Exhibit 10.22
ISRC / SILICON IMAGE
RESEARCH AND DEVELOPMENT AGREEMENT
This Research and Development Agreement (the "AGREEMENT") is made this 1st
day of January, 2000 (the "EFFECTIVE DATE") between Silicon Image, Inc., a
California corporation with its principal place of business at 00000 Xxxx
Xxxx, Xxxxxxxxx, Xxxxxxxxxx 00000 ("SII") and the Inter-University
Semiconductor Research Center of Seoul National University, located in Seoul,
Korea ("ISRC"). (As used herein, "PARTY" or "PARTIES" will refer to SiI,
ISRC, or both, as the case may be).
1. OBJECTIVE.
SiI requests that ISRC conduct research and development on
"Multi-Gigabit Serial Links", Integrated Network and Host Interface
Functions with Multi-Gigabit Serial Link and Embedded DRAM, and on
"1000BASE-T Gigabit Ethernet PHY Chip." The specific objectives of the
research to be conducted are described in the research project proposal
attached as Exhibit A (the "PROJECT").
2. PERIOD OF THE RESEARCH.
This Agreement will provide funding for research activities for a
period of two (2) years commencing January 1, 2000 and ending December
31, 2001.
3. OBLIGATIONS BY ISRC.
3.1. PROJECT LEADER. ISRC will designate Xxxxxxxxx Xxxx-Xxxxx Xxxxx
as the faculty member in charge of the Project. Xx. Xxxxx will
be the primary technical and university contact for SiI for
all technical and administrative issues related to the Project
for the Term of this Agreement ("PROJECT LEADER"). Should
Xxxxxxxxx Xxxxx'x employment with ISRC cease, for any reason,
SiI reserves the right to designate a new Project Leader, if
SiI so desires.
3.2. USE OF RESEARCH FUNDS. The research funds provided by SiI to
ISRC will be under the sole discretion of the Project Leader
and will be used to cover expenses directly or indirectly
related to the Project. ISRC will use its best efforts to
attain the specific objectives of the Project. Should funds be
used to expand ISRC's facilities to perform the Project, ISRC
agrees to provide office and laboratory space equal in value
to the funds utilized to expand ISRC's facilities. The office
and laboratory space will be provided and solely reserved for
SiI to utilize at its discretion for 10 years. In no event
will more than 50% of the research funds be used to expand
ISRC's facilities, without prior written approval from SiI. A
complete accounting of the use of the research funds and
expense reports with receipts for any equipment purchased must
be provided in the final report, described below.
3.3. PROGRESS REPORTS AND SEMINARS
3.3.1. Progress Reports. Within thirty (30) days of the end
of each calendar quarter, ISRC will submit to SiI the
status and accomplishments of all research and
development activities related to the Project ongoing
during the quarter just ended. Within sixty (60) days
after termination of this Agreement, ISRC will submit
a final report to SiI detailing the overall project
history, accomplishments, success and failures of the
Project.
3.3.2. Seminars. At most twice yearly, the Project Leader
will provide SiI with a technical seminar at SiI's
headquarters in California, USA, covering the
research projects undertaken as part of this
Agreement, as well as other research areas of
interest to both Parties. SiI will cover all travel
expenses associated with the seminar for the Project
Leader and up to 3 students, as identified in Exhibit
B, participating in the Project.
3.4. PRODUCTIZATION COOPERATION. The Project Leader will use its
best efforts to support and help SiI in SiI's efforts to
productize the results of the Project, if SiI chooses to do
so. This support and help includes traveling to SiI to provide
technical assistance to SiI's development programs. SiI agrees
to assume all travel expenses associated with such cooperation
and assistance.
4. OBLIGATIONS BY SII.
4.1. PROJECT FUNDING. SiI will provide a total of $1,000,000 to
ISRC to conduct the research and development associated with
the Project. The funding will be paid as follows:
- $125,000 within forty-five (45) days after the signing of
this Agreement;
- $125,000 by June 1, 2000;
- $125,000 by September 1, 2000;
- $125,000 by December 1, 2000;
- $125,000 by March 1, 2001;
- $125,000 by June 1, 2001;
- $125,000 by September 1, 2001;
- $125,000 by December 1, 2001.
