ASSET PURCHASE AND INTELLECTUAL PROPERTY LICENSE AGREEMENT
THIS ASSET PURCHASE AND INTELLECTUAL PROPERTY LICENSE AGREEMENT
("Agreement") is made as of August 31, 2001 between REALVISION INC., a company
organized under the laws of Japan ("RealVision"), and EVANS & SUTHERLAND
COMPUTER CORPORATION, a corporation organized under the laws of the State of
Utah, USA ("E&S"). E&S and RealVision are collectively referred to hereinafter
as "parties," and individually, as a "party."
1. REALVISION'S INITIAL LICENSE OF INTELLECTUAL
PROPERTY RIGHTS AND CONTINUED DEVELOPMENT FROM E&S
Pursuant to the terms of this Agreement, RealVision shall pay and
deliver to E&S a total of US$6,300,000 ($5,670,000 net of 10% withholding tax)
in consideration for rights to access and to become familiar with, and to
receive a license with respect to, certain intellectual property rights of E&S,
and for continued development of the Ri5000 chip, all as more fully set forth
below in this Section 1:
1.01 RealVision's First Payment to E&S. As of the date of this
Agreement, RealVision shall pay and deliver to E&S US$4,000,000, ($3,600,000 net
of withholding taxes) in cash or other immediately available funds (the
"RealVision First Payment").
1.02 E&S's Initial License to RealVision. On September 7, 2001 E&S
shall, in consideration for the RealVision First Payment, (i) grant to
RealVision a right and license to access, become familiar with, and utilize
certain intellectual property imbedded in the Ri5000 chipset (limited to those
items listed under section F(2)-(4) on Appendix B), (ii) grant to RealVision
limited rights to access and view the source code for the Ri5000 chipset
(Verilog HDL) only on E&S's premises, until the RealVision Second Payment (as
defined below) is made as set forth in Section 1.03, and (iii) provide to
RealVision continued development of the Ri5000 chip, all as set forth in the
license agreement attached hereto as Appendix A; and
1.03 RealVision's Second Payment to E&S. On or before December 1,
2001, RealVision shall pay and deliver to E&S US$2,300,000, ($2,070,000 net of
withholding taxes) in cash or other immediately available funds (the "RealVision
Second Payment").
1.04 Boards and Ri5000 Chipsets. When available, E&S shall provide
RealVision five (5) fully populated boards and upn to a total of 20 Ri5000
chipsets.
1.05 Non-Refundable Payments. All payments to be made hereunder by
RealVision shall be non-cancelable and non-refundable.
2. E&S'S PURCHASE OF ENGINEERING SERVICES FROM REALVISION
2.01 Initial Purchase Order. On or before September 30, 2001, E&S
will issue to RealVision a purchase order in the aggregate amount of
US$1,500,000 for continued development of the GE5000 chip, a re-spin of the
GE5000 chip, and satisfaction of E&S's obligation to purchase 3,000 units of the
REALimage geometry engine pursuant to the Production Agreement between E&S and
RealVision, dated January 11, 2001 (the "Engineering Services"). The purchase
order will provide for full payment to be made by E&S to RealVision on or before
March 20, 2002.
2.02 Second Purchase Order. On or before December 20, 2001, E&S will
issue to RealVision a purchase order in the aggregate amount of US$1,000,000 for
certain additional Engineering Services. The purchase order will provide for
full payment to be made by E&S to RealVision on or before July 15, 2002.
1
2.03 Non-Refundable Payments. All payments to be made hereunder by
E&S shall be non-cancelable and non-refundable.
3. SALE OF ASSETS; FINAL LICENSE OF INTELLECTUAL PROPERTY RIGHTS
3.01 Assets Being Sold to RealVision. On April 1, 2002 (the "Closing
Date"), E&S shall sell and transfer to RealVision and RealVision shall purchase
the assets of the REALimage Solutions Group of E&S set forth on Appendix C
(collectively, the "Purchased Assets"). On the Closing Date, E&S shall deliver
to RealVision a bill of sale and other documents necessary to transfer to
RealVision all of E&S's rights, title, and interest in and to the Purchased
Assets.
