked to indicate the secret, proprietary and confidential
nature thereof and to prevent the unauthorized use or reproduction thereof,
directly or indirectly.
4.4 Return of Confidential Data. Within fourteen (14) days following a
request, after the expiration or termination of this Agreement, by the
disclosing party, the receiving party shall return any Confidential Data and
any copies, recordings or transcriptions thereof, which are no longer required
to be used for purposes of this Agreement.
4.5 Indemnification. Without limiting any other right, remedy or benefit
occurring to either party under this Agreement or by law, but subject to the
limitations set forth in Article V, each party shall indemnify the other party
fully for all damages caused by any unauthorized disclosure or use of any
information intended to be kept secret, confidential or proprietary in
accordance with this Article IV, by such other party or its representatives,
employees, agents, consultants and sublicensees.
ARTICLE V - COVENANTS, WARRANTY AND LIMITED INDEMNIFICATION
5.1 Covenants, Representations and Warranties of Ramtron. Ramtron hereby
represents and warrants that Ramtron's execution of this Agreement has been
duly authorized by all necessary corporate action, including, with limitation,
approval of Ramtron's board of directors in order for this Agreement to
constitute a legally binding and enforceable obligation of Ramtron.
5.2 Covenants, Representations and Warranties of SEC. SEC hereby represents
and warrants that SEC's execution of this Agreement has been duly authorized
by all necessary corporate action, including, with limitation, approval of
SEC's board of directors, and constitutes a legally binding and enforceable
obligation of SEC.
5.3 Ramtron Warranty. Ramtron represents and warrants that it has all right,
title and interest to its FRAM Technology and Ramtron's Improvements disclosed
hereunder and/or Ramtron's IPR licensed hereunder to SEC, and that it has the
right to grant to SEC the licenses granted herein.
5.4 SEC Warranty. SEC represents and warrants that it has all right, title
and interest to SEC's Improvements disclosed hereunder to Ramtron, and that it
has the right to grant to Ramtron the licenses granted as a result hereof.
5.5 Ramtron and SEC Representations. Ramtron represents and warrants in
connection with the Ramtron IPR and/or Ramtron's Improvement that Ramtron
shall use its best efforts to defend Ramtron's IPR and/or the Ramtron
Improvements against claims asserted by a third party that the Ramtron's IPR
is invalid or unenforceable. SEC shall use its best efforts to defend its
patents against claims asserted by a third party that the SEC's Improvements
are invalid or unenforceable. SEC and Ramtron shall cooperate and use their
best efforts to defend any Joint Patent Rights developed under this Agreement
against claims asserted by a third party that Joint Patent Rights are invalid
or unenforceable. SEC and Ramtron shall consult with each other regarding
these matters.
5.6 Notice of Infringement. Each of Ramtron and SEC shall promptly advise
the other in writing of any claim, action, lawsuit, or proceeding threatened,
made or brought against them or either of them for infringement of a patent
issued to a third party, or for violation of a third party's patent, trade
secret or other intellectual property right based in any instance upon
(i) SEC's use of the Ramtron IPR and/or Ramtron's Improvements or SEC's sale,
lease, use or distribution of Licensed FRAM Products and/or Licensed RF/ID
Products or (ii) Ramtron's use of SEC's Improvements or Ramtron's sale, use or
distribution of ferroelectric memory products, which in any way incorporate
SEC's Improvements.
5.7 Infringement Assistance Provided SEC. In the event any claim or action
is brought by a third party against SEC based on alleged infringement by
Licensed FRAM Products and/or Licensed RF/ID Products manufactured by SEC
using Ramtron IPR and/or Ramtron's Improvements licensed to SEC hereunder, of
any patent or other intellectual property rights owned by any third party,
then Ramtron shall use its best efforts to provide SEC with (i) reasonable
assistance in connection with the defense and settlement of such claim or
action, including all the necessary information related to the infringing
technology, and (ii) reasonable consultation for SEC's achievement of viable
alternative solution to avoid such infringement issue.
