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*****CONFIDENTIAL TREATMENT REQUESTED FOR INDICATED PORTIONS*****
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06/12/95
TECHNOLOGY TRANSFER AND DEVELOPMENT AGREEMENT
This Technology Transfer And Development Agreement ("TTDA") is effective as of
September 1, 1994 between Hutchinson Technology Incorporated ("HTI"), and
International Business Machines Corporation ("IBM").
WHEREAS, IBM and HTI are entering into a Patent License Agreement ("PLA")
contemporaneously herewith.
WHEREAS, HTI designs, develops, manufactures and markets transducer head
suspensions ("suspensions") for disk drives, and has shown exceptional
competency in this area of technology; and
WHEREAS, IBM develops, manufactures and markets information processing and
storage products, such as disk drives and other forms of Rotating Magnetic
Memory Product ("RMM Product"), which utilize suspensions, and has knowledge of
the necessary design, performance characteristics, testing and qualification
methodology of such suspensions, and has experience in the development of
suspensions; and
WHEREAS, commercially available suspensions to date have been made with many
separate parts, including separately strung
electrical wiring, which necessitated numerous separate manufacturing steps; and
WHEREAS, prior to this Agreement, IBM has designed and developed an advanced
suspension which uses fewer parts and has integrated electrical lead lines, and
IBM has valuable inventions, information and know-how relating thereto which was
developed separately and independently of HTI; and
WHEREAS, prior to this Agreement, HTI has also conducted research and
development of improved suspensions, including aspects of the design and
manufacture of suspensions with integrated electrical leads, and HTI also has
valuable inventions, information and know how related thereto which was
developed separately and independently of IBM; and
WHEREAS, each of IBM and HTI has patents filed and each is in the process of
filing patent applications relating to various aspects of their respective
advanced suspension system designs; and
WHEREAS, HTI has the manufacturing abilities to make and the marketing abilities
to sell advanced suspensions; and
WHEREAS, IBM and HTI wish to enter into a development project in order to bring
suspensions with integrated electrical leads (as further defined herein,
"Integrated Lead Suspensions") to the
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market utilizing the complementary abilities of both parties; and
WHEREAS, IBM wishes to be the first to market with competitively priced RMM
Product which incorporate Integrated Lead Suspension technology; and
WHEREAS, IBM wishes to have a highly capable and reliable source of supply for
Integrated Lead Suspensions for use in RMM Product; and
WHEREAS, IBM wishes to receive compensation for its design and development of
the IBM advanced suspension and for its contribution to the development of the
Integrated Lead Suspensions; and
WHEREAS, HTI wishes to be a leading supplier of Integrated Lead Suspensions for
the RMM Product market; and
WHEREAS, HTI wishes to provide state of the art technology to its customers; and
WHEREAS, IBM and HTI intend to work together in a manner that optimizes the
contribution of each party according to its unique strengths; and
WHEREAS, IBM and HTI wish to do a better job in the development
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and manufacture of the Integrated Lead Suspensions than either party could do
independently.
NOW, THEREFORE, IT IS AGREED AS FOLLOWS:
1. DEFINITIONS
1.1 "Confidential Information" means HTI Confidential Information and/or IBM
Confidential Information and/or IBM/HTI Confidential Information.
1.2 "Deliverables" shall have the meaning set forth in Section 2.4.
1.3 "Engineering Changes", or "EC's", shall have the meaning set forth in
Section 4.1.
1.4 "HTI Confidential Information" shall mean information identified as such in
Appendix A, and in addition, any information designated as HTI Confidential
Information according to Section 8 or under the Prior Confidential Disclosure
Agreements, subject in all cases to the exclusions set forth in Section 8.7.
1.5 "HTI Royalty Product" shall mean an Integrated Lead Suspension sold, leased
or otherwise transferred by or for HTI to another [*******CONFIDENTIAL
TREATMENT
4
REQUESTED *************] HTI Royalty Product shall include, but not be limited
to, an Integrated Lead Suspension which is similar to Prototypes, including
variations in size and/or configuration, or any Integrated Lead Suspension sold,
leased or otherwise transferred by or for HTI that uses or used IBM Confidential
Information or IBM/HTI Confidential Information in its development or
manufacture. Royalties and fixed payments paid by HTI for HTI Royalty Product
shall be for compensation for use of IBM Confidential Information, know-how and
assistance and are not to be construed as compensation for IBM patent licenses.
1.6 "IBM Advanced Suspension" shall mean the preexisting IBM designs for an
Integrated Lead Suspension.
1.7 "IBM Confidential Information" shall mean information transferred to HTI
relating to the IBM Advanced Suspension, including the IBM Product
Specifications and information identified as such in Appendix A, and in
addition, any information designated as IBM Confidential Information according
to Section 8 or under the Prior Confidential Disclosure Agreements, subject in
all cases to the exclusions set forth in Section 8.7.
1.8 "IBM/HTI Confidential Information" shall mean information developed by IBM
and HTI, wherein information of both parties
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is combined, and wherein one of the parties designates (or has designated) the
information provided by it as confidential, and none of the exclusions set forth
in Section 8.7 is applicable (or if any such exclusion is applicable IBM and HTI
nonetheless concur in writing that such information shall be deemed to be
IBM/HTI Confidential Information). IBM Confidential Information, such as the IBM
Advanced Suspension and IBM Product Specifications, or HTI Confidential
Information, which is preexisting or developed independently from the other
party, and which can be separated conceptually and physically from the IBM/HTI
Confidential Information shall not be considered to be IBM/HTI Confidential
Information.
1.9 "Patent License Agreement" ("PLA") shall mean the separate agreement of
even date herewith entered into between IBM and HTI, wherein IBM and HTI will
grant each other patent licenses.
1.10 "IBM Product Specifications" shall mean data, techniques, technical
information inherent in samples, equipment specifications, equipment
performance, or other information, related to the IBM Advanced Suspension and
which is provided to HTI.
1.11 "Invention" and "Inventing Party" shall have the meaning set forth in
Section 9.1.
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1.12 "Joint Invention" shall have the meaning set forth in Section 9.1.
1.13 "Managing Coordinator" shall mean the person(s) effecting or supervising
the transfer of information between the parties. The identity of the Managing
Coordinator for each party is defined in Section 5.
1.14 "Prior Confidential Disclosure Agreements" shall mean the IBM/HTI
Confidential Disclosure Agreement dated June 10, 1992 (and extensions thereof),
the Agreement For Exchange Of Confidential Information dated September 6, 1994
and the IBM/HTI Two Way Confidential Disclosure Agreement dated July 26, 1994.
1.15 "Project" shall mean the Prototypes and the design and process
development thereof undertaken by IBM and HTI pursuant to this Agreement.
1.16 "Prototypes" shall mean limited quantities of functional Integrated Lead
Suspensions as more fully described in Appendix A (or subsequent Appendices
added pursuant to Section 2.7), designed by IBM and/or HTI and/or designed and
developed by IBM and HTI pursuant to this Agreement, produced for preliminary
experimental and evaluation purposes hereunder.
1.17 "Rotating Magnetic Memory Product" or "RMM Product" shall
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mean any product primarily designed for recording and/or reproducing in magnetic
form information which is in digital form during motion of a rotating cylinder
or disk having a magnetizable surface, or any instrumentality or aggregate of
instrumentalities primarily designed for incorporation in a RMM Product.
1.18 "Slider" shall mean a structure primarily designed for supporting one or
more magnetic transducers in a transducing relationship with a moving storage
medium by having a surface maintained in contact with a surface of such moving
storage medium or in combination with a fluid flow generated by the movement of
such moving storage medium in close proximity above the surface of the moving
storage medium.
1.19 "Subsidiary" as to each company shall mean a corporation, company or
other entity:
1) more than fifty percent (50%) of whose outstanding shares or
securities (representing the right to vote for the election of
directors or other managing authority) are, now or hereafter, owned or
controlled, directly or indirectly, by a party hereto, but such
corporation, company or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control exists; or
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2) which does not have outstanding shares or securities, as may be the
case in a partnership, limited liability company, joint venture or
unincorporated association, but more than fifty percent (50%) of whose
ownership interest representing the right to make the decisions for
such corporation, company or other entity is, now or hereafter, owned
or controlled, directly or indirectly, by a party hereto, but such
corporation, company or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control exists.
