Joint Development Agreement

Exhibit 10.9

[***] CERTAIN INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.


JOINT DEVELOPMENT AGREEMENT


This JOINT DEVELOPMENT AGREEMENT (" Agreement" ) is entered into as of June 1, 1999, by and between Advanced Analogic Technologies, Inc. (" AATI" ), a California corporation with offices at 1250 Oakmead Parkway, Suite 310, Sunnyvale, CA 94086 and GEM Services, Inc. (" GEM" ), a Cayman Islands corporation with offices at 43170 Osgood Road, Fremont, CA 94538. GEM and AATI are hereinafter also referred to, singly, as the " Party ," and collectively, as the " Parties ."


RECITALS


A. AATI has established capabilities in designing, engineering, manufacturing, and marketing certain semiconductor integrated circuit and discrete devices.


B. GEM has established capabilities as an outsourcing company for designing, engineering, manufacturing, and marketing packages and packaging technologies for semiconductor integrated circuit and discrete devices.


C. GEM and AATI have decided that it is in their mutual interests to cooperate in the development of certain packages commonly employed in the manufacturing, packaging and assembly of discrete and integrated circuit devices as set forth herein.

NOW, THEREFORE, in consideration of the recitals and other good and valuable consideration the PARTIES agree as follows:

1. NATURE & SCOPE OF AGREEMENT & RELATIONSHIP OF THE PARTIES


This Agreement defines guidelines and legal obligations for GEM and AATI to engage in cooperative development efforts of packages, packaging techniques, and packaging related manufacturing techniques. The Agreement also prescribes guidelines and obligations for the manufacturing of packages, whenever applicable. The Agreement describes an initial co-development effort in specifics, and sets forth a set of guidelines for future co-developments whose scope, content, and innovations have yet to be defined and agreed upon by the Parties (the initial development final deliverable and agreed upon subsequent development final deliverables are collectively referred to as " Products" ). For the purposes of this Agreement, " Processes" means those certain related processes, assembly and test techniques and other novel manufacturing and engineering know-how and innovation discovered, conceived, or developed in the course of the Parties cooperative development effort of the Products.

1.1 First Co-Development Effort : The Parties agree to co-develop a JW-Type Package comprising a proprietary modification of a plastic surface-mounted-package combining a J-lead type leaded package with a plastic body expanded to improve the lead-frame die-pad area (hence the nomenclature JW-Type packaging, an acronym for the J-lead Widebody package construction) as further described in Annex A-1 . The co-developed JW-Type Package of this Agreement houses a larger die and provides other improvements over conventional gull-wing and standard J-lead surface mount packages available today. The Parties also agree to co-develop any related Processes needed to implement a JW-Type Package. The functional, mechanical, technical and reliability specifications of such a JW-Type Package (the " Product Success Criteria" ) are to be included along with a mutually agreed upon work and development plan (" Development Plan" ) described in Annexes A-1 and B-1 . The Parties agree to use commercially


reasonable efforts to meet the Product Success Criteria, e.g. in this specific case to design, develop, test, and qualify the new JW-Type Package and to bring it to a state of production readiness. The status of the JW-Type Package development at the signing date of this Agreement is also described in Annex A-1 .


1.2 Subsequent Co-Development Efforts : The Parties may from time-to-time agree to co-develop other new packaging-related Products or Processes that may be mutually beneficial to both Parties; the scope and the extent of such developments are to be attached as subsequent Annexes A' s and B' s to this Agreement (e.g. Annex A-2, Annex A-3, etc) and each such Product shall be described in a mutually agreed upon Development Plan. The functional, mechanical, technical, and reliability specifications of such a Product Success Criteria are to be included along with the Development Plan in the applicable Annex. Only key criteria are to be listed in the Product Success Criteria (it is not meant to replace technical knowledge and common-sense engineering practices). In the event that the Development Plan includes the realization of working prototypes or manufacturable product, the Parties agree to use commercially reasonable efforts to design, develop, test, and qualify the agreed-upon new package, process, or technique and to bring it to a state of production readiness consistent with the Development Plan. Except in case of Section 1.1 (JW-Type Package), there is no presumption that the Development Plan for any Product or Process must or should result in a manufactured Product or marketed Process. In some instances the Parties may agree that reduction to practice may be limited to a patent application.

