EXHIBIT 4.12
PAGES WHERE CONFIDENTIAL TREATMENT HAS BEEN REQUESTED ARE STAMPED 'CONFIDENTIAL
TREATMENT REQUESTED AND THE REDACTED MATERIAL HAS BEEN SEPARATELY FILED WITH THE
COMMISSION' AND THE CONFIDENTIAL SECTION HAS BEEN MARKED IN THE MARGIN
WITH A STAR (*)
Amendment renewing the IMMUNITY AGREEMENT entered into October 18, 1996
between Motorola, Inc. and ST Assembly Test Services Pte. Ltd.
Motorola, Inc. and ST Assembly Test Services Ltd. agree to amend the
above-identified IMMUNITY AGREEMENT as follows:
1. In Section 1, after Section 1.7 add new Section 1.8 below:
1.8 ASSEMBLY HOUSE SALES shall mean the total consolidated gross
sales revenues of ST ASSEMBLY TEST SERVICES PTE. LTD., and any of
its subsidiaries as reported by ST ASSEMBLY TEST SERVICES PTE.
LTD., or its parent company, if any, to the relevant Singapore
government authorities or to the public, as the case may be.
2. In Section 1.4, line 6, replace "integrated circuit device" with
"INTEGRATED CIRCUIT STRUCTURE or STRUCTURES".
3. In Section 1.7, replace "the date of the last signature hereto." with
"January 1, 2003."
4. Replace Old Section 4.1 with New Section 4.1 below:
4.1 In partial consideration of the rights granted by MOTOROLA under
Section 3 for the period beginning on the EFFECTIVE DATE and
extending to December 31, 2010, ASSEMBLY HOUSE agrees to pay
MOTOROLA royalty payments amounting to XXXXXXXXXX of ASSEMBLY *
HOUSE SALES. *
5. Delete Section 4.1.1.
6. Delete Section 4.1.2.
7. Delete Section 4.2.
8. Delete Section 4.5.
9. Delete Section 4.6.
10. In Section 5.1, line 2, replace "2002" with "2010".
11. In Section 5.6, lines 3-7, remove ", except to a successor in
ownership of all or substantially all of the assets of the assigning
party. Such successor, before such assignment or transfer is
effective, shall expressly assume in writing to the other party the
performance of all of the terms and conditions of this Agreement to be
performed by the assigning party".
12. Renumber Section "6.9" to "6.10".
CONFIDENTIAL TREATMENT REQUESTED AND THE REDACTED MATERIAL HAS BEEN
SEPARATELY FILED WITH THE COMMISSION
Amendment renewing the IMMUNITY AGREEMENT entered into October 18 1996 between
Motorola, Inc. and ST Assembly Test Services Pte. Ltd.
13. Renumber Section "6.9.1" to "6.10.1".
14. Renumber Section "6.9.2" to "6.10.2".
15. Renumber Section "6.9.3" to "6.10.3".
16. After Section 6.8, add new Sections 6.9 and 6.9.1-6.9.6 as indicated below:
6.9 The parties shall have the right to disclose the existence of this
Agreement. The parties hereto, however, shall keep the terms of the
Agreement confidential and shall not now or hereafter divulge any part
thereof to any third party except:
6.9.1 with the prior written consent of the other party; or
6.9.2 to any governmental body having jurisdiction to request and to
read the same; or
6.9.3 as otherwise may be required by law or legal processes; or
6.9.4 to legal counsel representing either party.
6.9.5 Notwithstanding the above, no disclosure of this Agreement shall
be made pursuant to Section 6.9.2 or 6.9.3 without the disclosing party
first giving the other party reasonable prior notice of such intended
disclosure so as to allow the other party sufficient time to seek a
protective order or otherwise assure the confidentiality of this
Agreement as that other party shall deem appropriate.
6.9.6 Notwithstanding anything to the contrary herein, the provisions
of this Section 6.9 shall survive termination of this Agreement and
continue in perpetuity.
