|
Exhibit
10.7
Execution Copy
Intellectual Property
License Agreement
This Intellectual Property
License Agreement (this “Agreement”) is made and
entered into this 6 day of October, 2004, by and between MagnaChip
Semiconductor, Ltd., a company organized and existing under the
Laws of the Republic of Korea (“Korea”), with offices
at 1, Hyangjeong-dong, Heungduk-gu, Cheongju-si, Chungcheongbuk-do,
Korea (“Purchaser”), and Hynix Semiconductor Inc., a
corporation organized under the Laws of Korea, with offices at San
136-1, Ami-Ri, Bubal-Eub, Ichon-Si. Kyoungki-Do, Korea
(“Hynix”). Either Purchaser or Hynix may be referred to
herein as a “Party” or together as the
“Parties,” as the case may require.
RECITALS
WHEREAS, Purchaser and Hynix
have entered into a certain Business Transfer Agreement, dated as
of June 12, 2004, as amended (the “Business Transfer
Agreement”) pursuant to which Purchaser will acquire all of
the Acquired Assets and assume all of the Assumed Liabilities upon
the terms and conditions set forth in the Business Transfer
Agreement;
WHEREAS, the Parties wish to
license to each other certain Intellectual Property in accordance
with the terms and conditions contained in this Agreement;
and
WHEREAS, the execution and
delivery of this Agreement is required by the Business Transfer
Agreement and is a condition to closing of the transactions
contemplated thereunder.
NOW, THEREFORE, in
consideration of the promises and the mutual covenants and
undertakings contained herein and for other good and valuable
consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties, intending to be legally bound hereby, do
agree as follows:
Capitalized terms used herein
shall have the meanings ascribed to such terms in the Business
Transfer Agreement unless otherwise defined herein or as set forth
below.
| |
1.1. |
“Confidential Information” means (i) all
information and proprietary materials of Hynix which is not
publicly known and is in the possession of, or disclosed by Hynix
to, Purchaser or a representative of Purchaser and relating to
Hynix’s business (after giving effect to the transactions
contemplated by the Business Transfer Agreement), including but not
limited to Hynix’s Intellectual Property and proprietary
business information and (ii) all information and proprietary
materials of Purchaser (after giving effect to the transactions
contemplated by the Business Transfer Agreement) which is not
publicly known and is in the possession of, or disclosed by
Purchaser to, Hynix or a representative of Hynix and relating to
Purchaser’s business, including but not limited to
Purchaser’s Intellectual Property and proprietary business
information. |
| |
1.2. |
“Hynix Licensed Intellectual Property” means any
Intellectual Property (other than Purchaser Licensed Intellectual
Property (as defined below)) of Hynix and/or |
any Subsidiaries of Hynix, as
such Intellectual Property existed as of the Closing Date; provided
however that Hynix shall have the right to delete, from time to
time, from the definition of Hynix Licensed Intellectual Property,
any Patents (as defined below) which Hynix chooses in its sole
discretion to abandon. In the case that Hynix abandons any
Patent(s) as permitted pursuant to the foregoing sentence,
notwithstanding any other provision to the contrary, the license
granted under this Agreement for such Patent shall immediately
terminate.
| |
1.3. |
“Intellectual Property” means patents, patent
applications, utility models, utility model applications and
industrial design registrations and applications, together with any
continuations, continuations-in-part or divisional applications
thereof, and all patents issued or issuing thereon and unfiled
invention disclosures (the “Patents”), as well as other
technology, know-how, trade secrets, processes, formulae, technical
information, designs, data, documentation, drawings, plans,
specifications, formulations, methods, procedures and reports, and
other general and specific knowledge, experience, techniques and
information, in written or machine-readable form and otherwise
(collectively, the “Know-How”), the mask work
rights/chip layout (regardless of registration) (“Mask
Works”), and software and copyrights (including without
limitation computer programs and computer program registrations and
applications) (“Copyrights”), but expressly excluding
for purposes of this definition, trademarks, service marks, trade
names, logotypes, slogans, and trade dress associated therewith
and/or product or part identification codes
(“Trademarks”) and applications for
Trademarks. |
| |
1.4. |
“Purchaser ‘022 Patents’” means U.S.
