License Agreement With Btr, Inc.

LICENSE AGREEMENT


This License Agreement (the "Agreement") is entered into as of March 6, 1995 (the "Effective Date") by and between BTR, Inc., a Nevada Corporation (the "Licensor"), and Actel Corporation, a California corporation (the "Licensee").


Recitals


(a) Licensor has developed a proprietary architecture for FPGAs and Multichip Modules. (Unless otherwise defined in this Agreement, capitalized terms herein are as defined in Exhibit A to this Agreement).


(b) Licensee desires: (i) to develop such architecture for use in such FPGAs and Multichip Modules, and (ii) to license such proprietary technology for use in FPGAs and Multichip Modules and in other integrated circuits.


(c) Licensor is willing to license such proprietary technology to Licensee for such development and use, upon the terms and subject to the conditions set forth in this Agreement.


Agreement


In consideration of the foregoing and the covenants contained in this Agreement, the parties agree as follows:


1. License.


1.1 Grant of License. Licensor hereby grants to Licensee under all
intellectual property rights of Licensor, now owned or, to the extent it is
not prohibited from licensing such right, hereafter acquired (a) an
exclusive (except as it may subsequently become non-exclusive as provided
in Section 6 below), worldwide, perpetual license to develop, make, have
made, use, offer for sale and sell, design, modify and create derivative
works of Licensed Devices, and (b) a non-exclusive, worldwide, perpetual
license to develop, make, have made, use, offer for sale and sell, design,
modify and create derivative works of Products (such licenses shall be
hereinafter referred to, collectively, as the "License").


1.2 Improvements. If Licensor makes any Improvements to any of the
Technology, Licensor shall promptly thereafter (so long as the License is
in effect) provide to Licensee such information, in reasonable detail, with
respect to such Improvements as is reasonably necessary to permit Licensee
to incorporate such Improvements in Licensed Devices or Products.


1.3 Assignment and Sublicensing. Licensee shall not sell, assign, or
transfer any of its rights or obligations under this Agreement without the
prior written consent of Licensor, except for any such sale, assignment or
transfer that occurs as a result of a Change of Control of Licensee.
Licensee shall have the right to grant one or more sublicenses of its
rights under the License, other than with respect to the development,
making, use, offer for sale or sale of any Emulation/Simulation Device;
provided, however, (a) that the sublicensee under each such sublicense, as
a condition to the effectiveness of such sublicense, shall agree, in the
written agreement memorializing such sublicense, to be bound by the terms
and conditions of Section 4 of Exhibit "A" hereto as it relates to the
Technology, and (b) Licensee shall be obligated to pay royalties to
Licensor with respect to the sale of any Licensed Devices or Products
permitted by any such sublicense equal to the product of (i) the Net
Receipts received by the third party which sells such Licensed Devices or
Products to the user thereof, and (ii) the applicable exclusive royalty
rate under this Agreement. Each such sublicense shall be memorialized in a
written agreement with the sublicensee, a copy of which agreement shall be
delivered to Licensor promptly after it becoming effective, which provides
that (x) such sublicensee has no right to further sublicense or assign or
otherwise transfer such sublicense, and (y) the pricing of all Licensed
Devices and Products subject to such sublicense shall be determined on an
"arms' length basis."


2. Development of Licensed Device.


2.1 Delivery of Technology. Promptly after the Effective Date, and
from time-to-time thereafter, Licensor shall deliver to Licensee such
tangible information concerning the Technology as Licensee may reasonably
require to understand the Technology and implement the Technology in the
design of Licensed Devices. Such tangible information shall include
schematics of the FPGA Architecture and a portion of the layout for a
device employing the FPGA Architecture.


2.2 Development Activities. Licensee shall be responsible for the
development of Licensed Devices, and will engage in good faith efforts to
develop, manufacture and sell Licensed Devices. Such responsibilities shall
include the management and direction of such development program. So long
as the License with respect to Licensed Devices remains exclusive, Licensor
shall use good faith efforts to support such development program.


3. Initial Payments for License.


3.1 Advance Minimum Royalties. As consideration for the grant of the
License, Licensee shall pay to Licensor the following non-refundable
advance minimum royalties from the Effective Date until Tapeout.


