MOTOROLA - MICROSEMI POWERMITE TECHNOLOGY AGREEMENT
THIS AGREEMENT, having an EFFECTIVE DATE as defined herein, is entered
into by and between Motorola, Inc., a Delaware corporation, and its
SUBSIDIARIES, having an office at 5005 East McDowell Road, Phoenix,
Arizona 85008, U.S.A. (hereinafter called "MOTOROLA"), and Microsemi
USPD, Inc., a Delaware Corporation, having an office at 580 Pleasant
Street, Watertown, Massachusetts 02172 (hereinafter called "MICROSEMI").
WHEREAS MICROSEMI has designed and is manufacturing a package known as
the POOWERMITE Package, and is in rightful possession of certain
proprietary rights in the valuable technology related thereto; and
WHEREAS MOTOROLA is particularly qualified and otherwise particularly
suited to become an alternate source of the POOWERMITE Package and
desires to obtain licenses and other rights from MICROSEMI with regard
to the aforementioned proprietary rights in order to become an alternate
source for such package; and
WHEREAS MICROSEMI recognizes the particular qualification of MOTOROLA
and desires that MOTOROLA become an alternate source for such package.
NOW, THEREFORE, MICROSEMI and MOTOROLA agree as follows:
Section 1 - Definitions
Terms in this Agreement, other than names of the parties hereto, which
appear in capital letters, shall have the following meanings:
1.1 COST LESS CHIP OR CLC shall mean the costs incurred by MOTOROLA in
the manufacture of LICENSED PRODUCT using MOTOROLA's actual cost in
effect on the date calculated.
1.2 EFFECTIVE DATE shall mean the date of last signature of this
Agreement.
1.3 IMPROVEMENT(S) shall mean any enhancements to LICENSED PRODUCT or
related derivatives, including, but not limited to, design and
manufacturing improvements made by either party to the LICENSED PRODUCT
during the term of this Agreement.
1.4 LICENSED PRODUCT shall mean MICROSEMI's POOWERMITE package which
is further described in Appendix B, POOWERMITE Package Specifications,
attached hereto and made a part hereof.
1.5 LICENSED TRADEMARK shall mean any trademark owned or controlled by
MICROSEMI that is used in the merchandising of LICENSED PRODUCT by
MICROSEMI, specifically including the trademark POOWERMITE.
1.6 MEETING DAY shall mean a full eight hour working day during which
the employees of one party may visit the other party's facility and
which visit is coordinated through the Documentation Managers for each
party.
1.7 MICROSEMI PATENTS shall mean all classes or types of patents,
utility models, and design patents of all countries of the world,
arising out of inventions made by employees of MICROSEMI, the
applications for which have a first effective filing date in any country
prior to the date of expiration or termination of this Agreement, or
which patents may, prior to or during the term of this Agreement, be
acquired by MICROSEMI, and under which, and to the extent to which, and
subject to the conditions under which, MICROSEMI or any successor may
have, as of the effective date of this Agreement, or at the date of
acquisition with respect to patents acquired by or after the effective
date of this Agreement, the right to grant licenses of the scope granted
herein without the payment of royalties or other consideration to third
persons, except for payments to third persons for inventions made by
said persons while employed by MICROSEMI, and which patents are
essential to the reasonable practice or exercise of any rights granted
hereunder, including, but not limited to, U.S. Letters Patent Number
5225897.
1.8 MICROSEMI TECHNICAL INFORMATION shall mean the items of Appendix
A, attached hereto and made a part hereof, or items to be subsequently
added to Appendix A and which items have been transferred to MOTOROLA by
MICROSEMI hereunder; information transferred from MICROSEMI to MOTOROLA
as a consequence of rendering Technical Assistance, including, but not
limited to, MICROSEMI UPDATE(S) or MICROSEMI IMPROVEMENT(S).
1.9 MOTOROLA PATENTS shall mean all classes or types of patents,
utility models and design patents of all countries of the world which
arise out of inventions made by employees of MOTOROLA's Semiconductor
Products Sector prior to termination of this AGREEMENT, and 1) which
cover inventions used in, or in the making of, LICENSED PRODUCT when
such coverage only exists because of the inclusion of MOTOROLA TECHNICAL
INFORMATION, or 2) which cover products sold by MICROSEMI, including
their manufacture and use, when such coverage only exists because of the
inclusion of MOTOROLA TECHNICAL INFORMATION in such MICROSEMI product.
1.10 MOTOROLA TECHNICAL INFORMATION shall mean information transferred
from MOTOROLA to MICROSEMI as a consequence of rendering or receiving
Technical Assistance with respect to LICENSED PRODUCT, including, but
not limited to, MOTOROLA UPDATE(S) or MOTOROLA IMPROVEMENT(S).
1.11 SUBSIDIARIES shall mean any Corporations, Companies or other
entities more than fifty percent (50%) of whose outstanding shares of
stock entitled to vote for the election of Directors (other than any
shares of stock whose voting rights are subject to restriction) are
owned or controlled by either party hereto, directly or indirectly, now
or hereafter, during the term of this Agreement.