1.20 "Integrated Lead Suspension" shall mean a cantilever member which is used
for supporting one or more transducers, wherein the cantilever member is located
between said transducer (with or without Slider) and a supporting member
(typically an actuator or actuator arm), and wherein the cantilever member has
electrical leads (other than flex cables or wires, whose only function is to
carry electrical current, which are separately attached) etched, plated or
otherwise patterned into or on the surface of one or more components of the
cantilever member. Integrated Lead Suspension does not include the Slider, the
transducer, the supporting member, the actuator, the actuator arm,
[****CONFIDENTIAL TREATMENT REQUESTED ***************].
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1.21 "Technology Transfer And Development Agreement" or "TTDA" shall refer to
the present Agreement.
1.22 "Work Product" shall have the meaning set forth in Section 11.
1.23 "IBM Royalty Product" shall mean an Integrated Lead Suspension sold,
leased or otherwise transferred as a separate unit by or for IBM to another
without attachment of a Slider or a transducer head thereto. IBM Royalty
Product shall include, but not be limited to, an Integrated Lead Suspension
which is similar to Prototypes, including variations in size and/or
configuration, or any Integrated Lead Suspension sold, leased or otherwise
transferred by or for IBM that uses or used HTI Confidential Information or
IBM/HTI Confidential Information in its development or manufacture.
1.24 "Coupon" shall mean an electrically functional model of an Integrated Lead
Suspension which is used for electrical testing, but which is not
aerodynamically functional and which is not capable of being used in combination
with a Slider and a moving storage medium.
[*****************************************************************************
******************CONFIDENTIAL TREATMENT REQUESTED ***************************
*****************************************************************************]
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[****************************************************************************
*****************CONFIDENTIAL TREATMENT REQUESTED ******************
****************************************************************************].
2. SCOPE OF WORK
2.1 IBM has disclosed and will disclose and transfer to HTI IBM Confidential
Information, trade secrets, know how and other items relating to the IBM
Advanced Suspension, including IBM Product Specifications, certain of the
information described in Appendix A and the purchase orders issued thereunder,
samples, materials requirements, manufacturing process information, and test
data in addition to the information transferred under the Prior Confidential
Disclosure Agreements. This initial disclosure and transfer of technology forms
the principal basis for the Project. HTI has also disclosed certain information
relating to the design and manufacture of Integrated Lead Suspensions under the
Prior Confidential Disclosure Agreements which constitutes a
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significant portion of the basis for the Project.
2.2 The primary object of the Project is to develop high performance
Integrated Lead Suspensions capable of operating in RMM Product. After the
initial disclosure and transfer of Confidential Information, trade secrets, and
know-how, as set forth in Section 2.1, IBM and HTI will work together to develop
such Integrated Lead Suspensions. IBM agrees that HTI can supply HTI Royalty
Product to the market, subject to the royalty payments of Section 12 and other
restrictions of this TTDA, and the terms of the separate Patent License
Agreement.
2.3 The scope of work, including the planned schedule of work activities and
detailed objectives for the Project, is set forth in Appendix A which forms an
integral part of this TTDA. The parties understand and agree that the
activities to be undertaken in each phase must be substantially completed to the
satisfaction of the individual Managing Coordinator prior to the commencement of
any subsequent phase. The Managing Coordinator of each party must mutually
agree in writing that the activities of each phase have been satisfactorily
completed unless such agreement cannot be reached. If such agreement cannot be
reached, the subsequent phase, if any, shall not be undertaken until written
agreement of an appropriate action plan therefor is reached by the Managing
Coordinators.
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2.4 Subsequent to the initial disclosure and technology transfers as set forth
in Section 2.1, each party shall, subject to the limitations as set forth in
Section 8.2, supply to the other all technical and engineering information and
data relating to the design, development, manufacture, testing, operation and
maintenance of the Prototypes and all related items, which information, data or
items have been developed pursuant to this TTDA by the personnel directly
assigned by the parties and who are directly involved in the Prototype
development project hereunder, including Prototypes and data relating thereto
collected (all hereinafter called "Deliverables"). IBM and HTI will each
evaluate Prototypes. Each party shall provide the other with the results of its
evaluation of such Prototypes to enable successful qualification of such
Prototypes.
2.5 IBM may, but is not obligated to, provide training and/or consulting
services to HTI. When requesting any such training and/or consulting services,
HTI shall submit a written request to the IBM Managing Coordinator. With respect
to any additional training and/or consulting services requested in writing by
HTI and provided by IBM, HTI shall pay IBM at the IBM rate in effect at the time
of the request. Further, HTI shall reimburse all reasonable travel and living
expenses which may be incurred by IBM in providing such excess services.
2.6 Changes to any specification, procedure, process,
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mechanical, electrical, design or other information, or condition or work scope
set forth in the Appendices to this TTDA or substantial changes to the Scope of
Work of Section 2 of this TTDA may be requested in writing by the Managing
Coordinator of either IBM or HTI, and may be made only by mutual written
agreement between them as hereinafter provided.
2.7 The parties may wish to develop other Prototypes in addition to those as
previously specified in Appendix A, but which are substantially similar to the
existing Prototypes. For example, it may be desirable to build smaller or larger
sized Integrated Lead Suspensions which use similar technology as the existing
Prototypes. In such case, either party may suggest to the other party such
additional Prototype development work. Neither party will be under any
obligation to accept any such suggestion. However, if both parties agree, then
IBM will submit a purchase order to HTI for such additional Prototypes. Such
purchase orders may be issued and accepted under this TTDA during the term of
this TTDA. The purchase orders shall state that they are being issued pursuant
to this TTDA and shall be considered to be incorporated into Appendix A. To the
extent that any of the terms of such purchase orders conflict with this TTDA,
the terms of this TTDA will control.
2.8 In the case of each particular Prototype design specified in Appendix A or
any additional Prototype designs which may be
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added, HTI will provide[****************CONFIDENTIAL TREATMENT REQUESTED
**************]of each particular Prototype design prior to the time the
particular Prototype design is qualified for use in a RMM Product. After a
particular Prototype design is qualified, IBM may obtain additional evaluation
units of the qualified Prototype design by issuing a purchase order to HTI. The
price for the additional post qualification evaluation units will be negotiated
at the time of the issuance of the purchase order, and shall be reasonably
related to the incremental cost of production.
2.9 If, at any time during the initial five (5) year term of this Agreement
(or such shorter period as the joint development portions of the Agreement
remain in effect), HTI proposes to commence, within the following three (3)
months, further research and development of Integrated Lead Suspensions which
products contain major design features (including but not limited to means of
integrating the electrical leads) that are substantially different from the
designs employed in any such products (including Prototypes) theretofore
produced by HTI, and if the idea for such proposed research and development
substantially originated with employees of HTI and HTI is not prohibited by its
obligations of confidentiality to one or more third parties (for example,
because the proposed research and development is related to proprietary features
of the products of such third parties), then HTI will give IBM written notice of
the proposed research
15
and development, and IBM will have the option for thirty (30) days to elect to
participate with HTI in such research and development by including such
additional research and development in the work scope under this TTDA. If IBM
desires to participate, it shall give HTI preliminary written notice thereof
within such thirty (30) day period and the parties shall thereafter attempt for
thirty (30) days to agree upon an Appendix to this Agreement setting forth the
work scope of, a reasonable and equitable allocation of project costs and
contributions, and other material details concerning, the proposed further
research and development. If the parties are unable to reach final agreement as
to such Appendix within such thirty (30) day negotiating period, then HTI shall
be free to proceed with the subject research and development without further
obligation to allow IBM to participate.
3. RESPONSIBILITIES OF THE PARTIES TO EMPLOYEES
3.1 Each party will be responsible for its own employees and in no event shall
any employee of either party be deemed an employee of the other party. Matters
governing the terms and conditions of the employment of any employee, such as
supervision, work schedules, wage rate, income tax withholding, FICA
withholding, disability benefits and other benefits, are exclusively the
responsibility of the respective party.