[CONFIDENTIAL TREATMENT REQUESTED]


The first of the above-described monthly advance royalty payments
shall be made on the Effective Date, and each subsequent payment shall be
made on the first Business Day of each of the succeeding months.


3.2 Termination of Agreement. At any time, beginning three months
after the Effective Date and prior to Tapeout, Licensee may terminate this
Agreement, and its obligation to make the advance minimum royalty payments
described above, effective 30 days after it gives Licensor written notice
of such termination.


4. Royalties.


4.1 Additional Advance Minimum Royalties. As consideration for the
grant of the License, after Tapeout (and subject to Section 4.3 hereof),
Licensee shall pay Licensor, as non-refundable advance minimum royalties,
the amount, if any, by which (i) the amount due under Section 4.2 below for
each month exceeds (ii) [CONFIDENTIAL TREATMENT REQUESTED] beginning with
the [CONFIDENTIAL TREATMENT REQUESTED] anniversary of Product Introduction,
so long as the License with respect to Licensed Devices is exclusive). The
first of such payments shall be made on the first Business Day of the month
immediately succeeding the last month during which the advance minimum
royalty payments under Section 3.1 are made, and each subsequent payment
shall be made on the first Business Day of each of the succeeding months.
Each of the advance minimum royalty payments under Section 3.1 above or
under this Section 4.1 (collectively, the "Advance Payments") and the
lesser of (a) [CONFIDENTIAL TREATMENT REQUESTED] and (b) the direct
expenditures of Licensee for the development of two Product Families (but
no more than [CONFIDENTIAL TREATMENT REQUESTED] with respect to the first
Product Family and [CONFIDENTIAL TREATMENT REQUESTED] with respect to the
second Product Family) (collectively, with the Advance Payments, the
"Recoupable Payments"), shall be creditable against royalties payable under
Section 4.2 below. Notwithstanding the foregoing, (y) prior to the
[CONFIDENTIAL TREATMENT REQUESTED] anniversary of Product Introduction,
Licensee may only credit Recoupable Payments in an amount not in excess of
[CONFIDENTIAL TREATMENT REQUESTED] of the royalty payments, pursuant to
Section 4.2 below, in excess of [CONFIDENTIAL TREATMENT REQUESTED] in any
quarter, payable with respect to the applicable royalty period, and (z)
subsequent to the [CONFIDENTIAL TREATMENT REQUESTED] anniversary of Product
Introduction, Licensee may only credit [CONFIDENTIAL TREATMENT REQUESTED]
of the royalty payments, pursuant to Section 4.2 below, in excess of
[CONFIDENTIAL TREATMENT REQUESTED] in any quarter, payable with respect to
the applicable royalty period.


4.2 Current Royalties. As partial consideration for the grant of the
License, Licensee shall pay to Licensor a royalty on each sale of a
Licensed Device or Product by Licensee or any of its sublicensees (under
clause (a) of Section 1.3 above) in an amount equal to the following
applicable percentage (based on whether the License applicable thereto is
exclusive or non-exclusive on the date of sale thereof) of the Net Receipts
from the sale of such Licensed Device or Product (the "Royalty"). Each
Royalty (a) so long as the License with respect to Licensed Devices is
exclusive, shall be paid quarterly, within 45 days after the last day of
the quarter during which the sale giving rise to such Royalty occurred, or
(b) upon such license becoming non-exclusive, shall be paid monthly, within
15 days after the last day of each month, based on Licensee's reasonable
estimate of the sales giving rise to a Royalty during such month.
Notwithstanding the foregoing, the monthly royalties payable pursuant to
clause (b) above with respect to a successive three month period may not be
less than the actual average monthly royalties paid (after adjustment, as
described below) with respect to the immediately preceding successive three
month period. Licensee shall calculate the actual royalties payable
pursuant to clause (b) above for each successive three month period during
which such Royalties are payable, and shall pay such Royalties, less the
estimated Royalties paid with respect to such period, to Licensor within 45
days after the end of such period. In the event Licensee overpays Royalties
with respect to any period and gives Licensor written notice of such
overpayment, and a calculation, in reasonable detail, of such overpayment,
Licensee shall have the right to credit such overpayment against subsequent
payments of Royalties. Each payment of Royalties (after any such crediting)
hereunder shall be reduced by the amounts creditable against such
Royalties, as provided in Section 4.1 above.


