Development Agreement
- hereinafter referred to as "Agreement"
by and between
Infineon Technologies AG
a corporation duly incorporated under the laws of Germany,
having offices at Xx.-Xxxxxx-Xxx. 00, 00000 Xxxxxxx, Xxxxxxx
- hereinafter referred to as "Infineon"
and
Actel Corporation
a corporation duly incorporated under the laws of California,
having offices at 000 Xxxx Xxxxxx Xxxxxx, Xxxxxxxxx, XX 00000-0000, XXX
- hereinafter referred to as "Actel" -
- both hereinafter referred to as "Parties" or one as "Party" -
on
the Joint Development of C11FL Products
Preamble
WHEREAS, Infineon is engaged in the development, production and
commercialization of semiconductor products, including flash technology for
semiconductor products.
WHEREAS, Actel is engaged in the development and commercialization of field
programmable semiconductor products including flash technology cells.
WHEREAS, both Parties learned from the previous contractual cooperation
regarding the C9FL technology, which will be the basis for a successful
cooperation regarding C11FL technology;
WHEREAS, both Parties concluded the Memorandum of Understanding of 12 April
2001;
NOW THEREFORE, the Parties agree as follows:
1. Definitions
1.1 The term "ACTEL FLASH FPGA" means any flash FPGA that was developed or is
developed by or on behalf of Actel on the basis of C11FL TECHNOLOGY for
production in C11FL TECHNOLOGY.
1.2 The term "ACTEL FLASH eFPGA CORE" means a reusable, pre-designed virtual
flash FPGA, whether synthesizable or otherwise, that was developed or is
developed by or on behalf of Actel or extracted by Infineon from the ACTEL
FLASH FPGA on the basis of C11FL TECHNOLOGY for use in the design of C11FL
PRODUCTS, including the programming switch, architecture, modules, test
software, and software design tools used for mapping customer applications
to and programming the embedded flash FPGA.
1.3 The term "ACTEL LEAD PRODUCT" means the first Actel C11FL PRODUCT that
Actel QUALIFIES and markets to its customers.
1.4 The term "BACKGROUND PATENTS" means patent applications, patents, utility
models and other statutory protection, which are embodied in INFORMATION
and under which one Party is the owner and/or has the right of
determination at any time during the term of this Agreement and which are
not resulting from performing the DEVELOPMENT WORK.
1.5 The term "CC" means Infineon's division Security & Chip Card ICs.
1.6 The term "C11FL TECHNOLOGY" means the technology (in particular process
technology, Infineon flash cells and circuits), which is described in ANNEX
1 to this Agreement and RATIO STEPS thereof.
1.7 The term "C11FL PRODUCTS" means any Infineon or Actel products based upon
C11FL TECHNOLOGY for production in C11FL TECHNOLOGY. The term "Actel C11FL
PRODUCTS" means C11FL PRODUCTS manufactured by or for Actel. The term
"Infineon C11FL PRODUCTS" means C11FL PRODUCTS manufactured by or for
Infineon
1.8 The term "DEVELOPMENT WORK" means any and all development work to be
performed by the Parties in accordance with Sections 2 and 3 below.
DEVELOPMENT WORK shall not include any C11FL TECHNOLOGY or development
thereof.
1.9 The term "DEVELOPMENT RESULTS" means any and all results, whether
patentable or not, in written or oral form, achieved by performing
DEVELOPMENT WORK, in particular data relating to flash cell reliability.
For the avoidance of doubt, DEVELOPMENT RESULTS shall not include any C11FL
TECHNOLOGY or any data and/or information relating to the specifications of
any C11FL PRODUCT.
1.10 The term "EFFECTIVE DATE" means the date that this Agreement is signed by
both Parties.
1.11 The term "EMBEDDED PRODUCT" means a C11FL PRODUCT that (i) contains an
ACTEL FLASH eFPGA CORE and (ii) the principal use of the device is
satisfied primarily by functions performed in those parts of the device
that are not comprised of the ACTEL FLASH eFPGA CORE.
1.12 The term "FLASH IPR" means any and all IPR of Actel relating to the ACTEL
FLASH eFPGA CORE.
1.13 The term "FPGA" means integrated circuits that implement field programmable
logic the operation of which is determined after the integrated circuit has
been manufactured.
1.14 The term "INFINEON FAB" means any foundry of Infineon or of any company,
which is affiliated with Infineon within the meaning of Section 15 of the
German Stock Corporation Act (Aktiengesetz) ("Affiliate").
1.15 The term "INFINEON LEAD PRODUCT" means the first Infineon C11FL PRODUCT
which Infineon QUALIFIES and markets to its customers.
1.16 The term "INFORMATION" means written and/or oral technical information with
regard to the C11FL TECHNOLOGY, such information being available to one
Party at any time during the term of this Agreement and not resulting from
performing the DEVELOPMENT WORK. However, INFORMATION shall not include any
data and/or information relating to the specifications of any Infineon or
Actel C11FL PRODUCT. INFORMATION of Infineon shall be limited to
information available at CC.
1.17 The term "INVENTION" means any and all (i) ideas and conceptions of
potentially patentable subject matter, including, without limitation, any
patent disclosures, whether or not reduced to practice, and whether or not
yet made the subject of a pending patent application or applications; (ii)
patent applications relating thereto, and (iii) United States, European,
international and foreign patents issuing there from; and all reissues,
divisions, renewals, extensions, provisionals, continuations and
continuations-in-part thereof.
1.18 The term "JOINT INVENTION" means any INVENTION that is first conceived or
reduced to practice by one or more of one Party's employees or third party
contractors with one or more of the other Party's employees or third party
contractors during the term and in the performance of this Agreement.
1.19 The term "IPR" means (by whatever name or term known or designated) any
intellectual property rights including, without limitation, patents,
registered designs, copyrights, trade secrets, moral rights and any other
intellectual property or proprietary rights (except trademarks, service
marks and related rights) eligible for protection under the laws of any
country, state or jurisdiction including registrations, applications,
renewals and extensions of such rights.
1.20 The term "KNOW-HOW" means any secret or overt knowledge or information,
which is proprietary to either Party.
1.21 The term "MILESTONE PLAN" means the contents and time schedule set forth in
ANNEX 2 to this Agreement.
