PATENT CROSS LICENSE AGREEMENT
BETWEEN
SANDISK CORPORATION AND SHARP CORPORATION
This agreement ("Agreement") is made by and among SanDisk Corporation,
a Delaware corporation, having an office at 140 Caspian Court, Sunnyvale,
California 94089, U.S.A. (hereinafter referred to as "SanDisk"), and Sharp
Corporation, a Japanese corporation, having an office at 22-22 Nagaike-Cho,
Abeno-Ku, Osaka 545 Japan ("SHARP").
WITNESSETH
WHEREAS, SanDisk and Sharp each own patents and patent applications
covering inventions pertinent to the design and manufacture of flash memory and
other semiconductor products; and
WHEREAS, SanDisk and Sharp are both engaged in their respective
continuing programs of research and development of flash memory related
technology, which will result in new discoveries and inventions many of which
will become the subject of new patent applications and patents; and
WHEREAS, SanDisk and Sharp each want to respect the technology
contributions of the other and want to increase their freedom to design and
manufacture their own new products without infringing the rights of the other
under any patent or patent application owned or controlled by the other;
NOW, THEREFORE, in consideration of the mutual covenants and promises
contained herein, the parties agree as follows:
1. DEFINITIONS.
1.1a "Subsidiary" shall mean any corporation, company or other
entity more than fifty percent (50%) of whose outstanding shares or stock
entitled to vote for the election of directors (other than any shares or stock
whose voting rights are subject to restriction) is owned or controlled by either
SanDisk or Sharp, directly or indirectly.
1.2 "Effective Date" shall be the date on which this Agreement
is executed by Sharp.
1.3 "Integrated Circuit Products" shall mean a unitary
electronic circuit, the active circuit elements of which are fabricated of
silicon semiconductive material, such device being in the form of a separate
discrete device, or integral with a silicon wafer and severable therefrom.
1.3a "Flash Memory Integrated Circuit" shall mean a
non-volatile memory integrated circuit that is electrically programmable and
electrically erasable, and consists of (1) flash
memory cells, each of which has a floating gate and utilizes no more than two
different floating gate charge levels representing no more than one bit of
information, and (2) any on-chip control, I/O, and other support circuitry
necessary to the operation of the memory integrated circuit, in both wafer and
chip form.
1.4 "MLC Flash Memory Integrated Circuit" shall mean a
non-volatile memory integrated circuit that is electrically programmable and
electrically erasable, and consists of (1) flash memory cells, each of which has
a floating gate and utilizes at least three different floating gate charge
levels representing more than one bit of information, and (2) any on-chip
control, I/O, and other support circuitry necessary to the operation of the
memory integrated circuit, in both wafer and chip form.
1.5 "Flash Memory Device" shall mean a memory device which
consists of one or more Flash Memory Integrated Circuits with the
housing/packaging and any supporting means therefor.
1.6 "MLC Flash Memory Device" shall mean a memory device which
consists of one or more MLC Flash Memory Integrated Circuits with the
housing/packaging and any supporting means therefor.
1.7a "Flash Memory System" shall mean an integrated circuit
memory system (including hardware and/or software), which contains (i) one or
more interconnected Flash Memory Devices or Flash Memory Integrated Circuits,
(ii) in-system control, I/O and other support circuit(s) that are (a)
interconnected with the Flash Memory Devices or Flash Memory Integrated
Circuits, and (b) necessary to the operation of the memory system, with or
without the housing/packaging and supporting means therefor.
1.7b "MLC Flash Memory System" shall mean an integrated
circuit memory system (including hardware and/or software), which contains (i)
one or more interconnected MLC Flash Memory Devices or MLC Flash Memory
Integrated Circuits, (ii) in-system control, I/O and other support circuit(s)
that are (a) interconnected with the MLC Flash Memory Devices or MLC Flash
Memory Integrated Circuits, and (b) necessary to the operation of the memory
system, with or without the housing/packaging and supporting means therefor.
