Exhibit 10.3
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN
THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
TESSERA, INC.
Restated TCC
®
License Agreement
This Agreement is entered into as of
January 1, 2005, (the “Effective Date”) between
Tessera, Inc., a corporation organized under the laws of Delaware,
having a principal place of business at 3099 Orchard Drive, San
Jose CA 95134 and its Affiliates (“Tessera”) and
Samsung Electronics Co., Ltd. a corporation organized under the
laws of Republic of Korea having a principal place of business at
250 Taepyung-Ro, 2 Ga, Chung-Ku, Seoul, Korea and its Affiliates
(“Licensee”) with reference to the following
facts:
Scope :
WHEREAS Tessera owns patents and
other intellectual property rights to certain semiconductor
integrated circuit (“IC”) package types;
WHEREAS, Tessera and Licensee
entered into a License Agreement entitled “TCC License
Agreement” having an effective date of May 17, 1997
(“the 1997 Agreement”);
WHEREAS, there has been litigation
pending between Licensee and Tessera relating to Tessera’s
patent rights and to alleged breach of the 1997 Agreement in the
United States District Court for the Northern District of
California, titled Samsung Electronics Co. v. Tessera
Technologies, Inc. and Tessera, Inc. , and related
counterclaims, Civil Action No. 02-05837(CW)(MEJ)(“the
Oakland Action”);
WHEREAS trial of a number of the
claims and counterclaims in the Oakland Action commenced on
November 1, 2004;
WHEREAS, Tessera and Licensee have
agreed to settle the Oakland Action and, as partial consideration
for that Settlement Agreement have agreed to enter into a new
license agreement that supersedes the 1997 Agreement in its
entirety; and
WHEREAS, Licensee wishes to license
Tessera’s patents and to pay royalties for the disputed
packages and other TCC packages as specified herein as
consideration for the settlement of this pending
litigation.
THEREFORE, Tessera and Licensee
(herein collectively referred to as “Parties” or
singularly referred to as “Party”) agree to the
following terms:
The Parties Hereto Agree:
I. Definitions:
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As used herein, the following terms
shall have the following meaning:
A. The term “TCC” is an
acronym for Tessera Compliant Chip, a type of integrated circuit
(“IC”) package made under certain issued Tessera
Patents licensed hereunder. Generally, a TCC has substantially
coplanar bump or solder contacts disposed in a grid array pattern
and comprises a thin compliant multi-layer structure mounted to at
least one surface of an IC die, with permanent flexible electrical
connections between at least one of said contacts and a
corresponding bond pad on said IC die. For the purposes of this
Agreement, the parties agree that the definition of Licensed
Product shall be treated as a subset of TCC, i.e. included in the
term “TCC” as it is used throughout this
Agreement.
B. The term “Licensed
Product” includes Licensee’s IC packages using (a)
polyimide or glass-epoxy or glass-laminate substrate; (b) one or
more solder balls under the IC; (c) die attach adhesive attaching
the IC to the polyimide or glass-epoxy or glass-laminate substrate;
and (d) solder ball pitch less than or equal to 1.0mm. For
avoidance of doubt, Licensed Product shall include but is not
limited to the DRAM and Non-DRAM Licensed Product.
C. The term “µBGA
®
” is a type of TCC
package.
D. The term “DRAM
Device” means a Dynamic Random Access Memory (DRAM) IC device
comprised solely of an array of DRAM cells and the associated
control and I/O circuitry that are necessary to allow data to be
written to, stored by, and read from the DRAM cells. A TCC package
that contains one or more DRAM Devices is a “DRAM TCC
package” or a “DRAM Licensed Product,” and a TCC
package that contains at least one IC that is not a DRAM Device is
a “Non-DRAM TCC package” or a “Non-DRAM Licensed
Product.” For example, if a TCC package contains both a DRAM
Device and an IC that is not a DRAM Device, the TCC package shall
be considered a Non-DRAM TCC package.