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4. ENGINEERING CHANGES
4.1 The term "Engineering Changes", (hereinafter called "EC's") shall mean
those mechanical, process or electrical design and/or specification changes
referred to in Section 2 hereof, or otherwise within the scope of this TTDA
which, if made to the Prototypes to be delivered hereunder, in the reasonable
opinion of IBM or HTI, would affect the development schedule, performance,
reliability, availability, serviceability, appearance, dimensions, tolerance,
safety or cost of such Prototypes or which, in IBM's or HTI's reasonable opinion
would eventually require additional qualification approvals.
4.2 Each party agrees to inform the other of any necessary EC's which would be
applicable to the Prototypes in general. The informing party agrees that in no
event shall it make any EC's or incorporate any modification to the Prototypes
without the prior written agreement of the other party's Managing Coordinator.
IBM or HTI may, at their respective election, propose EC's to the processes
and/or specifications of the Prototype(s), in which event the other party will
be notified of such proposals in writing. Each party agrees that IBM or HTI
shall have the right to request the incorporation of such EC's. The
nonrequesting party shall, within ten (10) days of such notification, give to
the requesting party a written evaluation of the EC's, stating
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the additional cost or cost savings to the Prototype(s). In addition, this
evaluation shall include, but is not limited to, the nonrequesting party's
evaluation of the EC's effect on the delivery schedules, function, reliability,
performance, and tooling of Prototype(s) incorporating such EC's. If such
evaluation cannot be completed within such ten (10) day period, notice to this
effect shall be given to the requesting party as soon as it is learned that such
evaluation cannot be completed and in no event after the ten (10) day period.
The requesting party will be given a future completion date and reason for delay
in such notice.
Upon completion of such evaluation, the IBM Managing Coordinator and the HTI
Managing Coordinator will agree in writing to: (1) have the EC's implemented,
stating agreement with the costs, schedules and other information submitted by
the nonrequesting party; or (2) have each or either party provide additional
information that the other party may require to further evaluate the EC's; or
(3) cancel the EC's.
4.3 Notwithstanding any other statement herein, unless expressly set forth in
the agreement to implement any EC or any change in work scope or other change,
such agreement shall not obligate either party to contribute funds or equipment
or make additional payments for expenses or unplanned commitments.
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5. MANAGING COORDINATORS
Each party hereto will promptly designate a Managing Coordinator under this
TTDA.
The Managing Coordinators for the parties are:
For IBM: [***CONFIDENTIAL TREATMENT REQUESTED***]
International Business Machines Corporation
5600 Cottle Road, Dept. [***CONFIDENTIAL TREATMENT REQUESTED***]
San Jose, California 95193
For HTI: [***CONFIDENTIAL TREATMENT REQUESTED***]
Hutchinson Technology Incorporated
[***CONFIDENTIAL TREATMENT REQUESTED***]
40 West Highland Park
Hutchinson, MN 55350-9784
Each party may change its Managing Coordinator (or designate a temporary acting
Managing Coordinator) at any time and from time to time during the term of this
TTDA by notifying the Managing Coordinator for the other party in writing at
the above designated address.
The Managing Coordinator or his designated alternate will solely be authorized
to:
a) submit and receive change requests, proposals, responses and/or
authorization of Engineering Changes and approve the same;
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b) schedule and coordinate visits by personnel of each party to
facilities of the other party, its Subsidiaries and its
subcontractors, in connection with activities under this TTDA;
c) supervise and record the exchange of Confidential Information in
accordance with Section 8;
d) monitor schedules and progress of the design and development pursuant
to this TTDA;
e) agree or disagree as to successful completion of each phase.
The Managing Coordinator is not authorized to amend, alter or extend this TTDA
in any way other than specified above.
6. REPORTING
During the term of this TTDA, HTI and IBM will meet and will furnish each other
with timely progress reports which will be written. The meetings shall be held
approximately once every three (3) months. A final written report shall be
generated within thirty (30) days following conclusion of all work hereunder or
termination of this TTDA as described in Section 16.
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Subject to Section 8.2 such reports shall include, but shall not be limited to,
the following:
a) progress of work to date, including technical results which may affect
schedules, development costs, targeted unit costs or performance;
b) technical difficulties encountered and their solutions;
c) anticipated or potential difficulties that may adversely impact
schedules, development costs, or targeted unit costs or performance;
d) action recommended or plans to overcome such anticipated or potential
difficulties; and
e) details pertaining to successful execution of exit criteria for each
phase.
Such final report shall include, but not be limited to, a summary of the entire
performance hereunder, including a process description sufficient (subject to
Section 8.2) for each party to understand and evaluate the manufacturability of
the Prototypes.
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7. EXPENSES
7.1 In order to compensate IBM for its expenses incurred in developing and
transferring technology to HTI after the execution date of this Agreement, HTI
shall make periodic nonrefundable development funding payments to IBM. These
payments shall be due regardless of whether or not the agreement is terminated
prior to its termination date.
HTI shall make to IBM the following five hundred thousand dollar ($500,000)
payments within fifteen (15) days of each date for a total of two and one-half
million dollars ($2,500,000):
Five hundred thousand dollars ($500,000) on June 15, 1995;
Five hundred thousand dollars ($500,000) on [*****CONFIDENTIAL TREATMENT
REQUESTED*****];
Five hundred thousand dollars ($500,000) on [*****CONFIDENTIAL TREATMENT
REQUESTED*****];
Five hundred thousand dollars ($500,000) on [*****CONFIDENTIAL TREATMENT
REQUESTED*****];
Five hundred thousand dollars ($500,000) on [*****CONFIDENTIAL TREATMENT
REQUESTED*****];
7.2 Each party shall bear its own expenses incurred in connection with this
Project, including those expenses incurred prior to the effective date of the
TTDA, except as provided in
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Section 7.1 or otherwise provided for in this TTDA.
7.3 The expenses for Prototype evaluation units shall be as provided in Section
2.8.
7.4 [**************CONFIDENTIAL TREATMENT REQUESTED *************].
8. INFORMATION EXCHANGE
8.1 Subject to Section 8.2, it is the intention of IBM and HTI to transfer
and/or exchange information as may be essential for the accomplishment of the
objectives of the Project. Information may be disclosed in oral or written form,
from either party to the other, and will include only HTI information and IBM
information (i.e., will include only information to which the disclosing party
has a right to disclose). Such information may include data, techniques,
technical information inherent in samples, know-how, equipment specifications,
equipment performance, or other information essential to the Project.
8.2 Notwithstanding any other provision whatsoever contained in this Agreement
or the PLA (or any of the Exhibits or Appendices to either of them), HTI will
not be required to disclose to IBM, either during the conduct of the Project or
thereafter, any information about HTI's manufacturing processes and
manufacturing
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know how, except for the following types of information developed in performance
of the Project (which information will be subject to such disclosure and
licensing in accordance with the provisions of this Agreement): (a) information
about ability to achieve [*************CONFIDENTIAL TREATMENT REQUESTED
**************]actual and projected volume tolerance intervals with respect to
product specifications, (b) general process flow information and (c) quality
control techniques. However, if such information about HTI's manufacturing
processes and manufacturing know how is disclosed by HTI to IBM, either
intentionally or unintentionally, then it shall be considered to be HTI
Confidential Information and shall be treated as such pursuant to the terms of
this Section 8.
8.3 All disclosures of information, subsequent to the Confidential Information
initially disclosed and transferred by the parties pursuant to Section 2.1,
shall be deemed to be nonconfidential unless specifically designated (as
provided for in Section 8.4) as including the Confidential Information of IBM or
the Confidential Information of HTI, as the case may be. With respect to all
such information disclosed by one party (the "Disclosing Party") to the other
party (the "Receiving Party"), except such information as is specifically
designated as the Confidential Information of the Disclosing Party, the
Disclosing Party grants to the Receiving Party, to the extent, if any, of the
Disclosing Party's interest therein, an irrevocable,
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nonexclusive, unrestricted, and worldwide right to use, have used, disclose to
others, to make copies in the case of documents and to dispose of, all without
limitation, such nonconfidential information in the development, manufacturing,
marketing and maintenance of products and services which incorporate such
information, subject to any applicable patent rights, copyrights and other
intellectual property rights which are capable of being registered, of the
Disclosing Party.
