* Confidential treatment has been granted or requested with respect to
portions of this exhibit, and such confidential portions have been deleted and
separately filed with the Securities and Exchange Commission pursuant to Rule
24b-2 or Rule 406.
TECHNOLOGY LICENSE AND SERVICES AGREEMENT
THIS TECHNOLOGY LICENSE AGREEMENT (the "Agreement"), is dated this 14 day of
December, 2000, and made by and between RAMTRON International CORPORATION
("Ramtron"), a Delaware, USA, corporation having its principal office at 0000
Xxxxxxx Xxxxx Xxxxxxxx Xxxxxxx, Xxxxxxxx 00000, Xxxxxx Xxxxxx of America, and
Infineon Technologies AG, a German Corporation with a principal place of
business at X.X. Xxx 000000 Xxxxxx, Xxxxxxx ("Infineon"). Collectively,
Ramtron and Infineon may be referred to in this Agreement as the "Parties", or
individually as "Party".
R E C I T A L S
Whereas, Ramtron is the owner of and/or controls certain Ramtron FRAM
Technology (defined below) including certain patents and patent applications
related to proprietary design, development and manufacture of ferroelectric
semiconductor technology.
Whereas, Infineon wishes to obtain from Ramtron, and Ramtron is willing to
grant Infineon, a license to said Ramtron FRAM Technology for use in the
manufacture and sale of FRAM Products.
Whereas, Infineon is the owner of and/or controls certain Infineon Background
Technology including certain patents and patent applications related to
proprietary design, development and manufacture of ferroelectric semiconductor
technology.
Whereas, Ramtron wishes to obtain from Infineon, and Infineon is willing to
grant Ramtron, a license to said Infineon Background Technology and subsequent
Infineon Improvements for use in the manufacture and sale of FRAM Products.
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 Infineon hereby agree
as follows:
1) ARTICLE I - Definitions
a) "dollars" or "$" means United States currency unless otherwise
specified.
b) "Effective Date" means the date of this Agreement first set forth
above.
c) "FRAM Products" shall collectively mean: Standard FRAM Products;
Embedded FRAM Products; and, RF/ID FRAM Products as defined separately
below:
Page-1
i) Standard FRAM Products: means any semiconductor memory device
which utilizes Ramtron FRAM Technology;
ii) Embedded FRAM Products: means any semiconductor memory device that
monolithically combines Ramtron FRAM Technology with other
electronic functionality wherein **
** .
The area ratio shall be calculated by the area of FRAM array and
associated memory control circuits, divided by the result of total
die area minus pad area.
iii) RF/ID FRAM Products: means any semiconductor device that
monolithically combines Ramtron FRAM Technology with the necessary
circuitry for that device to communicate by contactless means with
a remote sensor.
d) "FRAM Technology" means any technology including intellectual property
rights, pertaining to the design, manufacture or production of non-
volatile, random access semiconductor memory devices that utilize
binary polarization states on the hysteresis curve of ferroelectric
material.
e) "Infineon Background Technology" means FRAM Technology owned by
Infineon relating to the fabrication of memories which FRAM Technology
existed prior to the Effective Date of this Agreement.
f) "Infineon's Improvements" means improvements, enhancements and
developments to the Ramtron FRAM Technology and/or Infineon Background
Technology which are made solely by Infineon or its Subsidiary,
** .
g) "Net Sales" means the total of all gross amounts
**
invoice or charge purchasers or otherwise receive,
for or with regard to the sale, or other transfer for value of FRAM
Products in packaged device or wafer form that are manufactured and
sold, disposed of, or otherwise transferred by ** , less
costs of insurance incident to transportation and shipping charges,
excise taxes and customs duties allowances for actual returns and
uncollectable accounts. Should ** sell such FRAM
Products in combination with other components or equipment, then the
calculation of Net Sales shall be based on the price normally charged
by ** for such FRAM Products when separately invoiced or
priced, or if no such separately invoiced or priced sales of such FRAM
Products have been made, then the calculation of Net Sales shall be
based on the price which ** would charge for such FRAM
Products in an arm's length commercial sale transaction for cash.
Page-2
h) "Ramtron FRAM Technology" shall include Ramtron IPR and Ramtron
Improvements.
i) "Ramtron's Improvements" means all improvements, enhancements and
developments to the Ramtron FRAM Technology, including Ramtron IPR,
and Ramtron Improvements and/or to the Infineon Background Technology
made solely or jointly by Ramtron, or its Subsidiaries, or jointly by
Ramtron with third parties, or jointly by Ramtron Subsidiaries with
third parties during the term of this Agreement and to which Ramtron
has the right to license and disclose unless precluded from issuing
such license or making such disclosure due to agreements with third
parties.
j) "Ramtron Intellectual Property Rights" or "Ramtron IPR" shall mean
certain confidential and proprietary technology related to FRAM
Technology developed and/or owned by Ramtron, the patents and patent
applications to which Ramtron has the right to grant a license to
Infineon, any maskwork rights, copyrights, trade secrets, know-how
and other intellectual property rights in all countries of the world
Ramtron FRAM Technology made or conceived prior to the date of
expiration or termination of this Agreement or which are acquired by
Ramtron or are controlled by Ramtron or Ramtron has the right to
grant licenses to Infineon hereunder as of the Effective Date or
during the term of this Agreement and which consist of or relate to
FRAM Technology.
k) "Royalty Period" shall mean a period beginning, with respect to each
Party ** , on the date of
first commercial sale of a FRAM Product that incorporates the
specified Ramtron FRAM Technology, or Infineon Background, or Infineon
Improvements (as the case may be) by such Party **
** , and which period shall continue for ** .
l) "Royalty Quarter" means a period of three (3) months ending on the
last day of March, June, September and December of each year this
Agreement is in effect.
m) "Subsidiary(ies)" means any corporation, company or other entity in
which Infineon or Ramtron, now or hereafter, owns or controls,
directly or indirectly, fifty percent (50%) or more of the voting
stock entitled to vote for election of directors, but only so long as
such ownership or control exists.
n) "Technology License" shall collectively mean the Ramtron grant to
Infineon set forth in Section 2(a)(i)(1), and the Infineon grants to
Ramtron set forth in 2(a)(ii)(1)(a) and 2(a)(ii)(2)(a).
