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EXHIBIT 10.6
FOIA Confidential Treatment Requested
Execution Version
PATENT INDEMNIFICATION AGREEMENT
This PATENT INDEMNIFICATION AGREEMENT, dated and effective as of
July 7, 2006, is entered into by and among, on one side,
Toshiba Corporation, a Japanese corporation (" Toshiba "),
and, on the other side, SanDisk Corporation, a Delaware corporation
(" SanDisk Corporation "), and SanDisk [ * ]and SanDisk together with
Toshiba, the " Parties ").
WHEREAS, Toshiba and SanDisk are
parties to that certain Flash Partners II Master Agreement, dated
as of the date hereof (the " Master Agreement ");
[*]
WHEREAS, recognizing that the
products SanDisk will acquire from the Company will have been
manufactured using Toshiba patents and technology, and recognizing
that SanDisk, as an owner of the equity interests in the Company,
will benefit from Toshiba’s making available its patents and
technology to the Company, the Parties have determined to enter
into this Agreement, which is required by the Master Agreement.
NOW, THEREFORE, the Parties agree
as follows:
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1.
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Indemnification.
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1.1
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Patent Infringement . With regard to
any and all sales of Y4 NAND Flash Memory Products by the Company
to SanDisk (" Company Products "):
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(a)
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Subject to the terms and conditions listed below,
Toshiba agrees to indemnify and defend SanDisk in any legal
proceeding, lawsuit or other judicial action, [*]claims that the
Company Products supplied by the Company infringe any [*]
patent(s). With regard to any claim of patent infringement for
which Toshiba has indemnification obligations hereunder,
Toshiba’s obligations are subject to the following
conditions:
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(i)
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SanDisk shall notify Toshiba in writing of such
claim [*];
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(ii)
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SanDisk shall also notify Toshiba, in writing
[*];
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(iii)
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SanDisk shall provide Toshiba with notice of any
other written communication indicating potential patent
infringement claims against the Company Products [*];
provided , however , SanDisk’s failure to
provide such notice shall in no way constitute a breach of this
Agreement by SanDisk nor in any way excuse Toshiba’s
obligations under this Agreement;
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(iv)
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[*], Toshiba shall have the sole and exclusive
control of the defense or settlement
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*
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Indicates that certain information contained
herein has been omitted and filed separately with the Securities
and Exchange Commission. Confidential treatment has been requested
with respect to the omitted portions.
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1
EXHIBIT 10.6
FOIA Confidential Treatment Requested
Execution Version
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of such claim, [*]; and
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(v)
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SanDisk shall provide all reasonable assistance
in defending such claim.
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(b)
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Notwithstanding the foregoing, Toshiba shall not
be obligated to indemnify or defend SanDisk in the event that such
infringement arises from:
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(i)
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[ *
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(ii)
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[*]
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(iii)
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[*]
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(c)
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[*]
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(d)
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[*]
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(e)
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In addition to the obligations set forth above,
should any third party patent claim result in a temporary or
permanent injunction against the manufacture, use, sale, offer for
sale, importation or otherwise disposal of the Company Products by
SanDisk, Toshiba shall use best efforts to undertake one of the
following actions:
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(i)
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[*]
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(ii)
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[*]
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(f)
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The total cumulative liability o
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