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Technology License Agreement

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Sectors: Electronics and Miscellaneous Technology
Governing Law: California , View California State Laws
Effective Date: July 01, 1997
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EXHIBIT 10.12


CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.


TECHNOLOGY LICENSE AGREEMENT
----------------------------


This Technology License Agreement ("Agreement") is entered into as of July 1st, 1997 ("Effective Date") by and between Reality Simulation Systems Acquisition Corporation ("RSS"), a California corporation, with its principal place of business 1020 Asbury Street, San Jose, California 95126, and InteGraphics Systems, Inc. ("IGS"), a California corporation, having its principal place of business at 4001 Burton Drive, Santa Clara, California 95054.


WHEREAS, RSS has developed or will develop *** graphics technology useful in personal computers and consumer electronics products;


WHEREAS, IGS desires to obtain a license to such RSS technology to develop a semiconductor and certain driver software for use in *** and *** graphics applications, and RSS desires to grant IGS a license, pursuant to the terms and conditions in the Agreement, to its technology;


WHEREAS, RSS wishes to obtain a license to sell and distribute products and chips and IGS desires to grant RSS such a license pursuant to the terms and conditions of this Agreement; and


WHEREAS, RSS and IGS each desire to distribute the products developed hereunder on an exclusive basis to separate geographic and platform markets.


NOW, THEREFORE, in consideration of the mutual promises contained herein, the parties hereto agree as follows:


1. Definitions.
-----------


1.1 "AGP Technology" shall mean the graphics port protocol promoted by Intel Corporation, a Delaware corporation, and implemented by IGS, and further specified in Exhibit A hereto. The AGP Technology includes, without limitation, Source Code, test vectors, schematics, and descriptive specifications.


1.2 "CyberPro3000 Products" shall mean products based on or incorporating *** Verilog Source Code and further specified in Attachment B hereto regardless of the name or commercial designation of such products. Any CyberPro3000 Products Introduced by or for a party for a period of twelve (12) months following completion of the first production CyberPro3000 Product for commercial sale which is substantially similar to the CyberPro3000 Products shall also be a CyberPro3000 Product hereunder.


1.3 "Derivative Work" shall mean:


(a) for copyrights and copyrightable materials, any modification, revision, port, translation, abridgement, condensation or expansion of the pre- existing work, or any portion thereof, or any form in which the preexisting work is recast, transferred, transformed or adapted;


*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.


(b) for patents and patentable materials, any improvement thereon; and


(c) for trade secrets and materials protected by trade secret, any new material derived from such existing trade secret or materials, including new material which may be protected by copyright, patent or trade secret or any combination of the foregoing.


1.4 "Documentation" shall mean any user documentation or materials relating to CyberPro3000 Products and *** Verilog Based Products, including, without limitation, screen displays, "read me" files and reference, user, installation, systems administrator and technical guides.


1.5 "IGS Chip" shall mean the IGS graphics chip based on the *** Technology, produced by or for IGS hereunder and further specified in Attachment A, including, without limitation, any and all semiconductor masks used to fabricate or manufacture such chips. Any graphics chip Introduced by or for IGS for a period of twelve (12) months following completion of the first production CyberPro3000 Product for commercial sale which is substantially similar to the IGS Chip shall also be an IGS Chip hereunder.


1.6 "IGS Market" shall mean the platform(s) and territory(ies) specified in Attachment C hereto.


1.7 "IGS Software" shall mean the IGS driver software specified in Attachment A.


1.8 "Introduced" shall mean the announcement of a product by press release, trade show announcement, or other like marketing technique.


1.9 "*** Technology" shall mean the RSS Software and Verilog Source Code (in both *** and *** forms).


1.10 "Proprietary Rights" shall mean patents, patent rights, copyright rights, trademark rights, trade secret rights, mask work rights, and all other intellectual property rights worldwide.


1.11 "RSS Market" shall mean the platform(s) and territory(ies) specified in Attachment C.


1.12 "RSS Software" shall mean the RSS driver software specified in Attachment A.


1.13 "Source Code" shall mean those statements in a computer language which, when processed by a compiler, assembler or interpreter, become executable by a computer and includes, without limitation, all comments, notes, flow charts, decision tables, argument lists and other human readable references relating to the operation, purpose, compilation, assembly or interpretation thereof.


