[MOTOROLA LETTER HEAD]
February 6, 1997
Jean-Luc Grant-Clement
President
PixTech, S.A.
Avenue Victoire
Zone Industrielle de Rousset
13790 Rousset
France
Dear Mr. Grand-Clement:
As further consideration for the investment being made by Motorola in
PixTech, Inc., and to the further development and commercialization of FED
technology, PixTech, Inc., PixTech, S.A. and Motorola have agreed to amend the
existing Cooperation and Licensing Agreement, dated June 13, 1995 (the
"Cooperation Agreement"), as set forth below.
. Delete the existing section 4.2.2(b) and substitute:
(b) After June 29, 1998, and subject to the prior written consent of
Motorola, which consent shall not be unreasonably withheld or delayed, PixTech
shall have the right to grant royalty-bearing sublicenses under the Motorola
Patent rights to any Person, but only in combination with a license of PixTech
Technology or PixTech Improvements. [*]
* Confidential treatment has been requested for omitted portion.
[*]
PixTech further agrees that each sublicensee described in clause (b) above shall
be required to grant a royalty-free license to Motorola under any patents of
such sublicense that related to or are useful in the FED Field. Any sublicenses
granted pursuant to this Section 4.2.2 shall contain an acknowledgment from the
sublicensee that Motorola has made no representations, warranties or
indemnifications to such sublicensee, whether express or implied, in connection
with the grant of such sublicense, and shall prohibit further sublicenses.
PixTech agrees to notify Motorola at least thirty (30) days prior to the date
upon which PixTech intends to exercise its rights under clause (b). Such notice
shall request Motorola's consent to the sublicense and identify the portion of
any sublicense income that is attributable to the respective contributions of
PixTech, Motorola, and other IPs to any technologies that PixTech will
sublicense pursuant to clause (b) and provide such other information on the
terms and conditions of such proposed license as Motorola may request for
purposes of its evaluation. For purposes of this Agreement, PixTech and Motorola
agree that the final apportionment method for purposes of determining the
portion of any sublicense income that is attributable to Motorola's contribution
of technology shall be based on [*]
Motorola shall be entitled to [*] of that portion of any royalties or other
compensation (or, in the case of non-monetary consideration, that portion of the
fair market value of such non-monetary consideration) that is attributable to
its contribution of technology to royalty-bearing sublicenses granted by PixTech
pursuant to clause (b), (which apportionment shall be determined in accordance
with the prior
* Confidential treatment has been requested for omitted portions.
paragraph). In light of Motorola having invested substantial resources in
developing its technology, PixTech further agrees that to the extent it
grants any royalty bearing sublicense pursuant to clause (b) which provides
for [*] PixTech shall remit to Motorola its share of such sublicense income
(subject to adjustment pursuant to the preceding sentence, if applicable)
within thirty (30) days of the date PixTech receives such payments, it
being understood that pending distribution of any such amounts to Motorola,
such amounts will be held by PixTech in escrow for the benefit of Motorola.
Pixtech agrees to exercise reasonable diligence to ensure that all payments
due from sublicensees are collected when due. All sublicenses granted
pursuant to subsection (b) shall contain provisions generally corresponding
to those contained in Article 6 of this Agreement.
PixTech, Inc. represents and warrants to Motorola that it has all of the
necessary consents and approvals (including consents and approvals of any
government authority or third party) to enter into this amendment and effect the
provisions contemplated hereby.
This Amendment No. 1 to the Cooperation Agreement will become effective
upon the consummation of the purchase by Motorola of approximately 3.5% of the
outstanding shares of common stock of PixTech, Inc. and receipt of a warrant to
purchase an additional 3.5% of the outstanding shares of common stock of
PixTech, Inc. pursuant to the Common Stock and Warrant Purchase Agreement
between Motorola and PixTech, Inc., dated as of the date hereof.
Please acknowledge your agreement to the above amendment by executing this
letter as indicated on the following page.
Very truly yours,
/s/ Michael Stolarski
Michael Stolarski
Intellectual Property
Licensing Counsel
* Confidential treatment has been requested for omitted portions.
Acknowledged and Approved by:
PixTech, Inc. Motorola, Inc.
By: /s/ Jean-Luc Grand-Clement By: /s/ John R. Owings
---------------------------- --------------------
John R. Owings
Title: President & CEO Title: Corporate Vice President
& Director AECS Finance
Date: 2/6/97 Date:
PixTech, S.A. Motorola, Inc.
By: /s/ Jean-Luc Grand-Clement By: /s/ Anthony J. Sarli
---------------------------- ----------------------
Anthony J. Sarli
Title: President Title: Vice President and Director
Intellectual Property, Americas
Date: 2/6/97 Date: 2/10/97
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