EXHIBIT
10.56
[***]
DENOTES CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT
Micron NTC CONFIDENTIAL
TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
This
TECHNOLOGY
TRANSFER AND LICENSE AGREEMENT (this “
Agreement
”), is made and entered into as of this 21st day of
April, 2008 (“ Effective Date
”), by and between Micron Technology, Inc, a Delaware
corporation (“ Micron ”),
and Nanya Technology Corporation ( Nanya Technology
Corporation [Translation from Chinese] ), a company
incorporated under the laws of the Republic of China (“
NTC
”). (Micron and NTC are referred to in this
Agreement individually as a “ Party ” and
collectively as the “ Parties
”).
RECITALS
A. Micron
currently designs and manufactures Stack DRAM Products (as
defined herein) and develops Process Technology (as defined
herein) therefor. NTC and Micron desire to engage in joint
development and/or optimization of Process Technology for
process nodes of 68 nm, 50nm and other dimensions
and joint development of Stack DRAM Designs for Stack DRAM
Products to be manufactured on such process nodes, as the
Parties may agree in the JDP Agreement.
B.
To effectuate their desires, Micron will
license NTC under Background IP for the design, development
and manufacture of certain Stack DRAM
Products. Micron and NTC will also transfer each
other Foundational Know-How and license each other thereunder
for the design, development and manufacture of certain Stack
DRAM Products.
AGREEMENT
NOW,
THEREFORE, in consideration of the mutual promises and
agreements herein set forth, the Parties, intending to be
legally bound, hereby agree as follows.
ARTICLE 1
DEFINITIONS; CERTAIN
INTERPRETATIVE MATTERS
1.1
Definitions
.
“
Adjusted
Revenues ” means [***].
“
Affiliate ”
means, with respect to any specified Person, any other Person
that directly or indirectly, including through one or more
intermediaries, controls, or is controlled by, or is under
common control with such specified Person; and the term
“ affiliated ”
has a meaning correlative to the foregoing.
“
Agreement ”
shall have the meaning set forth in the preamble to this
Agreement.
“
Applicable
Law ” means any applicable laws, statutes, rules,
regulations, ordinances, orders, codes, arbitration awards,
judgments, decrees or other legal requirements of any
Governmental Entity.
“
Background
IP ” means [***].
“
BEOL
Costs ” means [***].
“
Burn-In ”
means [***].
“
Burn-In
Documen t” means a document that describes the
specification of voltage and test pattern settings in the
Burn-In test program. The Burn-In Document also
describes the methodology of how the voltage and test pattern
settings are optimized.
“
Closing ”
means the remittance by NTC and MNL of the first capital
contribution to the Joint Venture Company as set forth in
Section
2.6 of the Joint Venture Agreement.
“Commodity Stack DRAM Products” means Stack DRAM
Products for system main memory for computing or Mobile Devices, in
each case that are fully compliant with one or more Industry
Standard(s).
“
Confidential
Information ” means that information described in
Section
8.1 deemed to be “Confidential Information”
under the Mutual Confidentiality Agreement.
“
Contractor ”
means a Third Party who (a) is contracted by a Party in
connection with work to be conducted by such Party under a
SOW, (b) has agreed to assign to such contracting Party all
rights in and to any inventions, discoveries, improvements,
processes, copyrightable works, mask works, trade secrets or
other technology that are conceived or first reduced to
practice, whether patentable or not, as a result of any
performance by such Third Party of any obligations of such
Party under a SOW, and all Patent Rights, IP Rights and other
intellectual property rights in the foregoing, and (c) has
agreed to grant a license to such contracting Party, with the
right to sublicense of sufficient scope that includes the
other Party, under all Patent Rights, IP Rights and other
rights of the Third Party reasonably necessary for such
contracting Party and the other Party to exploit the work
product created by the Third Party consistent with the rights
granted by the contracting Party to the other Party under the
Joint Venture Documents.
“
Control ”
(whether capitalized or not) means the power or authority,
whether exercised or not, to direct the business, management
and policies of a Person, directly or indirectly, whether
through the ownership of voting securities, by contract or
otherwise, which power or authority shall conclusively be
presumed to exist upon possession of beneficial ownership or
power to direct the vote of [***] of the votes entitled to be
cast at a meeting of the members, shareholders or other equity
holders of such Person or power to control the composition of
a majority of the board of directors or like governing body of
such Person; and the terms “ controlling
” and “ controlled ”
have meanings correlative to the foregoing.
