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Exhibit
10.34
This Technology License Agreement
(“ TLA ”) is made the 20th day of May day of
2004 (“ Effective Date ”)
BETWEEN
ARM LIMITED whose registered
office is situated at 110 Fulbourn Road, Cambridge CB1 9NJ, England
(“ ARM ”);
and
HYNIX SEMICONDUCTOR INC. whose
principal place of business is situated at Youngdong Building 891,
Daechi-dong, Kangnam-gu, Seoul, Republic of Korea (“
HYNIX ”).
WHEREAS
LICENSEE has requested ARM and ARM has
agreed to license to LICENSEE certain ARM Technology (defined
below) on the following terms and conditions.
| 1.1 |
“ARM Compliant Product” means an integrated
circuit incorporating an ARM Compliant Core as defined in the
relevant Annex 1. |
| 1.2 |
“ARM Technology” means any or all, as the
context admits, of the technology identified in each Annex 1 and
any Updates thereto delivered by ARM to LICENSEE. |
| 1.3 |
“ASP” means the average sales price of an
ARM Compliant Product or other device which contains royalty
bearing ARM Technology, as the case may be, in a Quarter,
calculated by taking the figure for the aggregate of all invoices
for the distribution of such ARM Compliant Product or other device
which contains royalty bearing ARM Technology in such Quarter by
the entity exercising the licences to manufacture or have
manufactured under this TLA (notwithstanding that such distribution
may be between HYNIX and a Subsidiary of HYNIX or between
Subsidiaries of HYNIX), less; (i) any value added, turnover,
import or other tax, duty or tariff payable by law thereon; and
(ii) any freight and insurance costs included in the
invoiced price, and dividing it by the number of units of such ARM
Compliant Product or other device which contains royalty bearing
ARM Technology, as appropriate, accounted for under such
invoices. |
| 1.4 |
“Claim” means a written notice received by
ARM and claiming infringement of the Intellectual Property of a
third party by any of the ARM Technology and which demands that ARM
cease and desist from such claimed Intellectual Property
infringement. |
| 1.5 |
“Confidential Information” means; (i)
the ARM Technology and derivatives thereof (including any
translation, modification, compilation, abridgement or other form
in which the ARM Technology has been recast, transformed or
adapted) and any trade secrets relating to the ARM Technology;
(ii) any information designated in writing by either party,
by appropriate legend, as confidential; (iii) any
information which if first disclosed orally is identified as
confidential at the time of disclosure and is thereafter reduced to
writing for confirmation and sent to the other party within thirty
(30) days after its oral disclosure and designated, by appropriate
legend, as confidential; and (iv) the terms and conditions
of this TLA. |
| 1.6 |
“Customer” means any entity that has
contracted with LICENSEE for the design and manufacture of an ARM
Compliant Product for such entity. |
| 1.7 |
“Designer” means any entity sub-contracted
by LICENSEE to provide design resource to LICENSEE. |
| 1.8 |
“Intellectual Property” means any patents,
patent rights, trade marks, service marks, registered designs,
topography or semiconductor mask work rights, applications for any
of the foregoing, copyright, unregistered design right and any
other similar protected rights in any country. |
| 1.9 |
“LICENSEE” means HYNIX and any Subsidiaries
of HYNIX. |
| 1.10 |
“Manufacturer” means any entity
sub-contracted by LICENSEE to manufacture integrated circuits for
LICENSEE. |
| 1.11 |
“Quarter” means each calendar quarter ending
the 31st March, 30th June, 30th September and 31st December of each
year. |
| 1.12 |
“Subsidiary” means any company the majority
of whose voting shares is now or hereafter owned or controlled,
directly or indirectly, by a party hereto or any company a majority
of whose voting shares is now or hereafter owned or controlled,
directly or indirectly, by any of the aforementioned entities. A
company shall be a Subsidiary only so long as such control
exists. |
| 1.13 |
“Term” means the term for which the subject
ARM Technology is licensed to LICENSEE by ARM as specifically set
out in Section 7 of the relevant Annex 1. |
| 1.14 |
“Test House” means any entity sub-contracted
by LICENSEE to test integrated circuits for LICENSEE. |
| 1.15 |
“Trademarks” means the trademarks identified
in Section 6 of each Annex 1. |
| 1.16 |
“Trademark Guidelines” means the guidelines
for the use of ARM’s Trademarks as set out in Annex 2 and any
amendment thereto delivered to LICENSEE by ARM from time to time in
accordance with the provisions of Clause 2.9. |
| 1.17 |
“Updates” means any; (i) error