All other terms and conditions of the above-identified IMMUNITY AGREEMENT remain
the same.
Indicating their agreement to the foregoing, the parties have hereto executed
this Agreement in duplicate.
Motorola, Inc. ST Assembly Test Services Ltd.
By: /s/ Paul Reidy By: /s/ Han Byung Joon
------------------------- ------------------------
Title: Director, IP Licensing Title: CTO
---------------------- ---------------------
Date: 4/18/03 Date: 4/22/03
----------------------- ----------------------
IMMUNITY AGREEMENT
THIS AGREEMENT is effective as of the 18th day of OCTOBER, 1996, by and between
MOTOROLA, INC., a Delaware corporation having an office at 3102 North 56th
Street, Phoenix, Arizona 85018, (hereinafter called "MOTOROLA"), and ST ASSEMBLY
TEST SERVICES PTE. LTD., having its principal office at 33 Marsiling Industrial
Estate Road 3, #03-01, Singapore 739256, (hereinafter called "ASSEMBLY HOUSE").
WHEREAS, MOTOROLA owns and has, or may have patents issued, and applications for
patents pending, in various countries of the world which relate to ball grid
array (BGA) PACKAGEs (as hereinafter defined), and
WHEREAS, ASSEMBLY HOUSE owns and has, or may have, rights in various patents
issued, and applications for patents pending, in various countries of the world
which may relate to BGA PACKAGEs and
WHEREAS, ASSEMBLY HOUSE and MOTOROLA are engaged in continuing research,
development and engineering in regard to BGA PACKAGES and have programs for the
patenting of inventions resulting therefrom; and
WHEREAS, MOTOROLA is interested in proliferating BGA PACKAGEs as a standard in
semiconductor industry; and
WHEREAS, ASSEMBLY HOUSE is interested in providing the service of making BGA
PACKAGEs for semiconductor manufacturers including those who are competitors of
MOTOROLA;
NOW THEREFORE, in consideration of the mutual covenants and conditions
hereinafter set forth, it is agreed as follows:
Section 1 -- DEFINITIONS
1.1 SUBSIDIARY(IES) means a corporation, company, or other entity 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.
1.2 SEMICONDUCTIVE MATERIAL means any material whose conductivity is
intermediate to that of metals and insulators at room temperature and whose
conductivity, over some temperature range, increases with increases in
temperature. Such material shall include but not be limited to refined
products, reaction products, reduced products, mixtures and compounds.
1.3 INTEGRATED CIRCUIT STRUCTURE means an integral unit consisting primarily of
a plurality of active and/or passive circuit elements associated on, or in,
a unitary body of SEMICONDUCTIVE MATERIAL for performing electrical or
electronic functions.
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1.4 BGA PACKAGE means a housing for an INTEGRATED CIRCUIT STRUCTURE or
STRUCTUREs in which the INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs are
mounted on one side of a substrate of printed circuit board material or the
like and are wire bonded to the substrate, plastic overlies the INTEGRATED
CIRCUIT STRUCTURE or STRUCTUREs, and pads for receiving solder balls or the
like and providing electrical contacts to the integrated circuit device are
mounted on the substrate on the side opposite to that on which the
INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs are mounted. Some BGA packages
may have some pads which are not electrically connected to the INTEGRATED
CIRCUIT STRUCTURE or STRUCTUREs.
1.5 MOTOROLA PATENTS means all classes or types of patents, utility models,
design patents and applications for the aforementioned of all countries of
the world relating to BGA PACKAGEs and enhancements thereto which, prior to
the date of expiration or termination of this Agreement, are:
(i) issued, published or filed, and which arises out of inventions made
solely by one or more employees of MOTOROLA or a SUBSIDIARY thereof,
or
(ii) acquired by MOTOROLA or a SUBSIDIARY thereof.
and under which and to the extent to which and subject to the conditions
under which MOTOROLA or a SUBSIDIARY thereof may have, as of the EFFECTIVE
DATE of this Agreement, or may thereafter during the term of this Agreement
acquire, the right to grant licenses or rights of the scope granted herein
without the payment of royalties or other consideration to third persons,
except for payments to third persons (a) for inventions made by said third
persons while engaged by MOTOROLA or a SUBSIDIARY thereof, and (b) as
consideration for the acquisition of such patents, utility models, design
patents and applications.