1.22 The term "QUALIFIES" or "QUALIFIED" or "QUALIFICATION" shall mean that a
particular C11FL PRODUCT performs in accordance with the qualification
criteria and procedures for such products, as determined in the sole
discretion of the party who's product is at issue, and that, therefore, the
particular product is released for manufacturing and shipment to customers.
1.23 The term "RATIO STEPS" means any process that is substantially the same as
and built on the base 0.13 micron process with shrink design rules (e.g.
0.13 shrink 0.10), such as C11FL-R technology.
2. Carrying out of the DEVELOPMENT WORK
2.1 In General. Based on their different areas of expertise, the Parties agree
that each Party will perform the DEVELOPMENT WORK as set forth in Sections
2, 3 and ANNEX 2 hereof.
2.2 Development of Test Array. The Parties shall cooperate on the development
and testing of a test array as specified in ANNEX 3 ("Test Array")
according to Sections 2 and 3 hereof. Actel shall design the Test Array,
which shall contain at least the identical memory cells and shall be
operated under the same conditions as the type intended INFINEON LEAD
PRODUCT and ACTEL LEAD PRODUCT. Actel shall deliver the Test Array to
Infineon, at the INFINEON FAB in Dresden, Germany, in accordance with the
MILESTONE PLAN. Actel shall prepare the design data (GDS-file) for the Test
Array.
2.3 Test Array. Infineon shall use the Test Array for early learning regarding
reliability. Infineon and Actel shall jointly perform tests regarding the
reliability of the flash cells in the Test Array ("Flash Cell Reliability")
(collectively "Testing"). The parties will measure Flash Cell Reliability
by testing the Test Array for the reliability factors set forth on ANNEX 4
("Reliability Factors"). The Parties shall jointly define and agree upon
the acceptable measures for each such Reliability Factor ("Reliability
Objectives") and jointly determine whether the Test Array meets each of the
Reliability Objectives. If the Test Array meets each of the Reliability
Objectives, it shall be deemed to have met the threshold for Flash Cell
Reliability. The Parties agree that for the Reliability Factor regarding
moving bit failure rates a detection level of less than 1ppm/Mbit/year with
reasonable measurement for both erased and programmed states is the
Reliability Objective.
2.4 Testing Software and Board. Actel shall develop and deliver to Infineon the
software required for the Testing ("Test Programs") and shall also design
necessary circuits and layout for the respective tester probecard board to
be used for testing the Test Array. Actel shall deliver the Test Programs
to Infineon and install such programs at the INFINEON FAB in Dresden.
Infineon will provide a proven vendor for manufacture board that is
compatible with a Teradyne J750 tester and associated prober.
2.5 Running of Wafers. Infineon shall run a sufficient amount of wafers in
order to achieve the Reliability Objectives. Infineon shall make reasonable
endeavors to modify and/or improve wafers processed to be able to
demonstrate process reliability according to ANNEX 5. Infineon shall
provide Actel with access to data that is produced as a result of such
Testing.
2.6 Mask Design and Manufacture. Actel shall design and Infineon shall
manufacture the masks ("Masks"), which are necessary for the production of
the wafers to be processed with the Test Array.
2.7 Costs of Masks. In consideration for Infineon's manufacture of the Masks,
after completion of all the Masks and shipment of the Masks to the Dresden
fab, Actel shall pay to Infineon, within thirty (30) days of the date of
invoice, (i) a lump-sum payment in the amount of Euro
three-hundred-forty-thousand ((euro) 340,000) and (ii) fifty percent (50%)
of any actual cost for the mask set exceeding Euro
three-hundred-forty-thousand ((euro) 340,000). Infineon shall be the sole
owner of the masks, and Infineon alone shall be entitled to use the masks,
even after completion of the DEVELOPMENT WORK (Section 3 below) and after
Agreement termination.
2.8 MILESTONE PLAN. The DEVELOPMENT WORK shall comprise also the efforts and
activities set forth in Section 3 below and in the MILESTONE PLAN, and the
Parties shall use reasonable efforts in carrying out the DEVELOPMENT WORK
in accordance with the MILESTONE PLAN. The DEVELOPMENT WORK shall be
carried out in close cooperation between the Parties and in a joint effort
to keep cost and expenditures to a minimum.
2.9 Availability of DEVELOPMENT RESULTS. Each Party shall make available to the
other within a reasonable period of time following the EFFECTIVE DATE of
this Agreement, and from time to time during the carrying out of the
DEVELOPMENT WORK its DEVELOPMENT RESULTS.
2.10 Experts. Each Party shall, within one (1) month following the EFFECTIVE
DATE, appoint an expert who will act as a point of contact during the
DEVELOPMENT WORK. All INFORMATION and DEVELOPMENT RESULTS to be forwarded
to a Party hereunder, shall be addressed to such appointed expert.
2.11 Changes to the MILESTONE PLAN. In the event that one of the Parties
realizes that the DEVELOPMENT WORK cannot efficiently be performed
according to the MILESTONE PLAN, or development plans set forth for the
project, the other Party shall immediately be informed thereof. The Parties
shall then review the situation and mutually agree on relevant changes with
respect to the further conduct and performance of the DEVELOPMENT WORK.
2.12 Ownership. A Party forwarding, without charge, to the other Party parts,
components, software and other tangible articles for the purposes of the
DEVELOPMENT WORK shall remain the proprietor of such articles, except as
otherwise expressly provided in this Agreement. All items to be provided by
Actel under this Section 2 shall be delivered to Infineon at the INFINEON
FAB in Dresden, at the costs and risk of Actel.
2.13 Subcontractors. Infineon and Actel may, even without the other's consent,
have any of its obligations regarding the DEVELOPMENT WORK and/or any other
contractual obligations under this Agreement provided by a third party
(subcontractor), provided, however, that any such subcontractor shall be
required to agree in writing to confidentiality provisions at least as
protective as those set forth in Section 10 (Secrecy).
2.14 Technical Specifications and Other Deliverables. Infineon shall (i) provide
Actel with necessary technical specifications regarding the C11FL
TECHNOLOGY in order to support Actel in developing the Test Array; and (ii)
provide Actel with the runsets (software for Design Rule Checking - DRC),
design manuals, and simulation parameters required for Actel to develop the
Test Array and testing materials.