5. INTELLECTUAL PROPERTY OWNERSHIP.
All right, title and interest in and to any and all designs,
discoveries, inventions, products or product ideas, research results,
measurement data, computer programs, test or other reports, system, PCB
or semiconductor prototypes, patents rights, rights of priority,
copyrights, moral rights, trade secrets, know-how and other
intellectual property rights recognized in any country or jurisdiction
in the world conceived or developed as part of the Project (the
"INTELLECTUAL PROPERTY") shall at all times be and remain with SiI.
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6. INTELLECTUAL PROPERTY ASSIGNMENT
ISRC represents that to the best of its knowledge, at the Effective
Date, all ISRC faculty (including the Project Leader), employees and
students ("PROJECT STAFF"), have executed invention assignment
agreements or are otherwise under written obligation of assignment
which, inter alia, require the Project Staff to, without further
consideration, in order to carry out the intent of this Agreement, (1)
execute all oaths, assignments, powers of attorney, applications, and
other papers necessary or desirable to fully secure to SiI (either
directly to SiI or indirectly through ISRC to SiI) all rights, titles
and interests in the Intellectual Property; (2) communicate to SiI all
known facts relating to the Intellectual Property; and (3) generally do
all lawful acts that SiI shall consider desirable for securing,
maintaining, and enforcing worldwide patent protection relating to the
Intellectual Property and for vesting in SiI the rights, titles, and
interests of the Intellectual Property. ISRC agrees that during the
Term of this Agreement, it shall use reasonable efforts to ensure that
all additional ISRC faculty, students and employees, who become part of
the Project Staff, will execute ISRC invention assignment agreements
prior to working on the Project covered by this Agreement. ISRC also
agrees that ISRC will execute any assignments, powers of attorney, and
other papers necessary or desirable to fully secure to SiI all rights,
titles and interests in the Intellectual Property. ISRC further agrees
to provide any successor, assign, or legal representative of SiI with
the benefits and assistance provided to SiI hereunder.
7. CONFIDENTIALITY
7.1. DEFINITION. SiI and ISRC acknowledge that, in the course of
performing their obligations hereunder, ISRC will obtain
information and materials from SiI and knowledge about the
SiI's business and technical information, including but not
limited to any information relating to the business, products,
product plans, designs, costs, product prices and names,
finances, marketing plans, business opportunities, personnel,
research, development or know-how, programming techniques,
experimental work, customers, clients and suppliers of SiI and
that all such knowledge, information and materials acquired,
the existence, terms and conditions of this Agreement, and the
Intellectual Property, are and will be the trade secrets of
SiI (collectively "CONFIDENTIAL INFORMATION"). Such
Confidential Information includes without limitation any and
all intermediate and final results and materials from the
Project.
7.2. OBLIGATION. ISRC agrees, for itself, its faculty (including
the Project Leader), students and employees that it will (a)
use SiI's Confidential Information only in connection with
fulfilling its obligations under this Agreement; (b) hold
SiI's Confidential Information in strict confidence and
exercise due care with respect to its handling and protection,
consistent with its own policies concerning protection of its
own Confidential Information of like importance; (c) not
disclose, divulge or publish SiI's Confidential Information
except to such of its responsible faculty, employees and
students who have a bona fide need to know to the extent
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necessary to fulfill ISRC's obligations under this Agreement;
and (d) instruct all such persons not to disclose SiI's
Confidential Information to any third parties, without the
prior written permission of SiI.
7.3. EXCEPTIONS. The obligations set forth in Section 7.2 will not
apply to SiI's Confidential Information which (i) is or
becomes public knowledge without the fault or action of ISRC;
(ii) is received by ISRC from a third party, without
restriction as to use or disclosure; (iii) ISRC can document
was independently developed by it; (iv) is required to be
disclosed pursuant to law, provided ISRC uses reasonable
efforts to give SiI reasonable notice of such required
disclosure; or (v) is or becomes available to ISRC on an
unrestricted basis from SiI.