3.02 Final License of Intellectual Property Rights. On the Closing
Date, E&S shall grant to RealVision a perpetual, world-wide, non-exclusive,
non-transferable, non-sublicensable license to utilize in video production
products and services the technology and intellectual property rights owned by
E&S and utilized in the Ri5000 Chipset (which incorporates the Ri5000 chip and
GE5000 chip, together with any enhanced or modified version thereof, and is
hereafter collectively referred to as the "Ri5000 Chipset"), which includes the
intellectual property set forth on Appendix B, as more fully set forth in the
License Agreement attached hereto as Appendix D.
3.03 Consideration for Purchased Assets. RealVision, in consideration
for the Purchased Assets being sold pursuant to this Agreement and continued
access to and use of the intellectual property rights pursuant to Section 3.02,
agrees to pay and deliver to E&S the following:
(a)Up to a US$6,000,000 royalty (the "Royalty") as follows:
(i) As an advance payment for Royalty, US$1,000,000
immediately upon receipt by RealVision of purchase orders, including
purchase orders already received by Real Vision, aggregating
US$3,000,000 for product utilizing the Ri5000 Chipset; and
(ii) 10% of all "gross profits" (as defined by
international Generally Accepted Accounting Principles and in
accordance with RealVision's past practices) received by RealVision,
its affiliates and licensees from sales through December 31, 2004 of
products and services utilizing the Ri5000 Chipset, up to a maximum
Royalty payment obligation under this Section 3.03(a)(ii) of an
additional US$5,000,000. Payments of royalties based on gross
profits will be payable to E&S within 30 days following the end of
each calendar quarter, until the maximum Royalty payment obligation
has been satisfied. Each payment will be accompanied by a written
report indicating the method by which the Royalty payments were
calculated, including revenues and deductions from revenues during
the applicable period. E&S shall have the right to inspect and audit
the books and records of RealVision upon five (5) days notice to
ensure compliance with this Section 3.03(a)(ii).
(b) Assumed Liabilities. RealVision agrees to assume, effective as
of the Closing Date, all liabilities and obligations of E&S pursuant to the
contracts and purchase orders of E&S set forth on Appendix E-1 and shall execute
on the Closing Date an Assignment and Assumption Agreement in the form of
Appendix E-2, whereby E&S will use its best efforts to assign to RealVision and
RealVision will accept the assignment of, all of E&S' right, title and interest
in and to and obligations and liabilities under the contracts set forth on
Appendix E-1. RealVision is not assuming any other contractual or other
liability or obligation of E&S except as set forth in this Agreement on Appendix
E-1.
2
3.04 Non-Refundable Payments. All payments to be made hereunder by
RealVision shall be non-cancelable and non-refundable.
4. REPRESENTATIONS AND WARRANTIES OF E&S
E&S represents and warrants to RealVision that as of the date hereof
and as of the Closing Date:
4.01 Organization and Good Standing. E&S is a corporation duly
organized, validly existing and in good standing under the laws of the State of
Utah, USA, and has the corporate power and authority to own, lease and operate
its properties and assets.
4.02 Authorization; Compliance with Other Instruments and Law. E&S
has full corporate power and authority to enter into this Agreement and any
other agreements and documents to be executed and delivered by it on the Closing
Date as contemplated hereby (collectively, the "Closing Documents"), to
consummate the transactions contemplated hereby and thereby and to perform its
obligations hereunder and thereunder. The execution, delivery and performance of
this Agreement and the Closing Documents and the consummation of the
transactions contemplated hereby and thereby have been duly authorized by all
necessary corporate action on the part of E&S. This Agreement has been duly
executed and delivered by E&S, and is a valid and binding obligation of E&S
enforceable in accordance with its terms and the Closing Documents will, when
executed and delivered by E&S on the Closing Date, constitute valid and binding
obligations of E&S enforceable in accordance with their terms.