2.15 Engineering Support. Actel shall send to Infineon, INFINEON FAB in Dresden,
a sufficient number of engineers, but not more than four (4), until
Infineon determines in its reasonable judgment, that Infineon's staff at
the INFINEON FAB in Dresden is able to run the Test Programs with the Test
Array. Actel shall support the Test Programs and the Test Array at the
INFINEON FAB in Dresden, in particular provide Infineon with
on-site-support in order to safeguard proper functioning of the Test
Programs and of the Test Array, and enable Infineon by support via
telephone, email or any other means to solve specific problems using the
Test Programs, and use reasonable efforts to correct all bugs, errors and
problems with the Test Programs that are reported to Actel by Infineon.
3. Completion and Costs of the DEVELOPMENT WORK
3.1 Completion of Development. The DEVELOPMENT WORK shall be regarded as being
completed successfully once (i) the efforts and activities under Section 2
hereof have been carried out and (ii) Test Arrays have been designed and
(iii) the Test Programs run without any bugs and (iv) the reliability Tests
have been completed according to ANNEX 5.
3.2 Final Protocol. The Parties will record the DEVELOPMENT RESULTS in a final
protocol, including the date of the successful completion of the
DEVELOPMENT WORK. Each Party shall be entitled to a copy of such final
protocol.
3.3 Costs and Fees. Except as set forth in Section 2.7 above, each Party shall
bear the costs incurred by such Party for its efforts under or in
connection with the DEVELOPMENT WORK.
4. Design and QUALIFICATION of Actel Products
4.1 Actel C11FL Design. Actel shall have the right to use the Test Array,
INFORMATION and DEVELOPMENT RESULTS only to the extent necessary to design,
develop and have manufactured Actel C11FL PRODUCTS during and after the
term of this Agreement. Actel shall not use Test Array, INFORMATION and
DEVELOPMENT RESULTS in any other manner or for any other purpose. In any
event, Actel shall not be entitled to use the Masks provided by Infineon in
any manner.
4.2 Access to Wafer Corridor for QUALIFICATION. Actel shall have the right to
use a wafer corridor for C11FL PRODUCTS in an INFINEON FAB to be determined
by Infineon ("Wafer Corridor") to QUALIFY the ACTEL LEAD PRODUCT, provided
that either (i) Infineon has completed a minimum qualification of a
demonstration product according to testing criteria to be mutually agreed
upon ("Demo-QUALIFICATION"), or (ii) Infineon has successfully completed
the QUALIFICATION of the INFINEON LEAD PRODUCT. Actel's rights under this
Section 4.2 are subject to expiry as set forth in Section 5 below.
4.2.1Infineon shall give Actel written notice on the QUALIFICATION of the
INFINEON LEAD PRODUCT or the Demo-QUALIFICATION; the date of receipt of
Infineon's notice shall be deemed the date of the QUALIFICATION ("Infineon
QUALIFICATION Date").
4.2.2If Actel does not tape out an ACTEL LEAD PRODUCT within twelve (12) months
of the Infineon QUALIFICATION Date, Actel's rights under Section 4.2 shall
expire.
4.3 Order of Wafers. For the purpose QUALIFYING the ACTEL LEAD PRODUCT, Actel
shall order and Infineon shall fabricate and deliver to Actel wafers
according to the Project Plan in ANNEX 6 to this Agreement.
4.4 Actel QUALIFICATION First. With Infineon's consent, Actel may QUALIFY an
ACTEL LEAD PRODUCT prior to Infineon QUALIFYING the INFINEON LEAD PRODUCT.
However, in no event shall INFINEON be obligated to fabricate the ACTEL
LEAD PRODUCT for purposes of Actel's QUALIFICATION thereof at the same time
in the same INFINEON FAB as Infineon is fabricating the INFINEON LEAD
PRODUCT for purposes of QUALIFICATION thereof if, at Infineon's discretion,
such simultaneous loading of the same INFINEON FAB would cause additional
costs or time efforts of Infineon.
4.5 Notice of Tape Out/QUALIFICATION. Actel shall notify Infineon in writing on
the tape out and on the QUALIFICATION of each ACTEL LEAD PRODUCT.
4.6 Infineon Covenant Not To Xxx. Infineon agrees that neither Infineon nor any
of its Affiliates will assert during the term of this Agreement and
thereafter (except as provided in Sections 14.3 and 14.4 below), directly
or indirectly, any claim or cause of action based, in whole or in part,
upon the purported infringement by Actel or its suppliers, licensees, or
customers, mediate or immediate, of any IPR as a result of the manufacture,
use, export, import, offer for sale, sale, lease, distribution, or other
transfer of products to the extent that such products use or incorporate
any technology or INFORMATION or KNOW-HOW that Actel contributes to the
Development Work during the term of this Agreement (and thereafter to the
extent that provisions herein survive termination or expiration).
5. Fabrication and Supply of Wafers to Actel
5.1 Wafer Corridor For Fabrication. Subject to Section 5.1.1 below, for a
period of three (3) years from the later of (i) the Infineon QUALIFICATION
Date and (ii) March 1, 2003 ("Access Period"), Actel shall have the right
to use the Infineon Wafer Corridor to QUALIFY and fabricate a reasonable
volume of Actel C11FL PRODUCTS ("Wafers"). During the Access Period Actel
shall be guaranteed a fabrication volume of at minimum
one-hundred-and-fifty (150) Wafer Starts Per Week ("WSPW").
5.1.1Termination of Right to Wafer Corridor. Actel's right to use the Wafer
Corridor shall terminate on the first to occur of the following: (i) one
(1) year after the Infineon QUALIFICATION Date if Actel has not by then
taped out an ACTEL LEAD PRODUCT; (ii) two (2) months after Infineon gives
written notice to Actel that Actel did not fabricate through the Wafer
Corridor an average minimum quantity of twenty-five (25) WSPW during any
single month more than eighteen (18) months after the beginning of the
Access Period; and (iii) the end of the Access Period.
5.1.2Exclusive Remedy. The provisions of Section 5.1.1 constitute Infineon's
exclusive remedy and Actel's sole liability for Actel's failure to
fabricate an average minimum quantity of twenty-five (25) WSPW during the
Access Period.