1.12 TECHNICAL INFORMATION shall mean MICROSEMI TECHNICAL INFORMATION
or MOTOROLA TECHNICAL INFORMATION.
1.13 UPDATES shall mean information regarding modifications to an item
of TECHNICAL INFORMATION for LICENSED PRODUCT which has been made by
MICROSEMI or MOTOROLA to correct an error in such item which is
reflected as an error in the associated LICENSED PRODUCT or the testing
thereof. The form of the information shall be logic
diagrams/schematics, composite plots, and detailed written descriptions
or explanations of the UPDATE, sufficient to allow the recipient to
implement such UPDATE.
Section 2 - Licenses
2.1 MICROSEMI grants and agrees to grant to MOTOROLA under MICROSEMI
PATENTS a personal, nontransferable, exclusive, worldwide, [omitted pursuant
to a confidentiality request and separately filed with the Commission] right
and license, to modify, make or have made, use, sell,
lease, or otherwise dispose of LICENSED PRODUCT with the right to make
or have made, use, sell, lease, or otherwise dispose of semiconductors
incorporating LICENSED
2.2 MICROSEMI grants and agrees to grant to MOTOROLA under MICROSEMI
TECHNICAL INFORMATION, a personal, nontransferable, exclusive,
worldwide, [omitted pursuant to a confidentiality request and separately
filed with the Commission] right and license, to make or have
made, use and modify LICENSED PRODUCT with the right to make or have
made, use, sell, lease, or otherwise dispose of semiconductors
incorporating LICENSED PRODUCT, with the right to sublicense to MOTOROLA
joint ventures only that know how required to make LICENSED PRODUCT.
2.3 MICROSEMI grants and agrees to grant to MOTOROLA under MICROSEMI
PATENTS and MICROSEMI TECHNICAL INFORMATION a personal, nontransferable,
exclusive, worldwide, [omitted pursuant to a confidentiality request and
separately filed with the Commission] right and license, to use and modify
UPDATE(S) or IMPROVEMENT(S) in LICENSED PRODUCT and semiconductors
incorporating LICENSED PRODUCT.
2.4 MOTOROLA grants and agrees to grant to MICROSEMI under MOTOROLA
PATENTS and MOTOROLA TECHNICAL INFORMATION a personal, nontransferable,
nonexclusive, worldwide, [omitted pursuant to a confidentiality request
and separately filed with the Commission] free right and license, to use and
modify UPDATE(S) or IMPROVEMENT(S) in LICENSED PRODUCT and
semiconductors incorporating LICENSED PRODUCT.
2.5 MICROSEMI grants and agrees to grant to MOTOROLA a worldwide
exclusive right and license under LICENSED TRADEMARK to use LICENSED
TRADEMARK in the merchandising of LICENSED PRODUCT.
2.6 The exclusive rights and licenses granted herein by MICROSEMI to
MOTOROLA are exclusive only as to third parties.
2.7 As provided herein, each party has the right to have LICENSED
PRODUCT made by a third party subcontractor, provided all of the
following conditions are met:
2.7.1 That such subcontractor manufactures the LICENSED PRODUCT
exclusively for MOTOROLA or MICROSEMI, as the case may be, without
having any right to sell, use, lease, or otherwise dispose of such
LICENSED PRODUCT to any third party for such subcontractors account; and
2.7.2 That such subcontractor has not been given any access to any
TECHNICAL INFORMATION of MOTOROLA or MICROSEMI as the case may be,
except to the extent necessary to perform the manufacturing of LICENSED
PRODUCT, and that such subcontractor has substantially agreed to the
obligations of confidentiality with respect to such TECHNICAL
INFORMATION as set forth in this Agreement.
2.7.3 That such subcontractor has agreed with MOTOROLA or MICROSEMI, as
the case may be, to manufacture such LICENSED PRODUCT in accordance with
the standards of quality, performance and workmanship established
respectively by MOTOROLA or MICROSEMI.
2.8 Notwithstanding anything to the contrary herein stated, neither
party shall be obligated nor required to disclose to the other party any
TECHNICAL INFORMATION which such party may have acquired from a third
party with respect to which such party is obligated by contract not to
disclose to others.
Section 3 - Transfer of TECHNICAL INFORMATION
3.1 MICROSEMI shall commence the transfer of TECHNICAL INFORMATION to
MOTOROLA within thirty (30) days after the EFFECTIVE DATE of this
Agreement, and shall use its best efforts to complete such transfer
within sixty (60) days after such EFFECTIVE DATE. The transfer of each
such TECHNICAL INFORMATION shall be complete when all items of Appendix
A have been received by MOTOROLA, except for UPDATES, IMPROVEMENTS, and
those items conditioned by availability which will be transferred if and
when available. Any MICROSEMI TECHNICAL INFORMATION added to Appendix A
by MICROSEMI after the EFFECTIVE DATE shall be transferred to MOTOROLA
in tangible format within sixty (60) days after MICROSEMI has added it
to Appendix A.
3.2 On a continuing basis during the term of this Agreement, each
party shall furnish UPDATES to the other party within thirty (30) days
after their first successful implementation.