8.4 Except for subject matter described in Appendix A and each Party's initial
disclosure and technology transfer to the other (which shall be treated as the
Confidential Information of such Disclosing Party), information of HTI or IBM to
be disclosed hereunder shall be considered confidential only:
a) when such information is disclosed in writing (including such
information recorded in a medium, such as tape or disk), and such
writing states the date of disclosure, that the information contained
therein is confidential, and such writing contains the appropriate
legend "IBM Confidential" or "HTI Confidential" or other similar
language which clearly denotes that it is confidential information of
the Disclosing Party; or
b) when such disclosure is orally and/or visually made, and it is
confirmed in a written resume which is
25
physically or electronically sent to the Receiving Party within thirty
(30) days following such disclosure, and such resume specifically
recites that information which is confidential, and the resume itself
is clearly marked with the appropriate legend "IBM Confidential" or
"HTI Confidential," as the case may be, or other similar language
which clearly denotes that it is confidential information of the
Disclosing Party.
8.5 Subject to the provisions of Sections 8.6, 8.7, 8.8 and 12, for a period
of five (5) years from the date of termination or expiration of this TTDA as
provided in Section 16, whichever occurs first, the Receiving Party agrees to
use the same care and discretion (but not less than a reasonable degree of care)
to avoid disclosure, publication or dissemination of the Confidential
Information of the Disclosing Party, outside of those employees of the Receiving
Party and its Subsidiaries who have a need to know, as the Receiving Party
employs with similar information of its own which it does not desire to
disclose, publish or disseminate outside a group of its own employees, or those
of its Subsidiaries, who have such a need to know.
The Receiving Party and its Subsidiaries shall be free to use any such
Confidential Information provided by the Disclosing Party, any reports and
written documentation prepared by the Receiving
26
Party, and any ideas, know-how, concepts and/or techniques contained in any such
Confidential Information for any purpose, including the use of such Confidential
Information in the development, manufacture, marketing and maintenance of its
products and services, subject only to the obligations not to disclose, publish
or disseminate such Confidential Information during the period of
confidentiality specified in this Section 8.5, the provisions of Section 12, and
subject to any applicable patent rights or copyrights of the Disclosing Party .
It is understood that receipt of Confidential Information under this TTDA shall
not create any obligation in any way limiting or restricting the assignment
and/or reassignment of IBM employees within IBM and HTI employees within HTI.
The Receiving Party may make a reasonable number of copies of any writings or
resumes containing Confidential Information of the other Party, but only for
purposes authorized pursuant to this TTDA.
Following such period of confidentiality specified in this Section 8.5, and
subject to the provisions of Section 12, and to any applicable patent rights or
copyrights of the Disclosing Party, no obligation of any kind is assumed by, or
is to be implied against the Receiving Party or its Subsidiaries, with respect
to any Confidential Information, and the Receiving Party
27
and/or its Subsidiaries shall be free to disclose, publish and disseminate such
Confidential Information to others without limitation and shall have all the
rights relative to such Confidential Information as are set forth in Section
8.3 as if it had been transferred as nonconfidential information.
8.6 Disclosure of Confidential Information shall not be precluded if such
disclosure is:
a) in response to a valid order of a court or other governmental body to
which a party hereto may be subject or otherwise required by law;
provided, however, that in the case of disclosure by the Receiving
Party, such party shall first have given as much notice to the
Disclosing Party as practical and made a reasonable effort to obtain a
protective order requiring that the Confidential Information and/or
documents so disclosed be used only for the purposes for which the
order was issued; or
b) necessary to establish contract rights under this TTDA; or
c) necessary to establish patent rights, copyrights or other intellectual
property rights which are capable of being registered, but only after
receiving the written
28
consent of the Disclosing Party, which consent shall not be unreasonably
withheld.
8.7 Notwithstanding any other provisions of this TTDA, the obligations
specified in Section 8.5 above will not apply to any information that:
a) is in the possession of the Receiving Party or any of its Subsidiaries
prior to the date of the TTDA without obligation of confidence;
b) is independently developed by the Receiving Party or any of its
Subsidiaries;
c) is or becomes publicly available without breach of this TTDA;
d) is rightfully received by the Receiving Party or any of its
Subsidiaries from a third party without obligation of confidence; or
e) the Disclosing Party or any of its Subsidiaries provides written
consent for the disclosure (but only to the extent expressly set forth
in such written consent).
29
8.8 Subject to the provisions of Section 12, the marketing and sale of any
product or service, including the customary and necessary supporting
documentation therefor, which inherently discloses the Confidential Information
of either party shall not in itself be prohibited.
8.9 Except for the subject matter described in Appendix A and IBM's initial
disclosure and technology transfer to HTI pursuant to Section 2.1 (which shall
be treated as IBM Confidential Information), and any other preexisting materials
(which shall be treated as the Confidential Information of the party hereto
supplying such preexisting materials if such preexisting materials are
transferred as Confidential Information pursuant to Section 8.4 hereof), all
Deliverables shall be treated as the Confidential Information of both parties.
Each party will label such Deliverables with the legend "IBM/HTI Confidential
Information" and shall treat such items as the Confidential Information of the
other party in accordance with the provisions of this Section 8.
8.10 Notwithstanding any other provision of this Section 8, no copyright
license is granted in this Section 8 by either party to the other with respect
to (I) any program code or microcode or (ii) any document or other media
containing a notice of copyright which may be included in the information
exchanged hereunder.
30
8.11 IBM Confidential Information and HTI Confidential Information relating to
the Integrated Lead Suspensions which was transferred under a Prior Confidential
Disclosure Agreement shall be treated henceforth as having been transferred
under this Section 8 as Confidential Information. With respect to the
Integrated Lead Suspensions and the Project and all other activities and matters
covered by this Agreement, the provisions of this Section 8 shall supersede and
replace the provisions and restrictions contained in the Prior Confidential
Disclosure Agreements in all respects and such Prior Confidential Disclosure
Agreements shall have no further application to such activities and matters.
9. INVENTIONS/INVENTION RIGHTS
9.1 "Invention" shall mean any Integrated Lead Suspension idea, design,
concept, technique, invention, discovery or improvement whether or not
patentable or registerable, either conceived or first actually reduced to
practice during the term of the joint development relationship under this TTDA
and in the performance of services under this TTDA, solely by one or more
employees of one of the parties or its Subsidiaries (such party is hereinafter
called the "Inventing Party"), or jointly by one or more employees of both of
the parties or their respective Subsidiaries (such an Invention is hereinafter
called a "Joint Invention"). To the extent it has not done so in any written
31
report, the Inventing Party, except as otherwise set forth in Section 8.2 shall
make a written disclosure to the other party of each Invention within a
reasonable time after such conception or reduction to practice, specifically
pointing out the features or concepts which are believed to be new or different.
9.2 Ownership of Inventions
Each Invention, other than a Joint Invention, shall be the Inventing Party's
property subject to a patent license which the Inventing Party hereby grants to
the other party. The Inventing Party shall notify the other party within a
reasonable time as to each country in which the Inventing Party elects to seek
protection by obtaining patent rights. The Inventing Party shall have complete
discretion in seeking and/or maintaining any patent or other protection and
shall bear any and all expenses incurred with respect thereto.
A party filing a patent application covering any Invention shall promptly
provide to the other party a copy of the abstract of each application so filed,
subject to the patent laws and procedures of the relevant jurisdiction. If the
Inventing Party elects to seek protection on an Invention in any country, it
shall grant and hereby grants to the other party a license under any and all
patents issuing on applications it files on said Invention. The Inventing Party
shall have the unrestricted right
32
to grant licenses (including the right for any licensees to grant sublicenses)
to a third party under such patents without accounting to the other party.