1.3 Independent Contractors : This Agreement is not intended to and does not constitute a joint venture, partnership or other formal business organization. Each Party hereto shall act as an independent contractor solely and shall not, except as specifically authorized and provided herein, act, or be construed, as an agent for the other Party for any purpose whatsoever and no Party shall have the authority to bind the other or make any commitment or incur any costs or expenses for or in the name of the other Party except to the extent prescribed herein.


1.4 Development Expenses : Except as otherwise provided herein or by subsequent written contract, each Party shall bear the expenses incurred by it with respect to this Agreement.


1.5 Patent Prosecution Expenses : Development expenses are separate and distinct from patent prosecution expenses, which are provided for in Section 2.6.


1.6 Key Employee : Richard K. Williams, an individual residing at 10292 Norwich Ave. Cupertino, CA 95014 is hereby designated as a " Key Employee" under this Agreement. If Williams is for any reason, without GEM' s consent, no longer an AATI employee, such event shall give each Party the right to terminate any further development obligations under this Agreement except for those programs and obligations in which it already is engaged. AATI represents that it has entered into an agreement with Richard K. Williams, and that he exclusively assigns AATI the authority, the right, and the requirement to enter this Agreement with GEM for any and all of his innovations associated with (but specifically limited to) cooperative development efforts between GEM and AATI as set forth herein. 2. INTELLECTUAL PROPERTY

It is anticipated in the course of package co-development efforts between GEM and AATI, that intellectual property, inventive know-how, and patentable material may and will likely result. The Intellectual Property (defined below) from this combined effort is separate and distinct from independently developed Intellectual Property that each of the Parties may utilize in the co-development.


2.1 Definition : For the purposes of this Agreement, " Intellectual Property" means any intellectual property right of any kind or nature, including without limitation, invention (whether patentable or not), utility patents, design patents, copyrights and works of authorship, software, mask works, technology, devices, apparatus, processes, methods, know-how, trade secrets and confidential or proprietary information. Annex C-l lists the Intellectual Property.

2.2 AATI Intellectual Property : Except as otherwise provided in Section 2.4, all Intellectual Property conceived or created by or for AATI pursuant to its responsibilities under this Agreement (collectively, " AATI Intellectual Property" ) shall as between the Parties, be the sole and exclusive property of AATI, and AATI will retain any and all rights to file any patent and/or copyright applications thereon.


2.3 GEM Intellectual Property : Except as otherwise provided in Section 2.4, all Intellectual Property conceived or created by or for GEM pursuant to its responsibilities under this Agreement (collectively, " GEM Intellectual Property" ) shall as between the Parties, be the sole and exclusive property of GEM, and GEM will retain any and all rights to file any patent and/or copyright applications thereon.


2.4 Jointly Developed Intellectual Property : For the purposes of this Agreement and unless otherwise designated under this Section 2.4 or any applicable Annex A , any Intellectual Property first discovered, conceived or created jointly by one or more of GEM employees and one or more of AATI employees (including the Key Employee' s related contributions) in the course of performing development under this Agreement, shall be considered jointly-developed Intellectual Property (collectively, " Joint Intellectual Property" ).


(a) Ownership of " First Co-Development Effort" Joint Intellectual Property ( JW-Type Package ) : Notwithstanding Section 2.4 above and unless otherwise agreed upon by the Parties in writing, all Joint Intellectual Property regarding the JW-Type Package referred to in Section 1.1 of this Agreement (collectively, " JW-Package Intellectual Property" ) will be exclusively owned by GEM free and clear from any restrictions by AATI.

(b) Ownership of Packaging-Related " Subsequent Co-Development Efforts" Joint Intellectual Property : Notwithstanding Section 2.4 above and unless otherwise agreed upon by the Parties in writing, all Joint Intellectual Property regarding Subsequent Co-Development Efforts between GEM and AATI (as referred to in Section 1.2) limited solely within the field of semiconductor packaging and assembly methods, semiconductor packages, lead frames, packaging and assembly equipment, handlers, test equipment and/or other packaging-related apparatus and methods (collectively " Packaging Intellectual Property" ) will be exclusively owned by GEM, unless otherwise specified in writing between GEM and AATI. Such ownership will be free and clear from any restrictions by AATI.


