INTEL 8086/80186 INTELLECTUAL PROPERTY SUBLICENSE AGREEMENT
This Agreement is entered into on March 30, 1999 ("Effective Date") by and
between VAutomation Incorporated, having a place of business at 402 Amherst
Street Nashua NH and Pixelworks, Inc. having a place of business at Tualatin,
Oregon ("Sublicensee").
The parties agree as follows:
1.0 DEFINITIONS
1.1 "Licensed Product" shall mean a semiconductor device that (1)
includes an 8086 Core, and 8088 Core, an 80C186 Core or an 80C188 Core, (2)
is covered by at least one valid claim of a Licensed Intel Patent, (3)
contains integrated circuits other than the an 8086 Core, a 8088 Core, 80C186
Core or the 80C188 Core that provide additional functionalities other than
those performed by the core, (4) is not substantially pin compatible with
Intel's 80186/80188 family of microprocessors, and (5) is not an Imitation of
any Intel microprocessors including the 80286, 80386, 80486, Pentium, Pentium
Pro, and 80960.
1.2 "Licensed Intel Patents" shall mean all Intel patents that
would be infringed by the manufacture, use or sale of an 8086 Core, 8088
Core, 80C186 Core or 80C188 Core without an appropriate license from Intel.
1.3 "Imitation" shall mean a product in hardware or software or a
combination thereof, which can compatibly execute substantially all of the
instruction set of a specific family of Intel microprocessors to achieve
substantially the same result as such family of Intel microprocessors, or is
substantially pin compatible with such family of Intel microprocessors.
1.4 "80C186" shall mean a microprocessor that has all the features,
properties and characteristics of one of Intel's 80C186 family of
microprocessors as described in Intel's databook entitled "Embedded
Microprocessors," 1995 edition.
1.5 "80C186 Core" shall mean an integrated circuit as described in
Attachment A that (1) is an 80C186, but excluding its pad ring, packaging and
associated input/output circuits, and (2) can be manufactured from
VAutomation's V186 HDL model of the 80C186 Core and 80C188 Core.
1.6 "80188" shall mean a microprocessor that has all the features,
properties and characteristics of one of Intel's 80C188 family of
microprocessors as described in Intel's databook entitled "Embedded
Microprocessors," 1995 edition.
1.7 "80C188 Core" is based on the 80C186 Core with an eight (8) bit
external bus versus a sixteen (16) bit bus and shall mean an integrated circuit
that (1) is an 80C188, but excluding the pad ring, packaging and associated
input/output circuits, and (2) can be manufactured from VAutomation's V186 HDL
model of the core.
[**] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
1.8 "8086" shall mean a microprocessors that has all the features,
properties and characteristics of one of Intel's 8086 family of microprocessors
as described in Intel's databook.
1.9 "8086 Core" shall mean an integrated circuit as described in
Attachment A that (1) is an 8086, but excluding its pad ring, packaging and
associated input/output circuits, and (2) can be manufactured from VAutomation's
V8086 HDL model of the 8086 Core.
1.10 "8088" shall mean a microprocessor that has all the features,
properties and characteristics of one of Intel's 8088 family of microprocessors
as described in Intel's databook.
1.11 "8088 Core" shall mean an integrated circuit as described in
Attachment A that (1) is an 8086, but excluding its ring, packaging and
associated input/output circuits, and (2) can be manufactured from VAutomation's
V8086 HDL mode of the 8086 Core.
1.12 "Intel" shall mean Intel Corporation, having a place of business
at 5000 West Chandler Blvd. Chandler AZ
2.0 LICENSES
2.1 VAutomation grants Sublicensee a non-exclusive, worldwide, royalty
bearing license, without the right to further sublicense, to use, make, have
made, sell, offer to sell and import Licensed Products for the term o f this
Agreement.
2.2 The license grant of Section 2.1 covers only the products of the
Sublicensee, and is not intended to cover Sublicensee's foundry activities for
third parties. For purposes of determining whether a product which Sublicensee
develops with or acquires from a third party is, in fact, a Licensed Product,
the parties agree that notwithstanding anything herein to the contrary, Licensed
Products shall only include products which are:
(a) Sold only under Sublicensee's name; or
(b) designed and developed by or in association with third
parties or acquired by Sublicensee; provided that at least ninety percent (90%)
of the total number of units of such product which are manufactured by
Sublicensee are sold by Sublicensee under its own name and to customers other
that the party(ies) with which it developed or from which it acquired such
product (directly or indirectly) or on such party s(ies) behalf.
