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Exhibit 10.7
CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL
PORTIONS OF THIS DOCUMENT HAVE BEEN REDACTED AND HAVE BEEN
SEPARATELY FILED WITH THE COMMISSION.
PATENT CROSS LICENSE AND COVENANT NOT TO
SUE
This Patent Cross License and Covenant Not To Sue (hereinafter
"Patent Cross License") is made and entered into as of this 1st day
of November, 2006 (hereinafter the "EFFECTIVE DATE") by and between
SIRF Technology, Inc., a Delaware Corporation having its principal
place of business at 148 E. Brokaw Road, San Jose, California 95112
on the one hand (hereinafter "SiRF"), and u-NAV Microelectronics
Corporation, a Delaware Corporation, having its principal place of
business at 8 Hughes, Irvine, California 92618, and u-NAV
Microelectronics Finland OY, a Finnish corporation having its
principal place of business at Hermiankatu 6-8 D, Tampere
FIN-33720, Finland on the other hand (collectively hereinafter
"u-NAV"). SIRF and u-NAV are collectively referred to herein as the
"Parties" and individually as "Party."
RECITALS
WHEREAS, as part of the settlement of Civil Action No.
SACV05-773 CJC (ANX) filed by SiRF against u-NAV on August 5,
2005, in the United States District Court, Central District of CA.,
Santa Ana Division, SIRF and u-NAV desire to enter into this Patent
Cross License; and
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WHEREAS, each party agrees to grant the other
party licenses under certain patents with respect to certain
products as set forth herein and agrees to release the other party
from certain claims of past patent infringement arising out of the
activities of the other party;
NOW, THEREFORE, in consideration of the above premises and
mutual covenants hereinafter contained, the parties agree as
follows:
SECTION 1
DEFINITIONS
As used in this Patent Cross License the term:
1.1 "SUBSIDIARY(IES)" means any corporation, company, or other
entity of which more than fifty percent (50%) of the
outstanding shares or stock is owned or controlled by either party
and, in the case of SiRF, also its PARENT, hereto, directly or
indirectly, now or hereafter, or which is otherwise owned or
controlled by a party, but any such entity shall be deemed to be a
SUBSIDIARY only so long as such ownership or control exists.
1.2 "GPS PRODUCTS" means an integrated circuit or circuits,
including firmware resident in the GPS base band, which consist of
(a) a Global Positioning System ("GPS") base band chip or a
GPS RF chip, together or separately, or (b) a multi-chip
package encapsulating both a GPS base band die and a GPS RF die or
(c) a single chip wherein the GPS base band die and GPS RF die
reside on one piece of silicon, that carry out the STANDALONE GPS
processing of signals
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received from GPS satellite vehicles for GPS
signal acquisition or tracking and/or for position computation
purposes.
1.3 "PATENT(S)" means all classes or types of patents, utility
models, design patents, and applications therefore of all countries
of the world, which are issued, published, or have a first
effective filing date *** including continuation(s), divisional(s),
reissue application(s) and foreign counterpart(s) thereof. The term
"PATENT(S)" does not include copyrights, trademarks, mask work
rights, or any know-how or trade secret rights.
1.4 "CORE GPS PATENTS" means the PATENTS of either party with
claims to subject matter limited to the structures of or the
methods implemented by the *** of the GPS *** and/or ***; such as,
for example, the following: ***, ***, ***, ***, and ***. The term
"CORE GPS PATENTS" includes all PATENTS ***, excluding U.S. Pat.
No. ***, as the *** is defined in the Settlement Agreement and
Mutual Release to which this Patent Cross License is attached as
Attachment A. For the avoidance of doubt, the term "CORE GPS
PATENTS" only includes patents with claims to *** and does not
include patents with one or more claims to any of the following
subject matter: (1) products that utilize *** involving the
processing of *** that may be input to or output from a ***
including, but not limited to, by a *** (e.g., ***), or a ***
(e.g., *** systems) but excluding *** received directly from *** or
from one or more *** (e.g., ***) and (2) products that utilize
*** or *** both from *** other than ***.
1.5 "SiRF LICENSED PATENTS" means CORE GPS PATENTS listed on
Schedule 1 assigned to SiRF or its PARENT or SUBSIDIARIES, which
were *** or *** on ***, including CORE GPS PATENTS (i) which
SiRF or its PARENT or SUBSIDIARIES own, acquire, or
*** CONFIDENTIAL MATERIAL REDACTED AND SEPARATELY
FILED WITH THE COMMISSION.