All licenses granted or agreed to be granted to IBM or HTI under this Section
9.2 shall be world-wide, nonexclusive, nontransferable (subject to Section 19),
and fully paid up; shall include the right to make, have made, use, have used,
lease, sell and/or otherwise transfer any apparatus and to practice and have
practiced any process; and shall include the right of IBM and HTI to grant
sublicenses to their respective Subsidiaries under the terms and conditions
described in Section 18; and shall be subject to expiration or termination in
accordance with Section 16 of this Agreement.
9.3 Joint Inventions
Joint Inventions shall be jointly owned, title to all patents issued thereon
shall be joint and equal, all expenses incurred in obtaining and maintaining
such patents shall be jointly and equally shared (except as provided
hereinafter), and each party shall have the unrestricted right to grant licenses
(including the right for any licensees to grant sublicenses) to a third party
thereunder without accounting to the other party and with any necessary consent
hereby given by the other party as may be required by any country law in
granting such licenses to a third
33
party.
With respect to any Joint Inventions, where one party elects not to seek or
maintain such protection thereon in any particular country or not to share
equally in the expenses thereof, the other party shall have the right to seek or
maintain such protection at its own expense and shall have full control over the
prosecution and maintenance thereof even though title to any patent issuing
thereon shall be joint.
9.4 Assistance
In connection with the obtaining of patent protection by a party hereto, each
party agrees to give the other party all reasonable assistance in connection
with the preparation and prosecution of any patent application filed by the
other party and shall cause to be executed all assignments and other instruments
and documents as may be reasonably necessary or appropriate to carry out the
intent of this Section 9. HTI and IBM (and their respective Subsidiaries) shall
be solely liable for any compensation which may be due to any of their
respective employees who make Inventions which are subject to the provisions of
this Section 9.
9.5 No party shall be liable for any payments to employees of, or others whose
services are utilized hereunder by, the other
34
party who conceives or reduces to practice Inventions.
9.6 In performing the obligations under this TTDA, the parties hereto agree to
avoid knowingly designing or developing any item that infringes one or more
patents, copyrights or other intellectual property rights of any third party,
except for such items which the parties after consultation believe to be invalid
or as to which each believes it can obtain an appropriate license. If either
party is or becomes aware of any third party intellectual property rights (or
alleged rights) which may be relevant to the Project (including items possibly
within the scope of the foregoing exception) during the course of its
performance, it agrees to notify the other party hereto of such rights in
writing within a reasonable time (not exceeding thirty (30) days), unless it is
prohibited by doing so by a confidentiality obligation to a third party. If
either party is or becomes aware of any such items which appear to be outside
the scope of such exception, the parties will jointly decide on an appropriate
course of action.
9.7 If an Invention is not patented, it may be designated as the Inventing
Party's Confidential Information as provided in Section 8.
35
10. PATENT CLEARANCE INVESTIGATIONS
Before the completion of this TTDA and within thirty (30) days of request by
either party (requestor), the other party will promptly disclose to the
requestor sufficient technical information, including (subject to Section 8.2)
process manufacturing information, as is reasonably necessary, to enable the
requestor to conduct third party patent clearance investigations with respect to
the Prototypes.
Said other party shall make a reasonable effort to promptly notify the requestor
in writing (a) of any patents of third parties of which it is now or hereafter
becomes aware, which patents may be pertinent to any of the Prototypes or to any
Integrated Lead Suspensions manufactured by HTI for IBM or sold to IBM or any of
its Subsidiaries, (b) of any suits or claims of patent infringement which may
have been made against said other party or any of its Subsidiaries,
distributors, or dealers in respect of any Prototype or any such Integrated Lead
Suspension or any of its products similar thereto in any respect material to the
infringement claim, and (c) of any licenses under patents of third parties which
have been granted to said other party and which may be relevant to any of the
Prototypes or to any such Integrated Lead Suspensions.
It is understood, however, that any patent clearance
36
investigation shall be solely at the discretion of the requestor for its
internal purposes and that it shall incur no liability to the other party
through making or failing to make any such investigation.
Neither party shall be required by the Agreement to indemnify the other for the
infringement of any patent rights of any third party.
11. COPYRIGHTS IN DATA
Except for preexisting materials protectable or protected by copyright that are
included in the Deliverable items, the copyrights in the Deliverable items, and
any related documentation or information containing media developed under this
Agreement (hereinafter "Work Product") shall be jointly and equally owned, and
subject to Section 8 each party shall have the unrestricted right to grant
licenses (including the right for any sublicensee to grant sublicenses) to a
third party thereunder without accounting and with necessary consent hereby
given to the other party as may be required by any country law in granting such
licenses to a third party.
Each party shall have the right to obtain and to hold in the joint owners' name
copyrights, registrations and such other statutory and common law protection as
may be available, and any
37
extensions and renewals thereof, in the Work Product referred to in this Section
11 in which it has joint ownership. Each party agrees to give the other party,
and any person designated by the other party, at such other party's expense, all
assistance reasonably required to perfect the rights defined in this Section 11.
Subject to Section 8, to the extent that any preexisting materials, other than
program code or microcode, of one party are contained in the Work Product which
is owned solely or jointly by the other party, the party providing the
preexisting materials agrees to grant and hereby grants to the owner of the Work
Product a nonexclusive, worldwide, and fully paid-up (subject to Section 12)
right and license under copyright to use, execute, reproduce, display, perform,
distribute copies of, and prepare derivative works of, such preexisting
materials, and to authorize others to do any, some, or all of the foregoing.
Notwithstanding any other provision of this TTDA, no program code or microcode
is licensed under this TTDA.
The notice of copyright shall reflect the respective ownership of the materials.
38
12. FOLLOW-ON PRODUCTION LICENSE RIGHTS
12.1 Manufacturing Agreement
The parties presently contemplate that HTI may eventually manufacture
commercially viable models of Integrated Lead Suspensions based on the IBM
Advanced Suspension designs which are the principal foundation of this TTDA. In
consideration of IBM's contribution, HTI hereby grants to IBM the option to
purchase Integrated Lead Suspensions from HTI in quantities sufficient to
support shipment of IBM products at a competitive price. [********
**************** CONFIDENTIAL TREATMENT REQUESTED *****************
********************************************].
12.2 IBM License To HTI Confidential Information
Subject to the other terms and conditions of this Agreement, HTI agrees to grant
and hereby grants to IBM a worldwide, nonexclusive, fully paid up (except as to
IBM Royalty Product) license of HTI Confidential Information and joint IBM/HTI
Confidential Information developed under the project or disclosed to IBM under
Section 2.1 or Section 8 hereof, and of Work Products set forth in Section 11
(other than licenses under HTI trademarks), the license being sufficient
(subject to Section
39
8.2) to enable IBM to manufacture Integrated Lead Suspensions itself or procure
them from sources other than HTI and market them to third parties. IBM may
disclose such HTI Confidential Information and IBM/HTI Confidential Information
to such other sources only if such other sources agree to receive such
information under an appropriate confidential disclosure agreement with terms
substantially as protective as those in Section 8 in the present TTDA (except
that such other sources may use such HTI Confidential Information and IBM/HTI
Confidential Information solely for the purpose of supplying Integrated Lead
Suspensions to IBM and its Subsidiaries).
As consideration for HTI's initial disclosure and technology transfer to IBM as
described in Section 2.1, the grant of the licenses described above in this
Section 12.2, and for HTI's further contributions to the Project as described
herein, if IBM or any IBM Subsidiary sells the IBM Royalty Product as a separate
unit, then IBM will pay to HTI, for a royalty period of [****CONFIDENTIAL
TREATMENT REQUESTED****]from the date of the first sale of an IBM Royalty
Product (after which [****CONFIDENTIAL TREATMENT REQUESTED****] period the
licenses granted under this Section 12.2 shall be deemed fully paid-up), a
royalty of [****CONFIDENTIAL TREATMENT REQUESTED ****]. IBM Royalty Product
does not include an Integrated Lead Suspension which is sold, leased or
otherwise transferred by or for IBM or its Subsidiaries in combination with a
Slider, transducer, actuator arm and/or
40
actuator, or as a component or subassembly in a Rotating Magnetic Memory
Product, and therefore, such sales, leases or transfers are not subject to the
royalty payment by IBM to HTI. Royalties paid by IBM for IBM Royalty Product
shall be compensation for use of HTI Confidential Information, know-how and
assistance as provided for herein and are not to be construed as royalties in
compensation for any HTI patent licenses. All royalties shall accrue, be
reported and paid in accordance with Appendix B to this Agreement.