5.2 RATIO STEPS. Actel may transfer Actel C11FL PRODUCTS currently under
fabrication to RATIO STEPS of the C11FL TECHNOLOGY or to design Actel C11FL
PRODUCTS in RATIO STEPS in order to prolong manufacturability and to
achieve area savings. However, the Parties shall in advance mutually agree
on the timing of any such transfer to RATIO STEPS or design of Actel C11FL
PRODUCTS in RATIO STEPS.
5.3 Pricing. The provisions regarding pricing of Wafers are specified in the
ANNEX 7 to this AGREEMENT.
5.4 Third Party Manufacture. Provided that Infineon has enabled the manufacture
of Infineon C11FL PRODUCTS in a third party silicon foundry, Actel shall be
entitled to have ACTEL PRODUCTS manufactured in such third party silicon
foundry, and INFINEON hereby grants Actel a perpetual, irrevocable (except
as provided in Sections 12.1, 14.3 and 14.4 below), worldwide, royalty
free, non-exclusive, non-transferable (except as provided in Section 15.11
below) right, under all of its IPRs in and to the C11FL TECHNOLOGY and
Information to have manufactured Actel PRODUCTS by any third party location
at which the Infineon C11FL TECHNOLOGY and process has been or is
installed, however such license grant shall be limited to the extent that
Infineon has full power and title to make such grant without any third
party consent.
6. Limited Warranties
6.1 Development Warranties. Provided that a Party complies with its obligations
under Section 2, such PARTY shall not be liable towards the other Party in
the case that the DEVELOPMENT WORK cannot be successfully completed as per
Section 3 above.
6.2 The sole obligation of each Party with respect to errors in its INFORMATION
and DEVELOPMENT RESULTS and exclusive remedy of the other party shall be to
forward same to the other PARTY as provided in this Agreement, and to
correct errors that might have occurred in such INFORMATION and DEVELOPMENT
RESULTS without undue delay after such errors become known to the Party
which forwarded the relevant INFORMATION or DEVELOPMENT RESULTS.
THE WARRANTIES SET FORTH IN THIS SECTION 6 APPLY TO ALL INFORMATION AND
DEVELOPMENT RESULTS LICENSED OR KNOWINGLY DISCLOSED HEREUNDER AND ARE IN
LIEU OF ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION
THE WARRANTIES THAT INFORMATION AND DEVELOPMENT RESULTS CAN BE USED WITHOUT
INFRINGING STATUTORY AND OTHER RIGHTS OF THIRD PARTIES.
The disclaimer in this Section 6.2 shall in no way alter the Parties'
respective obligations to indemnify one another under Section 12 hereof.
6.3 Production Warranty. Infineon warrants that the wafers delivered to Actel
under Section 4 hereof meet the specification to be agreed expressly in
writing between the Parties. The warranty period shall be one (1) year from
delivery to Actel. If the wafers fail to meet these specifications,
Infineon shall correct the failure within thirty (30) days from receipt of
a written objection by Actel.
THE WARRANTIES PROVIDED IN SECTIONS 6.2 AND 6.3 ABOVE ARE THE ONLY
WARRANTIES MADE BY THE PARTIES TO EACH OTHER. NEITHER PARTY MAKES AND
NEITHER PARTY RECEIVES ANY OTHER WARRANTIES, EXPRESS OR IMPLIED, AND ALL
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE ARE
EXPRESSLY EXCLUDED.
7. License regarding ACTEL FLASH eFPGA CORE.
7.1 ACTEL FLASH eFPGA CORE. Subject to the restrictions and limitations set
forth in Sections 7.3, 7.4 and 7.5 below, Actel hereby grants to Infineon a
perpetual, worldwide, non-exclusive, non-transferable (except as provided
in Section 15.11 below), non-sublicenseable (except as provided in Section
7.1 (vi) below), irrevocable (except as provided in Sections 12.3 and 14.4
below) license:
(i) to use the ACTEL FLASH eFPGA CORE, or extract it from ACTEL FLASH
FPGA, including but not limited to switch, architecture, modules and
design tools, as defined in ANNEX 8, with any present or future
products of Infineon in an Infineon EMBEDDED PRODUCT, and to
manufacture, have manufactured solely for Infineon, sell or otherwise
distribute or have distributed such Infineon EMBEDDED PRODUCTS;
(ii) to use and exploit the FLASH IPR solely for the purposes set forth in
(i) above; and
(iii)to use, perform, display, program, modify, adapt and/or improve, or
have used, performed, displayed, programmed, modified, adapted and/or
improved software tools, in object code format, with which a Party can
program the ACTEL FLASH eFPGA CORE ("Design Tools") for applications
to manufacture, or have manufactured solely for Infineon, Infineon
EMBEDDED PRODUCTS; and
(iv) to use and exploit the Actel deliverables, such as the Test Programs
evaluation board, burner, which are defined in ANNEX 9, solely to the
extent required in order for Infineon to exercise its rights under the
licenses in (i)-(iii) above, and
(v) to program, modify, adapt and/or improve, or have programmed,
modified, adapted and/or improved the ACTEL FLASH eFPGA CORE, FLASH
IPR and/or any deliverables as under (iv) above and to use and exploit
the modified, adapted and/or improved items solely for the purposes
set forth in (i) above; and
(vi) sublicense the right to use, perform and display the Actel FLASH eFPGA
Design Tools under (iii) above to any present or future customers who
purchase Infineon EMBEDDED PRODUCTS.
7.2 Samples and Modifications. If Actel tapes out and/or QUALIFIES an Actel
PRODUCT, at any time, that Actel tapes out and/or QUALIFIES a new VERSION
of the Actel PRODUCT, Actel shall make available to Infineon:
(i) INFORMATION and samples of the Actel PRODUCT at the respective date of
QUALIFICATION, if applicable, as well as any modifications,
adaptations and/or improvements thereto at the QUALIFICATION of the
modified, adapted and/or improved Actel FLASH CORE; and
(ii) the Actel Deliverables set forth on ANNEX 9, but only to the extent
that such Deliverables exist; Actel shall have no obligation hereunder
to create such Deliverables other than for its own purposes.
7.3 Restrictions. The rights granted under the license in Section 7.1 shall be
restricted as follows:
(i) Infineon's use and exploitation of the ACTEL FLASH eFPGA CORE shall be
in connection with the C11FL TECHNOLOGY.