Page-3
2) ARTICLE II - Technology License
a) Grants / Royalties:
i) Ramtron Grant to Infineon
(1) Grant - FRAM Technology and FRAM (registered trademark)
Trademark: Ramtron hereby grants to Infineon and its
Subsidiaries, ** , a worldwide, non-
exclusive, ** ,
non-transferable, perpetual, non-sublicensable
(other than as set forth in this Agreement), right and
license or sublicense to use Ramtron's FRAM Technology to
design, have designed, develop, have developed, manufacture,
have manufactured, use, sell, lease and/or otherwise dispose
of FRAM Products. This part of the Technology License may not
be used by Infineon for any purpose other than those
specifically stated in this Section 2(a)(i)(1). Ramtron
hereby further grants to Infineon the right to utilize
Ramtron's FRAM (registered trademark) trademark in connection
with FRAM Products. Ramtron makes no representation,
warranty or covenant of any type whatsoever regarding such
trademark.
(2) Infineon's ** Sublicense ** : Infineon shall have the
right to sublicense Ramtron FRAM Technology ** as
follows:
(a) ** or
(b) Should Infineon exercise its right to sublicense FRAM
Technology ** in combination with Infineon
Background Technology and/or Infineon Improvements, then
in such event Ramtron shall receive **
of any license fee paid to Infineon from such
sublicensee **
** which shall be
paid to Ramtron when the license fee is received by
Infineon. In no event shall Infineon sublicense only
Ramtron FRAM Technology ** , it being the
intention hereof that any such sublicense by Infineon
** shall include a grant of Ramtron FRAM
Technology and Infineon Background Technology and/or
Infineon Improvements.
Page-4
(3) Infineon ** : With respect to any sublicense
agreement entered into between Infineon and a sublicensee
after the Effective Date, Infineon shall, inter alia, make
reasonable efforts to provide for a royalty-free sublicense
in favor of Ramtron for all improvements made solely by
** and/or made jointly by Infineon and
** in order for Ramtron to design, develop, have
developed, manufacture, use, sell, lease and/or otherwise
dispose of FRAM Products that incorporate any such
improvement. If Infineon is unable to secure such sublicense
on all of the terms set forth herein in favor of Ramtron,
Infineon shall also use reasonable efforts with any
authorized sublicensee to have such sublicensee execute a
covenant not to xxx Ramtron for Ramtron's own use of such
improvement. Notwithstanding any other provision of this
subparagraph, any such sublicensee shall comply with the
confidentiality/non-disclosure provisions consistent with
this Agreement.
(4) Infineon's ** Royalties to Ramtron. In further
consideration of ** granted
herein by Ramtron, Infineon shall pay Ramtron the royalties
set forth immediately below based on any Net Sales of FRAM
Products to third parties for the duration of the Royalty
Period ** the
Ramtron FRAM Technology.
(i) Standard FRAM Products:
1. ** of Net Sales for the first
** years of the Royalty Period.
2. ** of Net Sales for the years **
** of the Royalty Period.
3. ** of Net Sales for the years
** of the Royalty
Period.
(ii) Embedded FRAM Products: The royalty rate will
be determined by ** .
(iii) RF/ID FRAM Products: The royalty rate for RF/ID FRAM
Products is ** of the Net Sales by
** for the duration of the Royalty Period.
Page-5
ii) Infineon Grants to Ramtron
(1) Infineon Background Technology:
(a) Grant: Infineon hereby grants to Ramtron, a **
** , non-
exclusive, nontransferable, non-sublicenseable (except
as set forth below), worldwide and perpetual license or
sublicense, as the case may be, to use Infineon
Background Technology to design, develop, manufacture,
use, or sell FRAM Products incorporating Infineon
Background Technology. This part of the Technology
License may not be used by Ramtron for any purpose other
than as stated in this Section 2(a)(ii)(1)(a).
(b) Ramtron's ** Sublicense ** . Ramtron may
sublicense Infineon's Background Technology to **
sublicensees without payment by Ramtron of any
additional license fees to Infineon.
(c) Ramtron ** Royalties to Infineon. Should
** sell FRAM Products incorporating
Infineon's Background Technology, then Ramtron shall pay
Infineon the applicable royalty (set forth below) during
its Royalty Period:
(i) Standard FRAM Products and RF/ID FRAM Products:
For the first ** years of the Royalty Period,
a ** royalty ** years
of the Royalty Period.
(ii) Embedded FRAM Products: A rate to be determined by
** .
(2) Infineon's Improvements.
(a) Grant: Infineon hereby grants to Ramtron **
** , non-exclusive,
nontransferable, non-sublicensable (except as set forth
below), worldwide and perpetual license or sublicense,
Page-6
as the case may be, to use Infineon's Improvements to
design, develop, manufacture, use, or sell FRAM Products
that incorporate Infineon's Improvements. This part of
the Technology License may not be used by Ramtron for
any purpose other than as stated in this Section
2(a)(ii)(2)(a).
(b) Ramtron's Sublicense ** : Infineon hereby grants
Ramtron ** to sublicense Infineon's
Improvements ** .
(c) Ramtron's ** Royalties to Infineon: Ramtron
shall pay royalties to Infineon based on **
** for the
duration of the Royalty Period. The royalty amounts
shall be negotiated in good faith between Ramtron and
Infineon ** , but in no event will the
royalty rate payable by Ramtron be greater than the
Infineon ** royalties as set forth in paragraph
2(a)(i)(4) of this Agreement.
(d) Ramtron Sublicensees: With respect to any sublicense
agreement entered into between Ramtron and a sublicensee
after the Effective Date, Ramtron shall, inter alia,
make reasonable efforts to provide for a royalty-free
sublicense in favor of Infineon for all improvements
made solely by the sublicensee and/or made jointly by
Ramtron and the sublicensee in order for Infineon to
design, develop, have developed, manufacture, use, sell,
lease and/or otherwise dispose of FRAM Products that
incorporate the improvement. If Ramtron is unable to
secure such sublicense on all of the terms set forth
herein in favor of Infineon, Ramtron shall also use
reasonable efforts with any authorized sublicensee to
have such sublicensee execute a covenant not to xxx
Infineon for Infineon's own use of such improvement.