1.6 ASSEMBLY HOUSE PATENTS means all classes or types of patents, utility
models, design patents and applications for the aforementioned of all
countries of the world relating to BGA PACKAGEs and enhancements thereto
which, prior to the date of expiration or termination of this Agreement,
are:
(i) issued, published or filed, and which arise out of inventions made
solely by one or more employees of ASSEMBLY HOUSE or a SUBSIDIARY
thereof, or
(ii) acquired by ASSEMBLY HOUSE or a SUBSIDIARY thereof,
and under which and to the extent to which and subject to the conditions
under which ASSEMBLY HOUSE or a SUBSIDIARY thereof may have, as of the
EFFECTIVE DATE of this Agreement, or may thereafter during the term of this
Agreement acquire, the right to grant licenses or rights of the scope
granted herein without the payment of royalties or other consideration to
third persons, except for payments to third persons (a) for inventions made
by said third persons while engaged by ASSEMBLY HOUSE or a SUBSIDIARY
thereof and (b) as consideration for the acquisition of such patents,
utility models, design patents and applications.
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CONFIDENTIAL TREATMENT REQUESTED AND THE REDACTED MATERIAL
HAS BEEN SEPARATELY FILED WITH THE COMMISSION
1.7 EFFECTIVE DATE means the date of the last signature hereto.
Section 2 - MUTUAL RELEASES
2.1 MOTOROLA hereby releases, acquits and forever discharges ASSEMBLY HOUSE and
its SUBSIDIARIES for any time prior to the EFFECTIVE DATE, from any and all
claims or liability for infringement or alleged infringement of any
MOTOROLA PATENTS for which immunity from suit is herein granted by
MOTOROLA.
2.2 ASSEMBLY HOUSE and its SUBSIDIARIES hereby releases, acquits and forever
discharges MOTOROLA and its SUBSIDIARIES for any time prior to the
EFFECTIVE DATE, from any and all claims or liability for infringement or
alleged infringement of any ASSEMBLY HOUSE PATENTS for which immunity from
suit is herein granted by ASSEMBLY HOUSE to MOTOROLA.
Section 3 - IMMUNITY FROM SUIT
3.1 MOTOROLA hereby grants to ASSEMBLY HOUSE and its SUBSIDIARIES, for the term
of this Agreement, immunity from suit under MOTOROLA PATENTS for making BGA
PACKAGES, with or without solder balls or the like, for another and for
ASSEMBLY HOUSE internal use. In no event shall the immunity from suit apply
to MOTOROLA PATENTS which are infringed by the INTEGRATED CIRCUIT STRUCTURE
or STRUCTUREs independent of being packaged in BGA PACKAGES.
3.2 ASSEMBLY HOUSE and its SUBSIDIARIES hereby grant to MOTOROLA and its
SUBSIDIARIES, for the term of this Agreement, immunity from suit under
ASSEMBLY HOUSE PATENTS for making and/or having made BGA PACKAGES, with or
without solder balls or the like, and for the subsequent sale and use
thereof. In no event shall the immunity from suit apply to ASSEMBLY HOUSE
PATENTS which are infringed by the INTEGRATED CIRCUIT STRUCTURE or
STRUCTUREs independent of being packaged in BGA PACKAGEs.
3.3 No licenses under any copyrights or mask work rights of either MOTOROLA or
ASSEMBLY HOUSE or a SUBSIDIARY thereof, are granted under this Agreement.