(ii) Infineon may only manufacture, have manufactured solely for Infineon,
distribute, have distributed, sell and otherwise make available the
ACTEL FLASH eFPGA CORE embedded in Infineon C11FL PRODUCTS that are
EMBEDDED PRODUCTS.
(iii)Infineon may only use the FLASH IPR and Actel INFORMATION in
connection with the development, manufacture and distribution of
Infineon C11FL PRODUCTS in which the ACTEL FLASH FPGA CORE is embedded
and may not use the Actel FLASH IPR or Actel INFORMATION in connection
with the development, manufacture and distribution of Infineon
products that do not contain the ACTEL FLASH eFPGA CORE.
7.4 All licenses granted to Infineon under this Section 7, shall be
free-of-charge for use by CC and one (1) further present or future division
of Infineon (collectively the "Entitled Divisions"). Infineon shall
designate such division by written notice to Actel prior to making use of
such additional license. If Infineon wishes to use the licensed rights
through a third division, Infineon shall inform Actel in advance. In this
case the Parties shall negotiate an adequate license fee in good faith.
7.5 If Infineon spins off an Entitled Division, the spin-off shall have the
same rights as attributed to the spun off Entitled Division. The Entitled
Divisions and the spin-off are collectively referred to as "Entitled
Entities". In no event shall any more than two (2) Entitled Entities, i.e.
CC and one (1) other Entitled Division or their spin-offs, have the right
to use the free licenses hereunder at any given time. In no event shall an
entity that is an Actel competitor be entitled to a license under this
Section 7. Infineon shall provide Actel or its successors and assigns with
written notice of and details concerning the spin-off of an Entitled
Division within a reasonable timeframe after such spin-off is effected.
7.6 The licenses in this Section 7 may not be sublicensed, except as expressly
provided in this Section 7.
7.7 Other Licenses. Under its INFORMATION, BACKGROUND PATENTS and DEVELOPMENT
RESULTS each Party hereby grants to the other Party and its Affiliates the
non-exclusive, non-transferable (except as set forth in Section 15.11),
non-sublicenseable, royalty free right to use the same during the term of
this Agreement for the purpose of carrying out the DEVELOPMENT WORK.
However, INFORMATION, which one Party receives from the other under this
Agreement, and BACKGROUND PATENTS of the other Party may be used by the one
Party solely to the extent strictly necessary to use the DEVELOPMENT
RESULTS, as set forth in the previous sentence of this Section 7.7. Section
4.1 above shall remain unaffected.
8. Additional Services relating to Actel FLASH eFPGA
8.1 Cost free Migration. If Infineon migrates an Infineon EMBEDDED PRODUCT to
another Infineon EMBEDDED PRODUCT, Infineon may undertake such migration
without paying Actel any fee provided that Infineon does not require Actel
to provide design and layout services to accomplish the migration (e.g. if
a "dumb" shrink migrating from C11FL to C11FL-R1 were used needing no Actel
design and layout services).
8.2 Migration for a Fee. If Infineon requires Actel design and layout services
for redesign and/or re-layout of the ACTEL FLASH eFPGA CORE for the purpose
of integration into Infineon EMBEDDED PRODUCTS, Actel shall provide such
services at a service fee to be negotiated between the Parties in good
faith. In performing such services Actel is not obligated to follow the
dumb shrink path or required to support an Infineon requested redesign and
re-layout.
8.3 Additional Free Services. To the extent that Actel typically provides
certain design and layout services free-of-charge to its ProASIC customers,
Actel agrees to also provide the same services to Infineon free-of-charge
to Infineon during the term of this Agreement.
8.4 Teaching Services. Actel shall render to Infineon training and teaching
services relating to ACTEL FLASH eFPGA CORE during this Agreement or after
Agreement termination, upon request of Infineon at a service fee to be
negotiated between the Parties in good faith. The service fee shall be
calculated at an hourly consulting fee rate.
9. DEVELOPMENT RESULTS, INFORMATION and Rights Thereunder
9.1 INVENTIONS. INVENTIONS made during the term and under the cooperation of
this Agreement by employees of one Party shall become neither the property
of the other Party nor the common property of both Parties, and the one
Party, therefore and insofar as it otherwise has the right to do so, shall
be free to use such Inventions as it sees fit and to file for statutory
protection and to use, maintain and permit to lapse such application for
statutory protection and any statutory rights issued thereon.
9.2 JOINT INVENTIONS. JOINT INVENTIONS shall, at the time they are made, become
the joint property of both Parties.
9.3 JOINT INVENTIONS including any and all statutory protection issuing thereon
(as per Section 9.3.1 below or otherwise), if any, may be used by each
Party, as such Party sees fit. Each Party therefore, for example and
without limitation, has the transferable right to grant non-exclusive,
further transferable licenses under such JOINT INVENTIONS. Neither Party
shall be obliged to pay to the other Party any royalties or other kind of
consideration with respect to grant of such licenses under JOINT INVENTIONS
to third parties.
9.3.1For JOINT INVENTIONS, which are eligible for statutory protection, the
Parties will agree upon the details for filing for such protection.
In case only one Party is interested in filing for statutory protection for
JOINT INVENTIONS, then the other Party shall execute and forward to the one
Party all documents requested by the one Party and reasonably believed to
be necessary and/or desirable for such procedure. Statutory rights filed
for JOINT INVENTIONS by one Party at its own expense shall, from the date
of filing, become the sole property of that one Party, and, therefore, for
example and without limitation, can be used, maintained and permitted to
lapse by this Party as it sees fit. The other Party's rights to use such
statutory rights are as laid down in Section 9.3 above.
9.3.2Each Party ensures that it will be in a position to immediately acquire
the share of inventions of its employees insofar as Joint Inventions are
concerned.
9.3.3Neither Party is obligated to take action against third parties infringing
upon statutory rights filed or issued for JOINT INVENTIONS or to defend
such rights against third parties. Notwithstanding the foregoing, each
Party shall promptly notify the other Party if such former Party becomes
aware of any possible infringement by a third Party of any of the JOINT
INVENTIONS. If either Party desires to take any action against such an
infringing third Party, such Party shall first notify the other Party
hereto and consult with such other Party regarding such action.