Notwithstanding any other provision of this
subparagraph, any such sublicensee shall comply with the
confidentiality/non-disclosure provisions consistent
with this Agreement.
b) Certification of Royalties. Each party with an obligation to collect
and pay a royalty pursuant to this Agreement (the "Reporting Party")
shall, within ** after collecting royalties ** ,
Page-7
furnish to the other party a statement, certified by a financial
officer of the Reporting Party, concerning the Net Sales by or on
behalf of the Reporting Party ** for respective FRAM
Products sold, disposed of, or otherwise transferred by the Reporting
Party ** . The statement shall be in sufficient
detail to permit the computation of the royalties due for such sales,
and shall accompany such statement by payment, in immediately
available dollar funds, of the royalties due according to that
statement.
3) ARTICLE III - Compensation. Infineon acknowledges that Ramtron has
certain most favored nation ("MFN") provisions in certain Ramtron license
agreements with third parties relating to the sufficiency of consideration
paid for Ramtron FRAM Technology. The Parties further acknowledge that
Infineon and Enhanced Memory Systems, Inc. ("EMS", a subsidiary of Ramtron
in which Infineon owns a minority interest) have certain agreements in
effect that include Infineon supplying product wafers to EMS at a
favorable price.
4) ARTICLE IV - FRAM Contract Manufacturing and Contract Design Services:
a) Contract Manufacturing: During the term of this Agreement, and when
Infineon (or any of its Subsidiaries) develops its own FRAM
manufacturing capacity, Ramtron shall have the right, but not the
obligation, to purchase FRAM Products from Infineon. In such event,
Infineon shall manufacture FRAM Product wafers for Ramtron in an
amount equal to **
** wafer manufacturing capacity (which shall include the capacity
of Infineon Subsidiaries) or ** wafers per month,
whichever is less. Ramtron's right to purchase such amounts of FRAM
Products from Infineon shall be subject to: 1) completion of the
technology qualification for the applicable Infineon process by
Infineon in the case of Ramtron FRAM Products; 2) prior product
qualification by Infineon in the case of Infineon Standard FRAM
Products; 3) receipt by Infineon of a revolving monthly forecast of
Ramtron's requirements from Infineon at least twelve (12) months prior
to the beginning of the respective quarter when delivery is intended;
and, 4) receipt by Infineon from Ramtron of binding purchase orders
for such FRAM Products at least four (4) months prior to the intended
delivery date in the case of finished wafers, or five (5) months prior
to the intended delivery date in the case of package and tested
devices.
Should Infineon not have at least ** in a
manufacturer authorized to use FRAM Technology as referenced herein,
then Infineon shall endeavor with such manufacturer to secure a call
on capacity in favor of Ramtron consistent with the terms set forth
herein. Notwithstanding anything in this Agreement to the contrary,
the right to contract manufacturing shall exist for a term of **
years from first commercial shipment of FRAM Products to Ramtron.
Page-8
b) Price to Ramtron: Ramtron will have the right to purchase (i) FRAM
Products designed and developed by Ramtron and manufactured by
Infineon, and (ii) Standard FRAM Products developed by Infineon or
jointly by Infineon and a third party, on a price equal to **
** . Ramtron may resell the latter of such
products as Ramtron branded products. All FRAM Products sold by
Infineon (manufactured by a third party, Infineon, or jointly with a
third party as the case may be) to Ramtron shall consist of finished
wafers and/or packaged, tested devices, as mutually agreed by the
Parties.
c) Product Design Services: Ramtron agrees to provide product design
support to Infineon by way of additional design resources, capped at
** of Ramtron's design capability and subject to
mutual agreement if the resources required exceed the **
limit. Infineon agrees to establish and communicate to Ramtron
initial support resource requirements and provide Ramtron a
** lead-time to establish or allocate the necessary resources.
Similarly, Infineon agrees to provide Ramtron with a **
** support requirement forecast and agrees to commit to the
** of said forecast. Infineon agrees to reimburse
Ramtron for all resource expenses at the rate for **
** . At its sole option, Ramtron may opt to exercise
market rights for product(s) under development. Should Ramtron
exercise such option, Ramtron agrees to pay ** .
Within ** of Infineon's request for design services,
Ramtron shall evaluate the request and no later than **
following receipt of such request, Ramtron shall notify Infineon
whether Ramtron shall exercise its marketing rights. Upon Ramtron's
decision regarding exercise of marketing rights, Infineon shall have
the option to withdraw the request for design services and will inform
Ramtron of such decision within ** of Ramtron's decision.
Infineon shall indicate at the time of request if market rights for
Ramtron are not available. In the event Infineon's project is
proprietary and Ramtron can not exercise market rights, Ramtron and
Infineon shall mutually agree on Ramtron's acceptance of the design
project. Ramtron's purchase rights for jointly designed products
apply as defined in subparagraph 4 (a) above.
5) ARTICLE V - Non-Transferability of Technology License. Except as provided
in this Agreement, Article XII(b), the Technology License and the certain
sublicense rights described in this Agreement may not be assigned,
sublicensed, subdivided or transferred in any way whatsoever by any party
to this Agreement without the other party's prior written consent, such
consent to be within the sole discretion of the party whose consent is
requested.