*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.


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1.14 "*** Technology" shall mean the successor technology to the *** Technology specified in Attachment E hereto.


1.15 "Verilog Source Code" shall mean the IGS Chip and associated electronics as described and documented in a human readable hardware description language which can reproduce the same netlist description of the *** Verilog.


1.16 "*** Verilog Based Products" shall mean CyberPro3000 Products based on or incorporating the *** Verilog Source Code regardless of the name or commercial designation of such products.


2. License Grant to IGS.
--------------------


2.1 Subject to all of the terms and conditions of this Agreement, RSS hereby grants to IGS a royalty-bearing (as provided in Section 10 below), non- transferable, non-sublicenseable (except as provided in Section 2.1(e) below) license to:


(a) use and reproduce for its internal purposes only the RSS Software Source Code and modify, create and prepare Derivative Works thereof. IGS assumes all responsibility for integrating the RSS Software into the IGS Software;


(b) use and reproduce for its internal purposes only the *** Verilog Source Code, make speed improvements through layout, process, and silicon integration refinements, and manufacture IGS Chips and successor therefrom;


(c) use, reproduce, manufacture. market, display, license, sell and distribute solely within the IGS Market the RSS Software (in object code form only) and only as embedded and incorporated into CyberPro3000 Products and *** Verilog Based Products;


(d) use, reproduce, manufacture, market, display, license, sell and distribute the Documentation solely within the IGS Market and only together with CyberPro3000 Products and *** Verilog Based Products; and


(e) reproduce, license and distribute the RSS Software Source Code to such third parties as the parties mutually approve in writing and for the sole purpose of allowing such third parties to provide end user technical support; provided such third parties agree in writing to be bound by all of the obligations and restrictions herein with regard to such Source Code.


2.2 Upon completion of the first production CyberPro3000 Product for commercial sale which substantially conforms to the specifications in Attachment B;


(a) RSS will grant IGS, subject to all the terms and conditions of this Agreement (including, without limitation, Sections 9, 10.3(b) and 16, but not Section 8.2), a non-exclusive, non-transferable, non-sublicenseable, royalty-bearing license to use and reproduce for its internal purposes only the *** Verilog Source Code and modify, create and prepare Derivative Works thereof for the sole purpose of developing and manufacturing the IGS Chip (for


*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.


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(b) For the purposes of distinguishing the *** and *** versions of the Verilog Source Code, and by extension the CyberPro3000 Products and *** Verilog Based Products, IGS agrees to perform, prior to tape out at RSS' request, Verilog design verification tests provided by RSS to IGS ("Verification Tests"). IGS shall complete each Verification Test and provide to RSS a written report detailing all the results of each Verification Test within *** (***) days of RSS request or IGS' receipt of such Verification Test, whichever is later. IGS further agrees to allow RSS to physically inspect each and every IGS site during IGS' normal business hours to verify IGS' compliance with this Section 2.2 and to determine, by whatever means necessary, the version of the Verilog Source Code used in each IGS chip (and any successor chip based in whole or in part on *** Technology) prior to tapeout. In the event of any dispute between IGS and RSS arising under this Section 2.2, both parties agree to settle the dispute by arbitration as outlined in Section 20.4. If IGS agrees beforehand to pay Unencripted Royalties no inspection will be required.


3. License Grant to RSS.
--------------------


3.1 Subject to all of the terms and conditions of this Agreement, IGS hereby grants to RSS a non-exclusive, non-transferable, non-sublicenseable (except as provided in Section 3.2 and 6.3 below), royalty-bearing (as provided in Section 10 below), fully paid-up, worldwide license to:


(a) use, reproduce, manufacture, market, display, distribute, modify and create Derivative Works based on the AGP Technology if developed internally by IGS for the CyberPro3000 products or *** Verilog Based Products.


(b) use, reproduce, manufacture, market, display, license, sell and distribute solely within the RSS Market the IGS Software (in object code form only) and IGS Chip and only as embedded and incorporated into CyberPro3000 Products or *** Verilog Based Products; and


(c) reproduce, license and distribute the IGS Software Source Code by IGS to such third parties as the parties mutually approve in writing and for the sole purpose of allowing such third parties to provide end user technical support; provided such third parties agree in writing to be bound by all of the obligations and restrictions herein with regard to such Source Code.