1.8 "Triple-poly Flash Memory Device" shall mean either a
Flash Memory Device or a MLC Flash Memory Device in which the Flash Memory
Integrated Circuit(s) or the MLC Flash Memory Integrated Circuit(s), as the case
may be, utilizes poly-to-poly erase and is manufactured on a semiconductor
fabrication process which utilizes three layers of polysilicon.
1.8a "Triple-Poly Flash Memory Product" shall mean either a
Triple-poly Flash Memory Device, a Flash Memory System, or a MLC Flash Memory
System in which Triple-poly Flash Memory Devices are included.
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1.8b "Etox Flash Product" shall mean (1) a Flash Memory Device
or a MLC Flash Memory Device which utilizes poly to source/substrate erase or
program; or (2) a Flash Memory System or MLC Flash Memory System in which all
Flash Memory Devices and/or MLC Flash Memory Devices utilize poly to
source/substrate erase or program.
1.9 "Third Party Flash Software" shall mean software (in
either source code or object code form) (1) which is used primarily to support
or enhance the operations of Flash Memory Devices, MLC Flash Memory Devices,
Flash Memory Systems, or MLC Flash Memory Systems, (2) which is not created or
authored by employee(s) of Sharp or Sharp's Subsidiaries or of San Disk or of
SanDisk's Subsidiaries, and (3) the copyright ownership of which does not lie in
Sharp or Sharp's Subsidiaries or SanDisk or SanDisk's Subsidiaries.
1.9a "Flash Business" shall mean those units, entities and
assets within a company whose primary activity or usage is to design,
manufacture, or sell Flash Memory Devices, MLC Flash Memory Devices, Flash
Memory Systems, or MLC Flash Memory Systems.
1.10 "SanDisk Patents" shall mean all classes or types of
patents, utility models and design patents (including, without limitation,
originals or divisions, continuations, continuations-in-part or reissues), in
all countries or jurisdictions of the world now owned or controlled by SanDisk
or acquired by SanDisk during the term of this Agreement which (a) are issued
prior to the expiration or termination of this Agreement, and (b) except for
consideration paid to employees, have no requirement to pay consideration to
another for the grant of a license under this Agreement, and (c) apply to the
use or manufacture of Flash Memory Integrated Circuits, Flash Memory Devices or
Flash Memory Systems.
1.11 "Sharp Patents" shall mean all classes or types of
patents, utility models and design patents (including, without limitation,
originals or divisions, continuations, continuations-in-part or reissues), in
all countries or jurisdictions of the world now owned or controlled by Sharp or
acquired by Sharp during the term of this Agreement which (a) are issued prior
to the expiration or termination of this Agreement, (b) except for consideration
paid to employees, have no requirement to pay consideration to another for the
grant of a license under this Agreement, and (c) apply to the use or manufacture
of Flash Memory Integrated Circuits, Flash Memory Devices or Flash Memory
Systems.
1.12 "SanDisk Licensed Products" shall mean any SanDisk Flash
Memory Integrated Circuits, SanDisk Flash Memory Devices, SanDisk Flash memory
Systems, and Third Party Flash Software distributed or sold by SanDisk in
conjunction with a SanDisk Licensed Product, and shall not include any MLC Flash
Memory Integrated Circuits, MLC Flash Memory Devices, or MLC Flash Memory
Systems.
1.13 "Sharp Licensed Products" shall mean any Sharp Flash
Memory Integrated Circuits, Sharp Flash Memory Devices and Sharp Flash Memory
Systems; and Third Party Flash Software where such Third Party Flash Software is
distributed or sold by Sharp in conjunction with a Shap Licensed Product, and
shall not include any Triple-Poly Flash memory Device or Product,
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MLC Flash Memory Integrated Circuits, MLC Flash Memory Devices or MLC Flash
Memory Systems.