Page-9
6) ARTICLE VI - Disclaimers of Warranty and Limitations of Liability
a) Reliance on Disclaimers and Limitations. The license fees and
royalties for the Technology License, and the substance of the other
rights and duties of Infineon and Ramtron in this Agreement, have been
negotiated in reliance on, and are based upon the applicability and
enforceability of, the disclaimers, warranties and limitations of
liability contained in this Article VI.
b) DISCLAIMER OF WARRANTY. EXCEPT AS SPECIFICALLY PROVIDED IN THIS
ARTICLE, NEITHER PARTY MAKES ANY WARRANTIES TO THE OTHER PARTY OR TO
ANY THIRD PARTY BY VIRTUE OF THIS AGREEMENT OR THE TRANSACTIONS
CONTEMPLATED HEREUNDER, AND EACH OF THE PARTIES EXPRESSLY DISCLAIMS
ALL WARRANTIES, WHETHER EXPRESS, IMPLIED OR ARISING BY USAGE OF TRADE,
INCLUDING ALL IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, AND THE OTHER PARTY UNCONDITIONALLY ACCEPTS SUCH
DISCLAIMER. NEITHER PARTY SHALL MAKE OR PASS ON TO ITS CUSTOMERS OR
SUBLICENSEES ANY WARRANTY OR REPRESENTATION ON BEHALF OF THE OTHER
PARTY.
c) Limitation of Liability for Termination. Notwithstanding anything
contained in this Agreement or under applicable law to the contrary,
in no event shall either party , ITS DIRECTORS, OFFICERS, EMPLOYEES,
AGENTS, AND/OR ATTORNEYS be liable for any indirect, special,
incidental or consequential damages, including without limitation,
loss of business, income or profits, resulting from its termination
of this Agreement for cause, whether or not it has been advised of the
possibility of such damages arising in any way out of the termination
of this Agreement. Without limiting the generality of the foregoing,
either party assumes all risks arising out of or relating to its
inability to meet any commitments made to and/or perform any
agreements entered into with any of its customers (wholesale or
retail) or sublicensees in the event of any termination by the other
party of this Agreement for cause. Provided, however, that nothing
contained in this Section is intended to disclaim or waive any rights
that either Party may have against the other with respect to actual
and direct damages suffered by the Party as a result of a material
breach of this Agreement or the wrongful termination of this Agreement
by the other Party and provided further that nothing contained in this
Section shall prejudice or restrict a Party's right and entitlement to
also terminate this Agreement in the event of any breach of this
Agreement by the other Party.
d) The disclaimers and limitations of liability set forth immediately
above shall not apply in cases of gross negligence or intentional
violation of this Agreement.
Page-10
e) Ramtron warrants and represents that it is the beneficial owner of the
Ramtron FRAM Technology with the right to grant the licenses under
Art. 2 (a) (i). Ramtron has no reason to believe that any of its
patents granted as of the date of this Agreement are invalid or its
Ramtron FRAM Technology is infringing upon any intellectual property
of any third party. Notwithstanding the foregoing and as a limitation
of the representation and warranty set forth herein, Ramtron hereby
notifies Infineon of patent interference claims pending before either
the United States Patent and Trademark Office and/or the U.S. District
Court for the District of Columbia (Patent Interference Counts:
102,723; 102,724; 102,725; 102,726; and, 102,727). The parties agree
that, if any of the patents or patent applications comprising the
Ramtron FRAM Technology should be held to be invalid or void, or be
substantially reduced in their scope, the royalties payable hereunder
shall be adapted to reduce the value of the license granted hereunder.
The Parties shall discuss the adaptation (if any) of the royalties in
good faith.
7) ARTICLE VII - Protection of Technology.
a) Patents, Copyrights, and Intellectual Property . Either Party shall
at their own cost, obtain such patent, copyright or similar
registration or intellectual property protection of the Ramtron
Improvements or Infineon Improvements (as the case may be) throughout
the world as is reasonable having regard to: the relative cost
thereof; the benefit of the protection obtained; and all other
relevant circumstances and in any case not less protective than its
respective past practice. At the end of each quarter and upon request
by a Party, the other Party shall provide a list of all patents
issuing in favor of a Party, or its Sublicensees, pertaining to the
Ramtron FRAM Technology or Infineon Improvements (as the case may be)
used in the design, development or manufacture of FRAM Products.
b) Infringement by Ramtron IPR, Infineon Background Technology and/or
Infineon Improvements. The Parties acknowledge that Ramtron owns
certain patents concerning Ramtron FRAM Technology, and that Infineon
owns certain patents and/or intellectual property rights concerning
Infineon Background Technology and Infineon's Improvements.
Collectively, for purposes of this subparagraph, Ramtron FRAM
Technology, Infineon Background Technology and Infineon's Improvements
shall be referred to herein as the "Licensed Patents". In the event
that one or more of the Licensed Patents is, or in the reasonable
judgment of Ramtron or Infineon as the respective owners/licensors
thereof ("Licensor"), is likely to become the subject of any legal
action based in whole or in part on a claim that any such respective
Licensed Patents infringe the proprietary rights of any third person,
then the respective Licensor shall forthwith notify the licensee in
writing and in detail in order to enable the Licensee to evaluate the
risks connected with that claim. The Licensor shall defend any such
claim and shall have control of the defense of such claim, action,
Page-11
lawsuit or proceeding, and shall pay the costs thereof (except any
cost of the Licensee's associated attorneys, if any); and the Licensee
of such Licensed Patents shall assist the Licensor, at the Licensor's
cost and expense, in the defense of any such claim, action, lawsuit,
or proceeding. Any Licensee of Licensed Patents herein shall have the
right to be represented by an attorney at its own expense in any such
controversy.
c) Assistance. Either Party shall use reasonable efforts to provide the
other Party with (i) reasonable assistance in connection with the
defense and settlement of a claim or action, including all the
necessary information related to the infringing technology, and (ii)
reasonable consultation for the achievement of a viable alternative
solution to avoid such infringement issue. Subject to Section VI (e),
THIS SECTION STATES EACH PARTY'S TOTAL LIABILITY AND RESPONSIBILITY,
AND ITS SOLE REMEDY FOR ANY ACTUAL OR ALLEGED INFRINGEMENT OF ANY
PATENT, TRADEMARK, COPYRIGHT, OR OTHER INTELLECTUAL PROPERTY RIGHT
LICENSED HEREUNDER, OR ANY PART THEREOF. Subject to Section VI (e),
THIS SECTION IS IN LIEU OF AND REPLACES ANY OTHER EXPRESSED, IMPLIED
OR STATUTORY WARRANTY AGAINST INFRINGEMENT. Subject to Section V(e),
IN NO EVENT SHALL A PARTY'S DIRECTORS, OFFICERS, EMPLOYEES, AGENTS,
AND/OR ATTORNEYS BE LIABLE FOR ANY INDIRECT, SPECIAL, INCIDENTAL, OR
CONSEQUENTIAL DAMAGES RESULTING FROM ANY SUCH INFRINGEMENT.
d) Infringement by Third Party. Upon becoming aware of any material
infringement by a third party of any of patents and trademark rights
covered by this Agreement (including without limitation those rights
pertaining to the patents referenced herein and/or any trademark),
each Party shall promptly notify the other Party of such infringement.
