CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
Exhibit 10.4
LICENSE AGREEMENT
THIS LICENSE AGREEMENT is effective as of August 1, 1995, by and
between Lexmark International, Inc. (Lexmark), a Delaware Corporation, having
corporate headquarters at 55 Railroad Ave., Greenwich, CT 06836-2868, and
International Microcircuits, Inc. (IMI), having corporate headquarters at
Milpitas, California.
In consideration of the mutual authorizations and obligations contained
herein, the parties contract and agree as follows:
SECTION 1: DEFINITIONS
1.1 "Confidentiality Agreement" shall mean the Confidential Disclosure
Agreement [*], dated March 25, 1993, between Lexmark and IMI.
1.2 "Price Index" shall mean the monthly U.S. Consumer Price Index --
All - Items most recently published by the United States Department of Labor,
Bureau of Labor Statistics as of the last day of any given calendar quarter.
1.3 "Customer" shall mean any third party.
1.4 "Lexmark Technology" shall mean various electromagnetic emission
reduction techniques, concepts, ideas, inventions and practices, including
know-how and trade secrets, whether patented or unpatented, which were disclosed
by Lexmark to IMI in 1993 and the first quarter of 1994. Lexmark Technology
shall include any patent claim(s) that cover any of the technology set forth in
the previous sentence, which patent claims are included in any pending or future
patent application or any issued patent which has been assigned to Lexmark.
1.5 "Licensed Device" shall mean any semiconductor chip that utilizes,
embeds, incorporates or embodies any Lexmark Technology or that is made by or
for, or sold by IMI under the license set forth in Section 2 below.
1.5.1 "Discrete Licensed Device" shall mean a Licensed Device
which performs the function of clock generation and associated clock buffering
and switching and which performs no other function whatsoever.
1.6 "Revenue" shall mean the sum total of all amounts invoiced or
charged by IMI for the sale, use, transfer or shipment of Licensed Devices to
Customers (sales and shipments to Lexmark are not Revenue and are not subject to
the royalty) less amounts received for any sales tax and shipping (provided that
these amounts are separately billed or separately designated on such invoices).
In the event any such amounts are invoiced or charged in currency other than
U.S. Dollars, Revenue shall be determined by converting the foreign currency to
U.S. Dollars by employing the Currency Exchange Rates set forth in the Wall
Street Journal on the last day of the quarterly accounting period in which the
Licensed Device was shipped.
1.7 "Unit Price" shall mean the amount invoiced or charged by IMI
for the sale, lease or transfer of any single Licensed Device, exclusive of
any sales tax and shipping (provided that these amounts are separately billed
or separately designated on such invoices). In the event any such amounts are
invoiced or charged in currency other than U.S. Dollars, Unit Price shall be
determined by converting the foreign currency to U.S. Dollars by employing
the Currency Exchange Rates set forth in the Wall Street Journal on the last
day of the quarterly accounting period in which the Licensed Device was
shipped.
1
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
SECTION 2: LICENSE
2.1 Lexmark hereby grants to IMI a royalty-bearing, worldwide,
nonexclusive, nonassignable (except as set forth in Section 11.1),
non-sublicensable license under Lexmark Technology to make, have made for
delivery to IMI, sell or otherwise transfer semiconductor chips (including any
associated chip packages) only.
SECTION 3: LIMITATIONS
NEITHER PARTY MAKES ANY WARRANTY, EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A SPECIFIC
PURPOSE. Neither party makes any representation concerning the Lexmark
Technology or of the likelihood of success with regard to IMI's attempts to use
or implement Lexmark Technology. Each party assumes all of its own risks in
implementing the Lexmark Technology. Except for any breach of the express
obligation of confidentiality in the Confidentiality Agreement, neither party
shall be liable for any consequential, incidental or indirect damages even if
that party has been advised of the likelihood of their occurrence. All rights
not expressly granted in this Agreement are reserved by Lexmark. Neither party
has entered this Agreement in reliance upon any representation that is not set
forth herein.
SECTION 4: ROYALTIES
4.1 IMI shall pay to Lexmark a royalty equal to [*] of all Revenue
relating to any Licensed Device with a Unit Price less than [*].