1.14 "Net Sales" shall mean the following:
(A) "Net Sales" with respect to any Sharp Licensed
Products which are first sold in the form of Flash Memory Devices or Flash
Memory Integrated Circuits as individual items shall mean the invoice price for
said Memory Devices or Flash Memory Integrated Circuits billed by the IC Group
of Sharp and/or Subsidiaries of Sharp; except that, where such sales are to
another Sharp subsidiary, division or group, then Net Sales shall mean the
higher of the invoice price billed, or the then current average selling price
(ASP) for such products to third party customers of Sharp.
(B) "Net Sales" with respect to any Sharp Licensed
Products which are first sold in the form of Flash Memory Systems shall mean the
total invoice price of all Flash Memory Devices or Flash Memory Integrated
Circuits used in such Flash Memory Systems when sold as individual items by the
IC Group of Sharp or its Subsidiaries to third party customers of Sharp, or when
there are no comparable sales of the same Flash Memory Devices or Flash Memory
Integrated Circuits as individual items, Net Sales shall mean the invoice price
for equivalent Flash Memory Devices or Flash Memory Integrated Circuits sold as
individual items by the IC Group of Sharp or Subsidiaries of Sharp to third
party customers of Sharp. In case there are no equivalent Flash Memory Devices
or Flash Memory Integrated Circuits by reason of the fact that the Flash Memory
System includes only Flash Memory Devices or Flash Memory Integrated Circuits
with a total capacity of less than the capacity of the lowest capacity Flash
Memory Integrated Circuit or Flash Memory Device then being sold by Sharp, Net
Sales of such Flash Memory Systems shall be calculated by multiplying the
invoice price of the lowest capacity Flash Memory Integrated Circuit or Flash
Memory Device, whichever is lower, then being sold to third party customers of
Sharp, by the fraction A/B, where A is the capacity of the Flash Memory Devices
or Flash Memory Integrated Circuits included in the Flash Memory System, and B
is the capacity of the lowest capacity Flash Memory Integrated Circuit or Flash
Memory Device then being sold by Sharp. In no case, however, shall Net Sales of
such Flash Memory Systems exceed the invoice price of the Flash Memory Systems
themselves. If the Flash Memory System includes Flash Memory Devices or Flash
Memory Integrated Circuits with a total capacity of less than 1 megabit (Mbit),
then sales of such Flash Memory Systems shall not be included in Net Sales.
(C) In either case, the invoice price shall be net of
discounts actually granted, insurance fees and packing and transportation
charges as invoiced separately to customers, refunds actually paid in connection
with product returns, and duties and sales taxes actually incurred and paid by
Sharp and/or Subsidiaries in connection with delivery of such Licensed Products.
(D) Notwithstanding the above, once the invoice price
of Flash Memory Devices or Flash Memory Integrated Circuits have been included
in the Net Sales under paragraph 1.14(a), any sales of the Flash Memory System
incorporating said Flash Memory Devices or Flash Memory Integrated Circuits
shall not be included in Net Sales under paragraph (B).
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2. MUTUAL RELEASES.
2.1 SanDisk hereby releases, acquits and forever discharges
Sharp, and only Sharp, from any and all claims or liability for infringement of
any SanDisk Patents arising prior to the Effective Date of this Agreement,
within the scope of the license granted herein by SanDisk.
2.2 Sharp hereby releases, acquits and forever discharges
SanDisk, and only SanDisk, from any and all claims or liability for infringement
of any Sharp Patents arising prior to the Effective Date of this Agreement,
within the scope of the license granted herein by Sharp.
3. GRANT OF LICENSES BY SANDISK.
3.1 SanDisk hereby grants to Sharp non-exclusive,
non-transferable, worldwide licenses under SanDisk Patents (without the right to
sublicense) to make, to have made, to use, to sell, to offer for sale (either
directly or indirectly), and to import, Sharp Licensed Products.
