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
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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 **