8) ARTICLE VIII - Confidentiality.
a) Confidentiality. The Parties agree with each other to keep
confidential and not without the prior written consent of the other
party to disclose to any person or entity any information concerning,
but not necessarily limited to: i) the nature of this Agreement; ii)
Ramtron FRAM Technology; iii) Infineon Background Technology; and/or,
iv) Infineon's Improvements (collectively, the "Information"), except
as provided in this Agreement. Each party further agrees to bind in a
manner so as to be legally enforceable its employees, agents,
consultants, advisors and representatives to such confidentiality
including without limitation as to such disclosures as may be
necessary for the Parties performance of their obligations and
enjoyment of their rights under this Agreement, and otherwise as the
relevant other party may consent to in writing. Notwithstanding
anything herein to the contrary, ** .
Page-12
b) Marking of Documents and Materials. 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
Information of or about the FRAM Products or FRAM Technology 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.
c) Indemnification. Without limitations of any other right, remedy or
benefit accruing to either party under this Agreement or by law, each
party shall indemnify the other party fully for all damages caused by
any unauthorized disclosure or use of any Information and intended to
be kept secret, confidential and proprietary in accordance with this
Article by such party or its representatives, employees, agents,
consultants, sublicensees, etc.
d) Public Domain. The provisions of this Article shall not apply to any
Information that the party can demonstrate by written evidence was in
the public domain through no unlawful action or omission by such party
or obtained from third parties not bound by law or confidentiality
agreements to maintain the confidentiality thereof or in its
possession prior to receipt from the other party or was independently
developed by it.
e) Obligations to Disclose. This Article shall not prohibit the Parties
from disclosing under legally enforceable obligations any Information
required to be disclosed to any governmental authorities and shall not
prohibit the Parties from disclosing general financial and technical
information in order to obtain funding or other financial advantages
from any authority or institution or corporation or for the relevant
party to exercise its rights and perform its obligations in respect of
the Technology License or to otherwise carry on its business in the
ordinary course, provided that the party being obligated or intending
to make such disclosure shall inform the other party in writing and
use its best efforts and legal action to avoid such disclosure.
9) ARTICLE IX - Term. This Agreement and the Technology License shall remain
in full force and effect from the Effective Date until expiration or
earlier termination under Article X. Unless terminated earlier pursuant to
the terms of this Agreement, this Agreement and the Technology License
shall expire no earlier than the end of any Royalty Period and/or the end
of contract manufacturing obligations set forth in this Agreement,
provided that the licenses granted hereunder shall survive the expiration
of this Agreement except as expressly stipulated in Article X (c) (i) or
(ii).
Page-13
10) Article X - Dispute Resolution - Termination - Arbitration.
a) Disputes Regarding Royalties. Notwithstanding any other provision of
this Agreement to the contrary, in the event of any unresolved
dispute regarding the amount of any royalty payment allegedly due
under or pursuant to this Agreement, the Parties shall agree in
commercial good faith on the appointment of an internationally
recognized firm of independent certified public accountants, who
shall audit the books and records of the party whose records gave
rise to the dispute, and determine the amount, if any, of the
disputed royalty payment or payments, which determination shall be
final and legally binding on the Parties for all purposes of this
Agreement. If the Parties are unable to agree on such a firm of
public accountants, such a firm shall be appointed by the Chairman,
President or the highest officer at such time of the International
Chamber of Commerce, Paris. The Party alleging an insufficient
payment of royalties shall bear the cost of any audit conducted
pursuant to this Section if such audit concludes the royalties
actually paid were no more than five percent (5%) below the amount
determined by the third party accountant to be due hereunder. Should
the audit conclude the royalties actually paid were more than five
percent (5%) below the amount that should have been paid hereunder,
then in such event the Party owing such royalty shall immediately pay
the proper royalty amount, and shall pay the entire cost of the
audit.
b) Non-Royalty Disputes. Any controversy or dispute among the Parties
(not related to the amount of royalty payments which shall be
resolved as set forth above) and which involve the construction,
application, conditions and/or obligations of this Agreement
(including but not limited to a termination for breach, or
termination for cause), or any claims arising out of or relating to
this Agreement or the material breach thereof, shall first be
attempted to be settled through good faith negotiations. Senior
management level representatives of each party directly responsible
for the matters underlying the controversy shall use their best
efforts to meet as reasonably requested in writing by the complaining
party to resolve the controversy or dispute. Such senior parties
shall meet at a mutually agreed time and place within twenty (20)
business days of receipt a notice of dispute. They shall use best
efforts to discuss the controversy or dispute and negotiate in good
faith for a period of at least thirty (30) business days in an effort
to resolve the controversy and prior to the sending of any notice of
default and/or termination as set forth in this Agreement.
c) Alternative Dispute Resolution and Termination. Subsequent to
completing good faith negotiations set forth in subparagraph "b"
immediately above, should a dispute not involving royalties remain,
then the Parties shall initiate and attempt to complete within three
(3) months alternative dispute resolution procedures (which may
include but are not limited to mediation and/or arbitration) in an
effort to resolve the dispute. Should the Parties fail to resolve
the dispute within said three (3) month period using alternative
dispute resolution procedures, then a Party may elect to:
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i) Terminate for Material Breach. In the event of a material breach
or default (including by way of illustration but not limitation,
the failure to pay any amount when due and/or any unauthorized
licensing of any rights hereunder) by a party and/or an
authorized sublicensee of a Party to this Agreement
(collectively, the "Defaulting Party") in the performance of
respective duties, obligations or undertakings set forth in this
Agreement, the non-defaulting party (the "Non-Defaulting Party")
may terminate this Agreement pursuant to the notice and cure
provisions set forth in paragraph 10(d).
ii) Terminate Due to Bankruptcy. Either Party may terminate this
Agreement, the Technology License and other obligations/rights
set forth in this Agreement, if at any time either party is
adjudged by a court of law to be bankrupt or insolvent, or files
a petition in bankruptcy or an answer admitting the material
facts recited in such petition if filed by another, or is put or
decides to go into dissolution or liquidation, or otherwise
discontinues its business, makes an assignment for the benefit of
its creditors or enters into any other general arrangement with
its creditors, becomes insolvent, or has a trustee, receiver,
liquidator, or custodian of any kind appointed to administer any
substantial amount of its property, or is placed or enters into
any comparable situation under the laws of any other nation, or
any state or province in which its operations may be conducted,
or otherwise seeks to take advantage of any bankruptcy or
insolvency statute now or hereafter in effect in any such
location.
d) Termination Procedure. A Non-Defaulting Party electing to terminate
this Agreement shall have first complied in all respects with the
dispute resolution procedures set forth in paragraphs 10(b) and
10(c). Upon completing such procedures a Non-Defaulting Party
electing to terminate shall:
i) deliver written notice of material default or termination to the
Defaulting Party. Such notice of material default or termination
shall identify the specific material breach or default involved.