5.8 Infringement Assistance Provided Ramtron. In the event any claim or
action is brought by a third party against Ramtron based on alleged
infringement by ferroelectric memory products manufactured by Ramtron using
SEC's Improvements provided to Ramtron thereunder, of any patent or other
intellectual property rights owned by any third party, then SEC shall use its
best efforts to provide Ramtron with (i) reasonable assistance in connection
with the defense and settlement of such claim or action, including all the
necessary information related to the infringing technology, and
(ii) reasonable consultation for Ramtron's achievement of viable alternative
solution to avoid such infringement issue.
5.9 Non-assertion Status. Ramtron agrees that it, its successors and
assignees shall not assert a claim of infringement of its intellectual
property rights licensed by Ramtron with respect to any other products made by
SEC, provided that SEC does not intentionally use such non-assertion status
granted by Ramtron to design, make, and sell devices which compete with
ferroelectric memory products manufactured by Ramtron or by any of Ramtron's
alliance partners, and/or which utilize substantial portions of Ramtron
intellectual property rights.
5.10 Ancillary Use Of The Licensed Trademark. Subject to the terms and
conditions of this Agreement, SEC is further authorized to use the Licensed
Trademark in connection with marketing materials related to FRAM Products
and/or Licensed RF/ID Products for purposes of publicity, materials, signs,
product brochures, cartons and other forms of advertising. SEC shall promptly
provide Ramtron with specimens of marketing materials requested in writing by
Ramtron in order to monitor consistency of such materials with SEC's
obligations under this Agreement.
5.11 Protection Of Licensed Trademark. SEC agrees not to challenge, oppose,
petition to cancel or otherwise attack the Licensed Trademark and Ramtron's
ownership thereof anywhere in the world. SEC also agrees, subject to the terms
and conditions of this Agreement, that any and all rights that may be acquired
by the use of the Licensed Trademark by SEC shall inure to the sole benefit of
Ramtron. Except as provided in this Agreement, SEC shall not use the Licensed
Trademark as all or part of any corporate name, tradename, trademark, service
xxxx, certification xxxx, collective membership xxxx or any other designation
confusingly similar to the Licensed Trademark. If any application for
registration is or has been filed by or on behalf of SEC in any country and
relates to any xxxx, which in the reasonable opinion of Ramtron, is
confusingly similar, deceptive or misleading with respect thereto, or dilutes
or in any way damages the Licensed Trademark, SEC shall at Ramtron's request
abandon all use of such xxxx and any registration or application for
registration thereof and shall reimburse Ramtron for all costs and expenses of
any successful opposition or related legal proceeding, including attorneys'
fees, initiated by Ramtron or its authorized representatives.
In the performance of this Agreement, SEC shall comply with all applicable
laws and regulations pertaining to the proper use and designation of
trademarks in all countries of the world. Should SEC be, or become, aware of
any applicable laws or regulations which are inconsistent with the provisions
of this Agreement, SEC shall promptly notify Ramtron of such inconsistency.
Ramtron and SEC shall attempt to resolve such inconsistency. In the event no
resolution is achieved and performance of such inconsistent provision is not
waived, and provided Ramtron in good faith determines that such inconsistency
threatens its legal rights in and to the Licensed Trademark or may subject it
to liability for damages or penalties to a third party or government entity or
is otherwise injurious to Ramtron, then Ramtron may terminate the license and
rights granted hereunder with respect to the use of the Licensed Trademark in
the country whose laws and regulations are inconsistent with the provisions of
this Agreement.
5.12 THIS ARTICLE V STATES RAMTRON'S AND SEC'S TOTAL LIABILITY AND
RESPONSIBILITY TO EACH OTHER, AND SEC'S AND RAMTRON'S SOLE REMEDY FOR ANY
ACTUAL OR ALLEGED INFRINGEMENT OF ANY PATENT OR PATENT APPLICATION BY THE
RAMTRON IPR, THE RAMTRON IMPROVEMENTS OR SEC'S IMPROVEMENTS LICENSED
HEREUNDER, THE LICENSED FRAM PRODUCTS AND/OR LICENSED FERROELCTRIC RF/ID
PRODUCTS, OR ANY PART THEREOF. THIS ARTICLE V IS IN LIEU OF AND REPLACES ANY
OTHER EXPRESSED, IMPLIED OR STATUTORY WARRANTY AGAINST INFRINGEMENT.