Patent No. 5,438,022 and its foreign counterparts that are part of
the Acquired Assets which have been transferred to Purchaser under
the Business Transfer Agreement. |
| |
1.5. |
“Purchaser Licensed Intellectual Property” means
those of the Acquired Assets which are Intellectual Property, as
such Intellectual Property existed as of the Closing Date; provided
however that Purchaser shall have the right to delete, from time to
time, from the definition of Purchaser Licensed Intellectual
Property, any Patents which Purchaser chooses in its sole
discretion to abandon. In the case that Purchaser abandons any
Patent(s) as permitted pursuant to the foregoing sentence,
notwithstanding any other provisions to the contrary, the license
granted under this Agreement for such Patent shall immediately
terminate. |
| 2. |
LICENSE GRANT TO PURCHASER |
| |
2.1. |
LICENSED INTELLECTUAL PROPERTY |
| |
(a) |
As of the Closing Date and subject to the terms and conditions
of this Agreement, Hynix hereby grants to Purchaser and its
Subsidiaries a perpetual, worldwide, paid-up, royalty-free,
non-exclusive, non-transferable (except as permitted under Section
7.13 of this Agreement) right and personal license under and to the
Hynix Licensed Intellectual Property to (i) with respect to the
Hynix Licensed Intellectual Property which are Patents related or
directed to semiconductor products or their method of manufacture
(“Product Patents”), design, develop, manufacture,
have |
2
manufactured, make, have
made, use, lease, offer for sale, sell, export and import, package,
modify or otherwise dispose of (A) any semiconductor product(s)
other than Memory Products, and/or (B) Memory Products which
Purchaser manufactures for Hynix and/or any Subsidiary(ies) of
Hynix, (ii) copy, have copied, use or have used any other
manufacturing technology included in the Hynix Licensed
Intellectual Property to design, develop, manufacture, have
manufactured, make or have made, package or modify (A) any
semiconductor product(s) other than Memory Products, and/or (B)
Memory Products which Purchaser manufactures for Hynix and/or any
Subsidiary(ies) of Hynix; and (iii) with respect to Hynix Licensed
Intellectual Property which are not Products Patents or other
manufacturing technology, to copy and use such Hynix Licensed
Intellectual Property, and to create derivative works thereof and
copy and use such derivative works, in the conduct of its business;
provided, however, that with respect to softwares which are Hynix
Licensed Intellectual Property, the license granted hereunder shall
be limited to such softwares existing as of the Closing Date and
which are used or have been used in the Business on or prior to the
Closing Date. For the avoidance of doubt and without limiting the
foregoing sentence, the Parties agree that the license granted
hereunder shall include the following softwares: ADMS, IP Web,
Legal System and EGGS (Employee/Officer General Supporting System).
In addition, for the avoidance of doubt, and notwithstanding the
foregoing or any other provision to the contrary, Purchaser shall
have the right to create any improvements, developments,
enhancements, modifications, and/or derivative works to the Hynix
Licensed Intellectual Property.
| |
(b) |
Notwithstanding the foregoing or any other provision of this
Agreement to the contrary, nothing in this Section 2.1 shall be
interpreted to allow Purchaser or any Subsidiary of Purchaser to,
directly or indirectly, take any action that would violate the
covenant not to compete in Section 6.4 of the Business Transfer
Agreement. |
As of the Closing Date and
subject to the terms and conditions of this Agreement, Hynix hereby
agrees to transfer to Purchaser, with respect to each commercial
and custom software application, (a) with respect to the software
applications on Schedule 2.2, that number of software licenses
(that is, individual installations or usage rights) as is listed on
Schedule 2.2 and (b) with respect to all other software
applications, a number of software licenses equal to the number
used by the Business as of the Closing Date; provided, however,
that the on-going costs and expenses related to such software
applications accrued after the Closing Date will be borne solely by
Purchaser.