(c) Ownership of Non-Package-Related " Subsequent Co-Development Efforts" Joint Intellectual Property : This Agreement does not provide for nor anticipate Joint Intellectual Property other than that related to JW-Package Intellectual Property or Packaging Intellectual Property. Accordingly, AATI does not agree to, nor implies any assignment of its Intellectual Property regarding the design of semiconductor devices, processes, discrete power devices and transistors, wafer processing, circuit design, or other non-packaging related technology (collectively, " Semiconductor Intellectual Property" ). Notwithstanding Section 2.4 above, all Joint Intellectual Property regarding Semiconductor Intellectual Property will be exclusively owned by AATI, unless otherwise specified in writing between GEM and


AATI. Such ownership will be free and clear from any restrictions by GEM. Unless otherwise agreed upon by the Parties in writing, any Joint Intellectual Property which does not constitute JW Package Intellectual Property, Packaging Intellectual Property or Semiconductor Intellectual Property, shall be jointly owned by the Parties without a duty of accounting.

2.5 " Joint Intellectual Property" Derivatives : For the purpose of this Agreement, any improvement, modification, derivative, optimization, or other innovation resulting from or requiring Joint Intellectual Property shall likewise be considered as Joint Intellectual Property and remain subject to and bound by the terms of this Agreement, including all inventive matter included in any and all " continuation" and " continuation in part" (CIP) patent applications or foreign filings.

2.6 " Joint Intellectual Property" Patent Prosecution : Under this Agreement, the Parties agree to establish a Development Committee (defined below) will (i) determine whether the Parties intend to seek intellectual property protection of the Joint Intellectual Property, (ii) decide which claims and in what countries patent prosecution of Joint Intellectual Property will be executed, (iii) determine whether " reduction to practice" should and will be extended to include producing functional prototypes (or limited to the filing of patent applications) and (iv) determine which Party shall have primary responsibility for obtaining intellectual property protection for an invention or work of authorship and allocate the costs of the determined Intellectual Property filings and prosecution between the Parties.


(a) Patent Prosecution of Joint Intellectual Property of JW-Type Package and Packaging Intellectual Property : Notwithstanding Section 2.6 to the contrary and unless otherwise determined by the Development Committee, GEM shall be responsible for all costs to prepare, prosecute, issue and maintain patents regarding the " JW-Package Intellectual Property" and " Packaging Intellectual Property."


(b) Patent Prosecution of Joint Intellectual Property Not Approved By the Development Committee : Notwithstanding Section 2.6 to the contrary and in the event that the Development Committee is unable to agree to file an application or applications regarding Joint Intellectual Property, the following provisions shall apply:

(1) Responsibility for Filings : Unless otherwise determined by the Development Committee, GEM shall have the initial right to control the preparation, filing, prosecution and maintenance of any patent applications and patents within the Joint Intellectual Property. GEM shall keep the Development Committee reasonably informed as to the status of such matters, including without limitation providing the Development Committee with copies of any substantive documents that GEM receives from the patent or copyright office promptly after receipt, and by providing the Development Committee the opportunity, as far in advance of filing dates as reasonably possible, to review and comment on any documents which will be filed. AATI shall reasonably cooperate with and assist GEM and the Development Committee in connection with such activities.


(2) Abandonment of Prosecution : If GEM decides that it no longer desires to prepare, file, prosecute or maintain an application or Intellectual Property right as provided in this Section 2.6 in any country or countries, GEM shall give written notice to AATI of such election, but in no case later than 60 days before any required action relating to the filing, prosecution or maintenance of such patent application or Intellectual Property right. Upon such notice, AATI shall have the right, but not the obligation, to file and maintain such Intellectual Property right or patent application in its own name and at


its own expense and GEM shall reasonably cooperate with and assist AATI in connection with such activities.

2.7 Enforcement of Joint Intellectual Property .

(a) Enforcement Rights : Subject to the provisions of this Section 2.7, if either Party reasonably believes that any Joint Intellectual Property is infringed or misappropriated by a third party, such Party shall promptly notify the Development Committee. In such event, GEM shall have the initial right (but not the obligation) to enforce such technology with respect to such infringement, or defend any declaratory judgment action with respect thereto (for purposes of this Section 2.7, an " Enforcement Action" ). AATI shall cooperate and joint such Enforcement Action. If GEM chooses not to enforce the patent, AATI may request GEM to enforce the applicable Intellectual Property.

(b) Initiating Actions : If GEM fails to initiate an Enforcement Action within sixty (60) days of AATI' s request, AATI may initiate an Enforcement Action against such infringement or misappropriation and GEM shall cooperate in such Enforcement Action. The Party initiating or defending any such Enforcement Action shall keep the other Party reasonably informed of the progress of any such Enforcement Action, and such other Party shall have the right to participate with counsel of its own choice. The Parties shall share equally in all costs and expenses incurred in any such Enforcement A ...