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control as of ***, or (ii) under which SiRF
has the right to grant licenses of the scope granted herein,
without the payment of royalties or other consideration to a third
party or parties, except for payments to employees of SiRF or its
PARENT or SUBSIDIARIES for inventions made by said employees while
employed by SiRF or its PARENT or SUBSIDIARIES and also except for
any other payments for which u-NAV agrees to reimburse SiRF. For
the purpose of clarification, the phrase "the payment of royalties
or other consideration" hereinabove shall never be construed to
include any payment made by SiRF as consideration for the
acquisition of the patents, utility models, design patents,
applications, or licenses or rights thereunder.
1.6 "u-NAV LICENSED PATENTS" means CORE GPS PATENTS listed on
Schedule 2, assigned to u-NAV or its SUBSIDIARIES which were *** or
*** on ***, including CORE GPS PATENTS (i) which u-NAV or
SUBSIDIARIES own, acquire, or control as of ***, or (ii) under
which u-NAV has the right to grant licenses of the scope granted
herein, without the payment of royalties or other consideration to
a third party or parties, except for payments to employees of u-NAV
or its SUBSIDIARIES for inventions made by said employees while
employed by u-NAV or its SUBSIDIARIES and also except for any other
payments for which SiRF agrees to reimburse u-NAV. For the purpose
of clarification, the phrase "the payment of royalties or other
consideration" hereinabove shall never be construed to include any
payment made by u-NAV as consideration for the acquisition of the
patents, utility models, design patents, applications, or licenses
or rights thereunder.
1.7 "LICENSED PRODUCTS" means GPS PRODUCTS. For the avoidance of
doubt, LICENSED PRODUCTS shall not include ***.
*** CONFIDENTIAL MATERIAL REDACTED AND SEPARATELY
FILED WITH THE COMMISSION.
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1.8 " u-NAV LICENSED PRODUCTS" means the ***
products and future *** which are manufactured by or on behalf of
u-NAV or its SUBSIDIARIES during the term of this Patent Cross
License. For the avoidance of doubt, u-NAV LICENSED PRODUCTS shall
not include any products of an INVESTOR in u-NAV or an ACQUIRING
PARTY of u-NAV, manufactured by or on behalf of the INVESTOR or
ACQUIRING PARTY.
1.9 "SiRF LICENSED PRODUCTS" means the *** product lines and
future *** which are manufactured by or on behalf of SiRF or its
SUBSIDIARIES during the term of this Patent Cross License. For the
avoidance of doubt, SiRF LICENSED PRODUCTS shall not include any
products of an INVESTOR in SiRF or an ACQUIRING PARTY of SiRF,
manufactured by or on behalf of the INVESTOR or ACQUIRING
PARTY.
1.10 "HAVE-MADE" means the act of a party using a third party
(i.e. someone other than the parties hereto)
(a) to make, in whole or in part, in the case of u-NAV, u-NAV
LICENSED PRODUCTS, or in the case of SiRF, SiRF LICENSED PRODUCTS,
or a portion thereof for the account of, and for the use or resale
by, a party to this Patent Cross License wherein the die in said
u-NAV LICENSED PRODUCT, in the case of u-NAV, or said SiRF LICENSED
PRODUCT, in the case SiRF, is substantially designed by the party
or designed for the party at the request of the party, or designed
by a third party for the party under development contract with the
party, and/or
*** CONFIDENTIAL MATERIAL REDACTED AND SEPARATELY
FILED WITH THE COMMISSION.
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(b) to assemble and/or test in the case of u-NAV,
u-NAV LICENSED PRODUCTS or in the case of SiRF, SiRF LICENSED
PRODUCTS, using wafers owned by a party regardless of where the
circuits on the wafers were designed and regardless of where the
wafers were fabricated.