[CONFIDENTIAL TREATMENT REQUESTED]


4.3 Cancellation of Exclusivity. At any time after the [CONFIDENTIAL
TREATMENT REQUESTED] anniversary of the Effective Date, Licensee may cause
the License with respect to Licensed Devices to become non-exclusive, by
giving Licensor written notice of its cancellation of the exclusive nature
of such license, 15 months after Licensor's receipt of such written notice.
Upon Licensor's receipt of such written notice, the minimum advance monthly
royalty payment described in Sections 4.1 above shall be reduced to
[CONFIDENTIAL TREATMENT REQUESTED]. After such 15 month period has run,
Licensor shall no longer be obligated to pay any such advance royalties and
shall no longer be entitled to credit any Recoupable Payments not then
credited.


4.4 Set-Off. In the event Licensor does not timely pay any amount it
is obligated to pay to Licensee under this Agreement and fails to cure such
failure within 20 days of receiving written notice, in reasonable detail,
of such failure, Licensee shall have the right to set-off against such past
due amount any royalty payment it is obligated to pay to Licensor, up to
the amount of such past due amount. Notwithstanding any implication to the
contrary herein, Licensee's set-off rights shall not permit it to avoid its
obligations to pay advance minimum monthly royalties pursuant to Section
3.1 and 4.1 above.


4.5 Deferral. In the event a Third Party Claim, in the form of the
filing and serving of a complaint instituting a legal proceeding, is
initiated, Licensee shall have the right to defer the payment to Licensor
of Royalties otherwise payable under Section 4.2 above after such
initiation (up to the aggregate damages claimed in such complaint, if a
specific amount of damages is claimed in such complaint) until such legal
proceedings are dismissed, the defendant(s) therein is granted a judgment
in its favor (including, without limitation, summary judgment) on all
claims therein, or such legal proceedings are settled (collectively, a
"Terminating Event"). All such deferred Royalty payments shall be paid into
an escrow account, in the name of Licensor and Licensee, at a bank
reasonably acceptable to Licensor and shall be invested in a succession of
90-day certificate of deposits until payable under this Section 4.5 to
Licensor and/or Licensee. Upon the occurrence of a Terminating Event, all
funds in such account shall be paid to Licensor within 30 days thereafter.
Licensee shall grant Licensor a first priority perfecting security interest
in the funds in such account, pursuant to a security agreement and other
required documentation reasonably acceptable to Licensor. Licensee shall be
entitled to draw upon the funds in such account to the extent necessary to
reimburse it for any amounts to which it is entitled under Section 3.2 of
Exhibit "A" hereto in connection with such legal proceedings if Licensor
fails to pay such amounts within 30 days of receiving a written notice, in
reasonable detail, setting forth the components, by dollar amount and
description, of such amounts. Notwithstanding any implication to the
contrary herein, Licensee's deferral rights shall not permit it to avoid
its obligations to pay advance minimum monthly royalties pursuant to
Section 3.1 and 4.1 above.


4.6 Most Favored Nations Pricing. In the event Licensor enters into a
written agreement to license any of the Technology with respect to any
Product pursuant to a grant substantially the same as the grant in Section
1.1(b) above, but with a royalty rate with respect to such Product which is
lower than the royalty rate for Products hereunder during the period of
exclusivity for Licensed Devices, the royalty rate hereunder for any
Product sold by Licensee which would be covered by the terms and conditions
of such grant (a "Comparable Product") shall be decreased to the royalty
rate for such Product under such written agreement with respect to sales of
such Comparable Product during the period commencing with the first month
with respect to which Licensor is required to pay a royalty on a sale of
such Product and ending with the month immediately succeeding the month in
which the exclusive License with respect to Licensed Devices ceases to be
in effect.