3.2 The license grant of Paragraph 3.1 does not cover or
extend to Sharp's manufacture of products for a third party (commonly referred
to as foundry activities) unless such products' design originates wholly with
Sharp or is owned or controlled wholly by Sharp; provided, however, that this
exclusion shall not apply to (1) Sharp's library tools or standard cells that
Sharp incorporates into any standard or custom integrated circuit (IC) products
that Sharp manufactures for its customers, or (2) any Sharp semiconductor
manufacturing processes which Sharp otherwise utilizes in manufacturing Sharp
products of Sharp's own design.
3.3 Nothing in these grants to Sharp or otherwise contained in
this Agreement shall either expressly or impliedly give Sharp the right to
license SanDisk Patents to others. Nor shall the sale of any Sharp Licensed
Products provide or give rise to an implied license, by estoppel or otherwise,
in favor of third parties to any SanDisk Patents, covering combinations of such
Sharp Licensed Products with any other products or methods of using such
combinations, except to the extent that the sale of such Sharp Licensed Products
exhausts the relevant SanDisk Patents.
3.4 The releases and licenses granted herein to Sharp shall be
extended to all Sharp Subsidiaries in existence as of the Effective Date. Sharp
may, at its own discretion, extend the licenses granted under Paragraph 3.0
hereof to any Sharp Subsidiary that comes into existence during the term of this
Agreement; provided, however, that the licenses so extended shall be limited to
the using, making, having made, selling and offering to sell (directly and
indirectly), and importing Sharp Licensed Products only. The patents of a Sharp
Subsidiary to which such licenses have been so extended will be included in the
Sharp Patents. The extension to a Sharp Subsidiary shall apply only during the
time period when the business entity meets all requirements of a Subsidiary.
Upon written request by SanDisk, Sharp will give SanDisk written notice to
identify any Sharp Subsidiary to which such a license has been extended.
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4. GRANT OF LICENSES BY SHARP.
4.1 Sharp hereby grants to SanDisk non-exclusive,
non-transferable, royalty-free, worldwide licenses under Sharp Patents (without
the right to sublicense) to make, to have made, to use, to sell and offer to
sell (either directly or indirectly), and to import SanDisk Licensed Products.
4.2 The license grant of Paragraph 4.1 does not cover or
extend to SanDisk's manufacture of products for a third party (commonly referred
to as foundry activities) unless such products' design originates wholly with
SanDisk or is owned or controlled wholly by SanDisk; provided, however, that
this exclusion shall not apply to (1) SanDisk's library tools or standard cells
that SanDisk incorporates into any standard or custom integrated circuit (IC)
products that SanDisk manufactures for its customers, or (2) any SanDisk
semiconductor manufacturing processes which SanDisk otherwise utilizes in
manufacturing SanDisk products of SanDisk's own design.
4.3 Nothing in this grant to SanDisk or otherwise contained in
this Agreement shall either expressly or impliedly give SanDisk the right to
license Sharp Patents to others. Nor shall sale of any SanDisk Licensed Products
provide or give rise to an implied license, by estoppel or otherwise, in favor
of third parties to any Sharp Patents covering combinations of such SanDisk
Licensed Products with any other products or methods of using such combinations,
except to the extent that the sale of such SanDisk Licensed Products exhausts
the relevant Sharp Patents.
4.4 The releases and licenses granted herein to SanDisk shall
be extended to all SanDisk Subsidiaries in existence as of the Effective Date.
SanDisk may, at its own discretion, extend the licenses granted under Paragraph
4.0 hereof to any SanDisk Subsidiary that comes into existence during the term
of this agreement; provided, however, that the licenses so extended shall be
limited to the using, making, having made, selling and offering to sell
(directly and indirectly), and importing SanDisk Licensed Products only. The
patents of a SanDisk Subsidiary to which such licenses have been so extended
will be included in the SanDisk Patents. The extension to a SanDisk Subsidiary
shall apply only during the time period when the business entity meets all
requirements of a Subsidiary. Upon written request by Sharp, SanDisk will give
Sharp written notice to identify any SanDisk Subsidiary to which such a license
has been extended.