3.3 Notwithstanding the foregoing Section 3.2, in the event that,
during the term of this Agreement, either party discovers any defect in
a LICENSED PRODUCT such that the LICENSED PRODUCT does not meet the data
sheet specification, such party shall routinely inform the other party
of such defect within thirty (30) days.
3.4 On a continuing basis during the term of this Agreement, each
party shall furnish IMPROVEMENT(s) to the other party within sixty (60)
days after their first successful implementation.
3.5 During the term of this Agreement, each party agrees to produce
the LICENSED PRODUCT in compliance with mutually agreed upon external
package specifications as to "form" and "fit." Each party agrees not to
modify the agreed upon specifications in any way that could adversely
affect the external geometry, and the mechanical, thermal, and
electrical performance and ratings of the POOWERMITE PACKAGE. Each
party agrees and understands that there are no requirements with respect
to the internal specifications as to the "function" of the LICENSED
PRODUCT.
3.6 As of the EFFECTIVE DATE, the parties agree to the external
specifications as set forth in Appendix B of this Agreement.
Section 4 - Technical Assistance
4.1 Following the transfer of information pursuant to Section 3.1,
MOTOROLA shall have the right, subject to the reasonable approval of
MICROSEMI as to the specific periods of attendance, to send its
personnel to MICROSEMI's development and manufacturing facilities to
receive technical assistance relating to MICROSEMI TECHNICAL INFORMATION
and the use thereof in the manufacture of the related LICENSED PRODUCT.
The number of MOTOROLA personnel who may be sent to the facilities of
MICROSEMI, the schedule, and the agenda for such visits shall be agreed
upon in advance and coordinated by the Documentation Managers for each
party. Written information may be requested with respect to MICROSEMI
TECHNICAL INFORMATION considered on such a visit and will be provided if
reasonably available. Each party will pay all of its own expenses
incurred in connection with the technical assistance as provided for in
this Paragraph 4.1. Additional technical assistance may be provided by
mutual agreement.
4.2 Following the transfer of UPDATE(S) OR IMPROVEMENT(S) pursuant to
Section 3.2 or 3.4, the receiving party shall have the right, subject to
the reasonable approval of the transferring party, as to the specific
periods of attendance, to send its personnel to the transferring party's
development and manufacturing facilities to receive technical assistance
relating to UPDATE(S) or IMPROVEMENT(S) and the use thereof in the
manufacture of the related LICENSED PRODUCT. The number of personnel of
the receiving party who may be sent to the facilities of the
transferring party, the schedule, and the agenda for such visits shall
be agreed upon in advance and coordinated by the Documentation Managers
for each party. Written information may be requested with respect to
all UPDATE(S) or IMPROVEMENT(S) considered on such a visit and will be
provided if reasonably available. Each party will pay all of its own
expenses incurred in connection with the technical assistance as
provided for in this Paragraph 4.2. Additional technical assistance may
be provided by mutual agreement.
4.3 Representatives and personnel of each party, during the time they
are present on the premises of the other party, shall be subject to all
rules and regulations prevailing on such premises. Each party shall be
responsible for the payment of all compensation and expense of its
respective representatives and personnel. None of the representatives
or personnel of either party shall be considered, for any reason, to be
an employee or agent of the other.
4.4 Each party agrees that, if any person connected with it, or
assigned by it to work hereunder, or such person's legal representative,
shall present any claim or institute any suit or action against the
other party, or their directors, officers, agents, or employees, for any
property damage or personal injury, including death, connected with,
related to, or arising out of the performance of this Agreement, the
party associated with such person shall defend and indemnify the other
party, and their directors, officers, agents, and employees, against any
and all such claims, Suits, or actions.
Section 5 - Compensation
5.1 In consideration for the licenses and rights granted herein,
MOTOROLA shall pay MICROSEMI the sum of one hundred thousand dollars
($100,000) within thirty days after the EFFECTIVE DATE.
5.2 In further consideration for the licenses and rights granted
herein, MOTOROLA shall pay MICROSEMI the sum of two hundred thousand
dollars ($200,000) thirty (30) days after MOTOROLA's first production
facility is qualified to sell LICENSED PRODUCT.
5.3 In further consideration for the licenses and rights granted
herein, MOTOROLA grants to MICROSEMI the right to purchase from MOTOROLA
certain POOWERMITE packaging services governed by the terms and
conditions of the MOTOROLA - MICROSEMI POOWERMITE SERVICES AGREEMENT
which shall include, but not be limited to, the following terms:
5.3.1 MICROSEMI will have the right to purchase the lesser of up to
twenty percent (20%) of the total installed POOWERMITE output capacity
per week of MOTOROLA facilities worldwide producing POOWERMITE packages
or up to five hundred thousand (500,000) units per week, unless the
parties agree in good faith to a different quantity.
5.3.2 The price for the assembly of such LICENSED PRODUCT shall be
COSTLESS CHIP plus five (5) percent, but shall not exceed seven cents
($.07) per unit during the duration of such licenses and rights.