2.3 Sublicensee understands that Intel may, without consultation with
or consent from VAutomation, terminate this Agreement if and when Sublicensee
files a patent infringement suit against Intel where the patent relates to
technology contained within the 8086, 8088, 80C186, or 80C188.
3. COMPENSATION
3.1 Upon execution of this agreement, Sublicensee shall pay
VAutomation a fee of 25,000.
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SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
3.2 In addition to the fee described in Section 3.1, Sublicensee shall
pay VAutomation a running royalty for each unit of Licensed Product sold by
Sublicensee:
Unit Volume Per Unit Royalty
----------- ----------------
1 - 500,000 [**]
500,000 + [**]
For royalty calculation purposes, if a unit of Licensed Product
incorporates more than one 8086 Core, 8088 Core, 80C186 Core and/or 80C188 Core,
Sublicensee shall pay VAutomation a royalty for each core incorporated in the
Licensed Product.
3.3 Within thirty (30) days following the end of each calendar
quarter, Sublicensee shall wire transfer, in United States Dollars, the full
amount of royalties due for units of Licensed Product sold by Sublicensee with
respect to such quarter to an account specified by VAutomation. Simultaneously
with paying such royalties, Sublicensee shall submit a report, whether or not
any royalties are due, in a form reasonably acceptable to VAutomation, which
shall be certified by an authorized representative of Sublicensee and which
shall state, by individual Licensed Product, the number of each Licensed Product
sold by Sublicensee, the number of Licensed Cores included in each such Licensed
Product and the royalties due to VAutomation thereon. An example of this report
is given in Attachment B.
3.4 All payments shall be made free and clear without deduction for
any and all present and future taxes imposed by any taxing authority. In the
event that Sublicensee is prohibited from making such payments unless such
deductions are made or withheld therefrom, then Sublicensee shall pay such
additional amounts as are necessary in order that the net amounts received by
VAutomation, after such deduction or withholding, equal the amount which would
have been received if such deduction or withholding had not occurred.
Sublicensee shall promptly furnish VAutomation with a copy of an official tax
receipt or other appropriate evidence of any taxes imposed on payments made
under this Agreement, including taxes made on any additional amounts paid. In
cases involving taxes or duties imposed by any taxing authority on or with
respect to this Agreement other than (1) taxes referred to above, and (2) income
taxes imposed on VAutomation for payments received from Sublicensee under this
Agreement, including but not limited to sales and use taxes, stamp taxes, value
added taxes, property taxes, the costs of such taxes or duties shall be borne by
the Sublicensee. In the event that such taxes or duties are legally imposed
initially on VAutomation or VAutomation is later assessed by any taxing
authority, then VAutomation will be promptly reimbursed by Sublicensee for such
taxes or duties plus any interest and penalties suffered by VAutomation.
3.5 Sublicensee agrees that any payments required under the terms of
this Agreement which are not paid when due will accrue interest at the lesser
of: (i) the prime lending rate established by Citibank, New York plus 5%, or
(ii) the highest rate permitted by applicable law; such interest commencing to
accrue fifteen (15) days after the due date as established by this Agreement.
The right to collect interest on such late payments shall be in addition to any
other rights that VAutomation may have.
[**] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
4. AUDIT RIGHTS AND OBLIGATIONS
4.1 Sublicensee agrees to make and maintain for five (5) years after
the last payment under this Agreement is due, sufficient books, records and
accounts regarding Sublicensee's manufacturing activities in order to calculate
and confirm Sublicensee's royalty obligations under Section 3.0
4.2 Each of VAutomation and Intel shall have the right to have its
independent third party accounting firm to audit Sublicensee's compliance with
this Agreement upon reasonable notice. The auditor will notify Intel and/or
VAutomation if the Sublicensee is in compliance with this Agreement, and if not
in compliance, what the correct payment should have been. If such audit
discloses any non-compliance, the parties agree to promptly remedy the situation
and pay/reimburse monies as required and failure to so remedy the non-compliance
will be a ground for Intel and/or VAutomation to terminate the license.
Additionally, if such audit discloses any non-compliance in the form of
underpayment(s) of more than five percent (5%) of the royalties required to be
paid, Sublicensee shall reimburse Intel or VAutomation (as appropriate) for all
costs and expenses related to such audit. In no event shall an audit under this
Section 4.2 be requested more frequently than once by VAutomation, and once by
Intel, every twelve (12) months.