4.03 Title to Purchased Assets. E&S has good and marketable legal
title to the Purchased Assets and on the Closing Date shall deliver to
RealVision good and marketable legal title (a) with respect to the Purchased
Assets, free and clear of all title defects, liabilities, obligations, liens,
mortgages, security interests, encumbrances, claims or similar adverse interests
of any kind or character, and (b) with respect to the licenses, trademarks,
copyrights and other intellectual property to be transferred under this
Agreement, free and clear of all liens, mortgages and security interests.
5. REPRESENTATIONS AND WARRANTIES OF REALVISION
RealVision hereby represents and warrants to E&S that:
5.01 Organization and Good Standing. RealVision is a corporation duly
organized, validly existing and in good standing under the laws of Japan and has
all requisite corporate power and authority to own, lease and operate its
properties and to carry on its business as proposed to be conducted.
5.02 Due Authorization. RealVision has full corporate power and
authority to enter into this Agreement and the Closing Documents, to consummate
the transactions contemplated hereby and thereby and to perform its obligations
hereunder and thereunder. The execution, delivery and performance of this
Agreement and the Closing Documents and the consummation of the transactions
contemplated hereby and thereby have been duly authorized by all necessary
corporate action on the part of RealVision. This Agreement has been duly
executed and delivered by RealVision and is a valid and binding obligation of
RealVision enforceable in accordance with its terms and the Closing Documents
will, when executed and delivered by RealVision on the Closing Date, constitute
valid and binding obligations of RealVision enforceable in accordance with their
terms.
6. COVENANTS
The parties agree as follows with respect to the period between the
execution of this Agreement and the Closing Date:
3
6.01 General. Each of the parties will use its reasonable efforts to
take all actions and to do all things necessary, proper, or advisable in order
to consummate and make effective the transactions contemplated by this
Agreement.
6.02 Confidentiality. All information delivered to RealVision, or the
directors, officers, employees, agents or professional advisors of RealVision
(for purposes of this Section only, the "RealVision Group"), by E&S or the
directors, officers, employees, agents or professional advisors of E&S ("E&S
Group"), in connection with this Agreement and the transactions contemplated
hereby or in connection with any previously contemplated transaction, or to
which the RealVision Group has been provided access by the E&S Group, shall be
subject to the terms of the mutual Confidentiality Agreement dated as of August
13, 1999 between E&S and RealVision (the "Confidentiality Agreement"), which
mutual Confidentiality Agreement shall survive the Closing Date or any
termination of this Agreement.
6.03 Operation of the REALimage Solutions Group. From the date of
this Agreement and through the Closing Date, the REALimage Solutions Group
business will be continued at a maintenance level, and expenses will be reduced
to the minimum required to continue the Ri5000 Chipset development through the
Engineering Services to be contracted for as referenced above.
6.04 Access to Information. E&S agrees to permit RealVision and
representatives of RealVision (including, without limitation, legal counsel and
accountants) access to the premises of E&S where the Purchased Assets and
intellectual property to be licensed to RealVision hereunder are located,
following receipt of reasonable notice.
6.05 Press Releases and Public Announcements. Except as required by
applicable law, neither party shall issue any press release or make any public
announcement relating to the subject matter of this Agreement prior to the
Closing Date, without the prior review of the other party. E&S and RealVision
shall provide to each other drafts of the press releases each party intends to
issue subsequent to the date of this Agreement.
6.06 Termination of Existing Agreements between E&S and RealVision.
On or prior to the Closing Date, E&S and RealVision shall terminate any
agreements between E&S and RealVision (excluding any nondisclosure and
confidentiality agreements between E&S and RealVision of any kind) that existed
prior to the date of this Agreement, including, but not limited to that certain
Production Agreement between E&S and RealVision, dated January 11, 2001, and
Design Services Agreement between E&S and RealVision, dated January 11, 2001,
and E&S shall have not further obligations thereunder.