If within ninety (90) days after the date of such notice of
material default or termination the Defaulting Party receiving
such notice shall not have completely remedied, or commenced
diligently to substantially remedy the material breach or default
to the reasonable satisfaction of the Non-Defaulting Party and
within a commercially reasonable time, the Non-Defaulting Party
shall have the right, in addition to any other right, remedy or
benefit it may have under this Agreement to terminate this
Agreement.
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ii) The Non-Defaulting Party completing the notice requirements set
forth in subparagraph "(i)" immediately above, may terminate this
Agreement by delivering a final written notice of termination to
the Defaulting Party. Such written notice of termination shall
be effective after receipt by the Defaulting Party and five (5)
days after the date set forth on such notice of termination.
e) Effect of Termination. Upon termination of this Agreement:
i) The rights under the Technology License granted by the Non-
Defaulting Party to the Defaulting Party under this Agreement
shall immediately terminate and shall immediately revert to, and
vest in, the Non-Defaulting Party. Provided, however, the Non-
Defaulting Party may, in its sole discretion, elect that certain
rights it granted under this Agreement may survive such
termination. Upon termination, any rights granted under this
Agreement by the Defaulting Party to the Non-Defaulting Party
shall survive for the duration of such rights, and remain vested
in the Non-Defaulting party, and any authorized sublicensee of
the Non-Defaulting Party. It is the intention and agreement
hereof that a Defaulting Party (including but not limited to its
subcontractors, agents, employees, shareholders, sublicensees, or
any person or entity in any way affiliated with, or related to
the Defaulting Party) shall after termination hereof have
absolutely no interest whatsoever in rights previously granted to
it by the Non-Defaulting Party unless the Non-Defaulting Party
elects to preserve such rights and so states in its notice of
termination. Accordingly, from the effective date of said
termination of such rights, unless authorized by the Non-
Defaulting Party, no such rights may be exercised in any way, in
whole or in part, by the Defaulting Party or any person or entity
with whom the Defaulting Party shall have entered into any
agreement or understanding relating (including any authorized
sublicensee of the Defaulting Party) in any way to the Technology
License or any of the rights granted under this Agreement whether
or not such agreement or understanding shall have been approved
by either party.
ii) Except and to the extent that the Defaulting Party has lawfully
acquired or is lawfully able to exercise such rights, the
Defaulting Party and/or any sublicensee shall, unless
specifically authorized by the Non-Defaulting Party, cease
forthwith the manufacture, sale and distribution of any products
(including but not limited to any FRAM Products) under the
Technology License and not use further, except as herein
provided, and return to the Non-Defaulting Party specifications,
data sheets, drawings, designs, photographs, photostats,
negatives, undeveloped film, tape recordings and other electronic
records, writing in any language and any other documents or
materials furnished to the Defaulting party, including without
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limitation any and all notes and written or electronic
transcriptions received from the Non-Defaulting Party on any part
of the Ramtron FRAM Technology, the Infineon Background
Technology or Infineon Improvements and destroy any and all
similar materials in any way, in whole or in part, based thereof,
as well as any and all similar materials which in any way
contain, reflect or relate to any of the Ramtron FRAM Technology.
iii) The Defaulting Party shall offer in writing to the Non-Defaulting
Party the right to purchase any or all Standard FRAM Products, or
products incorporating Infineon Background Technology and/or
Infineon's Improvements, which are unsold at the time of such
termination and for which the Defaulting Party has no other
obligations of delivery to any third party. The price for such
goods shall not be less favorable than the price offered to third
parties. If the Non-Defaulting Party does not accept any such
offer within seven (7) days following receipt then it shall be
deemed to have declined same.
iv) Sale of Inventory. Notwithstanding any other provision in this
Agreement to the contrary, after termination of this Agreement, a
Defaulting Party and/or its authorized sublicensee shall be
entitled to sell existing units of FRAM Products which are in
that Party's or its sublicensees' (as the case may be) inventory
or in production or for which binding delivery obligations exist
on the date of such termination, if any, but only to existing
customers of that Party or sublicensee as of the date of
termination. Royalties shall be payable to on any Net Sales in
accordance with Article II of this Agreement. Should a
Defaulting Party and/or its sublicensee derive any profit from
the sale of any such products after termination due to its
default, then any such profit shall be paid to the Non-Defaulting
Party.
f) Final Resolution. Any dispute or claim arising out of or in
connection with this Agreement which has not be resolved pursuant to
this Article, shall be finally settled either through alternative
dispute resolution procedures mutually agreed to by the Parties. If
no such alternative dispute resolution procedure(s) is agreed to by
the Parties, then the dispute shall be resolved by binding final
arbitration in Switzerland under the Rules of Arbitration of the
International Chamber of Commerce by three (3) arbitrators appointed
in accordance with those rules. The arbitrators will apply Swiss law
to the merits of any dispute or claim, without reference to conflict
of law principles. Judgment of the award rendered by the arbitrator
may be entered in any court having jurisdiction thereof.
Notwithstanding the foregoing, the Parties may apply to any court of
competent jurisdiction for temporary or preliminary injunctive relief
without breach of this arbitration provision.