4.2 IMI shall pay to Lexmark a royalty of [*] for any Licensed
Device with a Unit Price equal to or exceeding [*]. This royalty amount,
however, shall be proportionately adjusted at the beginning of each calendar
quarter to reflect the percentage increase or decrease, if any, in the Price
Index for the immediately previous calendar quarter over the Price Index for
the calendar quarter before such immediately previous calendar quarter. Such
adjusted royalty amount shall apply to all shipments of Licensed Devices
during the quarter in which the adjustment is made.
4.3 Lexmark will not, without extending the same royalty rate to
IMI, grant to any other party that is paying aggregate royalty amounts to
Lexmark similar to those IMI is paying pursuant to this agreement, a license
under Lexmark Technology to make and sell Discrete Licensed Devices with
either a Unit Price less than [*] at a royalty rate lower than the royalty
rate set forth in Section 4.1 or a Unit Price greater than [*] at a royalty
rate lower than the royalty rate set forth in Section 4.2. If Lexmark grants
a lower royalty rate for such Discrete Licensed Devices based upon the
licensee paying higher aggregate royalty amounts to Lexmark than IMI is
paying, Lexmark will offer the same royalty rate to IMI, on the condition
that IMI agrees to pay an aggregate royalty amount at least as great as such
other licensee and agrees to any unique terms and conditions that are
reasonably related to the royalty rate, to which the other licensee has
agreed.
2
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
SECTION 5: ACCRUALS, AUDITS AND PAYMENT
5.1 Royalties shall accrue on the date IMI ships a Licensed Device to
any Customer.
5.2 Royalties shall be reported for quarterly accounting periods ending
March 31, June 30, September 30, and December 31 of each year. Within thirty
(30) days after the end of each such accounting period, IMI shall furnish to
Lexmark Payment in immediately available funds to Lexmark of said royalties and
a written report, conforming to "Exhibit A," attested to by either the Corporate
Controller or an officer of IMI, which shall show the facts necessary to
determine the royalties due during such accounting period and necessary to
compute the adjustment required under Section 4.2. In the event no royalties are
due, IMI shall so report. All royalty payments shall be in United States
dollars. All payments must be remitted to the following address:
Lexmark International, Inc.
Dept. D33L/Bldg. 032-3
740 New Circle Road N.W.
Lexington, KY 40511
Attn: Mark VonderHaar
5.3 IMI shall keep records and books in sufficient detail to permit the
determination of royalties payable hereunder, and at the request of Lexmark,
will permit independent auditors to examine such records and books as may be
required by such auditors (but no more than twice a year) to verify or determine
royalties paid or payable under this Agreement. If no request for examination of
such records and books for a particular accounting period has been made by
Lexmark within three (3) years after the end of said accounting period, the
obligation to keep such records and books for said accounting period shall
terminate. The cost of each such audit will be borne by Lexmark unless the audit
establishes underreporting in excess of five thousand dollars ($5,000.00), in
which event IMI will promptly pay such audit cost documented to IMI by Lexmark
up to but not exceeding five thousand dollars ($5,000.00) per audit.
5.4 If IMI defaults in the performance of any of its obligations under
this Agreement, and such failure is not cured within thirty (30) days after
written notice from Lexmark to IMI specifying the nature of the failure, Lexmark
shall have the right, in its absolute discretion, to terminate IMI's license and
this Agreement. Any expiration or termination of this Agreement will be without
prejudice as to any obligation to pay royalties incurred under this Agreement
prior to the effective date of such expiration or termination.
5.5 In the event that IMI should delay in the payment of any royalties
properly due under this Agreement, then IMI shall be liable for interest on such
overdue royalties, commencing on the date such royalties become due and payable,
at an annual rate which is the greater of nine percent (9%) or two (2)
percentage points higher than the prime interest rate as quoted by the head
office Citibank N.A., New York, at the close of banking on such date, or on the
first business day thereafter if such date falls on a non-business day.
3
5.6 Under no circumstances will any royalties or other amounts
previously paid by IMI under this agreement or any predecessor to this agreement
be refundable to IMI or otherwise creditable toward any royalty payments
hereunder, except to the extent IMI has made a demonstrable accounting error in
calculating its royalties resulting in an overpayment in an accounting period.