4.5 Sharp shall not assert, directly or indirectly, in any
manner or in any forum, any patents or patent claims against any SanDisk MLC
Flash Memory Device or SanDisk MLC Flash Memory System during the term of this
Agreement, until such time as Sharp makes commercial sales of its own MLC Flash
Memory Devices and/or Systems.
Sharp shall give SanDisk notice of such sales.
5. PAYMENTS.
5.1 As further consideration for the licenses and releases
granted to Sharp herein, Sharp shall pay to SanDisk, unless this Agreement is
sooner terminated by Sharp pursuant to paragraph 7.4, an initial non-refundable
License Fee of U.S. *, and thereafter, royalties of U.S. * to be earned as
follows:
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*Confidential treatement requested.
(1) U.S. * for the period from the Effective Date to March 31, 1997
(2) U.S. * for the period from April 1, 1997 to September 30, 1997
(3) U.S. * for the period from October 1, 1997 to March 31, 1998
Payment of the sums due under this paragraph 5.1 shall be in accordance with
paragraph 5.2.
Royalties for the balance of the term of this Agreement shall be paid in
accordance with paragraph 5.2a.
5.2 Sharp shall make payments of the license fee and royalties
due in accordance with paragraph 5.1 as follows:
(1) U.S. * on or before December 27, 1996
(2) U.S. * on or before April 30, 1997
(3) U.S. * on or before October 30, 1997
(4) U.S. * on or before April 30, 1998
5.2a Sharp shall pay to SanDisk royalties on worldwide Net
Sales of all Sharp Licensed Products, exclusive of Sharp Licensed Products sold
to Intel Corporation and/or SanDisk, from and after April 1, 1998 for the
balance of the term of this agreement, calculated on a quarterly basis in
accordance with the percentage royalty set forth on the following schedule:
(1) For the period from April 1, 1998 to March 31, 1999, * of net sales
(2) For the period from April 1, 1999 to March 31, 2000, * of net sales
(3) For the period from April 1, 2000 to March 31, 2001, * of net sales, and;
(4) For the period from April 1, 2001 to March 31, 2002, * of net sales.
5.2b Starting April 1, 1998, Sharp agrees to make payments
twice a year for royalties earned in the two previous calendar quarters.
Payments will be made (1) on or before October 30 for quarters ending June 30
and September 30; (2) on or before April 30 for quarters ending December 31 and
March 31. Royalties shall accrue upon the first sale, transfer or lease of any
Sharp Licensed Product.
5.3 All payments by Sharp hereunder shall be made net of
applicable Japanese withholding taxes. All payments shall be in U.S. dollars,
wire transferred to SanDisk in accordance with the instructions set forth on
Exhibit A. SanDisk shall bear all taxes imposed on it with respect to the
payments under this Section, provided, however, that if so required by
applicable law, Sharp shall withhold the amount of taxes levied by the
Government of Japan on payments to be made by Sharp pursuant to this Agreement,
and shall promptly make payment of the withheld amount to the appropriate tax
authorities of the Government of Japan and shall transmit to SanDisk official
tax receipts or other evidence issued by said appropriate tax authorities
sufficient to enable SanDisk to support a claim for United States tax credit in
respect to such withheld taxes so paid by Sharp.
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* Confidential treatement requested.
5.4 Starting on or before July 30, 1998, Sharp shall provide
to SanDisk a statement of quarterly worldwide sales of Sharp Licensed Products
within 30 days of the end of each calendar quarter. SanDisk shall have the right
to have an independent third party accounting firm audit, at SanDisk's expense,
Sharp's compliance with this section 5.0, upon reasonable notice to Sharp. The
auditor will maintain in confidence any cost, margin, or other financial
information obtained during the course of the audit, and shall not disclose such
information to SanDisk or any third party. The auditor may only notify SanDisk
whether or not Sharp is in compliance with this section 5.0, and, if not, what
the correct royalties should have been. Such audit shall be conducted no more
than once a year. Sharp shall maintain appropriate records for one year after
the end of each accounting year. Sharp shall promptly remedy any failure to pay
the correct royalty. Reimbursement will be made for any overpayment. To the
extent an exchange rate between Japanese yen and U.S. dollars is required for
any obligation hereunder, the rate used shall be the exchange rate on the last
business day of the quarterly statement required herein which covers the period
in which the obligation is due.