Section 4 - PAYMENTS
4.1 In partial consideration of the rights granted by MOTOROLA under Section 3,
for the period beginning on the EFFECTIVE DATE and extending to December
31, 2002. ASSEMBLY HOUSE agrees to pay MOTOROLA a royalty based on the
total number of pads on BGA PACKAGEs made by ASSEMBLY HOUSE and its
SUBSIDIARIES, and shipped and invoiced to customers of ASSEMBLY HOUSE or
its SUBSIDIARIES, excluding those made for MOTOROLA and excluding returns.
4.1.1 The royalty shall be XXXXXX per X until a royalty of XXXXXX has *
been accrued. *
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CONFIDENTIAL TREATMENT REQUESTED AND THE REDACTED MATERIAL
HAS BEEN SEPARATELY FILED WITH THE COMMISSION
* 4.12 After a royalty of XXXXX has been accrued, the royalty shall be *
XXXXX per pad. *
4.2. Royalty payments shall be determined by the total number of pads on BGA
PACKAGEs subject to the immunity from suit of section 3.1 shipped during a
payment period to customers of ASSEMBLY HOUSE or its SUBSIDIARIES
excluding those shipped to MOTOROLA and excluding returns.
4.3 Payment periods shall be on a quarterly basis. Within forty-five (45) days
after each calender quarter ending March 31, June 30, September 30, and
December 31. ASSEMBLY HOUSE shall pay to MOTOROLA the royalties payable
hereunder for the respective calender quarter ending on such date as
determined above.
4.4 Any payment hereunder which shall be delayed for more than thirty (30)
days beyond the due date shall be subject to an interest charge of one (1)
percent per month on the unpaid balance payable in United States currency
until paid. The foregoing payment of interest shall not affect MOTOROLA's
right to terminate in accordance with Section 5.
4.5 ASSEMBLY HOUSE shall keep full, clear and accurate records with respect to
BGA PACKAGEs. MOTOROLA shall have the right through a mutually agreed upon
independent auditor to examine and audit no more than once a year at a
mutually agreeable time all such records and such other records and
accounts as may under recognized accounting practices contain information
bearing upon the amount of royalty payable to MOTOROLA under this
Agreement. Prompt adjustment shall be made to compensate for any errors or
omissions disclosed by such examination or audit. Neither such right to
examine and audit nor the right to receive such adjustment shall be
affected by any statement to the contrary appearing on a check or
otherwise, MOTOROLA shall be responsible for the compensation of the
auditor.
4.6 Within forty-five (45) days after each calender quarter ending March 31,
June 30, September 30, December 31 and continuing thereafter until all
royalties payable hereunder shall have been reported and paid, ASSEMBLY
HOUSE shall furnish to MOTOROLA a detailed and complete written statement,
certified by a responsible officer of ASSEMBLY HOUSE as showing all BGA
PACKAGEs which were either manufactured, sold, leased, put into use, or
otherwise disposed of during such periods, and the amount payable thereon.
If no such BGA PACKAGEs have been manufactured, sold, leased, put into
use, or otherwise disposed of, that fact shall be shown on such statement.
4.7 Payments hereunder are to be made to MOTOROLA's New York City account at
CITIBANK 38491386, 1 Citicorp Center, 399 Park Avenue, New York, New York
10043. Notice of payments shall be sent by ASSEMBLY HOUSE to MOTOROLA's
address in Section 6.9.
Section 5 - TERM AND TERMINATION AND ASSIGNABILITY
5.1 The term of this Agreement shall be from the EFFECTIVE DATE until December
31, 2002 unless earlier terminated as elsewhere provided in this Agreement.
Page 4
5.2 In the event of any breach of this Agreement by either party hereto
(including ASSEMBLY HOUSE's obligation to make payments under Section 4),
if such breach is not corrected within forty-five (45) days after written
notice describing such breach, this Agreement may be terminated forthwith
by further written notice to that effect from the party noticing the
breach.
