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Exhibit 10.22
EXHIBIT D
PATENT AND INVENTION DISCLOSURE
ASSIGNMENT AND LICENSE AGREEMENT
This Agreement is made effective as of February 26, 1998 ("Effective
Date"), between Micron Electronics, Inc. ("MEI"), a corporation having an office
at 900 East Karcher Road, Nampa, Idaho 83687, and MCMS, Inc. (f/k/a Micron
Custom Manufacturing Services) ("MCMS"), a corporation having a place of
business at 16399 Franklin Road, Nampa, Idaho 83687.
Whereas, this Agreement is made pursuant to, and is attached as a
Exhibit to, that Recapitalization Agreement dated December 21, 1997 by and among
MCMS, MEI, and Cornerstone Equity Investors IV, L.P.;
Whereas MEI is the owner of certain United States patents, patent
applications, and invention disclosures; and
Whereas MCMS desires to acquire MEI's entire right, title and interest
in and to the Patents, as defined below; and
Whereas MEI is willing to assign the Patents to MCMS for good and
valuable consideration, the adequacy and receipt of which is hereby
acknowledged, and on the terms and conditions set forth in this Agreement;
Now, therefore, MEI and MCMS hereby agree to the following:
1. Definitions
1.1. "Affiliates" shall mean MEI's Subsidiaries, MEI's
Parent, and the Subsidiaries of MEI's Parent.
1.2. "Subsidiary" shall mean a corporation, company, or other legal
entity (i) 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 MEI
or Micron Technology, Inc.; or (ii) which does not have
outstanding shares or securities, 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 MEI or Micron Technology, Inc.
1.3. "Parent" shall mean a corporation, company, or other legal
entity (i) owning or controlling, directly or indirectly, now
or hereafter, more than fifty percent (50%) of the outstanding
shares or securities (representing the
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right to vote for the election of directors or other
managing authority) of MEI; or (ii) owning or
controlling, now or hereafter, directly or
indirectly, more than fifty percent (50%) of the
ownership interest that represents the right to make
decisions for MEI.
1.4. "Patents" shall mean United States patents listed in
Exhibit A, United States patent applications listed
in Exhibit B, and MEI invention disclosures listed in
Exhibit C, including all divisionals, continuations,
continuations-in-part, reissues, reexaminations,
extensions, foreign counterparts or equivalents
thereof, and all inventions claimed or disclosed
within the foregoing.
2. Warranties
2.1. MEI warrants that it is the sole owner of the
Patents, that MEI has not previously granted any
assignment or exclusive license in or to the Patents
to any third party, and that MEI has the full right
and capacity to assign the Patents to MCMS, and to
enter into and carry out its obligations under this
Agreement, without conflicting with any other
obligation of MEI.
3. Assignment and Grant Back License
3.1. MEI agrees to assign, and hereby does assign, to
MCMS, MEI's entire right, title and interest in and
to the Patents, including without limitation, damages
and payments for past or future infringements
thereof, if any, and the right to bring suit and
recover against any third party for acts of
infringement occurring before the date of this
Agreement, if any. MEI agrees to execute,
concurrently herewith, a formal assignment document
(the "Assignment") for the Patents in the form
attached hereto. In the event of any conflict between
the provisions of this Agreement and the Assignment,
the provisions of this Agreement shall take
precedence.
3.2. Within thirty (30) days after the date of this
Agreement, MEI will deliver to MCMS all documentation
in MEI's possession or control relating to the
Patents. MEI may, at its discretion, retain a copy of
any documentation provided to MCMS pursuant to this
subparagraph.
3.3. MCMS hereby grants MEI and MEI's Affiliates, an
irrevocable (except as set forth in Section 3.6),
non-transferable, fully paid up, worldwide,
non-exclusive license to practice all inventions
covered by the Patents, and to make and have made,
use, offer for sale, sell, and lease products, which,
without the license granted hereunder, would
constitute an infringement of the Patents. MEI shall
have no right to sublicense the Patents to any third
party without the prior written consent of MCMS,
which consent shall not
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be unreasonably withheld, provided, however, that
MCMS's failure to consent to MEI's grant of a
sublicense to an MCMS competitor shall not be deemed
to be unreasonable.
3.4. MEI and MEI's Affiliates shall not assign or transfer
any of its rights granted hereunder without the prior
written consent of MCMS. Notwithstanding the
foregoing, an assignment or transfer of the Agreement
and the licenses granted therein may be effected by
operation of law, such as for example, by merger,
consolidation, sale of the business or assets,
reincorporation, or nonbankruptcy reorganization.
3.5. Neither MCMS nor MEI shall be required to disclose or
to license to the other any inventions and
improvements relating to the Patents which are first
conceived after the Effective Date.