In such event, IMI shall be permitted, as its sole recourse, to deduct such
overpayment from royalties due for subsequent accounting periods until such
overpayment is reduced to zero.
5.7 If IMI becomes insolvent or unable to pay bills as they become due,
or if any petition in bankruptcy is filed by or against IMI or if a receiver,
assignee, or trustee is appointed with regard to IMI, Lexmark may terminate this
Agreement and all licenses hereunder immediately without liability.
SECTION 6: SALES TO LEXMARK
6.1 In further consideration of the license granted by Lexmark under
this Agreement, IMI agrees that it will sell Licensed Devices to Lexmark under
the following terms:
6.2 IMI shall sell to Lexmark the Licensed Devices described in
Exhibit B for a price not greater than the prices set forth in Exhibit B.
6.3 IMI will reduce the price it charges Lexmark for Licensed Devices
to match the lowest price IMI charges any Customer for similar Licensed Devices
shipped during the same time period at similar Licensed Device product volumes.
In the event IMI sells to any customer any similar Licensed Devices at a lower
price based upon higher Licensed Device product volumes, IMI will notify Lexmark
and offer Lexmark the opportunity to purchase a similar quantity of Licensed
Devices at such lower prices. In addition, in the event IMI charges any Customer
that manufactures (or has manufactured) and sells printers, a lower price for
any Licensed Device similar to those purchased by Lexmark, that is actually used
in such a printer IMI will sell Licensed Devices to Lexmark at the lower
price(s) regardless of whether such Customer is purchasing or committing to
purchase greater product volumes from IMI.
SECTION 7: PATENTS
7.1 Lexmark has applied for patent protection relating to certain
aspects of the Lexmark Technology. Lexmark is not required to appeal or contest
the denial of any patent application by any governmental authority or to enforce
any patent rights it may obtain against any potential, alleged or actual
infringers. Lexmark makes no representation or warranty that any aspect of the
Lexmark Technology contains any patentable ideas or that licenses from other
parties will not be required in order to use the Lexmark Technology
commercially.
4
SECTION 8: CONFIDENTIALITY
8.1 All Lexmark Technology disclosed by Lexmark to IMI shall be
governed strictly by the Confidentiality Agreement, which is hereby incorporated
in this Agreement. IMI may use the confidential information for the additional
purpose of designing, developing and producing Licensed Devices. The terms of
this Agreement, but not the existence of this Agreement, shall be confidential
information.
SECTION 9: MARKING
9.1 IMI, if so requested in writing by Lexmark and if space is
available on the device, shall legibly mark each Licensed Device covered by a
Lexmark patent, in the event one issues, in accordance with 35 U.S.C. 287 or
other applicable law.
SECTION 10: NOTICES AND OTHER COMMUNICATIONS
10.1 Any notice or other communication required or permitted to be made
pursuant to this Agreement shall be made pursuant to the addresses set forth
below, or to such other address designated by written notice given to the other
party:
10.1.1 In the case of Lexmark:
Mark VonderHaar
Lexmark International, Inc.
Dept. D33L/Bldg. 032-3
740 New Circle Road, NW
Lexington, KY 40511-1876
10.1.2 In the case of IMI:
Frank Deverse, President
International Microcircuits, Inc.
525 Los Coches Street
Milpitas, CA 95035
SECTION 11: ASSIGNMENT
11.1 This Agreement shall not be assignable, transferable or divisible
by IMI without Lexmark's consent, except, however, that IMI may assign all of
its undivided rights under this Agreement to a single successor in interest to,
or acquirer of, substantially all of IMI's assets or to a third party purchasing
from IMI a business unit that includes the Licensed Devices, provided that such
assignee is at least as financially solvent as IMI and such assignee agrees to
assume all of IMI's obligations under this Agreement. This Agreement shall inure
to the benefit of, and be binding upon, Lexmark, its successors and assigns.
5
SECTION 12: TERM
12.1 The term of this Agreement commences on the date of execution and
expires three years after the date of execution unless extended as set forth in
the next paragraph. IMI's obligations under Sections 4 (solely as to any
royalties accrued prior to expiration or termination), 6 and 8 (as long as
applicable) shall survive any expiration or termination of this Agreement. In no
event shall any license set forth in this Agreement survive any expiration or
termination of this Agreement.