5.3.3 At the end of each calendar quarter of production MOTOROLA
shall calculate its COST LESS CHIP for the previous quarter and provide
a certification of such cost to MICROSEMI. The prior quarter COST LESS
CHIP plus five (5) percent shall be the price for the POOWERMITE
packages shipped during the current quarter, up to, but not to exceed,
seven cents ($.07) per unit. This calculation process shall be repeated
each quarter during production.
5.3.4 MICROSEMI shall provide MOTOROLA with chips in wafer form to be
used in the assembly of LICENSED PRODUCT(s) for MICROSEMI's account as
provided herein.
Section 6 - Commitments
6.1 Each party agrees to manufacture LICENSED PRODUCT in accordance
with the standards of quality, performance and workmanship as
established and as practiced by the other party.
6.2 MOTOROLA and MICROSEMI agree to negotiate a separate services
agreement consistent with Section 5 for the manufacture of LICENSED
PRODUCT by MOTOROLA for MICROSEMI. Notwithstanding anything to the
contrary stated herein, the parties agree the devices assembled by
MOTOROLA for MICROSEMI, in accordance with Section 5 of this Agreement,
shall be limited to rectifiers and diodes and shall expressly exclude
transistors and integrated circuits.
6.3 If, at any time after the EFFECTIVE DATE, MOTOROLA elects to
discontinue the manufacture of LICENSED PRODUCT, MICROSEMI shall have
the right to purchase any special equipment and tooling used by MOTOROLA
in the manufacture of LICENSED PRODUCT. The parties agree to negotiate
in good faith the purchase price of any such special equipment and
tooling.
6.4 If, at any time after EFFECTIVE DATE, MOTOROLA elects to transfer
the assembly of LICENSED PRODUCT to a third party subcontractor,
MOTOROLA agrees to exert reasonable, good faith efforts to obtain the
approval of such subcontractor to assemble LICENSED PRODUCT under the
terms herein specified or such other terms as would be acceptable to
MICROSEMI. In the event such subcontractor does not agree to assemble
LICENSED PRODUCT for MICROSEMI, then MICROSEMI shall have the right to
purchase from MOTOROLA units of equipment or tooling reasonably
necessary for MICROSEMI to assemble the quantity of LICENSED PRODUCT
that MICROSEMI was buying from MOTOROLA, but no more than MOTOROLA
required to make such quantity of LICENSED PRODUCT, on the date of such
transfer to a third party. The parties agree to negotiate in good faith
the purchase price of any such equipment and tooling.
6.5 MOTOROLA agrees to include a statement on data sheets,
advertising, and similar documents indicating that POOWERMITE is a
registered trademark of, and used under, a license from Microsemi
Corporation.
Section 7 - Term, Termination and Assignment
7.1 This Agreement shall become effective as of the EFFECTIVE DATE,
and shall remain in effect for five (5) years from the EFFECTIVE DATE;
provided, however, that after the initial term of this Agreement, the
Agreement will be automatically renewed under the same terms and
conditions for additional one (1) year terms, unless a party hereto
gives notice six (6) months before the end of the initial term or
succeeding one (1) year term(s) to the other party of its intention to
allow the Agreement to expire. Upon expiration of this Agreement, the
transfer of TECHNICAL INFORMATION shall cease forthwith, each party
shall return to the other party all TECHNICAL INFORMATION received from
such other party, and the licenses of Section 2 shall survive.
7.2 Either party may cancel this Agreement on ninety (90) days written
notice to the other party for failure of the other party to fulfill any
of its material obligations hereunder; provided, however, that if during
said ninety (90) day period said other party shall have fulfilled said
obligations, this Agreement shall continue in full force and effect as
if such notice had not been given.
7.3 This Agreement is personal to each of the parties hereto, and
either party shall have the right to cancel this Agreement by giving
written notice of cancellation to the other party at any time upon or
after: 1) the filing by the other party of a petition in bankruptcy or
insolvency; 2) any adjudication that the other party is bankrupt or
insolvent; 3) the filing by the other party under any law relating to
bankruptcy or insolvency; 4) the appointment of a receiver for all or
substantially all of the property of the other party; 5) the making by
the other party of any assignment or attempted assignment of this
Agreement for the benefit of creditors; or 6) the institution of any
proceedings for the liquidation or winding up of the other party's
business or for the termination of its corporate charter. Upon the
giving of such notice of cancellation, this Agreement shall be
terminated forthwith.
7.4 In the event of a direct or indirect taking over or assumption of
control of either party, without the consent of its management and board
of directors, by any third party, the other party shall have the right
to cancel this Agreement at any time thereafter upon giving written
notice thereof to the party and, upon the giving of such notice of
cancellation, this Agreement shall terminate forthwith.
7.5 This Agreement, and any rights or licenses granted herein, are
personal to each party and shall be binding upon and inure to the
benefit of the parties hereto and their respective successors and
assigns; provided, however, that neither party shall assign any of its
rights or privileges hereunder without the prior written consent of the
other party except to a successor in ownership of all the relevant
assets of the assigning party, which successor shall expressly assume in
writing the performance of all terms and conditions of this Agreement to
be performed by the assigning party. Should either party attempt an
assignment in derogation of the foregoing, the other party shall have
the right to immediately cancel this Agreement.