E. The term “Logic
Device” means an IC device whose primary function is to
provide logic or processing functions. Logic Devices include, by
way of example and not limitation, microprocessors, digital signal
processors (DSPs), application specific integrated circuits
(ASICs), systems-on-chip (SoCs), programmable logic devices (PLDs),
programmable logic arrays (PLAs), field programmable grid arrays
(FPGAs), microcontrollers and analog and mixed-signal devices. A
TCC package that contains one or more Logic Devices is a
“Non-DRAM TCC package.”
F. The term “Technology”
means Tessera Patents relating to the design, manufacture, and
assembly of TCC packages (excluding Batch Technology as defined
herein) and any related Tessera copyrights and know-how previously
transferred to Licensee pursuant to the 1997 Agreement.
G. The term “Patent”
means letters patents, utility models, allowances and applications
therefor in all countries of the world, including re-issues,
re-examinations, continuations, divisions, and all corresponding
foreign patents.
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H. The term “Tessera
Patent” means Patent(s) which arise out of inventions based
on the Technology made and/or acquired by Tessera based on the
Technology prior to expiration or termination of this Agreement.
The term Tessera Patent shall further include any third party
patent based on the Technology under which Tessera or any successor
thereof has the right to grant licenses of the scope granted
herein, as of the Effective Date or at any time during the term of
this Agreement, without the payment of royalty or other
consideration to such third parties except for payment to third
parties for inventions made by said parties while employed by
Tessera or any successor thereof, including US patents and US
patent applications set forth in Attachment A attached and
Improvements thereto which had or have a first effective filing
date in any country prior to expiration or termination of this
Agreement.
I. The term “Batch
Technology” as used herein means Technology including: (i)
any method or result of U.S. Patent Number 5,518,964 (and related
Patents) for making flexible electrically conducting element(s),
joining said elements to electrical contact(s) on a substantially
planar electrical element such as a semiconductor integrated
circuit, undiced IC wafer, or interconnect substrate, and forming
said element(s) away from the plane of said contacts in a
predetermined fashion into the flexible electrical lead(s) of a TCC
package; (ii) any method or result of U.S. Patent 5,455,390 (and
related Patents) for making and forming flexible conducting
element(s) on a dielectric film and then simultaneously joining
said elements to electrical contacts on a substantially planar
electrical element such as a semiconductor integrated circuit,
undiced IC wafer or interconnect substrate to produce the flexible
electrical leads of a TCC package; and/or (iii) any method or
result of further invention or Patent made or acquired by Tessera
during the term hereof covering any batch processing method for
simultaneously forming, producing and/or connecting a plurality of
flexible electrical leads of a TCC package. Notwithstanding, the
parties expressly agree that any TCC package made and/or connected
individually on a semiconductor integrated circuit or undiced wafer
by traditional wire bonding methods and/or tape automated bonding
(“TAB”) gang bonding methods, is not
included in Batch Technology.
J. The term “IC Contact”
means an electrical connection (e.g. wire bond or lead bond) to an
IC bond pad contained in any TCC package licensed
hereunder.
K. The term “Licensee’s
Improvements” means device design modifications, derivatives,
improvements, or enhanced specifications, relating to the TCC
packages or related materials that may be made by Licensee arising
out of Technology or incorporated in a TCC package licensed
hereunder for sale or other transfer to a third party during the
term of this Agreement or extension hereof. Notwithstanding, the
term “Licensee Improvements” does not include
manufacturing process improvements unless such a process
improvement enables a particular package structure to the exclusion
of other practically feasible methods of making such a structure.
The parties agree that Licensee’s inventions that do not
arise out of the Technology shall be excluded from the definition
of Licensee’s Improvements unless such invention infringes a
Tessera Patent or is incorporated in a TCC package by or for
Licensee for sale or other transfer to a third party.
L. The term “Affiliate”
means any company which agrees to be bound by the terms and
conditions of this Agreement and is more than fifty percent (50%)
of the voting stock is owned or controlled by Licensee. A company
shall be considered an Affiliate only so long as such majority
ownership or control exists.