6.07 Development Status Reports. Within ten (10) days following the
end of each calendar month, E&S shall provide to RealVision a written report
setting forth the development status of the Ri5000 chipset.
7. MISCELLANEOUS
7.01 Expenses. Each party shall be solely responsible for and bear
all of its own respective costs and expenses incurred in connection with this
Agreement and the transactions contemplated hereby.
7.02 Binding Effect. This Agreement shall be binding upon and inure
to the benefit of the parties hereto and their respective successors and
permitted assigns.
7.03 No Assignment. This Agreement may not be assigned by any party
hereto without the prior written consent of the other parties.
4
7.04 Counterparts. This Agreement may be executed in any number of
counterparts, and by any party on separate counterparts, each of which as so
executed and delivered shall be deemed an original but all of which together
shall constitute one and the same instrument, and it shall not be necessary in
making proof of this Agreement as to any party hereto to produce or account for
more than one such counterpart executed and delivered by such party.
7.05 Survival. The representations, warranties, covenants, and
agreements of the parties to this Agreement contained herein or in any document
delivered pursuant to or in connection herewith shall survive the Closing Date
and shall survive any investigation by the other party.
7.06 Amendment and Modification. The Agreement may be amended,
modified or supplemented only by a written instrument executed by the party
against whom such amendment, modification or supplement is sought to be
enforced.
7.07 Entire Agreement. This Agreement, including the appendices,
documents, certificates and instruments referred to herein and therein, embody
the entire agreement and understanding of the parties hereto in respect of any
transactions contemplated by this Agreement and supersede all prior agreements
and understandings between the parties with respect thereto.
7.08 Force Majeure. Neither party will be liable to the other for
delays in or failure of performance due to causes beyond such party's reasonable
control, including, but not limited to, acts of God, acts or omissions of civil
or military authority, any rule, regulation or orders issued by any governmental
authority or by any officer, department, agency or instrumentality thereof,
fires, floods, epidemics, war, embargo, riots or national company strikes or
lockouts and other causes beyond the control of the affected party.
7.9 Severability. In the event that any part of this Agreement is
found to be unenforceable, the remainder shall continue in effect, to the extent
consistent with the intent of the parties as of the date hereof.
7.10 Legal Opinions. On September 28, 2001, (a) E&S shall deliver an
opinion to RealVision dated as of the date of this Agreement, from Snell &
Wilmer L.L.P., regarding the authorization and enforceability of this Agreement
in the form reasonably acceptable to RealVision and its legal counsel, and (b)
RealVision shall deliver an opinion to E&S dated as of the date of this
Agreement, from its legal counsel, regarding the authorization and
enforceability of this Agreement in the form reasonably acceptable to E&S and
its legal counsel.
7.11 Governing Law. This Agreement shall be governed by and construed
in accordance with the internal substantive laws of the State of Utah, USA, as
to all matters, including but not limited to matters of validity, construction,
effect, performance and remedies. The prevailing party in any legal action
brought by one party against the other and arising out of this Agreement shall
be entitled, in addition to any other rights and remedies it may have, to
reimbursement for its expenses, including court costs and reasonable attorneys'
fees.
7.12 Dispute Resolution. Any claim, dispute, or other matter in
controversy (herein called "Dispute"), whether based on contract, tort, statute,
or other legal theory (including but not limited to any claim of fraud or
misrepresentation), arising out of or related to this Agreement or the breach
hereof will be settled according to the procedures set forth in this Section
7.12 exclusively; provided, however, that (a) any party may seek preliminary
judicial relief if, in its judgment, such action is necessary to avoid
irreparable damage during the pendency of such procedures, and (b) nothing in
this Section 7.12 will prevent any party from exercising any rights of
termination or suspension under applicable law.
5
(a) Direct Negotiation. The parties will endeavor in good faith to
promptly resolve the Dispute by direct negotiations between individuals who have
authority to settle such Dispute.