[***************************************************************************
*****************CONFIDENTIAL TREATMENT REQUESTED **************************
****************************************************************************]
41
[**************************************************************************
********************CONFIDENTIAL TREATMENT REQUESTED **********************
***************************************************************************]
42
[**************************************************************************] to
*********************CONFIDENTIAL TREATMENT REQUESTED *********************
***************************************************************************]
12.4 HTI License To IBM Confidential Information
[*****CONFIDENTIAL TREATMENT REQUESTED *****]
43
[****CONFIDENTIAL TREATMENT REQUESTED ****], and subject to the other terms and
conditions of this Agreement, IBM agrees to grant and hereby grants to HTI a
worldwide, nonexclusive license of IBM Confidential Information (including the
IBM Advanced Suspension and IBM Product Specifications) and joint IBM/HTI
Confidential Information developed under the Project or disclosed to HTI under
Section 2.1 or Section 8 hereof, and of Work Product set forth in Section 11
(other than licenses under IBM trademarks), the licenses being sufficient to
enable HTI to manufacture Integrated Lead Suspensions and improvements thereto
itself or procure them from sources other than IBM, and market them to third
parties. HTI may disclose such IBM Confidential Information and IBM/HTI
Confidential Information to such other sources only if such other sources agree
to receive such information under an appropriate confidential disclosure
agreement with terms substantially as protective as those of Section 8 in the
present TTDA (except that such other sources may use such IBM Confidential
Information and IBM/HTI Confidential Information solely for the purposes of
supplying Integrated Lead Suspension to HTI and its Subsidiaries).
12.5 HTI Royalty Payments to IBM
As consideration for IBM's initial disclosure and technology transfer to HTI as
described in Section 2.1, the grant of the licenses described in Section 12.4,
and for IBM's further
44
contributions of know-how to the Project as described herein, HTI shall make to
IBM a combination of fixed dollar payments and variable royalty dollar payments.
In the event that HTI ships (to IBM and/or to others) [**CONFIDENTIAL TREATMENT
REQUESTED ***] cumulative volume units of Integrated Lead Suspension (of any
combination of types), then HTI shall make to IBM the following payments within
fifteen (15) days of each specified date for a total of five and one half
million dollars ($5,500,000):
Five hundred thousand dollars ($500,000) upon the date on which the
[**CONFIDENTIAL TREATMENT REQUESTED ***] cumulative unit shipment is first
achieved;
One and one half million dollars ($1,500,000) upon the one year anniversary of
the [**CONFIDENTIAL TREATMENT REQUESTED ***] shipment date;
One and one half million dollars ($1,500,000) upon the two year anniversary of
the [**CONFIDENTIAL TREATMENT REQUESTED ***] shipment date;
Two million dollars ($2,000,000) upon the three year anniversary of the
[**CONFIDENTIAL TREATMENT REQUESTED ***] shipment date.
These payments are nonrefundable and shall be due regardless of whether or not
the Agreement is terminated prior to its
45
scheduled expiration date.
In addition to the preceding payments, HTI shall pay to IBM, for a royalty
period of [**CONFIDENTIAL TREATMENT REQUESTED ***] from the date of the first
sale of any HTI Royalty Product to IBM or third parties (after which
[**CONFIDENTIAL TREATMENT REQUESTED ***] period the licenses granted under
Section 12.4 shall be deemed fully paid-up), a royalty for each HTI Royalty
Product sold by or for HTI or its Subsidiaries through the end of such
[**CONFIDENTIAL TREATMENT REQUESTED***] period (subject to adjustment as set
forth in the following paragraphs). Royalties and fixed payments paid by HTI for
HTI Royalty Product shall be compensation for use of IBM Confidential
Information, and know-how as provided for herein and are not to be construed as
royalties in compensation for any IBM patent licenses.
The royalty rate which HTI shall pay IBM for each HTI Royalty Product sold
during a calendar year is [**CONFIDENTIAL TREATMENT REQUESTED ***]
In the event that the TTDA is terminated by HTI without cause (as defined in
Section 16) prior to [**CONFIDENTIAL TREATMENT REQUESTED ***], for the
remainder of the [****CONFIDENTIAL TREATMENT REQUESTED
**************************]. royalty period, HTI shall pay royalties to IBM
using an increased royalty rate equal to [**CONFIDENTIAL TREATMENT REQUESTED
***].
In the event that the TTDA is terminated by IBM without cause (as
46
defined in Section 16) prior to [**CONFIDENTIAL TREATMENT REQUESTED ***] for
the remainder of the [**CONFIDENTIAL TREATMENT REQUESTED ***] royalty period,
HTI shall pay royalties to IBM using a reduced royalty rate equal to
[**CONFIDENTIAL TREATMENT REQUESTED ***].
[******************************************CONFIDENTIAL TREATMENT REQUESTED
**********].
All Royalties shall accrue, be reported and paid in accordance with Appendix B.
12.6 Patent License
Other than as provided in Section 9, no license or immunity of any patents is
granted under this TTDA by either party to the other, either directly or by
implication, estoppel, or otherwise. The grant of any patent licenses other than
as provided in Section 9, is the subject of the separate Patent License
Agreement.
13. WARRANTIES
13.1 Each party represents and warrants that it is under no obligation or
restriction, nor will it assume any such obligation or restriction which would
in any way interfere or be
47
inconsistent with, the activities to be undertaken pursuant to this TTDA.
13.2 Each party covenants that, regarding any information to be disclosed to the
other party under this TTDA, it has or will have the full right and power to
disclose same and that the use of any such information by the other party will
not constitute a misuse or misappropriation of any trade secret or any other
type of confidential information of any third party.
13.3 OTHER THAN AS EXPRESSLY PROVIDED FOR IN THIS AGREEMENT, EACH PARTY MAKES NO
WARRANTIES NOR ASSUMES ANY LIABILITIES IN CONNECTION WITH THIS PROJECT,
INCLUDING BUT NOT LIMITED TO THE ACCOMPLISHMENT OR COMPLETION OF ANY PORTION OF
THE PROJECT. ANY EQUIPMENT, SOFTWARE PROGRAMS, MATERIALS OR SERVICES FURNISHED
BY ANY PARTY PURSUANT TO THIS AGREEMENT ARE ON AN "AS IS" BASIS.
13.4 It is understood by the parties that entry into this TTDA and the
performance of any acts or activities hereunder shall not constitute a guarantee
or assurance that IBM or HTI will procure, announce or otherwise offer for lease
or sale a product which contains or utilizes the technology or products, or any
portion thereof, developed under this TTDA or any extension of this TTDA.
Each party understands and agrees that entry into this TTDA by the other is not
conditioned upon an extension of this TTDA upon
48
its expiration, or the issuance by IBM of a purchase order for the procurement
of products or technology developed pursuant to this TTDA, or any other
agreement for the further development, manufacture or sale of products or
technology developed pursuant to this TTDA, other than as provided in Section
12.
13.5 The parties understand that there are no oral or written collateral
promises, representations, agreements, or understandings, except as provided
herein and in the PLA, and each party warrants that there were no inducements,
express or implied, relied upon as a condition of entry into this TTDA and the
PLA.
13.6 Neither party shall be liable to the other party for any lost revenue, lost
profits or other consequential damages, even if advised of the possibility of
such damages, which may result from its failure to perform its obligations under
this TTDA and neither party shall be liable for any claim against the other
party by any third party. Notwithstanding this limitation of liability clause,
nothing in this TTDA will limit either party's payment obligation of remitting
any payments or royalties due to the other party or impede either party's
recovery of direct compensatory damages if the other party fails to pay such
payments or royalties due.