6. COOPERATION.
6.1 At any time during the term of this agreement, at the
request of either party, the parties shall meet and negotiate in good faith for
a patent cross-license covering *. The value of any * patents issued at the time
of the * negotiations shall be taken into consideration in calculating the terms
of the *. However, neither party shall be obligated to enter into such a
license.
6.2 If at any time during the term of this agreement * desires
to enter into an * relationship with * for the * and * to * of certain *
products, then * shall so inform * and the parties shall meet and negotiate in
good faith such an arrangement; provided, however, that neither party shall be
obligated to enter into such an agreement.
7. EFFECTIVE DATE, TERM AND TERMINATION.
7.1 This Agreement shall become effective on the Effective
Date, and shall continue in effect, unless sooner terminated as elsewhere
provided in this Agreement, through March 31, 2002, expiring at the end of such
day.
7.2a If either party hereto commits a material breach of this
Agreement and does not correct such breach within forty-five (45) days after
written notice complaining thereof is given to such party, this Agreement may be
terminated forthwith by written notice to that effect from the complaining
party.
7.2b Either party may terminate this Agreement by giving
written notice of termination to the other at any time upon or after:
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* Confidential treatement requested.
(1) the filing by the other party of a petition in
bankruptcy or insolvency;
(2) any adjudication that the other party is bankrupt
or insolvent;
(3) the filing by the other party of any petition or
answer seeking reorganization, readjustment or
arrangement of its business under any law
relating to bankruptcy or insolvency;
(4) the appointment of a receiver for all or
substantially all of the property of the other
party;
(5) the making by the other party of any assignment
for the benefit of creditors;
(6) the institution of any proceedings for the
liquidation or winding up of the other party's
business or for the termination of its corporate
charter.
This Agreement shall terminate on the forty-fifth (45th) day
after such notice of termination is given.
7.3a If this Agreement is terminated pursuant to Paragraph
7.2(a), the licenses granted to the defaulting party and its Subsidiaries shall
terminate forthwith, but the licenses granted the non-defaulting party and its
Subsidiaries shall survive such termination for the balance of the term of this
Agreement. If this Agreement is terminated pursuant to Paragraph 7.2(b), the
licenses granted by the non-terminating party shall survive the termination for
the balance of the term of this Agreement. Regardless of the date of termination
pursuant to Paragraph 7.2(b), and to the extent that licenses granted to Sharp
herein survive such termination, the payments owing by Sharp under Paragraphs
5.1, 5.2, 5.2a, and 5.2b shall be made as scheduled to SanDisk or its successor
company.
7.3b In the event that SanDisk is acquired by or is merged
into a third party company, or in the event that SanDisk transfers all or
substantially all its Flash Business to such third party company, the licenses
granted by Sharp to SanDisk under Paragraph 4.0 hereof may be transferred to the
combined company; provided, however, that (a) the licenses so transferred shall
become effective only from the date of such merger, acquisition, or transfer of
the Flash Business, and (b) the licenses so transferred shall be limited to the
using, making, having made, selling and offering to sell (directly or
indirectly), and importing SanDisk Licensed Products only.
7.3c In the event that Sharp is acquired by or is merged into
a third party company, or in the event that Sharp transfers all or substantially
all its Flash Business to such third party company, the licenses granted by
SanDisk to Sharp under Paragraph 3.0 hereof may be transferred to the combined
company; provided, however, that (a) the licenses so transferred shall become
effective only from the date of such merger, acquisition, or transfer of the
Flash Business, and (b) the licenses
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so transferred shall be limited to the using, making, having made, selling and
offereing to sell (directly or indirectly), and importing Sharp Licensed
Products only.