7.6 In the event of an assignment to a successor of all the relevant
assets of either party in accordance with Paragraph 7.5, if such
successor is a competitor of one of the parties in one or more of that
party's businesses, that party may: 1) continue the Agreement under the
terms and conditions herein, or 2) treat the Agreement as prematurely
expired, whereupon the transfer of TECHNICAL INFORMATION shall cease
forthwith, each party shall return to the other party all TECHNICAL
INFORMATION received from such other party, and, unless specifically
otherwise authorized by the canceling party in writing, the licenses
granted in Section 2 shall expire, except such licenses shall remain in
effect for products designed using TECHNICAL INFORMATION prior to such
termination.
7.7 If this Agreement is canceled by MICROSEMI in accordance with
Paragraph 7.2, 7.3, or 7.6, any TECHNICAL INFORMATION previously
transferred to MOTOROLA shall be returned to MICROSEMI forthwith, and,
unless specifically otherwise authorized by MICROSEMI in writing, all
licenses to MOTOROLA of Section 2 shall terminate, except such licenses
shall remain in effect for LICENSED PRODUCT and semiconductors
incorporating LICENSED PRODUCT designed prior to such termination, and
all licenses of Section 2 granted to MICROSEMI shall survive.
7.8 If this Agreement is canceled by MOTOROLA in accordance with
Paragraph 7.2, 7.3, or 7.6, any TECHNICAL INFORMATION previously
transferred to MICROSEMI shall be returned to MOTOROLA forthwith, and,
unless specifically otherwise authorized by MOTOROLA in writing, all
licenses to MICROSEMI of Section 2 shall terminate, except such licenses
shall remain in effect for LICENSED PRODUCT AND SEMICONDUCTORS DESIGNED
incorporating LICENSED PRODUCT MICROSEMI products designed prior to such
termination, and all licenses of Section 2 granted to MOTOROLA shall
survive.
7.9 In the event MOTOROLA does not qualify LICENSED PRODUCT at any of
its facilities within eighteen (18) months following the EFFECTIVE DATE,
this Agreement shall be deemed terminated, and each party shall have no
liability whatsoever to the other party, except MICROSEMI shall have the
right to purchase any special equipment and tooling acquired by MOTOROLA
for the assembly of POOWERMITE packages at a mutually agreed upon price.
7.10 The obligations under this Section 7 to return TECHNICAL
INFORMATION shall survive expiration or cancellation of this Agreement.
7.11 No failure or delay on the part of either party in exercising its
right of termination hereunder for any one or more causes shall be
construed to prejudice its right of termination for such causes or any
other or subsequent causes.
7.12 In the event MOTOROLA elects not to renew this Agreement at the
end of the initial term or at the end of any renewal thereof, MICROSEMI
shall have the right to purchase from MOTOROLA units of equipment or
tooling reasonably necessary for MICROSEMI to assemble the quantity of
LICENSED PRODUCT that MICROSEMI was buying from MOTOROLA, but no more
than MOTOROLA required to make such quantity of LICENSED PRODUCT on the
date of such expiration. The parties agree to negotiate in good faith
the purchase price of any such equipment and tooling.
7.13 Upon the expiration of this Agreement in accordance with Section
7.1 or 7.2, the exclusive rights and licenses granted to MOTOROLA shall
be converted to nonexclusive rights and licenses. MICROSEMI shall
provide MOTOROLA with confirmatory documents granting MOTOROLA such
nonexclusive rights and licenses.
Section 8 - Confidentiality
8.1 It is the intention of MOTOROLA and MICROSEMI to transfer and/or
exchange information in connection with the alternate sourcing
arrangement to be established under this Agreement. Such information
may be disclosed in oral, written, or graphic form, or in the form of a
computer program or database in machine-readable form, and will include
MICROSEMI TECHNICAL INFORMATION and MOTOROLA TECHNICAL INFORMATION.
8.2 Each party shall designate one or more Documentation Managers.
The responsibility of the Documentation Managers for each party will be
to control the exchange of information between the parties and to
monitor within their company the distribution of information received
from the other party to those who have a need to know. The
Documentation Managers for each party shall also arrange conferences and
visitations between personnel of the respective parties, maintain
appropriate records, and acknowledge the receipt from the other party of
all information. The initial Documentation Manager for MICROSEMI shall
be Angelo Santamaria and the initial Documentation Manager for MOTOROLA
shall be Dave Culbertson.
8.3 Disclosures of information by one party (Discloser) to the other
party (Recipient) pursuant to this Agreement shall be made by the
Documentation Manager for the Discloser to the Documentation Manager for
the Recipient using a form similar to Appendix C, MICROSEMI/ MOTOROLA
TRANSMITTAL RECORD. Information which is confidential (hereinafter
referred to as "Confidential Information") to a party hereto, including
information which is MICROSEMI TECHNICAL INFORMATION and/or MOTOROLA
TECHNICAL INFORMATION, shall be disclosed as follows. When such is
disclosed in writing and accepted, such writing should state the date of
disclosure and should contain an appropriate legend, such as "Motorola
Confidential Proprietary" or "MICROSEMI Confidential Information." If
such disclosure is orally and/or visually made, it shall be identified
at the time of disclosure as being Confidential Information and shall be
confirmed in a written resume within twenty (20) days following such
disclosure. The resume will specifically point out that which is
Confidential Information in sufficient detail to allow the receiving
party to identify that information deemed to be Confidential
Information. Such resume will also contain an appropriate legend as set
forth above. When such disclosure is in graphic form or in the form of
a computer program or database, it shall be identified as Confidential
Information by a label with an appropriate legend or by notice of the
confidential nature of the information appearing in machine-readable
form in the program or database.