(i) Any party may give another party written notice of
any Dispute not resolved in the normal course of business ("Notice
of Dispute"). Within ten (10) days after delivery of the Notice of
Dispute, the receiving party will submit to the other a written
response. The notice and response will include a summary of the
Dispute and a statement of each party's position. Within ten (10)
days after delivery of the notice of dispute, the parties will meet
at a mutually acceptable time and place, or telephonically, and
thereafter as often as they reasonably deem necessary, to attempt to
resolve the Dispute. All reasonable requests for information made by
one party to the other will be honored.
(ii) All negotiations pursuant to this Section 7.12(a)
shall be confidential and will be treated as compromise and
settlement negotiations for purposes of applicable rules of
evidence.
(b) Mediation. If the Dispute has not been resolved by direct
negotiations within sixty (60) days of the response (or due date for the
response) to the disputing party's notice, or if the parties failed to meet
within twenty (20) days, the parties will endeavor to settle the Dispute by
mediation in New York City, New York administered by the International Chamber
of Commerce ("ICC") under its applicable mediation rules in effect on the date
of the Notice of Dispute.
(i) Unless otherwise agreed in writing by the parties,
mediation will be commenced by notice of demand for mediation served
by either party upon the other in the same manner as otherwise
provided for notice in this Agreement, and with the ICC, within ten
(10) days after the expiration of the period set forth in this
Section 7.12(a) or on such other date as the parties mutually agree.
The Notice of Demand for mediation will set forth with reasonable
specificity the basis of the Dispute and the performance or relief
sought.
(ii) In the event either party to the Dispute has need
for material information in the possession of the other in order to
prepare for mediation, the parties will attempt in good faith to
agree on procedures for the exchange of such information, with the
help of the mediator, if required. Any discovery disputes will be
resolved by the mediator.
(iii) The mediation proceedings are confidential, and no
stenographic, visual or audio record will be made. All conduct,
statements, promises, offers, views, documents, records, papers, and
opinions, whether oral or written, made or delivered in the course
of the mediation proceedings by any of the parties to the Dispute,
their agents, employees or representatives, and by the mediator (who
will be the joint agent of the parties for the purpose of the
mediation proceedings), are confidential and will be kept
confidential by all parties to the Dispute and the mediator. Such
conduct, statements, promises, offers, views, documents, records,
papers, and opinions will not be discoverable or admissible for any
purposes, and will not be disclosed to anyone not a party to the
Dispute, unless required under applicable law; provided, however,
that by agreement of the parties, the settlement agreement may be
converted into an arbitration award, and the award, in turn, may be
enforced by any court having jurisdiction.
(c) Litigation. If the Dispute has not been resolved pursuant to
Section 7.12 of this Agreement as determined by either party, any party may file
a lawsuit with the appropriate federal or state court sitting in the State of
Utah, County of Salt Lake, USA. The parties consent to jurisdiction by the state
and federal courts sitting in the State of Utah, County of Salt Lake, USA, with
respect to any dispute arising under this Agreement, and acknowledge that Salt
Lake County, Utah, USA, is the only appropriate place for venue of any
litigation relating to any such Dispute.
(d) Service of Process. Each party to this Agreement hereby waives
any service of process requirements under any applicable international treaty
(to the maximum extent permitted by applicable law) and also agrees to accept
service of process for any Dispute as provided in Section 7.13.
6
7.13 Notices. All notices, demands, and other communications provided
for hereunder shall be in writing (including facsimile or similar transmission)
and delivered by reputable express courier or facsimile, (i) if to E&S, to 600
Komas Drive, Salt Lake City, Utah 84158, and in the case of facsimile
transmission, to telecopy no. (801) 588-4510, in each case to the attention of
President; and (ii) if to RealVision, to 3-1-1 Shin-Yokohama, Kouhoku-Ku,
Yokohama, Kanagawa, 222-0033 Japan, and in the case of facsimile transmission,
to telecopy no. 81-45-473-7330; or, as to each party, to such other person
and/or at such other address or number as shall be designated by such party in a
written notice to the other party. All such notices, demands, and
communications, if delivered by reputable express courier, shall be effective
upon the earlier of (i) actual receipt by the addressee or (ii) the date shown
on the delivery confirmation of the courier. All such notices, demands, and
communications delivered by facsimile shall be effective upon the earlier of (i)
actual receipt by the addressee, or (ii) with respect to facsimile and similar
electronic transmission, the earlier of (x) the time that electronic
confirmation of a successful transmission is received, or (y) the date of
transmission, if a confirming copy of the transmission is also mailed as
described above on the date of transmission.