5. WARRANTY, LIMITATIONS AND INDEMNIFICATION
5.1 VAutomation warrants that the Licensed Cores and the use and
copying of the Licensed Cores as permitted hereunder will not infringe upon or
violate any copyright or trade secret of any third party; and that the use of
the Licensed Cores as permitted hereunder to use, make, have made, sell and
import the Licensed Products shall not infringe upon or violate any of the
Licensed Intel Patents.
5.2 Nothing contained in this Agreement shall be construed as:
(a) a warranty or representation by Intel as to the validity or
scope of any class or type of Licensed Intel Patents; or
(b) a warranty or representation that any manufacture, sale,
lease, use or other disposition of Licensed Products hereunder will be free from
infringement of any Intel patents other than those under which licenses have
been granted hereunder; or
(c) an agreement to prosecute actions or suits against third
parties for infringement or conferring any right to bring or prosecute actions
or suits against third parties for infringement; or
(d) conferring any right to use in advertising, publicity, or
otherwise, any trademark, trade name or names, or any contraction, abbreviation
or simulation thereof, of either party; or
(e) conferring by implication, estoppel or otherwise, upon any
party licensed hereunder, any license or other right under any patent,
copyright, maskwork, trade secret, trademark, or other intellectual property
right except the licenses and rights expressly granted hereunder; or
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SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
(f) an obligation to furnish any technical information or
know-how related to the Licensed Intel Patents.
5.3 VAutomation will defend, at its expense, and will indemnify
Sublicensee against any loss, cost, expense or liability arising out of any
claim by a third party against Sublicensee asserting or involving a breach of
the representation and warranty made in Section 5.2 above. VAutomation's
obligations under this Section shall be contingent on Sublicensee's providing
to VAutomation (i) prompt written notice of such claim, (ii) sole control and
authority over the defense and settlement thereof, and (iii) reasonable
information and assistance to settle and/or defend any such claim or action.
5.4 If an injunction or order is obtained against Sublicensee's use of
any Licensed Core or distribution of Licensed Products, or if VAutomation
determines that any Licensed Core or Licensed Product is likely to become the
subject of a claim of infringement or violation of a patent, copyright or trade
secret of a third party, VAutomation may (but need not), in its sole discretion,
(a) procure for Sublicensee the right to continue using such Licensed Core and
distributing such Licensed Products, or (b) replace or modify the same so that
it becomes noninfringing provided such modification or replacement does not
materially and adversely affect the specifications for or the use or operation
of Licensed Core and/or Licensed Products by Sublicensee, or (c) accept the
return of the Licensed Cores and/or Licensed Products and refund the fees paid
hereunder with respect thereto.
5.5 Notwithstanding anything above to the contrary, VAutomation shall
have no liability or obligation to defend and/or indemnify if the alleged
infringement or violation is based upon: (a) the combination of Licensed Cores
or Licensed Products with any product or technology not furnished by VAutomation
to the extent such combination causes the infringement or violation; (b) the
modification of Licensed Cores and/or Licensed Products other than by
VAutomation to the extent such modification causes the infringement or
violation; or (c) compliance with Sublicensee's specifications, designs or
instructions.
5.6 This Section 5.0 sets forth VAutomation's sole liability, and
Sublicensee's sole remedy, arising out of any actual or alleged infringement
or violation of third party intellectual property rights in connection with
the Licensed Cores and the Licensed Products. EXCEPT AS EXPRESSLY SET FORTH
HEREIN, VAUTOMATION DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, WITH
RESPECT TO THE LICENSED CORES AND THE LICENSED PRODUCTS, INCLUDING WITHOUT
LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR ANY
PARTICULAR PURPOSE, NON-INFRINGEMENT AND TITLE.
5.7 Sublicensee agrees to defend or at its option settle any suit or
proceeding brought against VAutomation and/or Intel concerning Sublicensee's
manufacturing or marketing of Licensed Products, except for claims for which
VAutomation is obligated to provide defense and indemnity as provided in
Sections 5.3 and 5.5 above. Sublicensee's obligations under this Section shall
be contingent on VAutomation providing to Sublicensee (i) prompt written notice
of such claim, (ii) sole control and authority over the defense and settlement
thereof, and (iii) reasonable information and assistance to settle and/or defend
any such claim or action.