12.2 IMI may elect to extend the term of this Agreement for additional
periods of five (5) years by written notification received by Lexmark at least
180 days prior to the expiration of any prior term. The parties may, each in
their sole and absolute discretion, elect to renegotiate the royalties for the
extended period provided that in no event shall the initial Section 4.2 royalty
amount under such an extension exceed $0.15 (fifteen cents) by a percentage
greater than the cumulative percentage increase in the Price Index for the first
and last quarters of the initial term of this Agreement. All royalty adjustment
provisions shall apply during any extended term.
12.3 IMI may elect to terminate this Agreement upon one hundred and
eighty (180) days notice to Lexmark.
SECTION 13: APPLICABLE LAW AND JURISDICTION
13.1 This Agreement shall be construed and the legal relations created
herein between the parties shall be determined in accordance with the
substantive law of the Commonwealth of Kentucky.
SECTION 14: MISCELLANEOUS
14.1 Any waiver by Lexmark, or failure by Lexmark to take any action,
with regard to any instance or instances of failure by IMI to comply with any
provision of this Agreement shall not constitute a waiver of any subsequent
failure to comply with such provision. In no event shall any acceptance by
Lexmark of any royalty payment in an incorrect amount constitute a waiver of
Lexmark's right to receive the correct royalty payment. This Agreement will not
be binding upon the parties until it has been signed by both parties. No
amendment or modification hereof shall be valid or binding upon the parties
unless made in writing and signed by both parties. This agreement sets forth the
entire agreement and understanding between the parties and merges all prior
agreements and discussions between them, and neither of the parties shall be
bound by any conditions, definitions, warranties, understandings or
representations other than as expressly provided herein. As of the effective
date of this Agreement, this Agreement shall supersede in its entirety the
Letter Agreement between IMI and Lexmark of September 24, 1993.
14.2 If any court or other tribunal of competent jurisdiction shall
adjudge to he invalid or unenforceable any clause, sentence, subparagraph, or
article of this Agreement, such judgment or decree shall not effect, impair,
invalidate, or nullify the remainder of this Agreement, but the effect thereof
shall be confined to the clause, sentence, subparagraph, or article so judged to
be invalid.
6
14.3 No amendment or modification of this Agreement, including its
attachments, shall be valid or binding upon the parties unless made in writing
and executed on behalf of each party by its duly authorized representative.
14.4 In the event of any dispute between the parties, both parties
agree to hold at least one meeting between respective executives of the two
companies to discuss in detail the substance of the dispute prior to instituting
any action relating to the dispute.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
signed on their behalf as of the date first above written.
WITNESS: INTERNATIONAL MICROCIRCUITS, INC.
/s/ Timothy J. Hayes BY: /s/ Edmond P. Walsh
- ----------------------------- -----------------------------------
NAME: Edmond P. Walsh
----------------------------------
TITLE: IMI Vice President
---------------------------------
WITNESS: LEXMARK INTERNATIONAL, INC.
/s/ Hazel L. Breaddus BY: /s/ Ronald E. Bingham
- ----------------------------- -----------------------------------
NAME: Ronald E. Bingham
----------------------------------
TITLE: Director, Site Operations
---------------------------------
7
EXHIBIT A
DATE
Mark VonderHaar
Lexmark International, Inc.
740 New Circle Road
Lexington, KY 40511
Mail Drop: D33L/032-3
Fax# (606) 232-2177
Subj: ROYALTY REPORT
A check for $_______________ has been sent herewith by International
Microcircuits Inc. as payment for royalties for the calendar quarter ending
__________________________.
SECTION 4.1 ROYALTIES
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
Description of Unit Price Quantity Sold Unit Royalty Royalty Payable
Device (3.5% of Unit Price)
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
Totals
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
SECTION 4.2 ROYALTIES:
Price Index for
Quarter Ending _______________: _________________
(Date)
Price Index for
Previous Quarter Ending _______________: _________________
(Date)
Adjusted Unit Royalty Rate
for Quarter Ending _______________: _________________
(Date)
Unit Royalty Rate
for Previous Quarter Ending _______________: _________________
(Date)
8
For Quarter Ending _______________:
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
Description of Unit Price Quantity Sold Unit Royalty Royalty Payable
Device (3.5% of Unit Price)
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
Totals
- ------------------------- ------------------- -------------------- ---------------------------- ----------------------
TOTAL ROYALTY: _______________
The foregoing information is accurate and complete.