Notwithstanding the foregoing, in no event shall "HAVE-MADE"
extend to any products that are manufactured by a third party for
either party, sold to such party and resold, directly or indirectly
by such party, to that third party.
1.11 "ASP" means the actual selling price of u-NAV LICENSED
PRODUCTS in an arm’s length transaction with a third party
but excludes shipping charges, insurance, and customs duties.
Should a u-NAV LICENSED PRODUCT be sold in other than an
arm’s length transaction, the ASP for that u-NAV LICENSED
PRODUCT shall be the selling price of the same or comparable
product in the same calendar quarter in an arm’s length
transaction. Should no such arm’s length sale have occurred
in that calendar quarter, then the ASP for that u-NAV LICENSED
PRODUCT shall be the average selling price in the arm’s
length transaction for u-NAV LICENSED PRODUCTS in the previous
calendar quarter.
1.12 "STANDALONE GPS" means the mode of operation of a GPS
subsystem in which acquisition and tracking of the GPS satellite
signals is performed based solely on the following:
(1) information acquired directly from the GPS satellite
constellation during that acquisition, tracking or position
computation, or (2) information stored within the GPS
subsystem which was acquired directly from the GPS satellite
constellation during previous acquisition or tracking of the GPS
satellites, or (3) information entered manually by an
operator.
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The acquisition or tracking or position
computation referred to in the previous paragraph must be performed
without network, wireless or other aiding, that is, without access
by the GPS subsystem to information from sources external to the
GPS subsystem, such as (a) information related to the GPS
satellite constellation including GPS time, frequency, ephemeris,
almanac, and similar information received by another GPS or other
system from the GPS satellite constellation and relayed to the GPS
subsystem by any means, or (b) any other information used for
acquisition and/or tracking received from a source external to the
GPS subsystem, such as motion or position of the GPS
subsystem.
For the avoidance of any misunderstanding, a GPS subsystem
utilizing signals from a local oscillator or other timing device
for acquisition or tracking of the GPS satellite constellation is
not operating in a STANDALONE GPS mode if such local oscillator or
other timing device receives information, such as GPS time,
frequency and/or synchronization information, from a source other
than the GPS subsystem. For purposes of this definition 1.12, the
GPS subsystem only includes a TCXO reference clock and/or a Real
Time Clock ("RTC") that are not calibrated to hold or be
synchronized by GPS time.
1.13 "PARENT" means any corporation, company, or other entity
that owns or controls either party hereto, directly or indirectly,
now or hereafter, but any such entity shall be deemed to be a
PARENT only so long as such ownership or control exists.
1.14 "IP CORE TECHNOLOGY" means the technology embodied in the
hardware description language or HDL used to represent the digital
circuits of the base band chip or the
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analog circuits of the RF chip, where the HDL is
typically licensed, among other related deliverables, to chip
manufacturers for inclusion into other chips or devices in lieu of
the chips themselves.
1.15 "NET SALES" means a dollar amount calculated by multiplying
the ASP for each u-NAV LICENSED PRODUCT sold by the quantity of
u-NAV LICENSED PRODUCTS sold at that ASP and summing the results of
each such multiplication for all u-NAV LICENSED PRODUCTS sold in a
given time period to arrive at total u-NAV sales of u-NAV LICENSED
PRODUCTS in United States dollars in the aforementioned period of
time. Furthermore, the NET SALES amount shall be reduced by the
total customer returns of u-NAV LICENSED PRODUCTS in the United
States dollars in the aforementioned period of time.
1.16 "INVESTOR" shall mean a person who or an entity that
subsequent to the EFFECTIVE DATE has equity in either party but
such person or entity shall remain an INVESTOR only for so long as
the INVESTOR has an equity stake in the party.
SECTION 2
RELEASES
2.1 The release set forth in the Settlement Agreement and Mutual
Release to which this Patent Cross License is attached as
Attachment A shall be deemed to be part of this Patent Cross
License and thus is hereby incorporated herein by reference.