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N. The term “Licensed Package
Assembler” means a party licensed by Tessera to assemble, use
and sell TCC packages for others.
II. Licensee
Rights:
A. License Grant . Subject to
the terms and conditions hereinafter set forth, Licensee’s
agreement to the provisions hereof including all attachments
hereto, and conditioned upon Licensee’s payment of the
royalties stated herein in Paragraph III, Tessera hereby grants
Licensee a non-exclusive, worldwide, non-transferable,
non-sub-licensable limited license under the Technology to make,
use, sell, offer to sell, and/or have made TCC packages that are
sold as Licensee’s own products (e.g., the TCC packages bear
the Licensee’s commercial indicia) or that are sold by
Licensee but do not bear Licensee’s commercial indicia where
(i) all of the IC’s incorporated within such TCC packages are
manufactured by Licensee; or (ii) the TCC package contains multiple
ICs at least one of which is manufactured by Licensee and at least
one of which is a Logic Device.
B. Use of Have Made Rights .
When Licensee exercises its “have made” right, it shall
provide a written notice to the applicable package subcontractor,
with a copy to Tessera, stating that the TCC packages are being
assembled under a “have made” license from Tessera and
that the package subcontractor need not obtain a license or pay
royalties for such TCC packages because the royalties are being
paid directly from Licensee to Tessera. Licensee may also use a
Licensed Package Assembler to make TCC packages that are licensed
under the Licensed Package Assembler’s own license with
Tessera; provided, however, that (i) Licensee provides written
notice to Tessera of the name of such Licensed Package Assembler
and the quantity and type of such TCC packages, and (ii) if such
Licensed Package Assembler does not pay such royalties to Tessera
when due, Licensee shall pay the royalties due under the license
agreement of their chosen Licensed Package Assembler within
forty-five (45) days after Tessera notifies Licensee of such
nonpayment by their chosen Licensed Package Assembler, provided
that such notice shall be given if Tessera is unable to collect
such royalties after exhausting good faith and commercially
reasonable efforts to collect such royalties from the chosen
Licensed Package Assembler, but not requiring Tessera to commence
litigation against any such Licensed Package Assembler. By way of
clarification, if Samsung elects to have a Licensed Package
Assembler make TCC packages under the Licensed Package
Assembler’s agreement with Tessera, any payment made by
Samsung as guarantor shall be under Samsung’s “have
made” rights under Paragraph II.A., hereof, and the royalty
rate shall be calculated under the applicable Paragraph of this
Agreement; with the further agreement that if Licensee makes a
payment in guarantee of any such Licensed Package Assembler, (i)
Licensee shall be obligated to use its “have made”
rights hereunder with such Licensed Package Assembler for a period
totaling four quarterly payments for any TCC packages made by such
Licensed Package Assembler and shall pay the applicable royalties
directly to Tessera for such time period, and (ii) Licensee shall
provide a written notice to the applicable package subcontractor,
with a copy to Tessera, stating that the royalty payments for the
TCC packages are, for that time period, being guaranteed by
Licensee and being assembled under Licensee’s “have
made” license from Tessera and that the Licensed Package
Assembler should not pay royalties for such TCC packages because
the royalties are being paid directly from Licensee to Tessera. For
avoidance of doubt, Licensee’s payment of royalties in
guarantee of a Licensed Package Assembler pursuant to this
paragraph shall be fully subject to all terms and conditions
applicable to Licensee’s exercise of its
“have
Page 4 of 27
made” rights, including but not limited to
Paragraphs III.B.1, III.C, III.D and III.E. Further, if Licensee
elects to have TCC packages made under the license of the Licensed
Package Assembler, such TCC Packages shall not apply to any of the
financial terms (e.g. target royalties) of Paragraph III of this
Agreement.
C. Batch Technology Excluded
. Notwithstanding anything herein to the contrary, Batch Technology
is excluded from the scope of this Agreement, and Licensee’s
rights herein expressly exclude any right to package and/or
assemble, or sell any product made using Batch Technology.