7.4. NON-DISCLOSURE AGREEMENTS. ISRC represents that to the best of
its knowledge, at the Effective Date, all ISRC faculty
(including the Project Leader), employees and students with
access to the SiI Confidential Information have executed ISRC
non-disclosure agreements or are otherwise under written
obligation of non-disclosure which, inter alia, require such
persons to maintain the confidentiality of Confidential
Information of third parties received by ISRC. ISRC agrees
that during the Term of this Agreement, it shall use
reasonable efforts to ensure that all additional ISRC faculty,
students and employees will execute ISRC non-disclosure
agreements prior to having access to the SiI Confidential
Information or working on the Project covered by this
Agreement. ISRC further agrees to provide any successor,
assign, or legal representative of SiI with the benefits and
assistance provided to SiI hereunder.
8. MODIFYING THE AGREEMENT.
The scope, nature, duration and funding of the Project may be modified
at any time if agreed to in writing by both Parties.
9. TERM AND TERMINATION.
9.1. TERM. This Agreement shall commence on the Effective Date and
shall continue in full force and effect for two (2) years,
terminating on December 31, 2001.
9.2. TERMINATION FOR CAUSE.
9.2.1. Material Breach. If either Party materially breaches
any term or condition of this Agreement and fails to
cure that breach within thirty (30) days after
receiving written notice of the breach, the other
Party shall have the right to terminate this
Agreement any time after the end of such thirty (30)
day period.
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9.3. EFFECTS OF TERMINATION.
9.3.1. Return of SiI Confidential Information. Within thirty
(30) days upon termination of this Agreement for any
reason, ISRC shall, pursuant to SiI's discretion,
either return or destroy all copies of SiI's
Confidential Information provided hereunder in ISRC's
possession or control. Upon request by SiI, the
Project Leader shall furnish to SiI an affidavit or
declaration signed by the Project Leader certifying
that such delivery or destruction of the Confidential
Information has been fully effected.
9.3.2. No Damages for Termination. Neither Party will be
liable to the other for damages of any kind solely as
a result of exercising its right to terminate this
Agreement in accordance with its terms.
9.3.3. Non-Exclusive Remedy. Termination of this Agreement
by either party will be a non-exclusive remedy for
breach and will be without prejudice to any other
right or remedy of such party.
9.3.4. Survival. The rights and obligations of the parties
under Sections 5 (Intellectual Property Ownership), 6
(Intellectual Property Assignment) and 7
(Confidentiality), will survive the termination or
expiration of this Agreement.
10. GENERAL
10.1 ENTIRE AGREEMENT. This Agreement, including all exhibits,
constitutes the entire agreement between the parties with
respect to the subject matter hereof, and supersedes and
replaces all prior and contemporaneous understandings or
agreements, written or oral, regarding such subject matter,
except for Research and Development Contract: 1000BASE-T
Gigabit Ethernet PHY Chip, which will expire February 29,
2000.
10.2 GOVERNING LAW AND DISPUTES. This Agreement will be governed by
and construed in accordance with the substantive laws of the
United States and the State of California, without regard to
or application of provisions relating to conflicts of law. Any
litigation arising under this Agreement will be brought in the
federal or state courts of the Northern District of California
and the parties hereby consent to the personal jurisdiction
and venue therein.
10.3 WAIVER AND MODIFICATION. Failure by either party to enforce
any provision of this Agreement will not be deemed a waiver of
future enforcement of that or any other provision. Any waiver,
amendment or other modification of any provision of this
Agreement will be effective only if in writing and signed by
the parties.
10.4 SEVERABILITY. If for any reason a court of competent
jurisdiction finds any provision of this Agreement to be
unenforceable, that provision of the Agreement
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will be enforced to the maximum extent permissible so as to
effect the intent of the parties, and the remainder of this
Agreement will continue in full force and effect.
10.5 NOTICES. All notices required or permitted under this
Agreement will be in writing and delivered by confirmed
facsimile transmission, by courier or overnight delivery
service, or by certified mail, and in each instance will be
deemed given upon receipt.
10.6 ASSIGNMENT. Neither party may assign its rights or delegate
its obligations hereunder, either in whole or in part, without
the prior written consent of the other party, which shall not
be unreasonably withheld or delayed; provided, however, that
SiI may assign its rights and delegate its duties under this
Agreement to a third party in connection with an acquisition,
merger, or corporate reorganization without the prior written
consent of ISRC. Any other attempted assignment or delegation
without such written consent will be void. The rights and
liabilities of the parties under this Agreement will bind and
inure to the benefit of the parties' respective successors and
permitted assigns.
