EX 10.78
MOTOROLA - MICROSEMI
POWERMITE ®
TECHNOLOGY
AGREEMENT
THIS AGREEMENT, having an EFFECTIVE DATE as
defined herein, is entered into by and between Motorola, Inc., a
Delaware corporation, and its SUBSIDIARIES, having an office at
5005 East McDowell Road, Phoenix, Arizona 85008, U.S.A.
(hereinafter called “MOTOROLA”), and Microsemi USPD,
Inc., a Delaware Corporation, having an office at 580 Pleasant
Street, Watertown, Massachusetts 02172 (hereinafter called
“MICROSEMI”).
WHEREAS MICROSEMI has designed and is
manufacturing a package known as the POWERMITE
®
Package, and is in rightful
possession of certain proprietary rights in the valuable technology
related thereto; and
WHEREAS MOTOROLA is particularly qualified and
otherwise particularly suited to become an alternate source of the
POWERMITE ® Package and desires to obtain licenses and other
rights from MICROSEMI with regard to the aforementioned proprietary
rights in order to become an alternate source for such package;
and
WHEREAS MICROSEMI recognizes the particular
qualification of MOTOROLA and desires that MOTOROLA become an
alternate source for such package.
NOW, THEREFORE, MICROSEMI and
MOTOROLA agree as follows:
Section 1 - Definitions
Terms in this Agreement, other than names of the
parties hereto, which appear in capital letters, shall have the
following meanings:
1.1 COST LESS CHIP OR CLC shall mean the costs
incurred by MOTOROLA in the manufacture of LICENSED PRODUCT using
MOTOROLA’s actual cost in effect on the date
calculated.
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1.2
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EFFECTIVE DATE
shall mean the date of last signature of this Agreement.
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1.3 IMPROVEMENT(S) shall mean any enhancements
to LICENSED PRODUCT or related derivatives, including, but not
limited to, design and manufacturing improvements made by either
party to the LICENSED PRODUCT during the term of this
Agreement.
1.4 LICENSED PRODUCT shall mean
MICROSEMI’s POWERMITE ® package which is further described in Appendix
B, POWERMITE ® Package Specifications, attached hereto and
made a part hereof.
1.5 LICENSED TRADEMARK shall mean any trademark
owned or controlled by MICROSEMI that is used in the merchandising
of LICENSED PRODUCT by MICROSEMI, specifically including the
trademark POWERMITE ® .
1.6 MEETING DAY shall mean a full eight hour
working day during which the employees of one party may visit the
other party’s facility and which visit is coordinated through
the Documentation Managers for each party.
1.7 MICROSEMI PATENTS shall mean all classes or
types of patents, utility models, and design patents of all
countries of the world, arising out of inventions made by employees
of MICROSEMI, the applications for which have a first effective
filing date in any country prior to the
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MOTOROLA - MICROSEMI
POWERMITE ®
TECHNOLOGY
AGREEMENT
date of expiration or termination of this
Agreement, or which patents may, prior to or during the term of
this Agreement, be acquired by MICROSEMI, and under which, and to
the extent to which, and subject to the conditions under which,
MICROSEMI or any successor may have, as of the effective date of
this Agreement, or at the date of acquisition with respect to
patents acquired by or after the effective date of this Agreement,
the right to grant licenses of the scope granted herein without the
payment of royalties or other consideration to third persons,
except for payments to third persons for inventions made by said
persons while employed by MICROSEMI, and which patents are
essential to the reasonable practice or exercise of any rights
granted hereunder, including, but not limited to, U.S. Letters
Patent Number 5225897.
1.8 MICROSEMI TECHNICAL INFORMATION shall mean
the items of Appendix A, attached hereto and made a part hereof, or
items to be subsequently added to Appendix A and which items have
been transferred to MOTOROLA by MICROSEMI hereunder; information
transferred from MICROSEMI to MOTOROLA as a consequence of
rendering Technical Assistance, including, but not limited to,
MICROSEMI UPDATE(S) or MICROSEMI IMPROVEMENT(S).