[**] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
6. CONFIDENTIALITY
The Licensed Cores contain and constitute valuable, confidential and
proprietary information of VAutomation. Sublicensee shall take all
reasonable steps to protect the value and confidentiality of the Licensed
Cores, including without limitation limiting disclosure thereof to employees
who have agreed to protect their value and confidentiality and who need
access thereto to exercise Sublicensee's rights under this Agreement.
Sublicensee acknowledges that failure to protect the value and
confidentiality of the Licensed Cores will give rise to irreparable injury to
VAutomation, in adequately compensable in damages.
7. TERM AND TERMINATION
7.1 The term of this Agreement shall commence as of the date first set
forth above and shall continue until November 6, 2006, unless sooner terminated
as provided herein.
7.2 Either party may terminate this Agreement if the other party
commits any material breach or default and fails to provide an acceptable remedy
of such breach or default within ten (10) days (in the event of a failure to pay
amounts due) or thirty (30) days (in all other cases) after written notice of
such breach or default from the non-breaching or non-defaulting party. Without
limiting the generality of the foregoing, any failure to meet the obligations of
Section 3.0 shall be considered a material breach of this agreement.
7.3 Either party may terminate this Agreement by written notice to the
other upon termination of that certain License Agreement No. 1096TAC004 between
Intel and VAutomation dated November 6, 1996.
7.4 After expiration or termination of this Agreement, all provisions
relating to payment shall survive until completion of required payments,
including without limitation any payments due with respect to Licensed Products
sold after the termination or expiration of this Agreement. In addition, all
provisions regarding indemnification, warranty, liability and limits thereon,
and confidentiality and/or protection of proprietary rights and trade secrets
shall survive indefinitely.
8. GOVERNING LAW
This Agreement and matters connected with its performance shall be
governed by, construed, and interpreted in accordance with the laws of the State
of Delaware, without reference to its conflict of laws provisions.
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SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
9. PUBLICITY
Sublicensee may not use the Intel's name in advertisements or any other
marketing or publicity activities, nor otherwise disclose the existence or
content of this Agreement without the Intel's prior written consent.
10. THIRD PARTY BENEFICIARY
Sublicensee understands and agrees that Intel Corporation shall be
considered an intended third party beneficiary with the right to enforce the
provisions of this Agreement.
11. NOTICES
All notices required or permitted to be given hereunder shall be in
writing and shall be delivered by hand, or if dispatched by prepaid air courier
or by registered or certified airmail, postage prepaid, addressed as follows:
If to VAutomation If to Sublicensee
----------------- -----------------
VAutomation, Incorporated Pixelworks, Inc.
402 Amherst Street 8100 SW Nyberg Road, Suite 100
Nashua, NH 03063 Tualatin, OR 97062
Attn: President Attn: President
12. ASSIGNMENT
Neither this Agreement nor any right or obligation hereunder is
assignable by Sublicensee, whether in conjunction with a change in ownership,
merger, acquisition, the sale or transfer of all, substantially all, or any
portion of Sublicensee's business or assets or otherwise, either voluntarily, by
operation of law, or otherwise, without the prior written consent of
VAutomation, such consent not to be unreasonably withheld. Any such purported
assignment or transfer shall be deemed a breach of this Agreement and shall be
null and void.
13. RELATIONSHIP OF THE PARTIES
Nothing in this Agreement shall be construed to make the parties partners
or joint venturers or to make either party liable for the obligations, acts,
omissions or activities of the other.
14. ENTIRE AGREEMENT AND WAIVER
This Agreement is intended to be the entire agreement between the parties
with respect to matters contained herein, and supersedes all prior or
contemporaneous agreements, discussions and negotiations with respect to those
matters. No waiver of any breach or default shall constitute a waiver of any
subsequent breach or default.
15. SEVERABILITY
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SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
If any provision of this Agreement is held illegal, void or
unenforceable, to any extent, in whole or in part, as to any situation or
person, the balance shall remain in effect and the provision in question shall
remain in effect as to all other persons or situations, as the case may be.
AGREED:
VAutomation, Inc. Sublicensee
/s/ Eric Ryherd /s/ Hans H. Olsen
-------------------------- ---------------------------
Signature Signature
Hans H. Olsen
-------------------------- ---------------------------
Eric Ryherd Printed Name
Vice President
-------------------------- ---------------------------
President Title
3-30-1999 3-30-1999
-------------------------- ---------------------------
Date Date
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SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
ATTACHMENT A
80C186 CORE DEFINITION
Architectural Overview
The 80C186 shares a common base architecture with the 8086, 8088, 80186, 80286,
Intel386-TM- and Intel486-TM- processors. The 80C186 Core maintains full
object-code compatibility with the 8086/8088 family of 16-bit microprocessors.