corrections developed by or for ARM; and (ii) functional
enhancements or other modifications developed by or for ARM (which
ARM in its discretion decides does not constitute a new product),
together with any Intellectual Property embodied
therein. |
ARM Technology
Licence
| 2.1 |
The ARM Technology shall be licensed to LICENSEE subject to the
relevant license terms identified in Section 2 of the relevant
Annex 1. |
Subcontracting
Design
| 2.2 |
Subject to the provisions of Clause 3 (Confidentiality),
LICENSEE may exercise the right, if granted in Section 2 of the
relevant Annex 1, to have ARM Compliant Products or other devices
which contain ARM Technology licensed in accordance with the terms
of this TLA, as the case may be, designed by any Designer, provided
that; (a) LICENSEE does not grant to the Designer any
license in respect of the ARM Technology for any other purpose; and
(b) that each Designer; |
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(i) |
is subject to contractual obligations of confidentiality in
respect of the ARM Confidential Information and ARM Technology
which are in accordance with the provisions of Clause
3.3; |
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(ii) |
is subject to a contractual obligation to use the ARM
Confidential Information and ARM Technology solely for the purpose
of supplying the designs of the ARM Compliant Products or other
devices which contain ARM Technology licensed in accordance with
the terms of this TLA, as the case may be, solely to LICENSEE;
and |
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(iii) |
is subject to a contractual obligation to return any ARM
Confidential Information and ARM Technology to LICENSEE on the
earlier of; (a) the completion of the design; and (b)
the end of the contractual confidentiality period (in the agreement
between LICENSEE and Designer) for the relevant ARM Confidential
Information or ARM Technology. |
If any Designer breaches the
provisions of Clauses 2.2(i) to 2.2(iii), LICENSEE agrees that such
breach shall be treated as a material breach of this TLA by
LICENSEE which shall entitle ARM to terminate this TLA in
accordance with the provisions of Clause 14.2 and LICENSEE shall
hold ARM harmless from and keep ARM
indemnified against all and
any loss, liability, costs, damages, expenses (including the fees
of lawyers and other professionals), suffered, incurred or
sustained as a result of or in relation to such breach.
Customer
Collaboration
| 2.3 |
Subject to the provisions of Clause 3 (Confidentiality),
LICENSEE may exercise the right, if granted in Section 2 of the
relevant Annex 1, to have ARM Compliant Products or other devices
which contain ARM Technology licensed in accordance with the terms
of this TLA, as the case may be, designed by any Customer provided
that; (a) LICENSEE does not grant to the Customer any
license in respect of the ARM Technology for any purpose other than
for collaborating on the design of ARM Compliant Products or other
devices which contain ARM Technology licensed in accordance with
the terms of this TLA, as the case may be, with LICENSEE and; and
(b) that each Customer; |
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(i) |
is subject to contractual obligations of confidentiality in
respect of the ARM Confidential Information and ARM Technology
which are in accordance with the provisions of Clause
3.4; |
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(ii) |
is subject to a contractual obligation to use the ARM
Confidential Information and ARM Technology solely for the purpose
of supplying the designs of the ARM Compliant Products or other
devices which contain ARM Technology licensed in accordance with
the terms of this TLA, as the case may be, solely to LICENSEE;
and |
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(iii) |
is subject to a contractual obligation to return any ARM
Confidential Information and ARM Technology to LICENSEE on the
earlier of; (a) the completion of the design; and (b)
the end of the contractual confidentiality period (in the agreement
between LICENSEE and Customer) for the relevant ARM Confidential
Information or ARM Technology. |
If any Customer breaches the
provisions of Clauses 2.3(i) to 2.3(iii), LICENSEE agrees that such
breach shall be treated as a material breach of this TLA by
LICENSEE which shall entitle ARM to terminate this TLA in
accordance with the provisions of Clause 14.2 and LICENSEE shall
hold ARM harmless from and keep ARM indemnified against all and any
loss, liability, costs, damages, expenses (including the fees of
lawyers and other professionals), suffered, incurred or sustained
as a result of or in relation to such breach.