ARTICLE VI - LIMITATIONS ON LIABILITY
IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY SPECIAL, CONSEQUENTIAL,
INDIRECT OR INCIDENTAL DAMAGES, HOWEVER CAUSED, ON ANY THEORY OF LIABILITY AND
WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES,
ARISING IN ANY WAY OUT OF THIS AGREEMENT OR THE TECHNOLOGY OR PRODUCTS
LICENSED, PATENTS AND/OR PATENT APPLICATIONS LICENSED PURSUANT TO THIS
AGREEMENT.
ARTICLE VII - TERM AND TERMINATION
7.1 Term. This Agreement shall become effective on the Effective Date and
shall remain in full force, unless earlier terminated in accordance with the
provisions of this Article VII.
7.2 Termination Without Cause. Each party may terminate this Agreement
without further liability by giving a thirty (30) day written notice to the
other party upon or after:
7.2.1 The filing by the other party of a voluntary petition in
bankruptcy or insolvency;
7.2.2 Any adjudication that the other party is bankrupt or insolvent;
7.2.3 The appointment of a receiver or trustee for all or substantially
all of the property of the other party;
7.2.4 Any assignment or attempted assignment by the other party for the
benefit of creditors;
7.2.5 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; or
7.2.6 The merger or acquisition of the other party into or by, or the
sale of all or substantially all of the other party's assets to a third party
corporation or other entity, unless such merging or acquiring corporation or
entity expressly agrees to assume (i) the other party's obligation under this
Agreement and (ii) other such terms and conditions, as may be reasonably
imposed by such party.
7.3 Termination by Default. If either party defaults in the performance of
any material obligations hereunder, and if any such default is not corrected
within sixty (60) days after the defaulting party receives written notice of
such default from the non-defaulting party, then non-defaulting party, may, at
its option and in addition to any other remedies it may have, terminate this
Agreement.
7.4 Survival. Upon expiration or termination of this Agreement, all rights,
privileges and obligations hereunder shall cease, provided, however that:
7.4.1 In the event that this Agreement is terminated under Section 7.2
above, any and all licenses previously granted hereunder to the terminating
party which are in force on the termination date shall survive such
termination and continue, while any and all licenses previously granted
hereunder to the other party (i.e., bankrupt and/or insolvent party) which are
in force on the termination date shall terminate immediately upon the
termination date.
7.4.2 In the event this Agreement is terminated under Section 7.3 as a
result of a Ramtron default, which is not corrected within the sixty (60) day
period provided in Section 7.3 above, any and all licenses granted to SEC
hereunder shall survive and continue after such termination, subject to the
provisions of Articles IV, V and VII.
7.4.3 In the event that this Agreement is terminated under Section 7.3,
as a result of a SEC default which is not corrected by SEC within the sixty
(60) day period provided in Section 7.3 above, then any and all license rights
granted to SEC hereunder shall automatically terminate on the date of such
termination, and SEC shall return to Ramtron any and all technical documents
and data that may have been furnished by Ramtron to SEC under this Agreement;
provided, however, nothing in this Subsection 7.4.3 shall be construed to
relieve SEC of its liability to pay Ramtron royalties on all FRAM Products and
Licensed RF/ID Products sold, used or otherwise transferred by SEC prior to
or after the date of such termination in accordance with this Agreement.
ARTICLE VIII - GENERAL TERMS AND CONDITIONS
8.1 Notices. All notices and requests required or authorized hereunder,
shall be given in writing by registered or certified mail, postage prepaid,
addressed as follows unless one party notifies the other in writing of any
changes in such address:
If to SEC:
Samsung Electronics Co., LTD.
San #24 Nongseo-Ri, Kiheung-Eup
Yougin-City, Kyungki-Do, KOREA
For technical matters:
Ph.D. Tae-Earn Shim
Executive Director
Technology Development Team
Semiconductor Business, SEC
Telephone: 00-0-000-0000
Facsimile: 00-000-000-0000
For non-technical matters:
Mr. Sang-Xxxx Xxx
Executive Director
Technology Planning Team
Semiconductor Business, SEC
Telephone: 00-0-000-0000
Facsimile: 00-0-000-0000
If to Ramtron:
Ramtron International Corporation
0000 Xxxxxxx Xxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxxx 00000
Attention: President
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
8.3 Arbitration. All disputes, controversies or differences which may arise
between the parties in relation to or in connection with this Agreement shall
be settled by amicable negotiation by both parties. If both parties are
unable to settle such disputes, then such disputes shall be referred to and
finally settled by arbitration under the Rules of Conciliation and Arbitration
of the International Chamber of Commerce. The arbitration shall be conducted
in English and take place in Korea if it is initiated by Ramtron or in Denver,
Colorado, USA if it is initiated by SEC. The award of arbitration shall be
final and binding upon both parties.