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SECTION 3
GRANT OF LICENSES AND COVENANTS
3.1 Subject to the other terms of this Patent Cross License,
SiRF grants to u-NAV and its SUBSIDIARIES a ***, ***, ***, license,
***, under all SiRF LICENSED PATENTS to make, HAVE-MADE, use, offer
to sell, sell, lease, import, export, and/or otherwise dispose of
u-NAV LICENSED PRODUCTS.
3.2 SiRF covenants not to sue u-NAV and its SUBSIDIARIES for
PATENT infringement from the EFFECTIVE DATE of this Patent Cross
License through ***, but thereafter SiRF shall be entitled to sue
u-NAV and/or its SUBSIDIARIES for infringement of any PATENT with
respect to which a license is not granted hereunder for any acts by
u-NAV and/or its SUBSIDIARIES after ***. Any such PATENT
infringement suit will not allege that infringements occurring on
or before ***, are *** but may allege to be *** any infringement
occurring after ***. This covenant not to sue is personal to u-NAV
and to its SUBSIDIARIES, non-assignable, non-transferable and
subject to the termination provision of Section 3.5(a).
3.3 As part consideration for the rights granted by SiRF to
u-NAV under Sections 3.1 and 3.2 above, u-NAV grants to SiRF and
its PARENT and SUBSIDIARIES a ***, ***, ***, ***, right and
license, ***, under all u-NAV LICENSED PATENTS to make, HAVE-MADE,
use, offer to sell, sell, lease, import, export, and/or otherwise
dispose of SiRF LICENSED PRODUCTS
*** CONFIDENTIAL MATERIAL REDACTED AND SEPARATELY
FILED WITH THE COMMISSION.
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3.4 u-NAV covenants not to sue SiRF and its
SUBSIDIARIES for PATENT infringement from the EFFECTIVE DATE of
this Patent Cross License through ***, but thereafter u-NAV shall
be entitled to sue SiRF and/or its SUBSIDIARIES for infringement of
any PATENT with respect to which a license is not granted hereunder
for any acts by SiRF and/or its SUBSIDIARIES after ***. Any such
PATENT infringement suit will not allege that infringements
occurring on or before ***, are *** but may allege to be *** any
infringement occurring after ***. This covenant not to sue is
personal to SiRF and to its SUBSIDIARIES, non-assignable and
non-transferable and subject to the termination provision of
Section 3.5(a).
3.5 (a) Should, during the term of this Patent Cross License,
the business of u-NAV licensed hereunder be acquired by or merged
with a third party (the "ACQUIRING PARTY") either as a result of
the ACQUIRING PARTY acquiring or merging the assets of u-NAV
relating to the business, or by the ACQUIRING PARTY obtaining
actual or beneficial ownership or control, directly or indirectly,
of more than fifty percent (50%) of u-NAV’s voting stock
to control u-NAV, or by any other means, this Patent Cross License,
including without limitation, the licenses and covenants granted
therein, shall automatically terminate unless the ACQUIRING PARTY,
following the closing of the acquisition or merger (the "CLOSING
DATE"), agrees in a signed writing received by SiRF within thirty
(30) calendar days following the CLOSING DATE in accordance
with the notice provisions of this Patent Cross License, to be
bound by the terms of this Patent Cross License, in which event the
licenses granted by this Patent Cross License to u-NAV shall be
assigned to the ACQUIRING PARTY (directly or indirectly by virtue
of operation of law pursuant to a merger or stock transfer), but
only with respect to those u-NAV LICENSED PRODUCTS ***, *** and ***
by u-NAV *** the *** and
*** CONFIDENTIAL MATERIAL REDACTED AND SEPARATELY
FILED WITH THE COMMISSION.
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either *** to *** or in *** by u-NAV *** the ***.
Notwithstanding the foregoing, the covenants not to sue set forth
in Sections 3.2 and 3.4 shall automatically and permanently
terminate in the event that the business of u-NAV is acquired by or
merged with a third party, and such covenants may not be reinstated
or revived in any way by u-NAV, SiRF and/or the ACQUIRING
PARTY.
(b) This Patent Cross License shall not be assignab
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