Notwithstanding, when Tessera decides to license such Batch
Technology to others, Tessera agrees to enter into good faith
negotiations with Licensee on the terms and conditions of a
separate agreement to define the parties relationship with respect
to Batch Technology.
D. No Implied License .
Notwithstanding the foregoing, nothing in this Agreement shall be
construed to grant Licensee, Affiliates, successors or assigns or
any third parties an implied license under any patent owned by
Tessera other than the Tessera Patents.
E. No Assembly Services .
Subject to the express terms of Paragraph II.A, hereof, nothing in
this Agreement shall be construed as granting Licensee the right to
assemble TCC packages to be sold as the product of third party
(e.g., the TCC packages bear the third party’s commercial
indicia).
III. Fee and
Royalty:
A. License Fee . No license
fee is due hereunder.
B. Running Royalties . For
the license rights and benefits granted in Paragraph II.A, Licensee
shall pay a royalty for each TCC package sold by Licensee in US
currency, as follows:
1. DRAM TCC Packages . For
each DRAM TCC package sold by Licensee, Licensee shall pay a
royalty to Tessera as set forth below:
a. Initial DRAM Royalty Rate
. Until one of [*] agrees to pay royalties to Tessera for all DRAM
Licensed Products that any such company is shipping in volume
(“First Triggering Event”), the royalty for DRAM TCC
packages sold by Licensee shall be [*] per DRAM TCC package. In any
calendar year prior to the year in which the First Triggering Event
occurs, if Licensee pays Tessera [*] in royalties for DRAM TCC
Packages sold in a particular calendar year (“Initial DRAM
Royalty Target”), then the royalty rate for DRAM TCC Packages
sold thereafter in that same calendar year shall be [*] per package
unless the First Triggering Event is met, in which case the royalty
rate set forth in Paragraph III.B.1.b shall apply. The requirement
of an Initial DRAM Royalty Target shall be removed for the year in
which the First Triggering Event is satisfied. If [*], or the DRAM
business of these companies, are acquired by another of these
companies, then an agreement with the acquiring company to pay
royalties for all DRAM Licensed Products that the acquiring company
is shipping in volume shall satisfy the First Triggering
Event.
b. Mid-point DRAM Royalty
Rate . After the First Triggering Event is satisfied, the
royalty for DRAM TCC packages sold by Licensee shall be increased
to [*] per DRAM TCC package and the associated requirement for a
Initial DRAM Royalty Target shall be removed, as discussed
above.
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c. Base DRAM Royalty Rate .
After a second one of [*] agrees to pay royalties to Tessera for
all DRAM Licensed Products that any such company is shipping in
volume (“Second Triggering Event”), the royalty for
DRAM TCC packages sold by Licensee shall be [*] per DRAM TCC
package. If, in a given calendar year, Licensee pays royalties at
the Base DRAM Royalty Rate for a number of DRAM TCC packages equal
to the average of (1) the number of DRAM TCC packages sold by the
second largest manufacturer of DRAM in the previous year as
determined by Gartner/Dataquest and (2) the number of 256 Mb unit
equivalents sold by the second largest manufacturer in DRAM TCC
packages in the previous year as determined by Gartner/Dataquest
(hereafter, the average of these two numbers shall be referred to
as “the Average”), then Licensee’s royalty
pursuant to this Agreement for all further DRAM TCC Packages sold
by Licensee in that year above and beyond the Average shall be [*]
per package. If Gartner/Dataquest fails to provide the data
necessary for calculating the Average set forth in the previous
sentence, then Tessera shall identify an alternative third party
source of such information, and Licensee shall not unreasonably
withhold its agreement to use such alternative source instead of
Gartner/Dataquest to calculate the average. If Hynix, Micron or
Infineon, or the DRAM business of these companies, are acquired by
another of these companies (or if a controlling interest of at
least the DRAM portion one of these companies is acquired by
another of these companies), then an agreement with the acquiring
company to pay royalties for all DRAM Licensed Products that the
acquiring company is shipping in volume shall satisfy the Second
Triggering Event.