10. Secrecy
10.1 Non-Disclosure. Each Party agrees that all INFORMATION and DEVELOPMENT
RESULTS which it receives from the other Party and which are designated as
confidential by such Party will be deemed to be confidential and will be
maintained by the receiving Party in confidence, provided, however, that
such Party may disclose such information to its officers, and those of its
employees and others under its control for the purposes of this Agreement,
all of whom will be advised of this Agreement and such Party's obligations
thereunder. The provisions of this Section 10 shall apply mutatis mutandis
to any business secrets and KNOW-HOW of either Party.
10.2 Precautions. Such Party additionally agrees to take all reasonable
precautions to safeguard the confidential nature of the foregoing
information, provided, however, that such Party's normal procedures for
protecting its own confidential information shall be deemed reasonable
precautions, and provided that if such precautions are taken, such Party
will not be liable for any disclosure which is inadvertent or unauthorized
or is required by any judicial order or decree or by any governmental law
or regulation. Neither shall such Party be liable for disclosure and/or any
use of such information insofar as such information;
(i) is in, or becomes part of, the public domain other than through a
breach of this Agreement by such Party; or
(ii) is already known to such Party at or before the time it receives the
same from the other Party or is disclosed to such Party by a third
party as a matter of right; or
(iii)is independently developed by such Party without the benefit of such
information received from the other Party; or
(iv) is disclosed and/or used by such Party with the prior written consent
of the other Party.
10.3 Disclosure to Sublicensees. Notwithstanding the above provisions of this
Section 10, each Party has the right to disclose the other Party's
INFORMATION and DEVELOPMENT RESULTS, which it received under this Agreement
to its licensees insofar as it has the right to sublicense same as set
forth in this Agreement, provided, such Party requires such licensee to
undertake in writing secrecy obligations which are at least as stringent as
the ones set forth in this Section 10.
10.4 Subcontractors and Employees. Infineon shall safeguard by agreements in
writing with any subcontractor (Section 2.13) that the subcontractor shall
comply with obligations substantially similar to those set forth in
Sections 10.1 through 10.3 above. Actel shall safeguard by agreements in
writing with their employees and other staff members who may have access to
an INFINEON FAB that these persons shall comply with obligations
substantially similar to those set forth in Sections 10.1 through 10.3
above.
10.5 Authorized Disclosure. Notwithstanding the provisions of this Agreement,
each party may disclose the terms of this Agreement (i) in connection with
the requirements of an initial public offering, securities filing; (ii) in
confidence, to accountants, banks, and financing sources and their
advisors; (iii) in confidence, in connection with the enforcement of this
Agreement or rights under this Agreement.
10.6 Survival. The obligations under Sections 10.1 through 10.4 above shall
survive five (5) years after termination of this Agreement.
10.7 Actel Employee Access. Subject to the provisions in this Section 10,
Infineon shall provide Actel employees with access to Infineon facilities
including, without limitation, INFINEON FABs, as reasonably required for
Actel to fulfill its obligations and exercise its rights under this
Agreement. Any access for Actel employees to clean rooms and comparable
facilities in a fab of Infineon will be permitted only if escorted by
Infineon staff. Access to other rooms and facilities in a fab of Infineon
will be permitted without escort for Actel employees resident at such fab
for a period of at least four (4) weeks. Actel employees resident at such
fab of Infineon for a period of at less than four (4) weeks always require
an escort. Subject to room availability, a separate office for Actel staff
will be provided by Infineon.
11. Limitation of Liability
11.1 Willful Misconduct and Gross Negligence. With regard to any of either
Party's obligations hereunder, each Party shall be liable for damage
incurred by the other Party, to the extent that such damage is caused by
willful misconduct or gross negligence of the other Party, its legal
representatives, employees or subcontractors.
11.2 Death or Injury. Any liability of a Party with respect to death or injury
to any person is subject to and governed by the provisions of the
applicable law. Neither Party is, however, obliged to compensate for death
or personal injury or loss of or damage to property of the other Party to
the extent such death, injury, loss or damage is covered by and paid out by
the insurance(s) of the affected Party and such affected Party shall not be
entitled to recover same from the first Party.
11.3 EXCEPT WHERE SUCH LIABILITY IS MANDATORY BY APPLICABLE LAW, NEITHER PARTY
SHALL BE LIABLE FOR ANY INDIRECT OR CONSEQUENTIAL, EXEMPLARY OR PUNITIVE
DAMAGES OF THE OTHER PARTY, HOWEVER CAUSED AND UNDER ANY LEGAL CAUSE OR
THEORY WHATSOEVER AND ON ACCOUNT OF WHATSOEVER REASON, AND WHETHER OR NOT
SUCH PARTY WAS OR SHOULD HAVE BEEN AWARE OR ADVISED OF THE POSSIBILITY OF
SUCH DAMAGE AND NOTWITHSTANDING THE FAILURE OF ESSENTIAL PURPOSE OF ANY
LIMITED REMEDY STATED HEREIN
11.4 In no event shall either Party's liability arising out of this Agreement
exceed the maximum amount of three million US Dollars ($3,000,000) every
twelve (12) month period, up to a maximum of ten million US Dollars
($10,000,000). The Parties agree that this Section represents a reasonable
allocation of risk.
11.5 No Required Statutory Protection. Nothing in this Agreement shall obligate
either Party to apply for, take out, maintain or acquire any statutory
protection, in any country.
11.6 Third Party Rights. All rights granted in INFORMATION, DEVELOPMENT RESULTS
and under BACKGROUND PATENTS are granted insofar only as the Party granting
same has the right to grant without payment to third Parties.
12. Third Party Rights and Indemnity
12.1 Indemnity by Infineon. With respect to Infineon's proprietary contribution
to any C11FL PRODUCTS provided, manufactured, sold, or otherwise
transferred to Actel under this Agreement ("Infineon Item"), Infineon shall
defend Actel from any actions or claims brought against Actel to the extent
based upon a claim that such Infineon Item infringes a third party's IPR,
and shall hold Actel harmless from and against any such claim (including
all legal costs and attorney's fees), whether or not that claim is
successful, provided that Actel (i) gives Infineon notice of such claim,
(ii) cooperates with Infineon, at Infineon's expense, in the defense of
such claim, and (iii) gives Infineon the right to control the defense and
settlement of any such claim, except that (A) Infineon shall not enter into
any settlement that materially affects Actel's rights or interest without
Actel's prior written approval, and (B) Actel shall have the right, at its
own expense, to participate in the defense and settlement of such claim,
with counsel of Actel's own choosing. In addition, Infineon shall, at
Infineon's own cost and sole discretion, take one of the following
measures:
(i) procure for Actel the right to use the Infineon Item, or
(ii) for all infringing Infineon Items returned to Infineon by Actel and
for future provisions, modify the Infineon Items to become
non-infringing or deliver an equivalent non-infringing Item.