“
Design
Qualification ” means, [***].
“Design SOW” means [***].
“
DRAM
Product ” means any stand-alone semiconductor
device that is a dynamic random access memory device and that
is designed or developed primarily for the function of storing
data, in die, wafer or package form.
“
Effective
Date ” shall have the meaning set forth in the
preamble to this Agreement.
“Existing Entity” means [***].
“
Force Majeure
Event ” means the occurrence of an event or
circumstance beyond the reasonable control of a Party and
includes, without limitation, (a) explosions, fires, flood,
earthquakes, catastrophic weather conditions, or other
elements of nature or acts of God; (b) acts of war (declared
or undeclared), acts of terrorism, insurrection, riots, civil
disorders, rebellion or sabotage; (c) acts of federal, state,
local or foreign Governmental Entity; (d) labor disputes,
lockouts, strikes or other industrial action, whether direct
or indirect and whether lawful or unlawful; (e) failures or
fluctuations in electrical power or telecommunications service
or equipment; and (f) delays caused by the other Party or
third-party nonperformance (except for delays caused by a
Party’s Contractors, subcontractors or
agents).
“
Foundational
Know-How ” means, with respect to each Party,
[***].
“
Foundry
Customer ” means a Third Party customer for Stack
DRAM Products for [***].
“
Foundry
Customer Adjusted Revenues ” means
[***].
“
Foundry
Customer Products ” means [***].
“
FT
” means [***].
“
GAAP
” means, with respect to Micron, United States generally
accepted accounting principles, and with respect to NTC,
Republic of China generally accepted accounting principles, in
each case, as consistently applied by the Party for all
periods at issue.
“
Gross
Revenues ” means, [***].
“
Governmental
Entity ” means any governmental authority or
entity, including any agency, board, bureau, commission,
court, municipality, department, subdivision or
instrumentality thereof, or any arbitrator or arbitration
panel.
“Industry Standard” means the documented
technical specifications that set forth the pertinent technical and
operating characteristics of a DRAM Product if such specifications
are publicly available for use by DRAM manufacturers, and if
[***].
“
IP
Rights ” means copyrights, rights in trade
secrets, Mask Work Rights and pending applications or
registrations of any of the foregoing anywhere in the
world. The term “IP Rights” does not
include any Patent Rights or rights in
trademarks.
“
JDP
Agreement ” means that certain Joint Development
Program Agreement by and between Micron and NTC effective as
of the Effective Date referred to on Schedule
2.1 of the Master Agreement Disclosure
Letter.
“
JDP
Committee ” means the committee formed and
operated by Micron and NTC to govern the performance of the
Parties under the JDP Agreement.
“JDP Inventions” means all discoveries,
improvements, inventions, developments, processes or other
technology, whether patentable or not, that is/are conceived by one
or more Representatives of one or more of the Parties in the course
of activities conducted under the JDP Agreement.
“
JDP IP
Royalties ” means [***].
“
JDP Process
Node ” means any Primary Process Node or
Optimized Process Node resulting from the research and
development activities of the Parties pursuant the JDP
Agreement.
“
JDP Work
Product ” means [***].
“
Joint Venture
Agreement ” means that certain Joint Venture
Agreement by and between NTC and MNL effective as of the
Effective Date referred to on Schedule
2.1 of the Master Agreement Disclosure
Letter.
“
Joint Venture
Company ” means the company formed and operated
in accordance with the Joint Venture Documents.
“Joint Venture Company Joinder” means that
certain Joinder of the Joint Venture Company to the Mutual
Confidentiality Agreement.
“
Joint Venture
Documents ” means the Master Agreement and each
of the agreements listed on Schedules
2.1 through 2.5 of
the Master Agreement Disclosure Letter.
“ Mask Data Processing
” means [***].
“
Mask Work
Rights " means rights under the United States
Semiconductor Chip Protection Act of 1984, as amended from
time to time, or under any similar equivalent laws in
countries other than the United States.
“
Master
Agreement ” means that certain Master Agreement
by and between NTC and Micron dated as of the Effective
Date.
“
Master
Agreement Disclosure Letter ” means that certain
Master Agreement Disclosure Letter by and between NTC and
Micron dated as of Effective Date containing the Schedules
required by the Master Agreement.
“Micron ” shall have the meaning set forth in
the preamble to this Agreement.