3.6. This Agreement shall commence on the Effective Date
and shall continue thereafter in perpetuity;
provided, however, that either party may, upon ninety
(90) days written notice to the other party,
terminate this Agreement in the event of a material
breach thereof by such party; provided, further, that
if such breach is cured within such ninety (90) day
period, this Agreement shall not be so terminated.
4. Miscellaneous
4.1. Except as set forth in the Recapitalization
Agreement, both MEI and MCMS neither warrant nor
represent that the use of the Patents will not result
in infringement of any patents of any third party.
4.2. MEI shall indemnify and hold MCMS and its Affiliates
and their respective officers, directors, employees,
agents, shareholders, principals, successors and
assigns harmless from and against any claims,
judgments, damages, costs (including attorneys' fees)
and expenses arising out of MEI's and MEI's
Affiliates' practice of the Patents under this
Agreement, including without limitation any claim
alleging infringement or misappropriation of third
party intellectual property rights.
4.3. MEI shall, at MCMS' expense, cooperate with and
assist MCMS in the provision of documents and
information in connection with the Patents as
reasonably necessary to effectuate the procurement
and maintenance of the Patents. MCMS shall have the
exclusive right, but shall not be obligated, to take
appropriate legal action against any third party that
to its knowledge infringes the Patents.
4.4. No modification of or amendment to this Agreement
shall be valid unless in a writing signed by the
parties hereto referring specifically to this
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Agreement and stating the parties' intention to modify or amend
the same. Any waiver of any term or condition of this Agreement
must be in a writing signed by the party hereto sought to be
charged with such waiver referring specifically to the term or
condition to be waived, and no such waiver shall be deemed to
constitute the waiver of any other breach of the same or of any
other term or condition of this Agreement.
4.5. All notices and other communications hereunder shall be
sufficiently given for all purposes hereunder if in writing and
delivered personally, sent by documented overnight delivery
service or, to the extent receipt is confirmed, telecopy,
telefax or other electronic transmission service to the
appropriate address or number as set forth below or to such
other address or to the attention of such other person as one
party may designate by written notice to the other party
hereto.
NOTICES TO MEI SHALL BE ADDRESSED TO:
Micron Electronics, Inc.
900 East Karcher Road
Nampa, Idaho 83687
Attention: General Counsel
Telecopy No: (208) 893-8711
WITH A COPY TO:
(which shall not constitute notice to MEI)
Wachtell, Lipton, Rosen & Katz
51 West 52nd Street
New York, New York 10019
Attention: Barry A. Bryer
Telecopy No: (212) 403-2000
NOTICES TO MCMS SHALL BE ADDRESSED TO:
MCMS, Inc.
16399 Franklin Road
Nampa, Idaho 83687
Attention: President
Telecopy No: (208) 898-2789
WITH A COPY TO:
(which shall not constitute notice to MCMS)
Cornerstone Equity Investors, L.L.C.
717 Fifth Avenue
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Suite 1100
New York, New York 10022
Attention: Tony Downer
Michael E. Najjar
Telecopy No: (212) 826-6798
and
Kirkland & Ellis
153 East 53rd Street
New York, New York 10022
Attention: Frederick Tanne
Telecopy No: (212) 446-4900
4.6 The headings and captions contained in this Agreement are for
reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement. The use of the
word "including" herein shall mean "including without
limitation."
4.7 The language used in this Agreement shall be deemed to be the
language chosen by the parties hereto to express their mutual
intent, and no rule of strict construction shall be applied
against any person.
4.8 This Agreement and the Recapitalization Agreement contain the
entire agreement and understanding between the parties hereto
with respect to the subject matter hereof and supersede all
prior agreements and understandings, whether written or oral,
relating to such subject matter.
4.9 Any provision of this Agreement which is invalid or
unenforceable shall be ineffective to the extent of such
invalidity or unenforceability, without affecting in any way
the remaining provisions hereof.
4.10 Except as specifically provided herein, neither MEI nor MCMS
shall act or represent or hold itself out as having authority
to act as an agent or partner of the other party, or in any
way bind or commit the other party to any obligations. The
rights, duties, obligations and liabilities of the parties
shall be several and not joint or collective, and nothing
contained in this Agreement shall be construed as creating a
partnership, joint venture, agency, trust or other association
of any kind, each party being individually responsible only
for its obligations as set forth in this Agreement.
4.11 The terms and conditions of this Agreement shall be governed
by and interpreted under the laws of the State of Idaho, and
may not be superseded, amended or modified except by written
agreement between
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the parties. Any litigation brought by a party to this
agreement shall be brought exclusively in the state or federal
courts located in Idaho.
In witness whereof, this Agreement has been executed by duly
authorized representatives of the parties on the date below.
Micron Electronics, Inc. MCMS, Inc.
By: /s/ T. Erik Oaas By: /s/ Robert F. Subia
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T. Erik Oaas Robert F. Subia
Executive Vice President, President and Chief Executive
Finance and Chief Financial Officer Officer
Date: February 26, 1998 Date: February 26, 1998
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