If Infineon determines in its sole discretion that neither of the foregoing
are available or commercially feasible, Infineon may terminate, by giving
one (1) month written notice to Actel, all rights and licenses granted to
Actel under this Agreement with respect to the Infineon Item and refund to
Actel all amounts paid by Actel under this Agreement. Notwithstanding,
Infineon shall remain obliged to hold harmless Actel from and against all
claims, which (i) at the date the notice termination becomes effective,
have yet been arisen and/or (ii) arise from Infineon's conduct or Actel's
conduct, such as manufacture or sale of Actel C11FL PRODUCTS, performed
prior to the date the notice termination becomes effective.
12.2 Exclusions to Indemnity by Infineon. Any liability of Infineon for
infringement of third party IPR by shall be excluded if the infringement is
not caused by the Infineon Item. Infineon shall also have no obligation to
indemnify if the infringement of the third party IPR arises as a result of
(i) the combination of a noninfringing Infineon Item with any item not
supplied by Infineon; (ii) modification of the Infineon Item by Actel or
its customers or by Infineon in compliance with Actel's designs,
specifications, or instructions; or (iii) continued allegedly infringing
activity by Actel after Actel has been notified of the possible
infringement.
12.3 Indemnity by Actel. With respect to Actel `s proprietary contribution to
any C11FL PRODUCTS provided, manufactured, sold, or otherwise transferred
to Infineon under this Agreement ("Actel Item"), Actel shall defend
Infineon from any actions or claims brought against Infineon to the extent
based upon a claim that such Actel Item infringes a third party's IPR, and
hold Infineon harmless from and against any such claim (including all legal
costs and attorney's fees), whether or not that claim is successful,
provided that Infineon (i) gives Actel notice of such claim, (ii)
cooperates with Actel, at Actel's expense, in the defense of such claim,
and (iii) gives Actel the right to control the defense and settlement of
any such claim, except that (A) Actel shall not enter into any settlement
that materially affects Infineon's rights or interest without Infineon's
prior written approval, and (B) Infineon shall have the right, at its own
expense, to participate in the defense and settlement of such claim, with
counsel of Infineon's own choosing. In addition, Actel shall, at Actel's
own cost and sole discretion, take one of the following measures:
(i) procure for Infineon the right to use the Actel Item, or
(ii) modify the Actel Item to become non-infringing or deliver an
equivalent non-infringing Item.
If Actel determines in its sole discretion that neither of the foregoing are
available or commercially feasible, Actel may terminate, by giving one (1) month
written notice to Infineon, all rights and licenses granted to Infineon under
this Agreement with respect to the Actel Item and refund all amounts paid by
Infineon under this Agreement. Notwithstanding, Actel shall remain obliged to
hold harmless Infineon from and against all claims, which (i) at the date the
notice termination becomes effective, have yet been arisen and/or (ii) arise
from Actel's conduct or Infineon's conduct, such as use of the Actel Item for
manufacture of Infineon C11FL PRODUCTS, performed prior to the date the notice
termination becomes effective.
12.4 Exclusions to Indemnity by Actel. Any liability of Actel for infringement
of third party IPR by shall be excluded if the infringement is not caused
by the Actel Item. Actel shall also have no obligation to indemnify if the
infringement of the third party IPR arises as a result of (i) the
combination of a noninfringing Actel Item with any item not supplied by
Actel; (ii) modification of the Actel Item by Infineon or its customers or
by Actel in compliance with Infineon's designs, specifications, or
instructions; or (iii) continued allegedly infringing activity by Infineon
after Infineon has been notified of the possible infringement.
12.5 Exclusive Remedy. This Section 12 sets forth sole liabilities and exclusive
remedies of the parties for infringement of any IPR by any Actel Item or
Infineon Item.
13. Non-Exclusivity
Nothing in this Agreement shall constitute any exclusivity between the
Parties regarding the subject matter of this Agreement. Subject to the
restrictions set forth in Sections 7 and 10, either Party shall be free to
carry out any development, which competes with the other Party's business
activities, alone or jointly with a third party and/or develop and have
developed, make and have made or otherwise acquire, sell or otherwise make
available same to third parties products that are similar and comparable to
any product referred to under this Agreement.
14. Term and Termination
14.1 Term. This Agreement shall become effective on the EFFECTIVE DATE and shall
continue indefinitely unless it expires or is terminated in accordance with
this Section 14.
14.2 Expiration. This Agreement shall expire upon of expiry of Actel's rights to
the Wafer Corridor under Sections 4.2.2 or 5.1.1 above, or by the latest
upon expiry of the three (3) year term of the Access Period (Section 5.1).
14.3 Other Termination. This Agreement may be terminated at any time by the one
Party by giving of not less than four (4) weeks' prior written notice to
the other Party
(i) if the other Party hereto is declared bankrupt or otherwise
permanently cannot fulfill its financial obligations; or
(ii) if the other Party hereto substantially defaults in the performance of
this Agreement and does not remedy the default within four (4) weeks
after receipt of a relevant request of the non-breaching Party.
In case that one Party terminates the Agreement pursuant to this Section 14.3,
such Party may revoke all rights and licenses granted to the other Party under
this Agreement immediately.
14.4 Competitors. Infineon may terminate this Agreement and/or revoke all rights
and licenses granted to Actel under this Agreement immediately upon notice
if Actel hereafter directly, or indirectly through one or more
intermediaries, controls, or is controlled by, or is under common control
with an entity that competes with CC; and Actel may terminate this
Agreement and/or revoke all rights and licenses granted to Infineon under
this Agreement immediately upon notice if Infineon hereafter directly, or
indirectly through one or more intermediaries, controls, or is controlled
by, or is under common control with an entity that competes with Actel.