3.2 The license grant under Section 3.1 is sublicensable by RSS only to a third party manufacturer mutually agreed upon by both parties who will provide a source of CyberPro3000 Products and *** Verilog Based Products to both IGS and RSS, provided, however, that such third party manufacturer shall be bound in writing to all restrictions on RSS under this Agreement and further provided that such third party manufacturer shall not have the right to manufacture such products for any third party. The parties hereby acknowledge and agree, that at RSS expense, Seiko Epson Corporation ("Seiko"), a Japan corporation, shall be an authorized third party manufacturer under this Section 3.2 upon Seiko's written agreement to be bound by all restrictions on RSS under this Agreement.


*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION


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bound by all restrictions on RSS under this Agreement.


4. Restrictions.
------------


4.1 The license grants herein shall be not be exercisable by a party's contractors, except those contractors who agree in writing to be bound to all of such party's obligations and restrictions under this Agreement.


4.2 Each party agrees to include and not to obscure or modify the other party's copyright and other notices which appear in or on the CyberPro3000 Products, *** Verilog Based Products, *** Technology or Documentation.


4.3 Each party agrees not to develop or use any benchmarking tests which cheat on results of he CyberPro3000 Products, *** Verilog Based products or portions thereof.


4.4 No rights or licenses are granted or deemed granted to any Proprietary Rights of either party to the other party to any subject matter of this Agreement except those rights or licenses expressly and unambiguously granted herein.


4.5 In no event whatsoever, except as expressly and unambiguously stated herein, shall a party use, disclose or distribute to any third party Source Code, or any portion thereof, of the other party including, without limitation, *** and *** Verilog Source Code (in the case of IGS).


5. Right of First Refusal. RSS agrees that IGS shall, for a period of
---------------------- three (3) months following the Effective Date and to the exclusion of all other parties, have the first opportunity to acquire a non-exclusive, worldwide license to use, reproduce, market, manufacture, display, license, sell, distribute and modify the *** Technology for use in graphics chips.


6. Distribution Rights.
-------------------


6.1 IGS shall have the exclusive, non-transferable (except as provided below) right to market, sell and distribute CyberPro3000 Products and *** Verilog Based Products in the IGS Market and RSS shall have the exclusive, non- transferable (except as provided below) right to market, sell and distribute CyberPro3000 Products and *** Verilog Based Products in the RSS Market except that the exclusive rights granted under this Section 6.1 shall automatically and irrevocably become non-exclusive as to both parties:


(a) on ***; or


(b) in the event that a party fails to sell *** (***) units of CyberPro3000 Products and/or *** Verilog Based Products within *** (***) months of the first retail sale of a CyberPro3000 Product or *** Verilog Based Product.


6.2 The parties acknowledge and agree that IGS may continue to develop graphics technology after the Execution Date and that, as to products Introduced by IGS after the


*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION


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sale, no right, tide or interest in or to any Proprietary Rights in such products is transferred under this Agreement and IGS may freely market, sell, distribute or otherwise transfer such products in all markets worldwide.


6.3 A party's exclusive rights under Section 6.1 above may be transferred only with the prior written approval of the non-transferring party, except that RSS may, in its sole discretion and without the prior written approval of IGS, transfer its exclusive rights hereunder to S-MOS Systems Inc. ("S-MOS"), a California corporation.


6.4 A party may appoint a third party distributor to exercise such party's distribution rights under this Section 6 to a third party distributor who agrees in writing to be bound by all the terms and conditions of this Agreement.