Subcontracting
Manufacture
| 2.4 |
Subject to the provisions of Clause 3 (Confidentiality),
LICENSEE may exercise the right, if granted in Section 2 of the
relevant Annex 1, to have ARM Compliant Products or other devices
which contain ARM Technology licensed in accordance with the terms
of this TLA, as the case may be, manufactured by a Manufacturer
provided that; (a) LICENSEE does not grant to the
Manufacturer any license in respect of the ARM Technology for any
purpose other than for manufacturing ARM Compliant Products or
other devices which contain ARM Technology licensed in accordance
with the terms of this TLA, as the case may be, solely for
LICENSEE; and (b) that each Manufacturer; |
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(i) |
is subject to contractual obligations of confidentiality in
respect of the ARM Confidential Information and ARM Technology
which are in accordance with the provisions of Clause
3.2; |
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(ii) |
is subject to a contractual obligation to use the ARM
Confidential Information and ARM Technology solely for the purpose
of supplying units of the ARM Compliant Products or other devices
which contain ARM Technology licensed in accordance with the terms
of this TLA, as the case may be, solely to LICENSEE;
and |
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(iii) |
is subject to a contractual obligation to return any ARM
Confidential Information and ARM Technology to LICENSEE on the
earlier of; (a) the completion of the manufacture; and
(b) the end of the contractual confidentiality period (in
the agreement between LICENSEE and Manufacturer) for the relevant
ARM Confidential Information or ARM Technology. |
If any Manufacturer breaches
the provisions of Clauses 2.4(i) to 2.4(iii), LICENSEE agrees that
such breach shall be treated as a material breach of this TLA by
LICENSEE which shall entitle ARM to terminate this TLA in
accordance with the provisions of Clause 14.2 and LICENSEE shall
hold ARM harmless from and keep ARM
indemnified against all and
any loss, liability, costs, damages, expenses (including the fees
of lawyers and other professionals), suffered, incurred or
sustained as a result of or in relation to such breach.
Subcontracting
Testing
| 2.5 |
Subject to the provisions of Clause 3 (Confidentiality),
LICENSEE may exercise the right, if granted in Section 2 of the
relevant Annex 1, to have tested ARM Compliant Products or other
devices which contain ARM Technology licensed in accordance with
the terms of this TLA, as the case may be, by a Test House
provided that; (a) LICENSEE does not grant to the Test House
any license in respect of the ARM Technology for any purpose other
than for testing ARM Compliant Products or other devices which
contain ARM Technology licensed in accordance with the terms of
this TLA, as the case may be, solely for LICENSEE; and (b)
that each Test House; |
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(i) |
is subject to contractual obligations of confidentiality in
respect of the ARM Confidential Information and ARM Technology
which are in accordance with the provisions of Clause
3.5; |
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(ii) |
is subject to a contractual obligation to use the ARM
Confidential Information and ARM Technology solely for the purpose
of supplying units of the tested ARM Compliant Products or other
devices which contain ARM Technology licensed in accordance with
the terms of this TLA, as the case may be, solely to LICENSEE;
and |
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(iii) |
is subject to a contractual obligation to return any ARM
Confidential Information and ARM Technology to LICENSEE on the
earlier of; (a) the completion of the testing; and
(b) the end of the contractual confidentiality period (in
the agreement between LICENSEE and Test House) for the relevant ARM
Confidential Information or ARM Technology. |
If any Test House breaches
the provisions of Clauses 2.5(i) to 2.5(iii), LICENSEE agrees that
such breach shall be treated as a material breach of this TLA by
LICENSEE which shall entitle ARM to terminate this TLA in
accordance with the provisions of Clause 14.2 and LICENSEE shall
hold ARM harmless from and keep ARM indemnified against all and any
loss, liability, costs, damages, expenses (including the fees of
lawyers and other professionals), suffered, incurred or sustained
as a result of or in relation to such breach.
Intercompany
Matters
| 2.6 |
Any breach of this TLA by a Subsidiary of HYNIX shall entitle
ARM to terminate this TLA in accordance with the provisions of
Clause 14.2 as if HYNIX were the party in breach. Any termination
of this TLA in accordance with the provisions of Clause 14.2 shall
be effective in respect of HYNIX and all Subsidiaries. |
Any rights granted to any
Subsidiary of HYNIX hereunder shall automatically terminate upon
such Subsidiary of HYNIX ceasing to be a Subsidiary of
HYNIX.