8.4 Except as provided hereinafter, for a period of five (5) years
from the date of receipt of the Confidential Information of the
Discloser, the Recipient agrees to use the same care and discretion, but
at least reasonable care and discretion, to avoid disclosure,
publication, or dissemination of Confidential Information outside the
Recipient as the Recipient employs with similar information of its own,
which it does not desire to publish, disclose, or disseminate.
Notwithstanding the expiration of the obligation to exert the above
standard of care, the receiving party may not transfer such Confidential
Information or any portion thereof to a third party. If Confidential
Information of the Discloser was first received under any other
agreement previously entered into by the parties relating to the subject
matter of this Agreement, the period of confidentiality shall be as
specified in that previous agreement and shall be measured from the date
of first receipt under that previous agreement.
8.5 Disclosure of Confidential Information shall not be precluded if
such disclosure is:
8.5.1 in response to a valid order of a court or other governmental body
of the United States or any political subdivision thereof; provided,
however, that the disclosing party shall first have made a good faith
effort to obtain a protective order requiring that the information
and/or documents so disclosed be used only for the purpose for which the
order was issued; or
8.5.2 otherwise required by law.
8.6 This Agreement imposes no obligation upon the receiving party with
respect to Confidential Information disclosed under this Agreement
which:
8.6.1 is now available or becomes available to the public without breach
of this Agreement;
8.6.2 is explicitly approved for release by written authorization of the
Discloser;
8.6.3 is lawfully obtained from a third party or parties without a duty
of confidentiality;
8.6.4 is disclosed to a third party by Discloser without a duty of
confidentiality;
8.6.5 is known to Recipient prior to such disclosure;
8.6.6 is at any time developed by Recipient independently of any such
disclosure(s) from Discloser; or
8.6.7 is inherently disclosed in the use, lease, sale or other
distribution of any product or service licensed hereunder, or
documentation therefor, by or for the Recipient.
8.7 The restrictive covenants of this Section 8 regarding the use and
disclosure of Confidential Information shall survive the expiration,
cancellation, or termination of this Agreement.
Section 9 - Inventions
9.1 All discoveries, improvements, inventions, and trade secrets, made
in the performance of this Agreement solely by MICROSEMI personnel shall
be the sole and exclusive property of MICROSEMI subject to the licenses
granted herein and MICROSEMI shall retain any and all fights to file any
patent applications thereon.
9.2 All discoveries, improvements, inventions, and trade secrets, made
in the performance of this Agreement solely by MOTOROLA personnel shall
be the sole and exclusive property of MOTOROLA subject to the licenses
granted herein and MOTOROLA shall retain any and all rights to file any
patent applications thereon.
9.3 All discoveries, improvements, inventions, and trade secrets, made
in the performance of this Agreement jointly by MOTOROLA personnel and
MICROSEMI personnel, shall be the property jointly of MOTOROLA and
MICROSEMI, each party having an equal and undivided one-half (1/2)
interest therein.
9.4 In the case of each discovery, improvement or invention jointly
owned by MOTOROLA and MICROSEMI in accordance with Paragraph 9.3,
MOTOROLA shall have the first right of election to file patent
applications in the United States and other countries. MOTOROLA shall
notify MICROSEMI in writing, at the earliest practicable date, whether
or not, and in which countries of the world, MOTOROLA elects to file
such patent application. MICROSEMI shall have the right to file patent
applications on such discovery, improvement or invention in all other
countries. Each party, at its own expense, shall cooperate fully with
the filing party as may be necessary for the proper preparation, filing
and prosecution of each such patent application and the maintenance,
renewal and defense of each patent covering such discovery, improvement
or invention. The expense for preparing, filing and prosecuting each
joint application, and for issuance of the respective patent shall be
borne by the party which prepares and files the application. Where such
joint application for patent is filed by either party in a country which
requires the payment of annual taxes or annuities on a pending
application or on an issued patent, the filing party, prior to filing,
shall notify the other party, requesting the other party to indicate
whether it will agree to pay one-half (1/2) of such annual taxes or
annuities. If, within sixty (60) days after receiving such notice, the
non-filing party fails to assume in writing the obligation to pay its
one-half (1/2) share of such annual taxes or annuities, or if either
party subsequently fails, within sixty (60) days of demand, to continue
such payments, it shall forthwith relinquish to the other party,
providing said other party continues such payments, its right, title and
interest to such application and patent, subject, however, to retention
of a paid-up, nonexclusive, nonassignable and irrevocable license,
without the right to grant sublicenses, in favor of the relinquishing
party, to make, have made, use, lease, sell, or otherwise dispose of
apparatus and/or use or practice any methods under said application and
patent.