International Microcircuits, Inc.
BY: ____________________________________________________________
Signature (Date)
NAME:___________________________________________________________
Company Officer
TITLE:__________________________________________________________
9
EXHIBIT B
The following table represents the prices which will be charged to Lexmark for
the listed IMI parts per Section 6.2:
- ---------------------------------------- -------------------------------------- --------------------------------------
IMI Part Number Lexmark Part Number Price
- ---------------------------------------- -------------------------------------- --------------------------------------
SG501 1408057 $2.30
- ---------------------------------------- -------------------------------------- --------------------------------------
SG502 1419461 $2.30
- ---------------------------------------- -------------------------------------- --------------------------------------
SG504 69G3295 $2.30
- ---------------------------------------- -------------------------------------- --------------------------------------
SG508 1321944 $2.30
- ---------------------------------------- -------------------------------------- --------------------------------------
SG522 $2.30
- ---------------------------------------- -------------------------------------- --------------------------------------
- ---------------------------------------- -------------------------------------- --------------------------------------
- ---------------------------------------- -------------------------------------- --------------------------------------
- ---------------------------------------- -------------------------------------- --------------------------------------
- ---------------------------------------- -------------------------------------- --------------------------------------
10
AMENDMENT 1 (the "Amendment")
dated as of August 22, 1996 to the
License Agreement dated as of August 1, 1995
between
Lexmark International, Inc.
and
International Microcircuits, Inc.
Lexmark International, Inc. ("Lexmark") and International Microcircuits, Inc.
("IMI") hereby amend the aforementioned License Agreement as follows:
1. Delete in its entirety Section 1.1 of the License Agreement and replace
it with the following:
"1.1 "Confidentiality Agreement" shall mean the Confidential
Disclosure Agreements No. [*] and No. [*], dated March 25,
1993 and June 24, 1996, respectively, between Lexmark and
IMI."
2. Delete in its entirety Section 1.4 of the License Agreement and replace
it with the following:
"1.4 "Lexmark Technology" shall mean the various electromagnetic
emission reduction techniques, concepts, ideas, inventions and
practices, including know-how and trade secrets, whether
patented or unpatented, which were disclosed by Lexmark to IMI
in 1993, the first quarter of 1994, and in 1996. Lexmark
Technology shall include any patent claim(s) that cover, any
of the technology set forth in the first sentence, which
patent claims are included in any pending or future patent
application or any issued patent which has been assigned to
Lexmark."
3. Delete in its entirety Section 4.3 of the License Agreement.
4. Delete in its entirety Section 5.4 of the License Agreement and replace
it with the following:
"5.4 If IMI defaults in the performance of any of its obligations
under this Agreement, and such failure is not cured within
thirty (30) days after written notice from Lexmark to IMI
specifying the nature of the failure, or if IMI makes a late
payment for any two of four consecutive quarters, Lexmark
shall have the right, its absolute discretion, to terminate
IMI's license and this Agreement. Any expiration or
termination of this Agreement will be without prejudice as to
any obligation to pay royalties incurred under this Agreement
prior to the effective date of such expiration or
termination."
1
5. Delete in its entirety Section 6.3 of the License Agreement
Except as expressly amended and modified hereby, the aforementioned License
Agreement is hereby reaffirmed and remains in full force and effect. This
Amendment may be executed in one or more counterparts, all of which shall be
considered one and the same agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be signed
on their behalf as of the date first above written.
WITNESS: INTERNATIONAL MICROCIRCUITS, INC.
BY: /s/ I. Refioglu
- ----------------------------- -----------------------------------
NAME: Ilhan Refioglu
---------------------------------
TITLE: President
--------------------------------
WITNESS: LEXMARK INTERNATIONAL, INC.
/s/ David S. Waldrop BY: /s/ John C. Byrne
- ----------------------------- -----------------------------------
NAME: John C. Byrne
---------------------------------
TITLE: Mgr, Site Operations
---------------------------------
2