7.4 Upon the expiration of this Agreement, the licenses
granted pursuant to this Agreement by one party hereto and its Subsidiaries to
the other party hereto and its Subsidiaries under SanDisk Patents or Sharp
Patents, as the case may be, shall terminate. Sharp shall also have the option
to terminate this Agreement at any time prior to March 31, 1998 by giving
written notice of termination to SanDisk prior to that date. Upon such notice,
this Agreement and all licenses and releases thereunder shall terminate. Sharp
shall remain obligated to pay royalties at the rate set forth in paragraph 5.1
pro-rated up through the date of termination.
7.5 At any time after April 1, 2001, either party may initiate
negotiations for a renewal of the cross license agreement beyond the March 31,
2002 expiration date. The royalty base for the renewed cross license will be
reviewed in case SanDisk's applicable Flash patent applications are finally
rejected by the Japanese Patent Office as of March 30, 2002.
8. MISCELLANEOUS PROVISIONS.
8.1 Each of the parties hereto represents and warrants that it
has the right to grant the other the licenses granted hereunder.
8.2 Nothing contained in this Agreement shall be construed as:
(a) a warranty or representation by any of the
parties to this Agreement as to the validity or scope of any class or type of
patent, utility model and/or design patent; 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 patents, utility models and/or
design patents other than those under which licenses have been granted; or
(c) an agreement to bring or 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 class or
type of patent, utility model or design patent except the licenses and rights
expressly granted hereunder; or
(f) conferring by implication, estoppel or otherwise,
upon any party licensed hereunder, any license or other right under any
copyright, maskwork, or trade secret right; or
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(g) an obligation to furnish any technical
information or know-how.
8.3 This Agreement is personal to the parties, and, except as
set forth in paragraph 7.3b and 7.3c, the Agreement or any right or obligation
hereunder, is not assignable, whether in conjunction with a change in ownership,
or the sale or transfer of the whole or any part of a party=s business or
assets, either voluntarily, by operation of law, or otherwise, without the prior
written consent of the other party. Any such purported assignment or transfer
shall be null and void. Assignment by either party of any of its patents, or the
applications thereof, which qualify as Licensed Patents as defined herein, shall
not affect the license rights acquired hereunder to such patent(s), and any such
assignment shall be subject to the continuing license rights of the other party.
8.4 All notices required or permitted to be given hereunder
shall be in writing and shall be valid and sufficient if dispatched by prepaid
air express or by registered airmail, postage prepaid, in any post office in
Japan or in the United States, as the case may be, addressed as follows:
If to SanDisk:
Ms. Cindy Burgdorf
Senior Vice President and CFO
SanDisk Corporation
140 Caspian Court
Sunnyvale, California 94089
USA
If to Sharp:
Division General Manager
Intellectual Property Division
Law Group
Sharp Corporation
22-22 Nagaike-Cho, Abeno-Ku
Osaka 545
JAPAN
Either party may give written notice of as change of address
and, after notice of such change has been received, any notice or request shall
thereafter be given to such party as above provided at such changed address.
8.5 This Agreement embodies the entire understanding of the
parties with respect to the subject matter hereof, and merges all prior
discussions between them, and neither of the parties shall be bound by any
conditions, definitions, warranties, understandings or representations with
respect to the subject matter hereof other than as expressly provided herein. No
oral explanation or oral information by either party hereto shall alter the
meaning or interpretation of this Agreement. No
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modification, alteration, addition or change in the terms hereof shall be
binding on either party unless reduced to writing and duly executed by the
parties.
8.6 This Agreement and matters connected with the performance
thereof shall be construed, interpreted, applied and governed in all respects in
accordance with the laws of the United States of America and the State of
California.