5.3 Either party hereto shall also have the right to terminate this Agreement
forthwith by giving written notice of termination to the other party at any
time, upon or after:
5.3.1 the filing by such other party of a petition in bankruptcy or
insolvency; or
5.3.2 any adjudication that such other party is bankrupt or insolvent; or
5.3.3 the filing by such other party of any legal action or document
seeking reorganization, readjustment or arrangement of its business
under any law relating to bankruptcy or insolvency; or
5.3.4 the appointment of a receiver for all or substantially all of the
property of such other party; or
5.3.5 the making by such other party of any assignment for the benefit of
creditors; or
5.3.6 the institution of any proceedings for the liquidation or winding up
of such other party's business or for the termination of its
corporate charter.
5.4 In the event of termination of this Agreement by one party pursuant to
Section 5.2, the immunity and rights granted to or for the benefit of that
one party hereto and its SUBSIDIARIES under MOTOROLA PATENTS or ASSEMBLY
HOUSE PATENTS, as the case may be, depending upon who is the party doing
the terminating, shall survive such termination and shall extend for the
full term of this Agreement, but the immunity and rights granted to or for
the benefit of the other party shall terminate as of the date termination
takes effect.
5.5 At such time as is mutually agreeable, at the written request of either
party hereto to the other party hereto, but in no event less than six (6)
months prior to the expiration of this Agreement, the parties hereto shall
discuss the possible extension of or the renewal of the term of this
Agreement, including the possible amendment of the provisions thereof.
5.6 The rights or privileges provided for in this Agreement may be assigned or
transferred by either party only with the prior written consent of the
other party and with the authorization or approval of any governmental
authority as then may be required, except to a successor in ownership of
all or substantially all of the assets of the assigning party. Such
successor, before such assignment or transfer is effective, shall expressly
assume in writing to the other party the performance of all of the terms
and conditions of this Agreement to be performed by the assigning party.
Page 5
Section 6 - MISCELLANEOUS PROVISIONS
6.1 Each of the parties hereto represents and warrants that it has the right to
grant to or for the benefit of the other the immunity and rights granted
hereunder in Sections 2 and 3.
6.2 Nothing contained in this Agreement shall be construed as:
6.2.1 restricting the right of MOTOROLA or any of its SUBSIDIARIES to
make, use, sell, lease or otherwise dispose of any particular
product or products not herein licensed;
6.2.2 restricting the right of ASSEMBLY HOUSE or any of its SUBSIDIARIES
to make, use, sell, lease or otherwise dispose of any particular
product or products not herein licensed;
6.2.3 an admission by ASSEMBLY HOUSE of, or a warranty or representation
by MOTOROLA as to, the validity and/or scope of the MOTOROLA
PATENTS, or a limitation on ASSEMBLY HOUSE to contest, in any
proceeding, the validity and/or scope thereof;
6.2.4 an admission by MOTOROLA of, or a warranty or representation by
ASSEMBLY HOUSE as to, the validity and/or scope of the ASSEMBLY
HOUSE PATENTS, or a limitation on MOTOROLA to contest, in any
proceeding, the validity and/or scope thereof;
6.2.5 conferring any license or other right, by implication, estoppel or
otherwise, under any patent application, patent or patent right,
except as herein expressly granted under the MOTOROLA PATENTS, and
the ASSEMBLY HOUSE PATENTS;
6.2.6 conferring any license or right with respect to any trademark, trade
or brand name, a corporate name of either party or any of their
respective SUBSIDIARIES, or any other name or mark or contraction,
abbreviation or simulation thereof;
6.2.7 imposing on MOTOROLA any obligation to institute any suit or action
for infringement of any MOTOROLA PATENTS, or to defend any suit or
action brought by a third party which challenges or concerns the
validity of any MOTOROLA PATENTS;
6.2.8 imposing upon ASSEMBLY HOUSE any obligation to institute any suit or
action for infringement of any ASSEMBLY HOUSE PATENTS, or to defend
any suit or action brought by a third party which challenges or
concerns the validity of any ASSEMBLY HOUSE PATENTS;
6.2.9 imposing on either party any obligation to the file any patent
application or to secure any patent or maintain any patent in force;
or
Page 6
6.2.10 an obligation on either party to furnish any manufacturing or
technical information under this Agreement except as the same is
specifically provided for herein.