“
Micron IP
Royalties ” mean any royalties owed by NTC to
Micron under the TTLA 68-50.
“
Micron
Qualified Fab ” means [***].
“
Micron
Products” means [***].
“
MNL
” means Micron Semiconductor B.V., a private limited
liability company organized under the laws of the
Netherlands.
“Mobile Device” means a handheld or
portable device using as its main memory one or more Stack DRAM
Products that is/are compliant with an Industry Standard
[***].
“
Mutual
Confidentiality Agreement ” means (i) prior to
the Closing, that certain Mutual Confidentiality Agreement
among NTC, Micron and MNL referred to on Schedule
2.1 of the Master Agreement Disclosure Letter, and (ii)
following the Closing, that certain Mutual Confidentiality
Agreement among NTC, Micron and MNL referred to on Schedule
2.1 of the Master Agreement Disclosure Letter, as
joined by the Joint Venture Company through the Joint Venture
Company Joinder.
“
NTC
” shall have the meaning set forth in the preamble to
this Agreement.
“
NTC
Products ” means [***].
“
NTC Qualified
Fab ” means [***].
“
OPC
” means optical proximity correction of the circuit
layout patterns, which is important in Mask Data
Processing.
“Optimized Process Node” means
[***].
“
Party
” and “ Parties ”
shall have the meaning set forth in the preamble to this
Agreement.
“
Patent
Rights ” means all rights associated with any and
all issued and unexpired patents and pending patent
applications in any country in the world, together with any
and all divisionals, continuations, continuations-in-part,
reissues, reexaminations, extensions, foreign counterparts or
equivalents of any of the foregoing, wherever and whenever
existing.
“
Person
” means any natural person, corporation, joint stock
company, limited liability company, association, partnership,
firm, joint venture, organization, business, trust, estate or
any other entity or organization of any kind or
character.
“
Primary
Process Node ” means [***].
“
Probe
Testing ” means testing, using a wafer test
program as set forth in the applicable specifications, of a
wafer that has completed all processing steps deemed necessary
to complete the creation of the desired Stack DRAM integrated
circuits in the die on such wafer, the purpose
of
which test is to determine how many and which of the die meet
the applicable criteria for such die set forth in the
specifications.
“
Process
Development Contractor ” means
[***].
“
Process
Node ” means [***].
“
Process
Qualification ” means, [***].
“Process SOW” means [***].
“Process Technology ” means that process
technology developed before expiration of the Term and utilized in
the manufacture of Stack DRAM wafers, including Probe Testing and
technology developed through Product Engineering thereof
,
regardless of the form in which any of the foregoing is stored, but
excluding any Patent Rights and any technology, trade secrets or
know-how that relate to and are used in any back-end operations
(after Probe Testing).
“
Product
Engineering ” means any one or more of the
engineering activities described on Schedule
7 to the JDP Agreement as applied to Stack DRAM
Products or Stack DRAM Modules.
“
RASL
” means that certain Restricted Activities Side Letter
agreement by and between the Parties effective as of the
Effective Date referred to on Schedule
2.1 to the Master Agreement Disclosure
Letter.
“
Recoverable
Taxes ” shall have the meaning set forth in
Section
4.7(a) .
“
Representative
” means with respect to a Party, any director, officer,
employee, agent or Contractor of such Party or a professional
advisor to such Party, such as an attorney, banker or
financial advisor of such Party who is under an obligation of
confidentiality to such Party by contract or ethical rules
applicable to such Person.
“
Royalties ”
means [***].
“
Software ”
means computer program instruction code, whether in
human-readable source code form, machine-executable binary
form, firmware, scripts, interpretive text, or
otherwise. The term “Software” does not
include databases and other information stored in electronic
form, other than executable instruction codes or source code
that is intended to be compiled into executable instruction
codes.
“
SOW
” means a statement of the work that describes research
and development work to be performed under the JDP Agreement
and that has been adopted by the JDP Committee pursuant to the
procedures set forth therein.
“
Stack
DRAM ” means dynamic random access memory cell
that functions by using a capacitor arrayed predominantly
above the semiconductor substrate.
“
Stack
DRAM Design ”
means, with respect to a Stack DRAM Product, the corresponding
design components, materials and information listed on
Schedule 3
of the JDP Agreement or as otherwise determined by the JDP
Committee in a SOW.
“Stack DRAM Module” means one or more Stack DRAM
Products in a JEDEC-compliant package or modul