7. Ownership.
---------


7.1 As between the parties and subject to the licenses granted herein, RSS owns all right, title and interest in and to all of the *** Technology and Documentation and all copies and portions thereof and all Proprietary Rights thereto. As between the parties and subject to the license granted herein, IGS owns all right title and interest in and to the IGS Chip and all Proprietary Rights thereto, subject to RSS' rights in the *** Technology. IGS agrees to assign and hereby does assign to RSS any and all Proprietary Rights IGS may acquire in the *** Technology or Documentation or any Derivative Work of the foregoing. In the event RSS is unable for any reason to secure IGS' authorized signature to apply for or to pursue any application for any United States or foreign letters patent or copyright registrations or other intellectual property protection relating to Proprietary Rights assigned to RSS hereunder, then IGS hereby irrevocably designates and appoints RSS and its duly authorized officers and agents as its agent and attorney-in-fact, with full power of substitution, to act for and in its behalf and stead to execute and file any such applications and to do all other lawfully permitted acts to further the prosecution and issuance of letters, patent or copyright registrations or other intellectual property protection thereon with the same legal force and effect as if executed by IGS.


7.2 The foregoing ownership provision in Section 7.1 shall not be construed to Emit either party's right to independently develop or acquire similar products or technology without use of the other party's Confidential Information (as defined in Section 16 below), products or technology; provided that, except for the licenses expressly granted in this Agreement, nothing in this Section 7.2 shall be deemed to grant either party a license under the other party's Proprietary Rights.


7.3 In the course of marketing the CyberPro3000 Products and *** Verilog Based Products, IGS will use the then current names and designations used by RSS therefor ("Marks") but will not represent or imply that it is RSS or a part of RSS. However, all advertisements, promotional materials, packaging and anything else bearing a Mark, including, without limitation, any product based on or incorporating *** Technology or Derivative Works thereof, shall identify RSS as the Mark owner and shall be subject to the prior written approval of RSS, which approval shall not be unreasonably withheld. IGS also agrees not to use or contest, during or after the term of this Agreement, any name, mark or designation used by RSS


*** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
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advertisements, promotional materials, packaging and anything else bearing a Mark, including, without limitation, any product based on or incorporating *** Technology or Derivative Works thereof, shall identify RSS as the Mark owner and shall be subject to the prior written approval of RSS, which approval shall not be unreasonably withheld. IGS also agrees not to use or contest, during or after the term of this Agreement, any name, mark or designation used by RSS anywhere in the world (or any name, mark or designation similar thereto). IGS acknowledges and agrees that all use of Marks by IGS shall inure to the benefit of RSS.


8. Delivery of RSS Software.
------------------------


8.1 RSS will use its diligent commercial efforts to deliver to IGS the RSS Software and *** Verilog Source Code in accordance with the milestones set forth in Attachment D hereto.


8.2 IGS may perform acceptance tests on the RSS Software and *** Verilog Source Code for a period of thirty (30) days following IGS' receipt thereof for conformance with RSS' specifications therefor as set forth in Attachment A. If IGS discovers material non-conformance in conducting such acceptance tests and provides RSS with sufficient written instructions, equipment, machines and documentation ("Nonconformance Materials") to allow RSS to readily reproduce the problems at its facility, RSS shall, at its cost, use reasonable efforts to make corrections or develop workarounds within thirty (30) days after receipt of the required Nonconformance Materials or such longer period as the parties agree in writing after conferring in good faith. The RSS Software and *** Verilog Source Code will be deemed accepted upon the earliest of the following: (i) IGS provides written notice of acceptance, (ii) thirty (30) days after IGS commercially ships or licenses CyberPro3000 Products, or (iii) thirty (30) days after delivery to IGS of the RSS Software or *** Verilog Source Code or a correction thereto if IGS has not first provided the necessary Nonconformance Materials. IGS shall have the right to terminate this Agreement if RSS has not corrected any material non- conformance in the RSS Software or *** Verilog Source Code in connection with this Section 8.2 within one hundred twenty (120) days of IGS' delivery to RSS of Nonconformance Materials therefor.


9. Protection of the *** Technology.
--------------------------------


9.1 In addition to its obligations under Section 16 below, IGS shall restrict access to and shall not disclose any *** Technology to any person or entity except to a limited number (but in no event more than ten (10)) of IGS' employees and independent contractors (i) located at 4001 Burton Drive, Santa Clara, CA. 95054, and (ii) who have a need to access the *** Technology to enable IGS to exercise its rights and perform its obligations under this Agreement. Within thirty (30) days after request from RSS but not more than three (3) times each year, IGS shall provide RSS with a list of the names of any and all individuals (employees, independent contractors, employees of independent contractors, and any other individuals) who the
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