6.3 No express or implied waiver by either of the parties to this Agreement of
any breach of any term, condition or obligation of this Agreement by the
other party shall be construed as a waiver of any subsequent breach of that
term, condition or obligation or of any other term, condition or obligation
of this Agreement of the same or of a different nature.
6.4 Anything contained in this Agreement to the contrary notwithstanding, the
obligations of the parties hereto shall be subject to all laws, both
present and future, of any Government having jurisdiction over either party
hereto, and to orders or regulations of any such Government, or any
department, agency, or court thereof, and acts of war, acts of public
enemies, strikes, or other labor disturbances, fires, floods, acts of God,
or any causes of like or different kind beyond the control of the parties,
and the parties hereto shall be excused from any failure to perform any
obligation hereunder to the extent such failure is caused by any such law,
order, regulation, or contingency but only so long as said law, order,
regulation or contingency continues.
6.5 The captions used in this Agreement are for convenience only, and are not
to be used in interpreting the obligations of the parties under this
Agreement.
6.6 This Agreement and the performance of the parties hereunder shall be
construed in accordance with and governed by the laws of the State of
Illinois.
6.7 If any term, clause, or provision of this Agreement shall be judged to be
invalid, the validity of any other term, clause or provision shall not be
affected; and such invalid term, clause, or provision shall be deemed
deleted from this Agreement.
6.8 This Agreement sets forth the entire Agreement and understanding between
the parties as to the subject matter hereof and merges all prior
discussions between them, and neither of the parties shall be bound by any
conditions, definitions, warranties, understandings or representations with
respect to such subject matter other than as expressly provided herein or
as duly set forth on or subsequent to the date hereof in writing and signed
by a proper and duly authorized officer or representative of the party to
be bound thereby.
6.9 All notices required or permitted to be given hereunder shall be in writing
and shall be valid and sufficient if dispatched by registered airmail,
postage prepaid, in any post office in the United States, addressed as
follows:
Page 7
6.9.1 If to MOTOROLA:
Motorola Inc.
1303 East Algonquin Road
Schaumburg, Illinois 60196
Attention: Vice President for Patents, Trademarks & Licensing
6.9.2 If to ASSEMBLY HOUSE:
ST Assembly Test Services Pte. Ltd.
33 Marsiling Industrial Estate Road 3
#03-01
Singapore 739256
Attention: Mr. Lee Joon Chung, General Manager
6.9.3 The date of receipt of such a notice shall be the date for the
commencement of the running of the period provided for in such notice, or
the date at which such notice takes effect, as the case may be.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate.
MOTOROLA, INC. ST ASSEMBLY TEST SERVICES PTE. LTD.
/s/ George Turner /s/ Lee Joon Chung
- ----------------------------------- ---------------------------------
George Turner Mr. Lee Joon Chung
Vice President & General Manager General Manager
Logic and Analog Technologies Group ST Assembly Test Services Pte. Ltd.
Semiconductor Products Sector
Motorola, Inc.
Date: 9/30/96 Date: 9/11/96
----------------------------- ---------------------------
/s/ James W. Gillman /s/ Tan Bock Seng
- ----------------------------------- ---------------------------------
James W. Gillman Mr. Tan Bock Seng
Corporate Vice President, Patents, Board Director
Trademarks, and Licensing ST Assembly Test Services Pte. Ltd.
Motorola, Inc.
Date: 10/18/96 Date: 9/11/96
----------------------------- ---------------------------
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