10.7 RELATIONSHIP OF PARTIES. All current and future Project Staff
are independent contractors for SiI and this Agreement will
not establish any relationship of partnership, joint venture,
employment, franchise, or agency between the Project Staff and
SiI. The Project Staff will not have the power to bind SiI or
incur obligations on the other's behalf without SiI's prior
written consent or unless pursuant to another written
agreement.
10.8 FORCE MAJEURE. Neither party will be deemed in default of this
Agreement to the extent that performance of its obligations is
delayed or prevented by reason of fire, natural disaster,
accident, act of government, shortages of material or supplies
or any other cause beyond the reasonable control of such party
("Force Majeure"), provided that such party gives the other
party written notice thereof promptly and, in any event,
within fifteen (15) days of discovery thereof and uses its
good faith efforts to so perform or cure. In the event of such
a Force Majeure, the time for performance or cure will be
extended for a period equal to the duration of the Force
Majeure but not in excess of thirty (30) days.
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10.9 COUNTERPARTS. This Agreement may be executed in counterparts,
each of which will be deemed an original, but both of which
together will constitute one and the same instrument.
EXHIBITS
Exhibit A - Research Project Proposal
Exhibit B - Project Participants
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
SILICON IMAGE, INC. INTER-UNIVERSITY SEMICONDUCTOR
RESEARCH CENTER OF
SEOUL NATIONAL UNIVERSITY
By: /s/ Xxxxx X. Xxx /s/ Young J. Park
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Name: Xxxxx X. Xxx Xxxxx June Park
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Title: CEO Director
---------------------- -------------------------------
Date: 12/9/99 12/9/99
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EXHIBIT A
RESEARCH PROJECT PROPOSAL
The research project covered by this Agreement shall focus on the
following areas:
1. High-speed serial communications circuit and protocol
technologies and semiconductor implementations of such
technologies, including Plesiochronous and Asynchronous
multi-gigabit serial links;
2. Implementation of the above technologies as semiconductor
devices, including the migration of such technologies to
multiple semiconductor processes and the testing of all
devices;
3. Applications of the above technologies as the physical layer
of network interface standards including Gigabit Ethernet,
Fiber Channel, Infiniband, and ATM/SONET;
4. High-speed analog and digital circuits for 1000BASE-T PHY
including
- High speed analog-to-digital converter and
digital-to-analog converter.
- Digital Equalizer
- Echo and NEXT (Near-End Crosstalk) canceller
- Timing recovery algorithms and PLL
- Physical Coding Sub-layer (PCS) that includes the
Scrambler, Convolution Encoder, and Viterbi Decoder;
5. Implementation of the above 1000BASE-T technologies as
mixed-signal VLSI semiconductor devices, including the
migration of such technologies to multiple semiconductor
processes and the testing of all devices;
6. NIC-on-a-chip integrating embedded DRAM, multi-gigabit PHY,
MAC layer, DMA memory controller, and the host interface as
semiconductor devices, including the testing of all devices;
7. Implementation of the "NIC-on-a-chip" technologies as
semiconductor devices with embedded DRAM that can be used for
network applications including NIC as well as multi-channel
switching devices.
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EXHIBIT B
PROJECT PARTICIPANTS
1. Project Leader:
Xxxx-Xxxxx Xxxxx, Associate Professor, Seoul National University
2. Researchers:
i) Xxxxxxxx Xxx, Postdoc Fellow, Seoul National University
ii) Xxxxxx Xxx, Ph.D. Candidate, Seoul National University
iii) Yongsam Moon, Ph.D. Candidate, Seoul National University
iv) Xxxxx Xxx, Ph.D. Candidate, Seoul National University
v) Xxxxxxxx Xxxx, Ph.D. Candidate, Seoul National University
vi) Hyungrok Xxx, M.S. Candidate, Seoul National University
vii) Xxxxxxxx Xxx, M.S. Candidate, Seoul National University
viii) Others
3. Administration staff:
To hire
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