1.9 MOTOROLA PATENTS shall mean all classes or
types of patents, utility models and design patents of all
countries of the world which arise out of inventions made by
employees of MOTOROLA’s Semiconductor Products Sector prior
to termination of this AGREEMENT, and 1) which cover inventions
used in, or in the making of, LICENSED PRODUCT when such coverage
only exists because of the inclusion of MOTOROLA TECHNICAL
INFORMATION, or 2) which cover products sold by MICROSEMI,
including their manufacture and use, when such coverage only exists
because of the inclusion of MOTOROLA TECHNICAL INFORMATION in such
MICROSEMI product.
1.10 MOTOROLA TECHNICAL INFORMATION shall mean
information transferred from MOTOROLA to MICROSEMI as a consequence
of rendering or receiving Technical Assistance with respect to
LICENSED PRODUCT, including, but not limited to, MOTOROLA UPDATE(S)
or MOTOROLA IMPROVEMENT(S).
1.11 SUBSIDIARIES shall mean any Corporations,
Companies or other entities more than fifty percent (50%) of
whose outstanding shares of stock entitled to vote for the election
of Directors (other than any shares of stock whose voting rights
are subject to restriction) are owned or controlled by either party
hereto, directly or indirectly, now or hereafter, during the term
of this Agreement.
1.12 TECHNICAL INFORMATION shall mean MICROSEMI
TECHNICAL INFORMATION or MOTOROLA TECHNICAL INFORMATION.
1.13 UPDATES shall mean information regarding
modifications to an item of TECHNICAL INFORMATION for LICENSED
PRODUCT which has been made by MICROSEMI or MOTOROLA to correct an
error in such item which is reflected as an error in the associated
LICENSED PRODUCT or the testing thereof. The form of the
information shall be logic diagrams/schematics, composite plots,
and detailed written descriptions or explanations of the UPDATE,
sufficient to allow the recipient to implement such
UPDATE.
Section 2 - Licenses
2.1 MICROSEMI grants and agrees to grant to
MOTOROLA under MICROSEMI PATENTS a personal, nontransferable,
exclusive, worldwide, royalty free, paid up right and license, to
modify, make or have made, use, sell, lease, or otherwise dispose
of LICENSED PRODUCT with the right to make or have made, use, sell,
lease, or otherwise dispose of semiconductors incorporating
LICENSED PRODUCT.
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MOTOROLA - MICROSEMI
POWERMITE ®
TECHNOLOGY
AGREEMENT
2.2 MICROSEMI grants and agrees to grant to
MOTOROLA under MICROSEMI TECHNICAL INFORMATION, a personal,
nontransferable, exclusive, worldwide, royalty free, paid up right
and license, to make or have made, use and modify LICENSED PRODUCT
with the right to make or have made, use, sell, lease, or otherwise
dispose of semiconductors incorporating LICENSED PRODUCT, with the
right to sublicense to MOTOROLA joint ventures only that know how
required to make LICENSED PRODUCT.
2.3 MICROSEMI grants and agrees to grant to
MOTOROLA under MICROSEMI PATENTS and MICROSEMI TECHNICAL
INFORMATION a personal, nontransferable, exclusive, worldwide,
royalty free right and license, to use and modify UPDATE(S) or
IMPROVEMENT(S) in LICENSED PRODUCT and semiconductors incorporating
LICENSED PRODUCT.
2.4 MOTOROLA grants and agrees to grant to
MICROSEMI under MOTOROLA PATENTS and MOTOROLA TECHNICAL INFORMATION
a personal, nontransferable, nonexclusive, worldwide, royalty free
right and license, to use and modify UPDATE(S) or IMPROVEMENT(S) in
LICENSED PRODUCT and semiconductors incorporating LICENSED
PRODUCT.