9.5 In the event that the filing party shall determine to abandon, or
otherwise not to prosecute, any jointly owned patent application, or not
to maintain, defend or renew any jointly owned patent, it shall notify
the other party thereof, in writing, at the earliest practicable date,
and such other party shall have the right, at its expense, to prosecute
such application or to take up such maintenance or defense, or prosecute
such renewal, as the case may be. The filing party agrees, at the other
party's expense, to cooperate fully with the other party to assist the
other party in obtaining, maintaining, defending and renewing such
patent right hereunder. Thenceforth, the party exercising its right
under this Paragraph 9.5 shall be deemed "the filing party" for purposes
of Paragraphs 9.4 and 9.5.
9.6 Each party shall have the right to grant nonexclusive licenses
under any terms and conditions that it desires under each jointly owned
patent application or patent, provided that it shall have fulfilled its
obligation, if any, to pay its share of taxes or annuities imposed on
such pending application or patent, and such party shall retain any
consideration that it may receive therefor without having to account to
the other joint owner. Each party consents to the granting of such
nonexclusive licenses by the other party, and agrees not to assert any
claim with respect to any such patent or application licensed by the
other party against the licensee or licensees thereunder for the terms
of any such license.
9.7 The rights and obligation of this Section 9 regarding the
ownership, filing, prosecution, and maintenance of Inventions shall
survive the expiration, cancellation, or termination of this Agreement.
Section 10 - Warranty
10.1 MOTOROLA and MICROSEMI represent that they have the right to grant
the licenses of Section 2 hereof, and that the terms and conditions of
this Agreement do not violate their respective Articles of Incorporation
or By-Laws and do not conflict with any other agreements to which they
are a party or by which they are bound.
10.2 Each transferor warrants that the items of TECHNICAL INFORMATION
transferred hereunder shall be substantially the same as those then used
by the transferor in its own manufacturing operation.
Section 11 - Disclaimer of Warranty or Liability
11.1 Neither party represents or warrants that the manufacture, use, or
other disposition of LICENSED PRODUCT or use of TECHNICAL INFORMATION,
UPDATE(S) or IMPROVEMENT(S) is free of infringement of any third party
patents, copyrights or trade secrets.
11.2 Neither party warrants that the recipient party will be able to
successfully manufacture products based upon the TECHNICAL INFORMATION,
UPDATE(S). or IMPROVEMENT(S) transferred hereunder
11.3 NEITHER PARTY MAKES ANY WARRANTY AS TO THE ACCURACY, SUFFICIENCY,
OR SUITABILITY FOR THE OTHER'S USE OF ANY TECHNICAL INFORMATION OR
ASSISTANCE PROVIDED HEREUNDER FOR THE MANUFACTURE, OR THE YIELD FROM THE
MANUFACTURE THEREOF, OR FOR THE QUALITY OF SUCH PRODUCT MADE THEREBY,
AND ASSUMES NO RESPONSIBILITY OR LIABILITY FOR LOSS OR DAMAGES, WHETHER
DIRECT, INDIRECT, CONSEQUENTIAL, OR INCIDENTAL, WHICH MIGHT ARISE OUT OF
THE OTHER'S USE THEREOF, WHICH SHALL BE ENTIRELY AT THE USER'S RISK AND
PERIL.
11.4 IN NO EVENT SHALL EITHER PARTY (OR ITS LICENSORS) BE LIABLE FOR
INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING FROM USE OF THE TECHNICAL
INFORMATION PROVIDED BY IT.
11.5 EACH PARTY DISCLAIMS ALL WARRANTIES, WHETHER EXPRESS, IMPLIED OR
STATUTORY, INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT TO
ITEMS PROVIDED BY IT.
Section 12 - Prohibited Subject Matter
Under no circumstances shall the parties hereto exchange or discuss with
one another any matter which is not relevant to the execution of the
obligations of this Agreement. For example, the parties shall not
discuss or exchange information relative to their specific customers,
marketing policies or activities, yield from manufacture, or pricing.
Section 13 - Publication
Neither party to this Agreement shall publicize the existence of this
Agreement, nor refer to the other party in connection with any product,
promotion or publication without the prior written approval of the other
party. Neither party to this Agreement shall disclose to any third
party the terms and conditions of this Agreement without the prior
written approval of the other party except as required by law, or by
government regulation, requirement or order, or as may be necessary to
establish or assert its rights hereunder.
All notices to third parties and all other publicity concerning this
Agreement shall be jointly planned and coordinated by the parties.
Neither party shall act unilaterally in this regard without the prior
written approval of the other party, which approval, however, shall not
unreasonably be withheld.
Section 14 - Contemporaneous Agreements
The parties acknowledge and agree that this Agreement is to be entered
into contemporaneously with the MOTOROLA - MICROSEMI POOWERMITE SERVICES
AGREEMENT. However, if for any reason the MOTOROLA - MICROSEMI
POOWERMITE SERVICES AGREEMENT is not signed and finalized and this
Agreement is, this Agreement shall be null and void and have no force
and effect.