The 80C186 Core incorporates two separate processing units: an Execution Unit
(EU) and a Bus Interface Unit (BIU). The Execution Unit executes
instructions; the Bus Interface Unit fetches instructions, reads operands and
writes results. The two units can operate independently of one another and
are able, under most circumstances, to overlap instruction fetches and
execution. The two units interface via a six-byte prefetch queue.
Execution Unit
The Execution Unit has a 16-bit Arithmetic Logic Unit (ALU) and eight 16-bit
general purpose registers. The ALU performs 8-bit or 16-bit arithmetic and
logical operations. It provides for data movement between registers, memory
and I/O space.
The Execution Unit executes all instructions, provides data and address to
the Bus Interface Unit. All registers aud data path in the Execution unit
are 16 bits wide for fast internal transfer. The Execution Unit does not
connect directly to the system bus. It obtains instructions from the
prefetch queue maintained by the Bus Interface Unit.
Bus Interface Unit
The Bus Interface Unit fetches instruction, reads operands and writes
results. Tills unit executes all external bus cycles. The Bus Interface Unit
consists of the segment registers, the Instruction Pointer, the prefetch
queue and several miscellaneous registers. The Bus Interface Unit transfers
data ato and from the Execution unit on the ALU data bus.
The Bus Interface Unit performs a 20-bit physical address calculation that
allows the Execution Unit to access the full mega-byte of memory space.
Instruction Set
The format of the 80C186 Core instruction set consists of an 8-bit operation
code (opcode) and the variable length operands. Nearly every instruction can
operate on either byte or word data. Register, memory, and immediate operands
can be specified interchangeably in most instructions. Immediate values just
serve as source operands and not destination operands. Memory variables can be
manipulated (added to, subtracted from, shifted, compared) without being moved
into and out of registers.
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SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
ATTACHMENT A (CONTINUED)
Addressing Modes
The 80C186 Core access instruction operands in several ways. Operands can be
contained either in registers, in the instruction itself, in memory or at I/O
ports. Addresses of memory and I/O ports operands can be calculated in many
ways. These addressing modes greatly extend the flexibility and convenience of
the instruction set.
8086 CORE DEFINITION
The 8086 Core is a 16-bit microprocessor with the following features:
Direct Addressing Capability 1 Mbyte of Memory
MULTIBUS System Compatible interface
14 Word, by 16-Bit Register Set with Symmetrical Operations
24 Operand Addressing Modes
Bit, Byte, Word and Block Operations
8 and 16-Bit Signed and Unsigned Arithmetic in Binary or Decimal Including
Multiply and Divide
8088 CORE DEFINITION
The 8088 Core is an 8-bit microprocessor with attributes of both 8-bit and
16-bit microprocessors and with the following features:
8-Bit Data Bus Interface and 16-Bit Internal Architecture
Direct Addressing Capability to 1 Mbyte of Memory
Direct Software Compatibility with 8086 CPU
14-Word by 16-Bit Register Set with Symmetrical Operations
24 Operand Addressing Modes
Byte, Word, and Block Operations
8-Bit and 16-Bit Signed and Unsigned Arithmetic in Binary or Decimal, including
Multiply and Divide
[GRAPHIC]
This graphic consists of a simplified functional block diagram of the Intel
80C186 and the 8086 soft core.
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SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
ATTACHMENT B
QUARTERLY 8086/80186 INTEL INTELLECTUAL PROPERTY SUBLICENSE REPORT
Sublicensee:
------------------------------------------------------------------------------
Licensed Product V8086/V186 Units Sold Comments
IC Name instances per IC
------------------------------------------------------------------------------
------------------------------------------------------------------------------
------------------------------------------------------------------------------
------------------------------------------------------------------------------
Total instances sold this quarter
------------------------------------------------------------------------------
Total instances sold this quarter:
Total instances sold to date:
Royalty due per instance:
Royalty due:
Certified by:
Signature:_______________________
Name:__________________ Title:________________ Date:______________
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SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
Intel 8086/80186 Intellectual Property Sublicense Agreement - VAutomation Inc. and Pixelworks Inc.
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