2.5 MICROSEMI grants and agrees to grant to
MOTOROLA a worldwide exclusive right and license under LICENSED
TRADEMARK to use LICENSED TRADEMARK in the merchandising of
LICENSED PRODUCT.
2.6 The exclusive rights and licenses granted
herein by MICROSEMI to MOTOROLA are exclusive only as to third
parties.
2.7 As provided herein, each party has the right
to have LICENSED PRODUCT made by a third party subcontractor,
provided all of the following conditions are met:
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2.7.1
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That such
subcontractor manufactures the LICENSED PRODUCT exclusively for
MOTOROLA or MICROSEMI, as the case may be, without having any right
to sell, use, lease, or otherwise dispose of such LICENSED PRODUCT
to any third party for such subcontractors account; and
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2.7.2
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That such
subcontractor has not been given any access to any TECHNICAL
INFORMATION of MOTOROLA or MICROSEMI as the case may be, except to
the extent necessary to perform the manufacturing of LICENSED
PRODUCT, and that such subcontractor has substantially agreed to
the obligations of confidentiality with respect to such TECHNICAL
INFORMATION as set forth in this Agreement.
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2.7.3
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That such
subcontractor has agreed with MOTOROLA or MICROSEMI, as the case
may be, to manufacture such LICENSED PRODUCT in accordance with the
standards of quality, performance and workmanship established
respectively by MOTOROLA or MICROSEMI.
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2.8 Notwithstanding anything to the contrary
herein stated, neither party shall be obligated nor required to
disclose to the other party any TECHNICAL INFORMATION which such
party may have acquired from a third party with respect to which
such party is obligated by contract not to disclose to
others.
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MOTOROLA - MICROSEMI
POWERMITE ®
TECHNOLOGY
AGREEMENT
Section 3 - Transfer of TECHNICAL
INFORMATION
3.1 MICROSEMI shall commence the transfer of
TECHNICAL INFORMATION to MOTOROLA within thirty (30) days
after the EFFECTIVE DATE of this Agreement, and shall use its best
efforts to complete such transfer within sixty (60) days after
such EFFECTIVE DATE. The transfer of each such TECHNICAL
INFORMATION shall be complete when all items of Appendix A
have been received by MOTOROLA, except for UPDATES, IMPROVEMENTS,
and those items conditioned by availability which will be
transferred if and when available. Any MICROSEMI TECHNICAL
INFORMATION added to Appendix A by MICROSEMI after the EFFECTIVE
DATE shall be transferred to MOTOROLA in tangible format within
sixty (60) days after MICROSEMI has added it to Appendix
A.
3.2 On a continuing basis during the term of
this Agreement, each party shall furnish UPDATES to the other party
within thirty (30) days after their first successful
implementation.
3.3 Notwithstanding the foregoing
Section 3.2, in the event that, during the term of this
Agreement, either party discovers any defect in a LICENSED PRODUCT
such that the LICENSED PRODUCT does not meet the data sheet
specification, such party shall routinely inform the other party of
such defect within thirty (30) days.
3.4 On a continuing basis during the term of
this Agreement, each party shall furnish IMPROVEMENT(s) to the
other party within sixty (60) days after their first
successful implementation.
3.5 During the term of this Agreement, each
party agrees to produce the LICENSED PRODUCT in compliance with
mutually agreed upon external package specifications as to
“form” and “fit.” Each party agrees not to
modify the agreed upon specifications in any way that could
adversely affect the external geometry, and the mechanical,
thermal, and electrical performance and ratings of the
POWERMITE ® PACKAGE. Each party agrees and understands that
there are no requirements with respect to the internal
specifications as to the “function” of the LICENSED
PRODUCT.
3.6 As of the EFFECTIVE DATE, the parties agree
to the external specifications as set forth in Appendix B of this
Agreement.