Section 15 - General Provisions
15.1 Nothing contained in this Agreement shall be construed as:
15.1.1 conferring any rights to use in advertising, publicity, or
other marketing activities any name, trademark, or other designation of
either party hereto, including any contraction, abbreviation, or
simulation of any of the foregoing, provided such restriction shall not
apply to device identification numbers and descriptions and each party
hereto agrees not to use the existence of this Agreement in any
marketing activity without the express written approval of the other
party; or
15.1.2 conferring by implication, estoppel, or otherwise upon
either party hereunder any license or other right except the licenses
and rights expressly granted hereunder to a party hereto; or
15.1.3 an obligation to bring or prosecute actions or suits against
third parties for infringement, or to secure and/or maintain any of its
intellectual property rights; or
15.1.4 limiting the rights which a party has outside the scope of
this Agreement.
15.2 All notices required or permitted to be given hereunder (except
for notices to be addressed to the Documentation Managers) shall be in
writing and shall be valid and sufficient if dispatched by certified
mail, return receipt requested, postage prepaid, in any post office in
the United States, or in the case of international delivery, dispatched
by a delivery service providing a receipt of delivery, addressed as
follows:
If to MOTOROLA: If to MICROSEMI:
Motorola, Inc. Microsemi Corporation
5005 East McDowell Road 580 Pleasant Street
Phoenix, Arizona 85008 Watertown,
Massachusetts 02172
Attn: Karen Roscher Attn: Angelo Santamaria
With a copy to:
Motorola, Inc. Microsemi Corporation
8220 East Roosevelt, Suite 3108 2830 Fairview
Street
Building 3, Northwest Entrance Santa Ana, California
92704
Scottsdale, Arizona 85257 Attn: David Sonksen
Attn: Intellectual Property Dept.
Either party may change its address by a notice given to the other party
in the manner set forth above. Notices given as herein provided shall
be considered to have been given seven (7) days after the mailing
thereof.
15.3 Any failure or delay on the part of either party in the exercise
of any right or privilege hereunder shall not operate as a waiver
thereof, nor shall any single or partial exercise of any such right or
privilege preclude other or further exercise thereof or of any other
right or privilege.
15.4 Nothing contained herein, or done in pursuance of this Agreement,
shall constitute the parties as entering upon a joint venture or shall
constitute either party hereto the agent for the other party for any
purpose or in any sense whatsoever.
15.5 If any provision, or part of any provision, of this Agreement, or
the attachments hereto, is invalidated by operation of law or otherwise,
that provision or part will, to that extent, be deemed omitted and the
remainder of this Agreement, or applicable attachment, will remain in
full force and effect. In place of any such invalid provision or part
thereof, the parties undertake to agree on a similar but valid provision
the effect of which is as close as possible to that of the invalid
provision or part thereof.
15.6 MICROSEMI and MOTOROLA agree they will not in any form export, re-
export, resell, ship, or divert or cause to be exported, re-exported,
resold, shipped or diverted, directly or indirectly, any product or
technical data or software received hereunder, or the direct product of
such technical data or software to any country for which the United
States Government or any agency thereof at the time of export or re-
export requires an export license or other governmental approval without
first obtaining such license or approval.
15.7 The captions used in this Agreement are for convenience only and
are not to be used in interpreting the obligations of the parties under
this Agreement.
15.8 This Agreement and the performance of the parties hereunder shall
be construed in accordance with and governed by the law of the State of
Illinois.
15.9 This Agreement including the Appendices attached hereto, and made
a part hereof, supersedes any prior agreements or understandings,
written or otherwise, between the parties relating to the subject matter
of this Agreement. No amendment or modification of this Agreement shall
be valid or binding upon the parties unless signed by their respective
authorized officers.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed as of the date below written.
MOTOROLA, INC. MICROSEMI USPD,
INC.
SEMICONDUCTOR PRODUCTS SECTOR
By: GREGORY L. WILLIAMS By: PHILIP FREY, JR.
(Authorized Signature) (Authorized Signature)
Name: Gregory L. Williams Name: Philip Frey, Jr.
(Print Name) (Print Name)
Title: VP and GM Power Products Title: President
Date: 2-21-96 Date: 2-16-96
By: JAMES GILLMAN By: DAVID R. SONKSEN
(Signature) (Authorized Signature)
Name: James W. Gillman Name: David R. Sonksen
(Print Name)
Title: Senior Vice President Title: V.P. Finance
Patents, Trademarks and Licensing
Date: 2/26/96 Date: 2/26/96
MOTOROLA - MICROSEMI POOWERMITE TECHNOLOGY AGREEMENT
APPENDIX A
TECHNICAL INFORMATION
The following TECHNICAL INFORMATION shall be transferred to MOTOROLA by
MICROSEMI under this Agreement:
A.1. MICROSEMI Process Specifications for POOWERMITE Production.
A.2. MICROSEMI Drawings for Raw Materials used in POOWERMITE Assembly.
A.3. Samples of POOWERMITE devices manufactured by MICROSEMI.
A.4. Samples of POOWERMITE Assemblies at various stages in the assembly
process.