Page-17
g) Survival. Articles 2, 5, 6, 7(b), 7(c), 7(d), 8, 10, 11, and 12 of
this Agreement shall permanently survive the expiration of this
Agreement. The licenses granted hereunder shall survive any
expiration of this Agreement. Should this Agreement be terminated
pursuant to its terms, then the licenses may survive, but only at the
election of the Non-Defaulting Party.
11) ARTICLE XI - Governmental Requirements.
a) Compliance With Laws. In performing their respective duties
hereunder and in carrying out their activities under the Technology
License, the Parties shall comply with all applicable laws,
regulations, procedures, and non-appealable (to the extent legally
obligated) ordinances and rulings of any governmental authority
having jurisdiction over Infineon, Ramtron, Infineon's use of the
Technology License, Ramtron's use of Infineon's Background Technology
and/or Infineon's Improvements, or Infineon's design, manufacture,
use, sale, lease or distribution of FRAM Products.
b) Governmental Approvals. Either Party shall be responsible for
obtaining any necessary approval of this Agreement by any
governmental authorities having jurisdiction over its activities
pursuant to this Agreement and to obtain the consent of any
governmental authorities to the remittance of payments under this
Agreement in accordance with its terms, in the event that any such
consent should become necessary.
c) Exports. Without limitation of any other provision of this
Agreement, neither Party shall, without receiving the prior
authorization of the United States Office of Export Administration or
other appropriate governing body exercising controls over exports and
re-exports of United States or any other country's goods and
technical data, export or re-export directly or indirectly any
technical data included in FRAM Products or the Ramtron FRAM
Technology or Infineon Background Technology or Infineon
Improvements, as the case may be, to any country or area forbidden to
such exports under United States law or regulation, or any other
country's law or regulation.
d) Payments and Taxes.
i) Payments. Any and all payments of every kind, which may be
payable by any Party under the terms of this Agreement shall be
paid in immediately available funds in United States dollars at
such bank as the Party entitled to receive such funds may from
time to time designate in writing.
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ii) Taxes. Any and all taxes [including withholding taxes payable to
any country other than the United States (in the case of
Ramtron), or Germany (in the case of Infineon)], duties, excises
and imposts payable with respect to any sums due either Party
under this Agreement, shall be borne and discharged by the other
Party, and no part thereof shall be deducted from the amounts
otherwise payable under any provision of this Agreement, all of
said amounts to be net, free and clear of any and all deductions
under any and all conditions whatever.
Any and all taxes, charges and/or other duties (hereinafter
"Taxes") imposed on either Party (the "Recipient") with respect
to any payments to be made by or to the other Party (the "Payer")
under or in connection with this Agreement, shall be borne and
paid by Recipient, provided that any value added tax, if
applicable, may be added to the license fees agreed upon above.
If required by the laws of the Federal Republic of Germany,
Infineon may deduct Taxes imposed in Germany on Ramtron with
respect to such payments from the payments and pay such Taxes on
behalf of Ramtron. To the extent Infineon has so deducted and
paid Taxes on behalf of Ramtron, Infineon shall, if so requested
by Ramtron, submit to Ramtron official tax receipts issued by the
German tax authorities and evidencing the payment by Infineon of
Taxes in Germany on behalf of Ramtron.
To the extent the Double Taxation Convention between the Federal
Republic of Germany and the United States entitles Ramtron to
claim a reduction of or an exemption from Taxes imposed on and to
be paid by Ramtron according to the laws of the Federal Republic
of Germany, Infineon shall use reasonable efforts to support
Ramtron in obtaining a tax reduction/exemption certificate (or
the like) from the German tax authorities, if so required by the
aforementioned Double Taxation Convention and/or German tax law
to validate the aforementioned claim for tax reduction/exemption.
As long as Infineon has not received copy of such tax
reduction/exemption certificate from Ramtron, the regulations of
the foregoing paragraph shall apply.
12) ARTICLE XII - Miscellaneous
a) Authorized Successors, Assigns - Binding Effect. The rights,
benefits and obligations of the Parties under this Agreement shall be
binding upon, accrue to, and only run in favor of successors and
assigns specifically authorized and approved pursuant to this
Agreement.
Page-19
b) Assignments. Except as specifically and expressly provided in this
Agreement and notwithstanding the provisions authorizing sublicensing
herein, no Party shall make or purport to make any assignment,
transfer or conveyance, in whole or in part, of its rights and
obligations under this Agreement without the prior written consent of
the other Party, such consent to be within the other Party's sole
discretion. Notwithstanding anything herein to the contrary:
i) provided Infineon elects to transfer, sell or assign all of its
interest in its business related to FRAM Products ("Infineon's
FRAM Business"), then Infineon may, without prior approval from
Ramtron, assign all of its right, title and interest in this
Agreement to the transferee, purchaser, assignee of Infineon's
FRAM Business. In such event, should Infineon have executed
** authorized pursuant to this Agreement prior
to the sale of Infineon's FRAM Business, then such **
** shall survive the sale of Infineon's FRAM Business.
Conversely, should Infineon complete the sale of Infineon's FRAM
Business prior to executing ** as authorized
in this Agreement, then in such event such sublicense **
shall have lapsed and may not be exercised by Infineon's
successor-in-interest to Infineon's FRAM Business.
ii) provided Ramtron elects to transfer, sell or assign all of its
interest in its business related to FRAM Products ("Ramtron's
FRAM Business"), then Ramtron may, without prior approval from
Infineon, assign all of its right, title and interest in this
Agreement to the transferee, purchaser, assignee of Ramtron's
FRAM Business. In such event, should Ramtron have executed a
sublicense agreement authorized pursuant to this Agreement prior
to the sale of its Ramtron FRAM Business, then such sublicense
agreement shall survive the sale of Ramtron's FRAM Business.
Conversely, should Ramtron complete the sale of Ramtron's FRAM
Business prior to executing all sublicense agreements as
authorized in this Agreement, then in such event the right to
enter into such sublicenses shall have lapsed and may not be
exercised by Ramtron's successor-in-interest to Ramtron's FRAM
Business.
c) Governing Law. This Agreement shall take effect under, be construed
and enforced according to, and be governed by the laws in force in
Switzerland, without reference to conflict of laws principles.
d) Severability. The provisions of this Agreement are severable. If
any provision or part of this Agreement shall be held by any court or
other official body of competent jurisdiction to be invalid or
unenforceable for any reason, the remaining provision or parts hereof
shall continue to be given effect and shall bind the Parties hereto
unless the unenforceability or illegality has the consequence of
substantially altering the respective rights and obligations of the
Parties hereto.