8.4 Export Control. The parties agree that no technical information,
including software, furnished hereunder or any direct products thereof is
intended to or will be exported or re-exported, directly or indirectly, to any
destination restricted or prohibited by export control regulations of the USA
and/or Korea, including the US Export Administration Regulations, without the
prior written authorization from the appropriate governmental authorities.
8.5 Governing Law. This Agreement and the performance of the parties
hereunder shall be construed in accordance with and governed by the laws of
the State of New York, USA, without giving effect to the principles of
conflicts of laws.
8.6 Severability. In the event that one or more provision(s) of this
Agreement is or becomes or is deemed invalid, illegal or unenforceable in any
respect, such invalidity, illegality or unenforceability shall not effect any
other provision of this Agreement, and this Agreement shall be construed as if
such invalid, illegal or unenforceable provision(s) had not been contained
herein.
8.7 Waiver. The delay or failure of a party to exercise any right or option
hereunder or failure to enforce any provision herein shall not impair any such
right or option nor shall it constitute a waiver thereof or acquiescence
thereto unless explicit written notice is provided.
8.8 Assignment. Neither this Agreement nor any right or obligation hereunder
may be assigned to any third party by either party hereto, nor shall the same
inure to the benefit of any trustee in bankruptcy, receiver or other successor
of either party, without the prior written consent of the other party.
8.9 Remedies Cumulative. Except as explicitly excluded or limited, all
remedies, either under this Agreement or by law or otherwise afforded to any
party, shall be cumulative and not exclusive or alternative and shall be in
addition to all remedies given hereunder or now or hereafter existing, at law
or in equity, by statute or otherwise. The election of any one or more
remedies by any party shall not constitute a waiver of the right to pursue
other available remedies.
8.10 Force Majeure. Neither party to this Agreement shall be responsible for
delay or failure in performance caused by any governmental act, law,
regulation, order or decree, by communication line or power failures beyond
its reasonable control, or by fire, flood or other natural disasters, nor
shall any such delay or failure be considered to be a breach of this
Agreement. In any such event, performance shall take place thereafter as soon
as is reasonably feasible.
8.11 Publicity. The parties hereto agree that the terms and conditions of
this Agreement shall be confidential to any third party and that if necessary,
all notices to third parties and all publicity concerning the terms and
conditions of this Agreement shall be jointly planned and coordinated by and
between the parties. Neither of the parties shall act unilaterally in this
regard without the prior written approval of the other party. It is expected
that the parties will mutually agree upon a press release which will be issued
after the Effective Date.
8.12 Independent Contractor. The parties are independent contractors.
Nothing contained herein or done pursuant to this Agreement shall constitute
the parties as entering into a joint venture or partnership, or shall
constitute either party as the agent of the other party for any purpose or in
any sense whatsoever.
8.13 Headings. The section headings appearing in this Agreement are inserted
only as a matter of convenience and in no way define, limit, construe or
describe the scope or intent of such section, or in any way affect this
Agreement.
8.14 Press Release. The parties shall mutually agree upon a press release
and its contents, which shall be issued within five (5) days following
execution of this Agreement.
8.15 Entire Agreement. This Agreement sets forth the entire agreement and
understanding between the parties as to the subject matter hereof and
supersedes all prior agreements, negotiations or understandings with respect
thereto. This Agreement may not be changed, altered or amended in any manner,
orally or otherwise, except in writing signed by duly authorized officers or
representatives of both parties hereto.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed in
duplicate by their duly authorized representatives.
SAMSUNG ELECTRONICS CORPORATION
By: /S/ Xxxxxxxx Xxx
----------------
Xxxxxxxx Xxx
Title: Executive Director
Date: December 19, 1996
RAMTRON INTERNATIONAL CORPORATION
By: /S/ Xxxx X. Xxxxx
-----------------
Xxxx X. Xxxxx
Title: President
Date: December 2, 1996