3
| |
2.3. |
HYNIX REGISTERED USER REQUIREMENTS |
Hynix may, on behalf of both
Parties and at its expense, take such action, in its sole
discretion, that it deems necessary or desirable with respect to
compliance with registered user or similar filing requirements of,
or to otherwise cause the license granted by Hynix under this
Agreement to be registered with, the appropriate authorities of the
government of any jurisdiction. In addition, Hynix shall, on behalf
of both Parties, take such other requested action with respect to
compliance with registered user or similar filing requirements of,
or to otherwise cause the license granted by Hynix under this
Agreement to be registered with, the appropriate authorities of the
government of any jurisdiction upon, the reasonable request of
Purchaser and at Purchaser’s expense.
| |
2.4. |
HYNIX OBLIGATIONS REGARDING PROSECUTION AND MAINTENANCE OF
PATENTS AND ABANDONMENT |
Hynix shall have no
obligation to Purchaser with respect to the prosecution or
injunction of any infringement, violation, misappropriation and/or
interference by third parties with respect to the Hynix Licensed
Intellectual Property or any associated intellectual property
rights. For Patents that are abandoned as permitted in Section 1.2,
Hynix shall have no further obligation to Purchaser with respect to
such Patents after the abandonment of such Patents.
| 3. |
LICENSE GRANT TO HYNIX |
| |
(a) |
As of the Closing Date and subject to the terms and conditions
of this Agreement, Purchaser hereby grants to Hynix and its
Subsidiaries a perpetual, worldwide, paid-up, royalty-free,
non-exclusive, non-transferable (except as permitted under Section
7.13 of this Agreement) right and personal license under and to the
Purchaser Licensed Intellectual Property to (i) with respect to the
Purchaser Licensed Intellectual Property which are Product Patents,
design, develop, manufacture, have manufactured, make, have made,
use, lease, offer for sale, sell, export and import, package,
modify or otherwise dispose of any semiconductor product(s), (ii)
copy, have copied, use or have used any other manufacturing
technology included in the Purchaser Licensed Intellectual Property
to design, develop, manufacture, have manufactured, make or have
made, package or modify any semiconductor product(s), and (iii)
with respect to Purchaser Licensed Intellectual Property which are
not Product Patents or other manufacturing technology; to copy and
use such Purchaser Licensed Intellectual Property, and to create
derivative works thereof and copy and use such derivative works, in
the conduct of its business. For the avoidance of doubt, and
notwithstanding the foregoing or any other provision to the
contrary, Hynix shall have the right to create any improvements,
developments, enhancements, modifications, and/or derivative works
to the Purchaser Licensed Intellectual Property. |
| |
(b) |
Notwithstanding the foregoing, nothing in this Agreement shall
be interpreted to allow Hynix and/or any Hynix Subsidiary(ies) to
directly or indirectly, take any action that would violate the
covenant not to compete in Section 6.4 of the Business Transfer
Agreement. |
4
| |
(c) |
Purchaser agrees that its and its Subsidiaries’ rights to
the Purchaser ‘022 Patents’ will be subject to all
licenses Hynix has granted to third parties which were in effect as
of June 12, 2004. In addition, in connection with claims against
Hynix with respect to the infringement, violation or
misappropriation of and/or interference with the intellectual
property rights of a third party, Hynix shall have the right to
sub-license to such third party its rights with respect to the
Purchaser ‘022 Patents’ under this
Agreement. |
| |
3.2. |
PURCHASER REGISTERED USER REQUIREMENTS |
Purchaser may, on behalf of
both Parties and at its expense, take such action, in its sole
discretion, that it deems necessary or desirable with respect to
compliance with registered user or similar filing requirements of,
or to otherwise cause the license granted by Purchaser under this
Agreement to be registered with, the appropriate authorities of the
government of any jurisdiction. In addition, Purchaser shall, on
behalf of both Parties, take such other requested action with
respect to compliance with registered user or similar filing
requirements of, or to otherwise cause the license granted by
Purchaser under this Agreement to be registered
|