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e) No Partnership or Other Relationship Created. The Parties are not,
nor shall any party hold itself out to be, the partner, agent, joint
venturer, employee or independent contractor of the other for any
purpose whatever, nor shall any legal or fiduciary relationship
between them, other than as may be explicitly provided in this
Agreement, exist by virtue of this Agreement. No party shall be or
become liable for any representation, act or omission of the other as
a consequence of this Agreement and no party is authorized to create
any such liability on behalf of the other. This Agreement is not for
the benefit of any third party and shall not of itself be deemed to
give any right or remedy to any third party for any purpose whatever.
f) Waivers. Any waiver exercised under any provision of this Agreement
shall not be deemed a general waiver with respect to any other
provision of this Agreement, and no failure to exercise and no delay
in exercising, any right, power or privilege hereunder shall operate
as a waiver thereof, except where specified to the contrary herein,
nor shall any single or partial exercise of any right, power or
privilege hereunder preclude any other or further exercise thereof or
of any other right, power or privilege. The rights and remedies
provided herein are, and shall be interpreted to be, cumulative and
not exclusive of any other rights provided by law or otherwise.
g) Notices. All notices permitted or required to be given to the
Parties of this Agreement shall be in writing, delivered personally,
or sent by certified or registered mail (return receipt required,
postage prepaid), by air freight (return receipt requested), or by
facsimile transmission (with receipt acknowledgment requested)
addressed to the respective party at its usual and principal place of
business. Such notices shall be deemed to have been effectively
given and received on the day of delivery if delivered personally, by
facsimile transmission or air freight.
h) Entire Agreement. This Agreement contains the entire and only
agreement of Infineon and Ramtron with respect to the Technology
License and other matters set forth in this Agreement. This
Agreement supersedes entirely any and all other agreements, either
oral or written, between the Parties with respect to the Technology
License and other matters set forth in this Agreement. Infineon and
Ramtron acknowledge that neither party has any claims against the
other under, or arising from, any prior understanding or document.
No agreement, statement or promise relating to the subject matter of
this Agreement, which is not contained herein, shall be valid or
binding.
i) Changes or Amendment. This Agreement shall be amended or
supplemented only by written instrument duly executed by or on behalf
of the Parties hereto, and if and when so supplemented or amended,
shall include all such supplements and any amendments. Any change,
revision, termination or attempted waiver of any of the provisions
contained in this Agreement shall not be binding unless evidenced by
a writing signed by both Parties.
Page-21
j) Attorneys' Fees. In the event of any controversy, claim or dispute
between the Parties hereto arising out of or relating to this
Agreement settled by arbitration, the prevailing party shall be
entitled to recover and shall collect from the losing party
reasonable expenses, including attorneys' fees and costs.
k) Force Majeure. If the performance by any party of any of its
obligations under this Agreement shall be in any way prevented,
interrupted, or hindered as a result of any force majeure, including,
without limitation, war, civil disturbance, strike or other labor
disturbance, lockout, legislation or restriction of any governmental
or other authority, fire, unavailability of materials or finished
goods, delay of carriers or any other similar circumstances (other
than financial difficulties) beyond the reasonable control of such
party, the obligations of the party concerned shall be wholly or
partially suspended during the continuance and to the extent of such
prevention, interruption or hindrance, provided however, that local
commercial unavailability of materials or finished goods shall not
alone constitute force majeure for purposes hereof if such materials
or finished goods are otherwise (even if at a higher cost) available.
A party unable to perform timely its obligations under this Agreement
due to any of the foregoing reasons must take all reasonable steps to
remedy its nonperformance or delay its performance with the least
possible delay and by doing whatever may reasonable be done to
mitigate the adverse affect of its nonperformance upon the other
party of this Agreement.
l) Headings. The headings of the Sections of this Agreement have been
inserted for convenience or reference only and shall in no way affect
the interpretation of any of the terms or conditions of this
Agreement.
m) Signatures. The Parties represent and warrant that the execution of
this Agreement has been duly authorized by all necessary corporate
action including, without limitation, approval by the respective
Boards of Directors of each party, and that this Agreement
constitutes a legally binding and enforceable obligation of the
respective Parties herein.
n) Facsimile Transmission(s): The Parties acknowledge and consent that
transmission via facsimile of this Agreement with signature(s)
apparently affixed thereon shall be conclusive evidence of a Party's
intent to be bound in all respects hereto, and that each Party may so
rely on the apparent authenticity and authority represented by such
signature(s). The Parties covenant to immediately follow-up the
sending of a facsimile transmission by sending via overnight mail an
original of any such document executed and transmitted via facsimile.
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o) Share Purchase Agreement. Notwithstanding anything in this Agreement
to the contrary, should Ramtron or Infineon terminate that certain
Share Purchase Agreement, dated as of the date hereof, between
Ramtron and Infineon, pursuant to Section 6.5 thereof, then this
Agreement shall automatically terminate effective upon such
termination of the Share Purchase Agreement. In such event, any
consideration previously tendered by a Party under this Agreement (to
the extent not due under the Technology License Agreement of even
date herewith) shall be returned to that respective Party.
IN WITNESS WHEREOF, the undersigned Parties to this Agreement have executed
this document as of the date and year first written above.
Ramtron International Corporation
A Delaware Corporation, USA
/S/ L. Xxxxx Xxxxx
-----------------------------
By: L. Xxxxx Xxxxx
Title: Chairman and CEO
Date: December 14, 2000
Infineon Technologies AG
A German Corporation, Federal Republic of Germany
By: /S/ Xxxxx Xxxxxxxxxxx
---------------------------
Name: Xxxxx Xxxxxxxxxxx
Title: Sr. Director Business Development
Date: December 14, 2000
Infineon Technologies AG
A German Corporation, Federal Republic of Germany
By: /S/ Xxxxx Xxxxx
---------------------------
Name: Xxxxx Xxxxx
Title: Corporate Legal Counsel
Date: December 14, 2000
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