49
14. COMPLIANCE WITH LAWS AND REGULATIONS
Each party shall do whatever is reasonably necessary and appropriate, in
connection with the Project and any Integrated Lead Suspensions or other
products or technology developed under this TTDA, to enable itself and the other
party to comply with all applicable laws including those laws related to the
export of technical data.
15. AGREEMENTS WITH EMPLOYEES AND OTHERS
Each party has or will obtain appropriate agreements with its employees or
others, including subcontractors, whose services it may require, sufficient to
enable such party to comply with all the provisions of this TTDA.
16. TERM AND TERMINATION
16.1 Subject to Section 8.11, this TTDA is effective as of the date written
above (September 1, 1994) and shall expire [***CONFIDENTIAL TREATMENT
REQUESTED***] thereafter unless earlier termination is invoked as provided
hereinafter. Prior to the expiration of such period the parties may extend the
term of this TTDA by a mutually signed amendment.
16.2 IBM shall have the right to terminate this TTDA for cause by
50
giving written notice to HTI, if HTI shall: (a) fail to pay when due any amount
required to be paid to IBM hereunder and such a failure shall not be cured and
any interest due should not be paid within thirty (30) days after written notice
by IBM to HTI of such failure; or (b) knowingly sell, lease or otherwise
transfer Integrated Lead Suspensions to any third parties other than those to
which the sale, lease or transfer is authorized under this TTDA and the PLA; or
(c) otherwise materially breach this TTDA or the PLA. Such termination shall
become effective thirty (30) days after such written notice is given by IBM to
HTI, unless HTI cures the default prior to the effective date of the
termination.
In the event this TTDA is terminated by IBM pursuant to this Section 16.2: all
licenses to HTI hereunder shall terminate; all licenses to IBM hereunder shall
continue; and if the period specified in Section 8 of this TTDA with respect to
Confidential Information has not expired, then the obligation of non-disclosure
with respect to such Confidential Information shall survive and remain in effect
and binding on the parties.
16.3 HTI shall have the right to terminate this TTDA for cause by giving
written notice to IBM, if IBM shall: (a) fail to pay when due any amount
required to be paid to HTI hereunder and such a failure shall not be cured
and any interest due should not be paid within thirty (30) days after written
notice by HTI to IBM
51
of such failure; or (b) knowingly sell, lease or otherwise transfer Integrated
Lead Suspensions to any third parties other than those to which the sale, lease
or transfer is authorized under this TTDA and the PLA; or (c) otherwise
materially breach this TTDA or the PLA. Such termination shall become effective
thirty (30) days after such written notice is give by HTI to IBM, unless IBM
cures the default prior to the effective date of the termination.
In the event this TTDA is terminated by HTI pursuant to this Section 16.3: all
licenses to IBM hereunder shall terminate; all licenses to HTI hereunder shall
continue; and if the period specified in Section 8 of this TTDA with respect to
Confidential Information has not expired, then the obligation of non-disclosure
with respect to such Confidential Information shall survive and remain in effect
and binding on the parties.
16.4 In the event that this TTDA has not been terminated (or termination notice
given) pursuant to Section 16.2 or Section 16.3, then either party may terminate
this TTDA without cause at any time upon 30 days written notice.
16.5 If this Agreement terminates as provided in Section 16.1 or 16.4, then all
licenses and payment obligations granted under this TTDA shall continue; and if
the period specified in Section 8 of this TTDA with respect to Confidential
Information has not
52
expired, then the obligation of non-disclosure with respect to such Confidential
Information shall survive and remain in effect and binding on the parties.
[****************************************************************************
**************CONFIDENTIAL TREATMENT REQUESTED ******************************
*****************************************************************************]
[****************************************************************************
****************CONFIDENTIAL TREATMENT REQUESTED ****************************
***********************************************************************]. IBM
thereafter may terminate the license granted to HTI for cause on thirty (30)
days written notice if HTI shall: (a) fail to pay when due any amount required
to be paid hereunder and failure shall not be cured and any interest due shall
not be paid within thirty (30) days after written notice by IBM to HTI of such
53
failure; or (b) knowingly sell, lease or otherwise transfer Integrated Lead
Suspensions to any third parties other than those to which the sale, lease or
transfer is generally authorized under this TTDA and the PLA; or (c) otherwise
materially breach this TTDA or the PLA.
17. PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Payments shall be made in U.S. Dollars by electronic funds transfer. Other than
as provided for in Section 5 above, any notice or other communication required
or permitted to be made or given to a party pursuant to this TTDA shall be sent
to such party by facsimile or by registered airmail (except that registered or
certified mail may be used where delivery is in the same country as mailing),
postage prepaid, addressed to it at its address set forth below, or to such
other address as it shall designate by written notice. Payments shall be deemed
to be made on the date of electronic fund transfer. Notices or other
communications shall be deemed to have been given or provided on the date of
mailing. The addresses are as follows:
54
For the electronic funds transfer of payments:
The Bank of New York
48 Wall Street
New York, New York 10286
United States of America
Credit Account No. [******CONFIDENTIAL TREATMENT REQUESTED ******]
ABA No. 0210-0001-8
For mailing to IBM:
IBM Director of Licensing
International Business Machines Corporation
500 Columbus Ave.
Thornwood, NY 10594
United States of America
For facsimile transmission to IBM:
(914) 742-6729
For mailing to HTI:
President
Hutchinson Technology Incorporated
40 West Highland Park
Hutchinson, MN 55350
55
For facsimile transmission to HTI:
(612) 587-1810
Either party shall be liable for interest on any overdue payment required to be
made to the other party under this TTDA commencing on the date such payment
becomes due, at an annual rate which is the greater of ten percent (10%) or one
percentage point higher than the prime interest rate quoted by the head office
of 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. If such
interest rate exceeds the maximum legal rate in the jurisdiction where a claim
therefor is being asserted, the interest rate shall be reduced to such maximum
legal rate.
18. SUBLICENSING RIGHTS
18.1 The licenses granted herein shall include the right of the parties hereto
to sublicense their respective Subsidiaries and the right of such sublicensed
Subsidiaries to sublicense other Subsidiaries of the respective parties. Each
sublicensed Subsidiary shall be bound by the terms and conditions of this TTDA
as if it were named herein in the place of the party with whom the sublicense
originated. If a Subsidiary ceases to be a Subsidiary and holds any patents or
patent applications under which a party hereto is licensed, such licenses will
continue for
56
the life of such patents or patent applications. Any sublicense granted to a
Subsidiary shall terminate on the date such Subsidiary ceases to be a
Subsidiary.
18.2 In the event a sublicensed Subsidiary of one party hereto is an Operating
Subsidiary (as hereinafter defined) at the time it ceases to be a Subsidiary,
and, with the written approval of said one party, requests in writing, within
one hundred and eighty (180) days after ceasing to be a Subsidiary, a license
agreement with the other party hereto upon terms and conditions substantially
identical to the terms and conditions of this TTDA (except as hereinafter
provided), the other party hereto agrees that it will enter into such license
agreement forthwith. An Operating Subsidiary shall be any Subsidiary of one
party hereto which at the time it ceases to be a Subsidiary has all of the
following:
18.2.1 a line of marketable products;
18.2.2 patents or other intellectual property relating to the line of
marketable products;
18.2.3 tangible assets at least equivalent in value to the lesser of one
hundred million U.S. dollars ($100,000,000) or twenty percent (20%) of
the total assets of the party of which it was formerly a Subsidiary;
and
57
18.2.4 at the time of entry into such license agreement it is not a
corporation, company or other entity:
1) more than fifty percent (50%) of whose outstanding shares
or securities (representing the right to vote for the election of
directors or other managing authority) are; or
2) which does not have outstanding shares or securities, as may
be the case in a partnership, limited liability company, joint
venture or unincorporated association, but more than fifty percent
(50%) of whose ownership interest representing the right to make
the decisions for such corporation, company or other entity is;
owned or controlled, directly or indirectly, by a third party.