2. Non-DRAM TCC Packages
.
a. Single-Chip Non-DRAM TCC
packages. For each Non-DRAM TCC package sold by Licensee that
includes no more than one IC device, Licensee shall pay Tessera a
royalty based on the total number of IC Contacts to each IC device
in the Licensed Product, as shown on the following
schedule:
|
|
|
|
|
Number of IC
Contacts
|
|
Royalty Per IC Device
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
|
[*]
|
b. Multiple-chip Non-DRAM TCC
packages . For Non-DRAM TCC packages sold by Licensee that
include more than one IC device, the royalty shall be calculated by
applying the royalty schedule set forth in Paragraph III.B.2.a to
the IC device having the greatest number of IC Contacts, to the IC
device having the second greatest number of IC Contacts, to the IC
device having the third greatest number of IC Contacts, and to the
IC device having the fourth greatest number of IC contacts to
determine the Royalty Per IC device of each, provided, however,
that the royalty for the IC device having the second greatest
number of IC Contacts shall be no more than the lesser of the
royalty amount per the royalty schedule or [*], the royalty for the
IC device
Page 6 of 27
having the third greatest number of IC Contacts
shall be no more than the lesser of the royalty amount per the
royalty schedule or [*], and the royalty amount for the fourth IC
device shall be no more than the lesser of the royalty amount per
the royalty schedule or [*]. The royalty for any additional IC
devices shall be [*]. Moreover, the royalty per package for
Multiple-chip Non-DRAM TCC packages that contain at least one Logic
Device shall be no more than the greater of (i) [*] per package or
(ii) the royalty for the packaged IC device having the greatest
number of IC contacts as determined by the royalty schedule set
forth in Paragraph III.B.2.a. Further still, the royalty per
package for Multiple-chip Non-DRAM TCC packages that do not contain
a Logic Device shall be no more than the greater of [*] per package
or the royalty for the packaged IC having the greatest number of IC
contacts as determined by the royalty schedule set forth in
Paragraph III.B.2.a.
C. All Products . If, in a
given calendar year, beginning in calendar year 2005, Licensee pays
Tessera [*] in royalties for TCC packages sold in a particular
calendar year (“Annual Royalty Target”), then the
royalty rate for both DRAM TCC packages and Non-DRAM TCC packages
sold thereafter in that same calendar year shall be [*] per
package. The Annual Royalty Target set forth in this paragraph
III.C applies solely to the sales of TCC packages licensed pursuant
to Paragraph II.A for each of the years 2005 through 2011 and for
which royalties are paid directly by the Licensee to Tessera, and
the Annual Royalty Target shall be applied pro rata for the year
2012. If Licensee acquires another company after the Effective
Date, the Annual Royalty Target shall be adjusted upwards based on
the annual sales of TCC Packages by the acquired company relative
to the annual sales of TCC packages by Licensee prior to the
acquisition.
D. Royalty Adjustments . In
making the royalty payments due Tessera, Licensee may subtract from
such royalty payments any preceding royalty payments for defective
royalty bearing TCC packages that are returned to Licensee from
Licensee’s customers (“Royalty Adjustment”).
However, if at any time such defective TCC packages are resold by
Licensee, Licensee shall pay a royalty to Tessera for such resold
TCC packages, as set forth in the Agreement. Before a Royalty
Adjustment can be so subtracted, Licensee must have originally paid
a royalty on the particular returned Licensed Product. All Royalty
Adjustments must be specified with the information set forth in
Attachment B.