Section 4 - Technical
Assistance
4.1 Following the transfer of information
pursuant to Section 3.1, MOTOROLA shall have the right,
subject to the reasonable approval of MICROSEMI as to the specific
periods of attendance, to send its personnel to MICROSEMI’s
development and manufacturing facilities to receive technical
assistance relating to MICROSEMI TECHNICAL INFORMATION and the use
thereof in the manufacture of the related LICENSED PRODUCT. The
number of MOTOROLA personnel who may be sent to the facilities of
MICROSEMI, the schedule, and the agenda for such visits shall be
agreed upon in advance and coordinated by the Documentation
Managers for each party. Written information may be requested with
respect to MICROSEMI TECHNICAL INFORMATION considered on such a
visit and will be provided if reasonably available. Each party will
pay all of its own expenses incurred in connection with the
technical assistance as provided for in this Paragraph 4.1.
Additional technical assistance may be provided by mutual
agreement.
4.2 Following the transfer of UPDATE(S) OR
IMPROVEMENT(S) pursuant to Section 3.2 or 3.4, the receiving
party shall have the right, subject to the reasonable approval of
the transferring party, as to the specific periods of attendance,
to send its personnel to the transferring party’s development
and
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MOTOROLA - MICROSEMI
POWERMITE ®
TECHNOLOGY
AGREEMENT
manufacturing facilities to receive technical
assistance relating to UPDATE(S) or IMPROVEMENT(S) and the use
thereof in the manufacture of the related LICENSED PRODUCT. The
number of personnel of the receiving party who may be sent to the
facilities of the transferring party, the schedule, and the agenda
for such visits shall be agreed upon in advance and coordinated by
the Documentation Managers for each party. Written information may
be requested with respect to all UPDATE(S) or IMPROVEMENT(S)
considered on such a visit and will be provided if reasonably
available. Each party will pay all of its own expenses incurred in
connection with the technical assistance as provided for in this
Paragraph 4.2. Additional technical assistance may be provided by
mutual agreement.
4.3 Representatives and personnel of each party,
during the time they are present on the premises of the other
party, shall be subject to all rules and regulations prevailing on
such premises. Each party shall be responsible for the payment of
all compensation and expense of its respective representatives and
personnel. None of the representatives or personnel of either party
shall be considered, for any reason, to be an employee or agent of
the other.
4.4 Each party agrees that, if any person
connected with it, or assigned by it to work hereunder, or such
person’s legal representative, shall present any claim or
institute any suit or action against the other party, or their
directors, officers, agents, or employees, for any property damage
or personal injury, including death, connected with, related to, or
arising out of the performance of this Agreement, the party
associated with such person shall defend and indemnify the other
party, and their directors, officers, agents, and employees,
against any and all such claims, Suits, or actions.
Section 5 - Compensation
5.1 In consideration for the licenses and rights
granted herein, MOTOROLA shall pay MICROSEMI the sum of one hundred
thousand dollars ($100,000) within thirty days after the EFFECTIVE
DATE.
5.2 In further consideration for the licenses
and rights granted herein, MOTOROLA shall pay MICROSEMI the sum of
two hundred thousand dollars ($200,000) thirty (30) days after
MOTOROLA’s first production facility is qualified to sell
LICENSED PRODUCT.
5.3 In further consideration for the licenses
and rights granted herein, MOTOROLA grants to MICROSEMI the right
to purchase from MOTOROLA certain POWERMITE
®
packaging services governed by the
terms and conditions of the MOTOROLA - MICROSEMI POWERMITE
®
SERVICES AGREEMENT which shall
include, but not be limited to, the following terms:
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5.3.1
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MICROSEMI will
have the right to purchase the lesser of up to twenty percent
(20%) of the total installed POWERMITE
®
output capacity per week of MOTOROLA
facilities worldwide producing POWERMITE ® packages or up to five hundred thousand
(500,000) units per week, unless the parties agree in good
faith to a different quantity.
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5.3.2
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The price for
the assembly of such LICENSED PRODUCT shall be COSTLESS CHIP plus
five (5) percent, but shall not exceed seven cents ($.07) per
unit during the duration of such licenses and rights.