IN WITNESS WHEREOF, the parties have duly executed this Agreement as
of the date first above written.
REALVISION INC.
By: /s/ Naoshi Sugiyama
--------------------------------------
Name: Naoshi Sugiyama
Title: President and CEO
EVANS & SUTHERLAND COMPUTER
CORPORATION
By: /s/ James R. Oyler
--------------------------------------
Name: James R. Oyler
Title: President and CEO
7
APPENDIX A
Initial License Agreement
(1) The intellectual property to be licensed shall include: (a) documentation
for Ri5000 chip (MS Word and other text files); (b) source code for device
driver software (C-language, C++); and (c) documentation for device drivers (MS
Word and other text files) (collectively, the "Intellectual Property").
(2) The License Agreement shall grant a non-exclusive, worldwide,
non-transferable (including any business combination) and non-sublicensable
license to use the Intellectual Property.
(3) The License Agreement shall allow RealVision limited right to access and
view the source code for the Ri5000 chip (Verilog HDL) only on E&S's premises
and shall restrict RealVision from transporting or utilizing such source code
for any commercial or non-commercial purposes until the December 1, 2001 payment
of $2,000,000 is made by RealVision.
(4) The Initial License Agreement will be negotiated and executed on September
7, 2001.
8
APPENDIX B
Intellectual Property List
A. List of Active Patents Used by REALimage 5000:
1. COMPUTER GRAPHICS PIXEL RENDERING SYSTEM WITH MULTI-LEVEL SCANNING
(Patent # US 6236408, Issued 20010522)
2. COMPUTER GRAPHICS PIXEL RENDERING SYSTEM WITH MULTI-LEVEL SCANNING
(Patent # US 5821944, Issued 19981013)
3. COMPUTER GRAPHICS PIXEL RENDERING SYSTEM WITH MULTI-LEVEL SCANNING
(Patent # US 5598517, Issued 970128)
4. SYSTEM FOR LINE INTERPOLATION FOR COMPUTER GRAPHICS DISPLAYS (Patent
# US 5381519, Issued 950110)
5. SYSTEM FOR POLYGON INTERPOLATION USING INSTANTANEOUS VALUES IN A
VARIABLE (Patent # US 5361386, Issued 941101)
6. COMPUTER GRAPHICS PIXEL PROCESSING SYSTEM (Patent # US 4873515,
Issued 891010)
7. COMPUTER GRAPHICS SYSTEM AND PROCESS FOR ADAPTIVE SUPERSAMPLING
(Patent # US 5651104, Issued 970722)
8. COMPUTER GRAPHICS DYNAMIC CONTROL SYSTEM (Patent # US 5061919,
Issued 911029)
9. COMPUTER GRAPHICS WINDOWING SYSTEM FOR THE DISPLAY OF MULTIPLE
DYNAMIC IMAGES (Patent # US 4954819, Issued 900904)
B. Listing of Pending Patents Used by REALimage 5000
1. Filed 2/19/99 "Multi-Level Cache Controller" Reed
Tidwell, Gary Pimentel
C. List of Disclosures (Patents not yet Applied for) that are used by
REALimage 5000
1. 3/28/01 "Universal Color Space Renderer": Rich Ehlers,
Jan Bjernfalk
2. 4/12/01 "Gamma Table with High Precision at Low Light
Levels and Standard Precision at Normal Light Levels" :
Terrence J. Coleman, Ken George
3. 4/12/01 "High Performance Low Cost Anti-Aliasing
Technique": Terrence J. Coleman, Ken George
D. Foreign Patents that have been filed, not yet awarded
"Computer Graphics Pixel Rendering System with Cache Memories"
Gary Watkins
Germany, Application # 196 00 431.4 Filed Jan 8, 1996
E. Foreign Patents that have been awarded
"System for Using Barycentric Coordinates as for Polygon
Interpolation"
Russell A. Brown, Thomas W. Jensen, John A. Robinson
EPO 0319165B1
United Kingdom, 0 319 165 B1, Filed Nov 16, 1988, Granted Oct 18,
1995 Germany, P 38 54 600.0-08, Filed Nov 16, 1988, Granted Oct 18,