8.7 Both parties agree that the content of this Agreement will
not be published or disclosed to any third party without the other party=s
written permission except as required by law or as may be required for
reasonable auditing purposes or Security and Exchange Commission disclosure. The
parties shall jointly publish the press release attached hereto as Exhibit B on
a mutually agreed date.
8.8 Anything contained in this Agreement to the contrary
notwithstanding, the obligations of the parties hereto and of the Subsidiaries
of the parties shall be subject to all laws, present and future and including
export control laws and regulations, of any government having jurisdiction over
the parties hereto or the Subsidiaries of the parties, and to orders,
regulations, directions or requests of any such government. Each party shall
undertake to comply with and be solely responsible for complying with such laws
applicable to such party. The parties hereto shall be excused from any failure
to perform any obligation hereunder to the extent such failure is caused by war,
acts of public enemies, strikes or other labor disturbances, fires, floods, acts
of God, or any causes of like or different kind beyond the control of the
parties.
8.9 All disputes arising directly under the express terms of
this Agreement shall be resolved as follows: First, the senior management of
both parties shall meet to attempt to resolve such disputes. If the disputes
cannot be resolved by the senior management, either party may make a written
demand for formal dispute resolution. Within thirty days after such written
notification, the parties shall meet for one day with an impartial mediator and
consider dispute resolution alternatives other than litigation. If an
alternative method of dispute resolution is not agreed upon within thirty days
after the one day mediation, either party may begin litigation proceedings.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed on the date below written.
FOR SHARP CORPORATION FOR SANDISK CORPORATION
By: /s/ Atsushi Asada By: /s/ Eli Harari
-------------------------------- -----------------------------
Printed Name Atsushi Asada Printed Name Eli Harari
Corporate Senior Executive
Title: Vice President Title: President & CEO
----------------------------- --------------------------
Date: December 24, 1996 Date: December 16, 1996
----------------------------- --------------------------
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EXHIBIT A
WIRE TRANSFER
REMITTANCE INFORMATION
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ALL CHARGES WILL BE ABSORBED BY REMITTER.
Bank: UNION BANK
99 Almaden Blvd.
San Jose, CA 95113
Bank Swift #: UBLAUS66
Account Name: SANDISK CORPORATION
Account #: 6450147581
Bank ABA#: 122000496
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-14-
EXHIBIT B
CONTACT: Cindy Burgdorf NOT FOR RELEASE
SanDisk Corporation UNTIL DEC XX, 1996
SHARP AND SANDISK SIGN FLASH PATENT
CROSS-LICENSING AGREEMENT
SUNNYVALE, CA, Dec. XX, 1996 -- Sharp Corporation and SanDisk
Corporation (NASDAQ: SNDK) today announced that they have signed a
cross-licensing agreement for flash memory related patents.
Under the agreement, Sharp and SanDisk have licensed each other's
patents covering the design and manufacture of flash memory products, giving
both companies worldwide rights to use those patents. Specific terms of the
agreement are confidential but SanDisk will receive a license fee and royalty
payments from Sharp.
__________________________ (Sharp to supply the name and title of a
Sharp executive and provide a quote.)
Eli Harari, SanDisk CEO and president, said, "This is a long term
agreement that acknowledges the significant flash memory contributions of both
Sharp and SanDisk. It will allow both companies to continue developing their
respective flash technologies and to compete freely in the rapidly growing flash
marketplace. It is also our hope that this agreement will open the door for
future mutual flash memory business cooperation between Sharp and SanDisk."
____________________________ (Sharp to provide paragraph describing
Sharp.)
SanDisk Corporation designs, manufactures and markets
industry-standard, solid-state data, image and audio storage products using
proprietary, high density flash memory and controller technology. SanDisk has
strategic alliances with Seagate Technology, Matsushita Electronic Corp., NEC
Corp. and LG Semicon. Seagate holds a 25 percent equity stake in SanDisk. The
company is based in Sunnyvale, CA.
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Patent Cross License Agreement - SanDisk Corp. and Sharp Corp.
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