E. Most Favored
Royalty . As of November
16, 2004, Tessera intends that any license agreement that Tessera
enters into henceforth for TCC packages shall be on royalty rate
terms no more favorable to such other licensee than the royalty
terms for TCC packages set forth in this Agreement. Tessera further
represents that it has no current license agreement with more
favorable royalty terms for TCC packages when all elements of the
royalty terms in such current license agreements are considered as
a whole. The following shall not be deemed agreements subject to
this Paragraph: (i) agreements between Tessera and Tessera
Affiliates; and (ii) agreements with governmental or educational
agencies with non-profitable nature. In the event that Tessera
grants another license to any such TCC packages having better
royalty terms than the corresponding royalty terms set forth in
this Agreement, Tessera shall promptly notify Licensee of the
royalty terms of such other license for any such particular defined
product(s). Upon notice by Licensee that it wants to accept any
such better royalty terms for such particular TCC package(s)
provided no later than sixty (60) days from the date of
Tessera’s notice, this Agreement shall be amended to
substitute those royalty terms of such particular TCC package(s)
selected by Licensee for the applicable royalty terms of this
Agreement, provided that such amendment shall not affect
Page 7 of 27
Tessera’s rights with respect to royalties
or other moneys accrued and/or paid prior to such amendment.
“Royalty terms” as used in this paragraph means
monetary consideration only.
Licensee shall have the right to examine and
audit through a mutually satisfactory major international public
accounting firm, not more frequently than once per year, relevant
records of Tessera that contain information bearing upon
Tessera’s compliance with this Paragraph; provided, that the
accounting firm shall have agreed in advance in writing to maintain
in confidence and not to disclose to Licensee or any third party
any Tessera proprietary information or the proprietary information
of third parties associated with any Tessera license agreement
obtained during the course of such examination.
IV. Taxes:
Licensee agrees to make all
commercially reasonable efforts to aid Tessera’s efforts to
obtain a multi-year tax exemption for any payments due hereunder
for all taxes levied against Tessera by the Government of Korea
pursuant to this Agreement. After such initial tax exempt period
(if any), Licensee shall withhold the amount of taxes levied by the
Government of Korea on the royalty payments made by Licensee to
Tessera. Licensee shall promptly provide Tessera with copies of
bonafide tax certificates showing that such Tessera tax payments
have been made by Licensee to the Government of Korea.
V. Licensee Reports and
Payment:
A. Quarterly Royalty Payments
. Beginning with the quarter annual period starting on January 1,
2005, royalties shall be calculated and paid in full in quarter
annual payment periods ending March 31, June 30, September 30 and
December 31 of each year. Beginning with the first such royalty
payment and until the annual cumulative total of Licensee’s
royalty payments and reports to Tessera equal or exceed the Annual
Royalty Target, Licensee shall deliver a written report (as shown
in Attachment B) within thirty (30) days from the last day of each
quarter annual payment period describing (i) the basis upon and
containing the information sufficient to determine the royalties
due Tessera for the applicable payment period (by facsimile, with
an original by mail courier), (ii) the purchases by Licensee of TCC
packages from companies that are not Licensee Affiliate companies,
and (iii) any Royalty Adjustments. After Licensee’s royalty
payments to Tessera equal the Annual Royalty Target, Licensee shall
deliver a written report (as shown in Attachment C) within thirty
(30) days from the last day of each quarter annual payment period
describing (i) the basis upon and containing the information
sufficient to determine the royalties due Tessera for the
applicable payment period (by facsimile, with an original by mail
courier), (ii) the purchases by Licensee of TCC packages from
companies that are not Licensee Affiliate companies, and (iii) any
Royalty Adjustments. Tessera shall then invoice Licensee (by
facsimile, with an original by mail courier) for any royalties due
Tessera as set forth in each such Licensee written royalty report.
Licensee shall then have thirty (30) days from first receipt of
Tessera’s invoice to pay the royalties due under
Tessera’s invoice. All payments under this Paragraph shall be
made in US Dollars by wire transfer to Union Bank of California, 99
Almaden Blvd., San Jose, CA 95113, Account Name: Tessera, Account
No.: 6450148359, Routing No. 122000496, International Swift Code:
UBLAUS66, or such other bank or account as Tessera may from time to
time designate in writing. The payments of royalties shall be
considered to be made as of the day on which