1995 Japan, 3059178, Granted Apr 21, 2000
9
"Computer Graphics Dynamic Control"
Gary Scott Watkins
EPO 0396377B1
United Kingdom, GB 0 396 377 B1, Filed Apr 30, 1990, Granted Dec 27,
1995 Germany, P 690 24 403.7-08, Filed Apr 30, 1990, Granted Dec 27,
1995
"Dynamic Control System for Use with Computer Graphics Apparatus"
Gary Scott Watkins
Japan, 2912419, Filed May 1, 1990, Granted Ap 9, 1999
"Computer Graphics Pixel Rendering System with Cache Memories"
Gary Watkins
United Kingdom, GB 2 297 018 B, Filed Jan 10, 1996, Granted Dec 29,
1999
F. Copyrighted material
Note: items below are generally work-in-process, and will be
provided without any specific warranty as to completeness or
correctness.
1. Source code for Ri5000 chipset (Verilog HDL)
2. Documentation for Ri5000 chipset (MS Word and other text
files)
3. Source code for device driver software, including
OpenGL, OpenML, DirectDraw, Direct3D, Windows-GDI
(C-language, C++)
4. Documentation for above device drivers (MS Word and
other text files)
5. Other items constituting the design and verification
environment of the Ri5000, including as examples, but
not limited to:
Source code and documentation of Ri Bring-up Utility
Source code and documentation of Ri5K Emulator
Source code and documentation of OpenGL Conformance
Test Utility
Documentation of OpenGL Conformance Test Utility
Source code and documentation of VGA BIOS
Source code and documentation of Display Property
Page Utility
Data of Technical Support of Ri3000 Driver
Detail functional specification for each chip module
Timing diagram of basic function for each chip module
Specification of Phoenix AGP core
Specification of the other IP(VGA, Video or so)
Software Programmers Reference
Hardware Programmers Reference (including AC timing
chart)
Test environment for VCS
Test vector file for top simulation and block simulation
and explanation
Document of layout (regarding floor plan, module
placement chart, pad placement, manual placement if any
and special instruction if any)
Synthesis script for Design Compiler
Timing analysis script for primetime
Critical path information
Gate netlist (final netlist and netlist of before
layout)
Final SDF
Test circuit specification
10
Block diagram with clock routing information
Power estimation report
Special macro specification of LSI logic (PLL, SRAM,
DAC)
Special instruction for package routing & construction
Final PrimeTime list (worst path of each clock)
Synthesis log file of each module and /or check design
report
G. Trademarks
REAL IMAGE: U.S. Registration No. 2153225; REAL IMAGE: Japanese
Registration No. 4255838; REALimage: U.S. Registration No. 2246784;
REALimage: Pending in the European Community Serial No. 577817 (we
should be receiving a registration for this mark shortly);
REALimage: Japanese Registration No.4435392; REALIMAGE: WHEN QUALITY
MATTERS: Pending in the U.S.; Serial No. 76/077,390; STUDIO ON A
CHIP: Pending in the U.S.; Serial No. 76/047,684; STUDIO ON A CHIP:
Japanese Registration No. 4467478; VSTREAM: Pending in the U.S.;
Serial No. 76/189,637
H. URL/Domain - www.realimage.com
11
APPENDIX C
List of Purchased Assets
A subset of the current laboratory equipment and personal workstation equipment
commensurate with the October 31, 2001 RealVision decision regarding the number
of people RealVision identifies as wanting to retain April 1, 2001.
