Co-Marketing and Software License Agreement

Co-Marketing and Software License Agreement

This Agreement is made and entered into as of April 16, 2003, (“Effective Date”) by and between Wintegra, Inc., a Delaware corporation with its principal place of business located at 7200 North MoPac Expressway, Suite 270, Austin, Texas 78731, Wintegra Ltd., a company incorporated under the laws of the State of Israel (Wintegra, Inc. and Wintegra Ltd. shall be referred to as "Wintegra" or “Licensor”) and Texas Instruments Incorporated, a Delaware corporation with its principal place of business located at 12500 TI Boulevard, Dallas, Texas, 75243 (“TI” or “Licensee”)(collectively, the “Parties,” or individually, each a “Party”).

Whereas, the Parties wish to enter into a joint marketing agreement so that mutual customers can obtain a High Density Solution (as defined below) comprised of certain TI software and chipsets and certain Wintegra software and chips,

Whereas, each Party will independently sell their respective products to the customers, but TI will sublicense certain portions of Wintegra’s software to be distributed in TI’s products,

Whereas, the Parties acknowledge that TI, as a supplier of TI chipsets in a High Density Solution, and its customers using a High Density Solution are critically dependent on a continuity of supply of Wintegra software and chips, and that TI and such customers could suffer material damage due to any lack of supply of Wintegra Products, and

Whereas, the Parties acknowledge that Wintegra, as a access packet processors in a High Density Solution, and its customers using a High Density Solution are critically dependent on a continuity of supply of TI software and chips, and that Wintegra and such customers could suffer material damage due to any lack of supply of TI products Products, and

Whereas, the Parties therefore agree that Wintegra shall use all best efforts to ensure that it provides a timely and continuous supply of Wintegra software and chips to the Parties’ mutual customers.

1.1 “Derivative Products” shall mean successor versions of the Wintegra Winpath 777 including the, WIN770, WIN737, and WIN707, as well as other versions that could or would typically be used as part of a High Density Solution.

1.2 “Functional Specifications” shall mean software and hardware specifications as published from time to time by Wintegra, including the specifications set forth in any statement of work between the Parties and the current version of the software and hardware specifications described in the attached Exhibit A, which is incorporated by reference.

1.4 “Licensed Software” shall mean those computer programs and instructions listed in Exhibit A in Object Code or Source Code, as specified, and associated documentation. Licensed Software includes all Updates, Upgrades, translations, compilations, or other software delivered to TI by Wintegra hereunder, except that Licensed Software shall not include Modifications.

1.7 “Object Code” shall mean any compiled, assembled, or machine executable version of software, or any part thereof.

1.9 “Source Code” shall mean the human readable form of software.

The Parties acknowledge that (i) Mutual Customers are critically dependent on a continuity of supply of Wintegra Chips and the Licensed Software, (ii) time is of the essence with respect to the delivery of the Wintegra Chips and Licensed Software to the Mutual Customers, and (iii) Mutual Customers are likely to suffer material damage due to any lack of supply of Wintegra Products.

Wintegra agrees to notify TI immediately in the event that Wintegra suspects that it will not be able to timely and adequately supply Wintegra Chips and/or Licensed Software to Mutual Customers. The Parties have also entered into a separate Supply and License Agreement to further ensure continuity of supply for Mutual Customers.

4.1   Licenses

Wintegra and TI shall undertake development work to make the Licensed Software interoperable with TI’s products, as more fully described below. Except as set forth in this Agreement and the Parties' Supply and License Agreement, Wintegra will sell the Wintegra Chips directly to Mutual Customers and license the certain Wintegra development tools directly to Mutual Customers. Pursuant to the licenses set forth below, TI may further modify the Licensed Software and distribute it in Object Code to Mutual Customers.

4.1.1   Development License

Wintegra grants to TI a limited, non-transferable, non-exclusive license to make copies, prepare derivative works, display internally, and use internally the Licensed Software for the purpose of developing Object Code versions of the Licensed Software to be used as part of a High Density Solution or in conjunction with Wintegra Chips. Such license includes the right to translate the Licensed Software to another computer language or to other hardware or software environment in order to make it interoperable with TI products.

[†] Information redacted pursuant to a confidential treatment request by Wintegra, Inc. under 17 CFR §§ 200.80(b)(4) and 230.406 and submitted separately with the Securities and Exchange Commission.

4.1.2   Demonstration License

Wintegra grants to TI a limited, non-transferable, non-exclusive license to use the Licensed Software in Object Code for demonstration purposes, including interoperability testing and certification.

4.1.3     Distribution License

Wintegra shall provide TI with Updates and Upgrades, and shall provide assistance, at no additional cost, for any integration services necessary to make such Updates and Upgrades interoperable with the TI platform. If requested by TI, Wintegra shall provide a pre-release of such Updates and Upgrades. Wintegra shall notify TI immediately upon determining that any potential Updates or Upgrades may affect interoperability with TI products.

Title in and to the Licensed Software, including but not limited to, all copyright, patent, trade secret rights, and intellectual property rights shall remain in and with Wintegra and/or its licensors. Title in and to the Modifications and TI Modifications, including but not limited to, all copyright, patent, trade secret rights, and intellectual property rights shall vest solely in TI. Wintegra shall execute any documents as TI may reasonably deem necessary to perfect such assignment to TI. TI shall maintain title to all software and intellectual property belonging to TI before the Effective Date, and any original software or hardware independently developed by TI after the Effective Date and incorporated in or added to the Licensed Software.

During the course of the Term of this Agreement, either Party ("Disclosing Party") may disclose certain Confidential Information to the other Party ("Receiving Party"). “Confidential Information” may include any data or information, oral, or written, that relates to either Party's (or, if either Party is bound to protect the confidentiality of any other person's information, such other person's) past, present, or future research, development, technology, products, personnel, or business activities, including, but not limited to, any unannounced products, software, and services, and including any information relating to services or the technology, developments, inventions, software, expertise, processes, trade secrets, filed patents, know how, Source Code, plans, financial information, customer and supplier lists, forecasts, and projections. The Parties agree that all information a Party desires to be deemed Confidential Information shall be conspicuously marked or otherwise identified as Confidential Information of the Disclosing Party at the time of disclosure or, if disclosed in an intangible form, shall be followed by a writing identifying the information as confidential within thirty (30) days of first disclosure thereof. Confidential Information includes the terms of this Agreement and any material considered confidential under any NDA signed between the Parties prior to entering this Agreement. The Party receiving any such Confidential Information shall treat such Confidential Information as confidential and proprietary of the Disclosing Party for a period of five (5) years from first receipt thereof and for this term shall not use, disclose, or otherwise exploit any Confidential Information for any purpose not expressly contemplated by this Agreement. Each Party shall require each of their employees, independent contractors, agents or representatives who have access to the Confidential Information to execute a written confidentiality agreement containing terms substantially similar to those set forth in this Agreement or shall have form employee or consultant agreements and procedures to ensure their execution where these agreement are reasonably protective of confidential information according to software industry standard practices.