In the event that a
Subsidiary of HYNIX is in breach of any of the terms of this TLA,
HYNIX shall hold harmless and indemnify ARM against all and any
loss, liability, costs, damages, expenses (including the reasonable
fees of lawyers and other professionals) suffered, as a result of
or in connection with such breach.
Licence
Restrictions
| 2.7 |
Except as specifically licensed in accordance with Clause 2.1,
LICENSEE acquires no right, title or interest in any ARM
Confidential Information, ARM Technology or any Intellectual
Property embodied therein. In no event shall the licenses granted
in accordance with Clause 2.1 be construed as granting LICENSEE,
expressly or by implication, estoppel or otherwise, a license to
use any ARM technology except the ARM Technology. |
Except as expressly licensed
in accordance with Clause 2.1, no right is granted to LICENSEE to
sublicense the rights granted to LICENSEE under this
TLA.
LICENSEE shall not use
or procure others to use any ARM Technology or ARM Confidential
Information; (i) for the purposes of determining if any
features, functions or processes provided by the ARM Technology or
disclosed by the ARM Confidential Information are covered by any
patents or patent applications owned by LICENSEE; or (ii) as
a reference for developing inventions in respect of which LICENSEE
or its agents will seek patent protection; (iii) for
developing technology or products which work around any of
ARM’s Intellectual Property licensed
hereunder; or (iv) as
a reference for modifying existing patents or patent applications
or creating any continuation, continuation in part, or extension of
existing patents or patent applications.
Intellectual Property
Notices
| 2.8 |
LICENSEE shall reproduce and not remove or obscure any notice
incorporated in the ARM Technology by ARM to protect ARM’s
Intellectual Property or to acknowledge the Intellectual Property
of any third party. LICENSEE shall incorporate and shall require
that any Designer, Customer, Manufacturer and Test House to which
any ARM Technology is provided in accordance with the terms of this
Agreement, incorporates corresponding notices and such other
markings and notifications as ARM may reasonably require on all
copies of the ARM Technology and any derivatives thereof (including
any translation, modification, compilation, abridgement or other
form in which the ARM Technology has been recast, transformed or
adapted) created by LICENSEE, Designer, Customer, Manufacturer or
Test House, as the case may be. |
ARM
Trademarks
| 2.9 |
ARM hereby grants to LICENSEE a non-transferable (subject to
Clause 16.3), non-exclusive, royalty-free, world-wide license to
use the Trademarks in connection with the promotion and sale of
products developed under the licences granted in this
TLA. |
LICENSEE shall use the
Trademarks, in accordance with the Trademark Guidelines. ARM shall
have the right to revise the Trademark Guidelines and Section 6 of
any Annex 1. Any such revisions shall be effective with respect to
printed materials and products to be produced or manufactured after
ninety (90) days from receipt of ARM’s written notice
specifying the revisions to LICENSEE.
Upon request from ARM,
LICENSEE shall submit samples of documentation, packaging, and
promotional or advertising materials bearing the Trademarks to ARM
so that ARM may verify compliance with the Trademark Guidelines. In
the event that any documentation, packaging, promotional or
advertising material fails to comply with the Trademark Guidelines,
ARM shall notify LICENSEE and LICENSEE shall rectify such
documentation, packaging, and promotional or advertising materials
so as to comply with the Trademark Guidelines and cease using any
such non-compliant materials as soon as reasonably possible after
the date of ARM’s notice.
LICENSEE agrees to provide
reasonable assistance to ARM in maintaining the validity of the
Trademarks. Upon ARM’s request, LICENSEE shall provide, free
of charge, a reasonable number of samples of the use of the
Trademarks for the purpose of trademark registration or renewal.
Upon request, LICENSEE shall at ARM’s expense execute any
documents required by the applicable laws of any jurisdiction for
the purpose of either or both registering and maintaining the
Trademarks.
Except as provided by the
terms of this TLA, LICENSEE shall not use or register, in any
jurisdiction, any trademark, service mark, device or logo or any
word or mark confusingly similar to any of the
Trademarks.