14.5 Survival. Sections 1, 6, 7, 8, 9, 10, 11, 12, 13, 14.4, 14.5, 14.6, and 15
hereof shall survive any termination of this Agreement.
14.6 Test Array. Infineon and its Affiliates may continue to use the Test Array
for the development and application of C11FL TECHNOLOGY, even if the
Agreement is terminated, including any termination by Actel.
14.7 Negotiation. Before termination of this Agreement, the Parties shall
negotiate on a joint development agreement regarding the generation of
products following the C11FL TECHNOLOGY. This shall not apply in case of
termination under Section 14.3 above.
15. Miscellaneous
15.1 Headings. The headings used in this Agreement are for reference purposes
only and are in no way intended to define or limit the scope or
interpretation of the Agreement or any provisions hereof.
15.2 Non-Solicitation. The Parties agree that during the term hereof and for a
period of one (1) year following the termination of this Agreement, neither
Party shall directly or indirectly solicit or in any manner attempt to hire
any employee of the other Party or its Subsidiaries or otherwise encourage
any such employee to pursue any other employment or career opportunities
except as may be otherwise agreed in writing by the Parties. The foregoing
shall not prohibit a Party from hiring any of the other Party's personnel
who respond to a public job advertisement or other solicitations such as a
job fair, without active solicitation from the hiring Party, or who
otherwise approach the hiring Party without active solicitation from such
Party.
15.3 No Agency. The Parties are independent contractors and nothing in this
Agreement is indented or shall be construed as to one Party being
considered or permitted to be an agent, partner, or joint venturer of the
other Party.
15.4 Force Majeure. Neither Party hereto shall be liable for default of any
obligation hereunder if such default results from the force majeure which
includes, without limitation, governmental acts or directives, strikes,
acts of God, war, insurrection, riot or civil commotion, fires, flooding or
water damage, explosions, embargoes, or delays in delivery, whether of the
kind herein enumerated or otherwise, which are not within the reasonable
control of the Party affected ("Force Majeure"). In such events, the
affected Party shall, without undue delay, inform the other Party of such
circumstances together with documents of proof; and the performance of
obligations hereunder shall be suspended during, but not longer than, the
period of existence of such cause and the period reasonably required to
perform the obligations in such cases.
15.5 Notices. Any notices permitted or required hereunder shall be made in the
English language by registered mail or by fax and confirmed by registered
mail to the following addresses or such other addresses as submitted by a
Party to the other from time to time in writing:
If to Actel: If to Infineon:
Actel Corporation Infineon Technologies AG
Att: Xxxxx Xxxxx Att: Xxxxxx Xxxxxxxx
000 Xxxx Xxxxxx Xxxxxx 00000 Xxxxxxx
Xxxxxxxxx, XX 00000 XXX Germany
With a copy to: With a copy to:
Actel Corporation Infineon Technologies AG
Att: Xxxxx X. Van De Hey Att: Legal Department
000 Xxxx Xxxxxx Xxxxxx PO Box 80 09 49
Xxxxxxxxx, XX 00000 XXX Xx.-Xxxxxx-Xxx. 00
00000 Xxxxxxx
Xxxxxxx
15.6 Export and Import Compliance. Export of controlled commodities, technical
data, or information about such commodities or data may be prohibited by
law. Both Parties agree to take all steps reasonably necessary to comply
with applicable export and import laws and regulations as they apply to use
and distribution of the subject matter of this Agreement.
15.7 Explicit Grants. Except as specifically provided for in this Agreement, no
rights or licenses of any kind (whether express or implied) are granted
hereunder.
15.8 Non-Waiver. No express or implied waiver by any of the Parties to this
Agreement of any breach of any term, condition or obligation of this
Agreement shall be construed as a waiver of any subsequent or continuing
breach of that term, condition or obligation or of any other term,
condition or obligation of this Agreement of the same or of a different
nature. Any waiver, consent, or approval of any kind regarding any breach,
violation, default, provision or condition of this Agreement must be in
writing and shall be effective only to the extent specifically set forth in
such writing.
15.9 Entire Agreement. This Agreement and all documents referred to herein,
constitutes the entire agreement between the Parties with respect to the
subject matter therein described, and supersedes any prior or simultaneous
communications, representations or agreements with respect hereto, whether
oral or written.
15.10Written Form. Additions and amendments to this Agreement shall only be
valid if made in writing and duly signed by the Parties. The requirement of
the written form can be waived itself only in writing.
15.11Assignment. This Agreement may not be assigned by either Party without the
prior written consent of the other Party. However, a Party may, even
without consent of the other Party, assign this Agreement to an entity (i)
to which the assigning Party transfers all or a substantial part of its
assets, or (ii) with which the assigning Party merges, reorganizes, or
consolidates, or (iii) which otherwise acquires control of the assigning
Party.
15.12Dispute Resolution. All disputes arising out of or in connection with this
Agreement, including any question regarding its existence, validity or
termination, shall be settled finally and binding by arbitration under the
Rules of Arbitration of the International Chamber of Commerce, Paris
("Rules") by three arbitrators in accordance with the said Rules.
Arbitration shall take place in London, United Kingdom, whereas its
procedural law shall apply where the Rules are silent. The language to be
used in the arbitration proceeding shall be English.
15.13Governing Law. This Agreement shall be subject to the substantive law in
force in Switzerland without reference to its conflicts of law provisions.
The application of the United Nations Convention on Contracts for the
International Sale of Goods of April 11, 1980 shall be excluded.
15.14Severability. If any provision of this Agreement is held to be invalid,
illegal or unenforceable under applicable law the remaining provisions
shall continue to be in full force and effect. The Parties undertake to
replace the invalid provision or parts thereof by a new provision, which
will approximate as closely as possible the economic result intended by the
Parties.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
by their respective duly authorized representatives:
Infineon Technologies AG Actel Corporation
Munchen
By: /s/ Xxxxxx Xxxxxxxx By: /s/ Xxxxx Xxxxx
------------------- ---------------
Name: Xxxxxx Xxxxxxxx Name: Xxxxx Xxxxx
Title:VP Operations CC Title:Sr. V.P. Technology
& Operations
By: /s/ Xxxxxxxx Xxxxx By:
------------------
Name: Xxxxxxxx Xxxxx Name:
Title:Sen. Director Coop Title:
