Exhibit 99.1
TECHNOLOGY LICENSE
AGREEMENT
This Technology License Agreement
(“Technology Agreement”) is entered into and effective
as of the 1st day of April, 2007 (the “Effective
Date”), by and between International Rectifier Corporation, a
company organized under the laws of the State of Delaware
(“IR”), and Vishay Intertechnology, Inc., a company
organized under the laws of Delaware (the
“Purchaser”). IR and the Purchaser each may be
referred to herein as a “Party” and collectively as the
“Parties.”
WHEREAS, the Parties have entered
into that certain Master Purchase Agreement, dated as of November
8, 2006, pursuant to which IR has agreed to sell to Purchaser and
Purchaser has agreed to purchase from IR the capital stock or other
equity interests of certain subsidiary corporations of IR and
certain assets of IR and certain of its subsidiaries used in
IR’s Power Control Systems business unit (as amended, the
“MPA”);
WHEREAS, IR designs, develops and
manufactures semiconductor devices and products for various power
applications, using technology which it has developed at
substantial expense, time, and effort;
WHEREAS, Purchaser desires to obtain
a license to the Licensed IP Rights; and
WHEREAS, IR is prepared to license
such Licensed IP Rights to Purchaser upon the terms and conditions
set forth herein;
NOW, THEREFORE, in consideration of
the mutual covenants and agreements set forth in this Technology
Agreement, and for other good and valuable consideration,
including, without limitation the valuable consideration set forth
in the MPA, the receipt and sufficiency of which are hereby
acknowledged, the Parties agree as follows:
Article 1—
Definitions
1.1
“Affiliate” means any person that, directly or
indirectly through one or more intermediaries, controls or is
controlled by or is under common control with the person
specified. For purposes of this definition, control of a
person means the power, direct or indirect, to direct or
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cause the direction of the
management and policies of such person, whether by contract or
otherwise.
1.2
“Licensed IP Rights” shall mean Licensed Patents and
Licensed Technology.
1.3
“Licensed Patents” means the patents, patent
applications and invention disclosures identified on Schedule
A , attached hereto and made a part hereof, as well as all
corresponding foreign patents (including certificates of invention,
utility models, industrial designs, and other patent equivalents),
provisional applications, patent applications and patents issuing
therefrom, as well as any division, continuation or continuation in
part, reissue, extension, reexamination, certification,
validation, revival or renewal of any such patent.
1.4
“Licensed Technology” means documented information and
data, know-how, copyrights, mask works, proprietary software,
technical information, trade secrets and other intellectual
property or rights identified on Schedule B
hereto.
1.5
“Licensed Products” means those products identified on
Schedule C , attached hereto, all subsequent versions
thereof in the scope of the PCS Business, and all other future
products of Purchaser within the scope of the PCS
Business.
1.6
“Unlicensed Intellectual Property” means those patents
identified on Schedule E , attached hereto.
1.7
All other capitalized terms not defined herein shall be defined as
set forth in the MPA.
Article 2 — Grants of
Licenses
2.1
IR hereby grants to Purchaser a non-exclusive, non-transferable
(subject to Section 8.5 hereof), perpetual, irrevocable,
world-wide, fully paid-up, royalty-free license, non-sublicensable,
except for the right to sublicense to its Affiliates, to use the
Licensed IP Rights to design, develop, prepare derivative works of,
make, have made, import, use, market, offer for sale, sell,
distribute, import and service Licensed Products.
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2.2
IR shall not assert or commence legal action against Purchaser, or
against any Affiliate of Purchaser or against the vendees of any of
them, for any claim of infringement, misappropriation or misuse of
any Technology owned by IR on the Effective Date, where such claim
is based upon the design, development, manufacture, use,
distribution, importation, offer for sale or sale by Purchaser, or
its Affiliates or vendees, of Licensed Products as they exist on
the Effective Date, and all subsequent versions thereof that do not
include any additional or different form or functionality, other
than Current R&D. For purposes of this Section 2.2 only,
Technology means any patents, documented information and data,
know-how, copyrights, mask works, proprietary software, technical
information, and trade secrets, any rights maturing from any
patent, copyright, or mask works applications existing on the
Effective Date, but excluding trademarks, service marks, logos or
the like, used by IR in the PCS Business on the Effective Date. For
purposes of this Section 2.2 only, Current R&D means all
intellectual property owned by IR which IR intended to use in the
PCS Business pursuant to research and development activity that is
currently in process and for which the PCS Business has already
expended development efforts and costs.
Article 3 — Licensed
Technology; Technical Assistance
3.1
Licensed Technology shall be disclosed in the language, form and
system of measurements in which it is available at IR at the time
of its disclosure to Purchaser. IR shall not be obligated
under this Technology Agreement to make up any special drawings,
specifications, translations, or other similar documents for
Purchaser.
3.2
Within one (1) year of the Effective Date, Vishay may request
technical assistance from IR relating to the Licensed
Technology. If at the time of request, IR or its Affiliates
has an employee with applicable knowledge, subject to availability
of such employee, IR agrees to make such employee available to
Purchaser on reasonable commercial terms.
3.3
During the Non-Competition Period, IR will negotiate with Purchaser
to license to the Unlicensed Intellectual Property for use in the
PCS Business to Purchaser on a case-by-case basis at the time the
license is granted on a most favored customer basis such as lower
royalty than competition and other more favorable conditions.
At the conclusion of the Non-Competition Period, IR will negotiate
in good faith with Purchaser concerning license
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arrangements with respect to the
Unlicensed Intellectual Property for use in the PCS Business on a
most favored customer basis at the time the license is granted such
as a lower royalty than competition and other more favorable
conditions.
Article 4 — Representations
and Warranties; Liability Disclaimer
4.1
IR represents and warrants that the Licensed IP Rights are owned by
IR and that IR has good and valid title to the Licensed IP
Rights.
4.2
IR represents and warrants that within the last five (5) years,
except as disclosed in Schedule D , (i) IR has not received
any written notice asserting any intellectual property
infringement, misappropriation or misuse relating to the Licensed
Technology in the PCS Business, and (ii) there are no pending, and
to the Knowledge of IR, threatened claims or proceedings against IR
contesting or challenging the title to, validity of or
enforceability of the Licensed IP Rights.
4.3
IR represents and warrants that to the Knowledge of IR, IR has the
right to grant to Purchaser the licenses granted hereunder to the
Licensed IP Rights.
4.4
IR represents and warrants that to the Knowledge of IR, the
Licensed IP Rights are free and clear of any and all liens and
security interests.
4.5
Except as expressly set forth herein, nothing in this document
shall be construed as: (i) a warranty or representation by IR as to
the validity or scope of any Licensed IP Rights; (ii) a warranty or
representation by IR that anything made, used, sold, or otherwise
disposed of under any license granted under this Technology
Agreement, or any other conduct, is or will be free from
infringement of patents, copyrights or inventions of third persons;
or (iii) conferring a right to use in advertising, publicity, or
otherwise any trademark or tradename of IR.
4.6
EXCEPT AS TO THOSE MATTERS EXPRESSLY COVERED BY THE REPRESENTATIONS
AND WARRANTIES IN THIS TECHNOLOGY AGREEMENT, (I) PURCHASER
ACKNOWLEDGES THAT IR IS PROVIDING THE LICENSED IP RIGHTS ON AN
“AS IS, WHERE IS” BASIS, AND THAT IR DISCLAIMS ALL
OTHER WARRANTIES, REPRESENTATIONS AND GUARANTIES, WHETHER EXPRESS
OR
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IMPLIED AND (II) PURCHASER
FURTHER ACKNOWLEDGES THAT IR IS MAKING NO REPRESENTATION OR
WARRANTY AS TO MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR
PURPOSE AND NO IMPLIED WARRANTIES WHATSOEVER.
4.7
EXCEPT FOR A BREACH OF ARTICLE 2, IN NO EVENT SHALL EITHER PARTY OR
ANY OF ITS AFFILIATES BE LIABLE TO THE OTHER PARTY OR ANY OTHER
PERSON FOR ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL, EXEMPLARY OR
PUNITIVE DAMAGES OF ANY KIND (INCLUDING WITHOUT LIMITATION
LOSS OF BUSINESS PROFITS, LOSS OF SAVINGS, LOSS OF BUSINESS
OPPORTUNITY, LOSS OF BUSINESS INFORMATION, BUSINESS INTERRUPTION,
DOWNTIME, COVER AND THE LIKE) ARISING OUT OF OR IN CONNECTION WITH
THIS AGREEMENT OR THE LICENSED IP RIGHTS, WHETHER BASED IN
CONTRACT, TORT (INCLUDING WITHOUT LIMITATION NEGLIGENCE) OR
OTHERWISE, EVEN IF SUCH PARTY OR ANY OF ITS AFFILIA