Restricted
Disclosure
| 3.1 |
Except as expressly provided by Clauses 3.2, 3.3, 3.4, 3.5, 3.6
and 3.7, each party shall maintain in confidence the Confidential
Information disclosed by the other party and apply security
measures no less stringent than the measures that such party
applies to its own like information, but not less than a reasonable
degree of care, to prevent unauthorised disclosure and use of the
Confidential Information. The period of confidentiality shall be
indefinite with respect to each party’s Confidential
Information. |
Permitted Disclosure to
Manufacturers
| 3.2 |
LICENSEE may
disclose the (i) the ARM Technology marked “M” in any
Annex 1, and any translation, modification, compilation,
abridgement or other form in which the ARM Technology marked
“M” has been recast, transformed or adapted; (ii) any
GDSII created by or for LICENSEE from the synthesizable RTL
licensed under any Annex 1; and (iii) any masks created from the
GDSII by or for LICENSEE, to a Manufacturer pursuant to the
exercise of any have manufactured rights (if granted in Section 2
of the relevant Annex 1) solely for the purposes of having ARM
Compliant Products manufactured for LICENSEE by such third party
and under a non-disclosure
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agreement containing
substantially similar terms to this Clause 3, except that the
confidentiality period for each deliverable shall be, at a minimum,
of five (5) years from the date of disclosure.
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Permitted Disclosure to
Designers
| 3.3 |
LICENSEE may disclose the ARM Technology marked “D”
in any Annex 1 and any translation, modification, compilation,
abridgement or other form in which the ARM Technology marked
“D” has been recast, transformed or adapted, to a
Designer pursuant to the exercise of the have designed
rights (if granted in Section 2 of the relevant Annex 1) solely for
the purposes of having ARM Compliant Products designed for LICENSEE
by such third party and under an non-disclosure agreement
containing substantially similar terms to this Clause 3, including
the confidentiality period for each deliverable determined in
accordance with the provisions of Clause 3.1. |
Permitted Disclosure to
Customers
| 3.4 |
LICENSEE may disclose the ARM Technology marked
“CS” in any Annex 1 to a Customer solely for the
purposes of collaborating on the design of ARM Compliant Products
for such third party and under an non-disclosure agreement
containing substantially similar terms to this Clause 3, including
the confidentiality period for each deliverable determined in
accordance with the provisions of Clause 3.1. |
Permitted Disclosure to
Test Houses
| 3.5 |
LICENSEE may disclose (i) the ARM Technology marked
“T” in any Annex 1 and any translation, modification,
compilation, abridgement or other form in which the ARM Technology
marked “T” has been recast, transformed or adapted; and
(ii) any ATPG test vectors created by or for LICENSEE from the
synthesizable RTL to a Test House pursuant to the exercise
of the have tested rights (if granted in Section 2 of the relevant
Annex 1) solely for the purposes of having ARM Compliant Products
tested for LICENSEE by such third party and under an non-disclosure
agreement containing substantially similar terms to this Clause 3,
except that the confidentiality period for each deliverable shall
be, at a minimum, five (5) years from the date of
disclosure. |
| 3.6 |
Other Permitted Disclosures |
Either party may disclose
Confidential Information received from the other party in the
following circumstances;
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(i) |
disclosure to third parties to the extent that the Confidential
Information is required to be disclosed pursuant to a court order
or as otherwise required by law, provided that the party required
to make the disclosure promptly notifies the other party upon
learning of such requirement and has given the other party a
reasonable opportunity to contest or limit the scope of such
required disclosure (including but not limited to making an
application for a protective order); |
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(ii) |
disclosure to nominated third parties under written authority
from the original discloser of the Confidential Information;
and |
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(iii) |
disclosure to the receiving party’s legal counsel,
accountants or professional advisors to the extent necessary for
them to advise upon the interpretation or enforcement of this
Agreement. |
Permitted Disclosure of
LICENSEE Confidential Information
| 3.7 |
LICENSEE royalty reports may be disclosed in confidence to
ARM’s financial and legal advisors. In addition, ARM may
disclose the total unit sales, from time to time, of ARM Compliant
Products and any other devices which contain royalty bearing ARM
Technology, provided that the unit sales of such products by
LICENSEE are not separately i |
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