5. Cancellation. After Tapeout, but prior to Product Introduction, Licensee shall have the right to cancel this Agreement by giving Licensor written notice, received by Licensor during such period, of such cancellation. Such cancellation shall be effective three months after Licensor receives such written notice (the "Cancellation Date"). In the event Licensee cancels this Agreement in this manner, (a) the License shall terminate, and Licensee (subject to Section 8 hereof) shall have no right to develop, manufacture or sell any Licensed Device or any Product or to use the FPGA Architecture after the Cancellation Date, (b) no further Advance Royalties shall be payable by Licensee hereunder, (c) Licensee shall have no right to recover any Recoupable Payments, and (d) Licensor, as a condition to the effectiveness of such cancellation, shall be granted the licenses described below. Prior to the Cancellation Date, and as a condition to its effectiveness, Licensee shall provide Licensor with a written license (to become effective on the Cancellation Date), in a form reasonably acceptable to Licensor and Licensee, granting Licensor a perpetual, royalty-free, worldwide, non-exclusive license, for all uses and purposes (except as noted below), with a right to sublicense, to the Joint Technology, and Licensee's object code (for internal use only, with no right to sublicense) with respect to the FPGA Architecture. Notwithstanding any termination of this Agreement and the License, the rights and licenses of Licensee's sublicensees shall survive, subject to the continued payment by Licensee of the royalties specified in Section 1.3 hereof; provided, however, Licensor shall cooperate with Licensee, at Licensee's request, and Licensee shall cooperate with Licensor, at Licensor's request, to convert any sublicensee of Licensee to a direct licensee of Licensor and the terms of Licensee's sublicenses shall provide for such conversion.


6. Exclusivity of License. The License with respect to Licensed Devices shall be exclusive so long as each of the following conditions to exclusivity are met by Licensee. In the event any of such conditions are not met, such license shall become non-exclusive at the election of the Licensor, notice of which change has been given to Licensee.


(a) The following minimum annual Net Receipts from sales of Licensed
Devices and Products must be achieved during each of the 12-month periods,
described below, beginning with the first day of the month immediately
subsequent to the month in which the [CONFIDENTIAL TREATMENT REQUESTED] and
each subsequent anniversary of the date of Product Introduction occurs;
provided, however, in the event any of such minimum annual Net Receipts are
not achieved during any such 12-month period, Licensee may retain
exclusivity with respect to Licensed Devices if it pays Licensor percentage
royalties on the short-fall from the amount of such minimum annual Net
Receipts in such period, at the applicable exclusive rate in Section 4.2
above, within 45 days after the end of such period.


[CONFIDENTIAL TREATMENT REQUESTED]


(b) The minimum advance royalty payments paid pursuant to Section 4.1
above (after all applicable crediting of Recoupable Payments) shall be
[CONFIDENTIAL TREATMENT REQUESTED] per month ([CONFIDENTIAL TREATMENT
REQUESTED] per month, beginning with the [CONFIDENTIAL TREATMENT REQUESTED]
year after Product Introduction).


7. Termination for Breach. Either party shall have the right to terminate this Agreement in its entirety in the event of a material breach by the other party of any of its obligations hereunder. In the event a party does materially breach any of its obligations hereunder, the other party may effect such termination by giving the breaching party written notice of its intent to terminate this Agreement, which notice shall specify, in reasonable detail, the nature of such breach. Such termination shall occur 30 days following the effectiveness of such notice, unless the breaching party cures such breach prior to the expiration of such 30-day period; provided, however, that (a) if such breach is not curable, such termination shall occur upon the effectiveness of such notice, and (b) if such breach is curable, but does not relate to the payment of any sum of money or to Section 1.3 above, is not capable of being cured within such 30-day period, and the breaching party commences engaging in all reasonable efforts to cure it after receiving such notice and continues to engage in such efforts until it is cured, a termination of the Agreement with respect to such breach many not occur unless the breaching party fails to cure such breach within 90 days following the effectiveness of such notice. Notwithstanding the foregoing, in the event Licensor gives Licensee written notice, claiming that Licensee has failed to pay royalties hereunder on products sold by Licensee, and Licensee gives Licensor written notice that it does not believe that it is obligated to pay such royalties and the reasons, in reasonable detail, for such belief, within the 30-day period after the effectiveness of such notice from Licensor, such dispute shall be submitted to arbitration pursuant to Section 7.18 of Exhibit "A" hereto. This Agreement may not be terminated during the pendency of such arbitration as a result of the claimed breach to be resolved in such arbitration.


8. Sell-Off Period. Any Licensed Devices manufactured pursuant to the License prior to the termination of this Agreement may be sold pursuant to the terms and conditions of this Agreement within 18 months from the date of such termination.


9. Sale of Licensor. During the period that the License with respect to Licensed Devices is exclusive, (a) Licensor shall not solicit a purchase of the Technology, all or substantially all of its assets or all of ...