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5.3.3
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At the end of
each calendar quarter of production MOTOROLA shall calculate its
COST LESS CHIP for the previous quarter and provide a certification
of such cost to MICROSEMI. The prior quarter COST LESS CHIP plus
five (5) percent shall be the price for the POWERMITE
®
packages shipped during the current
quarter, up to, but not to exceed, seven cents ($.07) per unit.
This calculation process shall be repeated each quarter during
production.
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MOTOROLA - MICROSEMI
POWERMITE ®
TECHNOLOGY
AGREEMENT
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5.3.4
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MICROSEMI shall
provide MOTOROLA with chips in wafer form to be used in the
assembly of LICENSED PRODUCT(s) for MICROSEMI’s account as
provided herein.
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Section 6 - Commitments
6.1 Each party agrees to manufacture LICENSED
PRODUCT in accordance with the standards of quality, performance
and workmanship as established and as practiced by the other
party.
6.2 MOTOROLA and MICROSEMI agree to negotiate a
separate services agreement consistent with Section 5 for the
manufacture of LICENSED PRODUCT by MOTOROLA for MICROSEMI.
Notwithstanding anything to the contrary stated herein, the parties
agree the devices assembled by MOTOROLA for MICROSEMI, in
accordance with Section 5 of this Agreement, shall be limited
to rectifiers and diodes and shall expressly exclude transistors
and integrated circuits.
6.3 If, at any time after the EFFECTIVE DATE,
MOTOROLA elects to discontinue the manufacture of LICENSED PRODUCT,
MICROSEMI shall have the right to purchase any special equipment
and tooling used by MOTOROLA in the manufacture of LICENSED
PRODUCT. The parties agree to negotiate in good faith the purchase
price of any such special equipment and tooling.
6.4 If, at any time after EFFECTIVE DATE,
MOTOROLA elects to transfer the assembly of LICENSED PRODUCT to a
third party subcontractor, MOTOROLA agrees to exert reasonable,
good faith efforts to obtain the approval of such subcontractor to
assemble LICENSED PRODUCT under the terms herein specified or such
other terms as would be acceptable to MICROSEMI. In the event such
subcontractor does not agree to assemble LICENSED PRODUCT for
MICROSEMI, then MICROSEMI shall have the right to purchase from
MOTOROLA units of equipment or tooling reasonably necessary for
MICROSEMI to assemble the quantity of LICENSED PRODUCT that
MICROSEMI was buying from MOTOROLA, but no more than MOTOROLA
required to make such quantity of LICENSED PRODUCT, on the date of
such transfer to a third party. The parties agree to negotiate in
good faith the purchase price of any such equipment and
tooling.
6.5 MOTOROLA agrees to include a statement on
data sheets, advertising, and similar documents indicating that
POWERMITE ® is a registered trademark of, and used under, a
license from Microsemi Corporation.
Section 7 - Term, Termination and
Assignment
7.1 This Agreement shall become effective as of
the EFFECTIVE DATE, and shall remain in effect for five
(5) years from the EFFECTIVE DATE; provided, however, that
after the initial term of this Agreement, the Agreement will be
automatically renewed under the same terms and conditions for
additional one (1) year terms, unless a party hereto gives
notice six (6) months before the end of the initial term or
succeeding one (1) year term(s) to the other party of its
intention to allow the Agreement to expire. Upon expiration of this
Agreement, the transfer of TECHNICAL INFORMATION shall cease
forthwith, each party shall return to the other party all TECHNICAL
INFORMATION received from such other party, and the licenses of
Section 2 shall survive.
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MOTOROLA - MICROSEMI
POWERMITE ®
TECHNOLOGY
AGREEMENT
7.2 Either party may cancel this Agreement on
ninety (90) days written notice to the other party for failure
of the other party to fulfill any of its material obligations
hereunder; provided, however, that if during said ninety
(90) day period said other party shall have fulfilled said
obligations, th