Any such agreement with an Operating Subsidiary shall differ from this TTDA in
the following respects:
18.2.5 This Section 18.2 and Sections 2 through 6 shall be omitted;
18.2.6 The payment requirements under Section 7.1 shall be omitted unless the
Operating Subsidiary is a Subsidiary of HTI which theretofore carried
on substantially all of
58
HTI's business of manufacturing and selling Integrated Lead
Suspensions;
18.2.7 The name of the Operating Subsidiary shall be substituted for the name
of the party hereto of which it was formerly a Subsidiary; and
18.2.8 In the event that such Operating Subsidiary is or becomes organized
under the laws of a country different from that of the party hereto of
which it was formerly a Subsidiary, such license agreement shall
contain such additional terms and conditions (other than royalty
provisions) as may be required in intellectual property license
agreements between the licensing party and other entities organized
under the laws of the same country.
19. ASSIGNMENTS, SUBCONTRACTS AND ACQUISITIONS
19.1 This TTDA shall be binding on and inure to the benefit of the parties
hereto, their Subsidiaries and their respective successors and assigns. Neither
party shall assign any of its rights or privileges hereunder without the prior
written consent of the other party.
19.2 The parties agree that no right to subcontract any of the work set forth
in Section 2 is granted under this TTDA, except as
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may otherwise be agreed to in writing by the parties. Notwithstanding the
foregoing, the parties understand that no right to subcontract shall be granted
or approved by either party unless any such subcontractor is made subject to
provisions of confidentiality which are no less restrictive than those set forth
in this TTDA, and unless the provisions of Section 15 are complied with by the
party desiring to subcontract.
19.3 In the event that more than fifty percent (50%) of HTI's outstanding
shares or securities (representing the right to vote for election of
directors or other managing authority) hereafter become owned or controlled,
directly or indirectly, by a third party or any transaction is proposed that
if consummated would lead to a majority ownership or control of HTI, HTI's
obligations with respect to disclosure of IBM Confidential Information shall
not apply to any disclosure to said acquiring (or proposed acquiring) third
party provided, however, that said third party agrees to be bound by the
provisions of this TTDA as if it were named as a party herein in the place of
HTI.
19.4 In the event that more than fifty percent (50%) of the outstanding shares
or securities (representing the right to vote for the election of directors or
other managing authority) of one party hereto (the "Acquired Party") hereafter
become owned or controlled, directly or indirectly, by a third party, said
Acquired Party shall promptly give notice of such acquisition to
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the other party. If said Acquired Party does not have outstanding shares or
securities, such acquisitions shall be deemed to occur if more than fifty
percent (50%) of its ownership interest representing the right to make decisions
for the said party is acquired by said third party. All rights granted
hereunder to said one party together with any sublicenses theretofore granted by
said one party shall terminate on a termination date one hundred and eighty
(180) days after the date of such acquisition.
In the event of such acquisition,
19.4.1 All licenses granted herein to said other party under this
TTDA shall terminate; and
19.4.2 Said one party shall be entitled, upon request made within
thirty (30) days before or one hundred and eighty (180) days
after the date of such acquisition to a license agreement
with the other party hereto upon terms and conditions
substantially identical to the terms and conditions of this
TTDA (accept as hereinafter provided), the other party
hereto agrees that it will enter into such license agreement
forthwith. Such license agreement shall differ from this
TTDA in the following respects:
19.4.2.1 A license grant to said one party shall be
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limited in amount to annual sales equal to two (2) times
sales of Royalty Products (IBM Royalty Products if IBM is
said Acquired Party or HTI Royalty Products if HTI is said
Acquired Party) by said one party and its sublicensed
Subsidiaries which are included in such acquisition in the
consecutive 12 month period that immediately precedes the
date of such acquisition; and
19.4.2.2 The licensee shall be relieved of any payment
obligations under Sections 7.1 and 12.5 that have already
been actually paid by HTI.
For purposes of this Section 19.4.2, the term "Royalty Products" means IBM
Royalty Products in the case where IBM is the Acquired Party and means HTI
Royalty Products in the case where HTI is the Acquired Party.
20. NONEXCLUSIVE RELATIONSHIP
Neither this TTDA nor any development activities hereunder will impair the right
of either party or its Subsidiaries, without breach of this TTDA, to develop,
make, use, procure and/or market products and services related to such products
now or in the future, individually or jointly with others, which may be
compatible or competitive with those developed under this TTDA,
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nor require either party to disclose any planning information to the other
except as provided in Section 2.
21. SURVIVAL
Except as specifically provided in Section 16, the rights and obligations of
Sections 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17, 18, 19, 21, 22, 23, 24, 25, 26
and 27 of this TTDA shall survive and continue after expiration or termination
of this TTDA and shall bind the parties and their legal representatives,
successors and assigns.
22. TRADEMARKS
Nothing contained in this TTDA shall be construed as conferring on either party
any rights to use in advertising, publicity or other marketing activities any
name, trademark, or other designation of the other party hereto, including any
contraction, abbreviation, or simulation of any of the foregoing, and each
party hereto agrees not to use the existence of this TTDA in any marketing,
promotion or publicity activity without the express written approval of the
other party.
23. PUBLICITY
For a period of five (5) years from the date of this TTDA,
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neither of the parties shall disclose the terms and conditions and subject
matter of this TTDA (other than to confirm the existence and scope of the
licenses contained herein upon inquiry by a bone fide customer or potential
customer), except as may be required by law, judicial order, government rule or
regulation, without the prior written consent of the other party.
24. [*******************************************************************
**********************CONFIDENTIAL TREATMENT REQUESTED*******************
************************************************************************]
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[************************************************************************
*****************CONFIDENTIAL TREATMENT REQUESTED*************************
************************************************************************]
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25. ENTIRE AGREEMENT
25.1 This TTDA and the PLA (and the Appendices attached hereto and thereto)
embody the entire agreement of the parties with respect to the subject matter
contained herein (and therein) and shall supersede all previous communications,
representations or understandings, either oral or written, between the parties
relating to the Project; and neither party shall be bound by any conditions,
definitions, warranties, understandings or representations with respect to the
subject matter hereof (or thereof) other than as expressly set forth herein (or
therein). In the event that any of the provisions of this Agreement (or the PLA)
shall be found to be in conflict with any such other agreement(s), however, this
Agreement (or the PLA) shall prevail.
Except for those changes identified in Section 2, SCOPE OF WORK, and in Section
4, ENGINEERING CHANGES, no amendment or modification of this Agreement shall be
valid or binding upon the parties unless made in writing and executed on behalf
of each of such parties by their respective duly authorized representative
thereunto.
25.2 This TTDA will not be binding upon the parties until it has been signed by
or on behalf of each party, in which event it shall be effective as of the date
first set forth above (September 1, 1994).
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26. SEVERABILITY
If any Section of the TTDA is found by competent authority to be invalid,
illegal, or unenforceable in any respect for any reason, the validity, legality
and enforceability of any such Section in every other respect and remainder of
this TTDA shall continue in effect so long as the TTDA still provides the
essential benefit of the bargain to both parties. If the benefit of the bargain
cannot be substantially preserved, this TTDA shall be either renegotiated or
terminated.
27. APPLICABLE LAW
The validity, construction and performance of this TTDA will be governed by the
substantive law of the State of New York.
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IN WITNESS WHEREOF, the parties have caused this TTDA to be signed by their duly
authorized representatives as of the day and year first above written.
INTERNATIONAL BUSINESS MACHINES CORPORATION
By: /s/ Robert A. Scranton
--------------------------------------------------------
Title: Director Recording Heads
-----------------------------------------------------
Date: June 15, 1995
-----------------------------------------------------
Witness: /s/ Lori Marshall
----------------------------------------------------
HUTCHINSON TECHNOLOGY INCORPORATED
By: /s/ Wayne M. Fortun
--------------------------------------------------------
Title: President
-----------------------------------------------------
Date: June 13, 1995
-----------------------------------------------------
Witness: /s/ Wayne M. Fortun
----------------------------------------------------
/s/ Richard Myers
----------------------------------------------------
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