12
APPENDIX D
Final License Agreement
This License shall include, but not be limited to, the following terms:
1. Licensed IP. The License Agreement will include issued/registered
and pending E&S IP enumerated in Appendix B including patents, copyrighted
software source code, and trademarks.
2. License Grant. Non-exclusive, worldwide, and non-transferable
(including any business combination) and non-sub-licensable license to make,
have made, modify, copy, use, and sell in RV's own products, including
marketing, hardware, software, and product support.
3. Field of Use and Limitations. The License will extend to use in RV
products only in the field of use of video content creation and production,
including character generation and post production activities such as editing
and effects generation, and as applicable to equipment or methods needed to make
licensed products, and to have-made rights conferred to silicon foundries for
supply solely to RV.
4. Ownership of Improvements. E&S will own the improvements they
make and RV will own the improvements they make with the burden of perfecting IP
rights kept separate and no cross-licensing or right to use granted.
5. Term. From the effective date until the expiration of the last to
expire of the licensed patents unless the License Agreement is previously
terminated in accordance with its terms.
6. Licensing of Un-Patented Know-How. Non-exclusive E&S licensing to
RV of REALimage 5000 design data and software source code, essential to build
and market the Ri5000 chipset and derivative products.
7. Indemnification and Warranty. E&S warrants that IP herein licensed
is sufficient for the Ri5000 chipset as currently developed in the prescribed
field of use. The listing of licensed technology will be updated as of the
Closing Date to reflect any additional E&S patents or applications that cover
technology embodied within the Ri5000 chipset as currently developed. Upon the
sale and distribution of the Ri5000 chipset by RealVision, if certain
intellectual property owned by E&S that is necessary for the sale of the Ri5000
chipset as currently developed in the prescribed field of use has been omitted
from the license, E&S will take reasonable steps to add such intellectual
property to the license. Further, E&S warrants that patents and other IP it
controls as listed in Appendix B are licensable without encumbrance or duty for
RV to pay consideration to any third party. E&S accepts sole responsibility for
the enforcement of its IP rights, and for defense of any infringement,
invalidity, or other related claims brought against RV in connection with use of
licensed E&S IP. E&S indemnifies RV from direct expenses of legal claims brought
against RV for their use of E&S IP, but accepts no responsibility for lost
business or stoppage of work in connection with IP disputes. E&S makes these
assertions on the basis of full cooperation of RV in any IP legal proceeding.
8. Restrictions on E&S Licenses to Third Parties. E&S will be
restricted from licensing the Ri5000 chip source code to any third party within
RealVision's field of use as set forth above.
9. Negotiation and Execution of the Final License Agreement. The
Final License Agreement will be negotiated and executed on the Closing Date.
13
APPENDIX E-1
Assumed Liabilities
At the Closing Date, RealVision will assume all liabilities and
obligations of E&S arising under the following:
A. The contract between E&S and LSI Logic Corporation, Quotation
Reference No. E&Sbi99001.
B. All purchase orders submitted by E&S to vendors of chips,
components and other products for resale to RealVision or other customers of the
REALimage Solutions Group.
C. Synopsys usage agreement.
14
APPENDIX E-2
Assignment and Assumption Agreement
1. The contract between E&S and LSI Logic Corporation, Quotation
Reference No. E&Sbi99001.
2. Chryon Design Services Agreement, dated March 2001.
3. Chryon Purchase and Sale Agreement, dated March 2001.
4. License Agreement with InSilicon (f/k/a Phoenix Technologies, Inc.)
for AGP core.
5. Synopsys usage agreement.
6. The Assignment and Assumption Agreement will be negotiated and
executed on the Closing Date.
15