{"id":42463,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/license-agreement-infocus-systems-inc-and-pixelworks-inc.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"license-agreement-infocus-systems-inc-and-pixelworks-inc","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/license-agreement-infocus-systems-inc-and-pixelworks-inc.html","title":{"rendered":"License Agreement &#8211; InFocus Systems Inc. and Pixelworks Inc."},"content":{"rendered":"<pre>\n                                LICENSE AGREEMENT\n                              InFocus Systems, Inc.\n                                Pixelworks, Inc.\n\n                                February 22, 2000\n\n\n         This License is entered into effective February 22, 2000 (the\n\"Effective Date\") between InFocus Systems, Inc., 27700B SW Parkway Avenue,\nWilsonville, OR 97070-9215 (InFocus), and Pixelworks, Inc., 7700 Mohawk St.,\nTualatin, OR, 97056 (Pixelworks.) Pixelworks includes any majority-owned\nsubsidiary of Pixelworks, Inc.\n\n         InFocus owns U.S. patents 5,805,233 and 5,767,916 (together the\n\"Patent\"), and wishes to grant a license to the Patent to Pixelworks in exchange\nfor certain Pixelworks stock and cash. The \"Patent\" also includes any\nextensions, continuations, continuations-in-part, divisions, reissues, and\nforeign equivalents of U.S. Patents 5,805,233 and 5,767,916.\n\n         Accordingly, the parties agree as follows:\n\n1.       LICENSE.\n\n         1.1 GRANT. InFocus grants to Pixelworks a worldwide, paid up (excepting\nonly the payments expressly contemplated under this Agreement), non-exclusive,\nnontransferrable, perpetual, royalty free license to make, have made, use, sell,\noffer for sale, and import products that would otherwise infringe the Patent\n(the \"Products\"). InFocus understands that the Products execute software\ninstructions, and that the software instructions can be and are shipped,\ninstalled, sold, licensed, updated, modified, and revised separately from, but\nfor execution in, the Products. The licensing and sublicensing to any tier of\ndistribution of such software for development, modification, and revision, and\nfor commercial exploitation solely on and with the Products, is expressly\nlicensed under this Grant. Except with respect to software as just stated and as\nencompassed in the concept of \"have made\", this license does not include the\nright to grant further licenses or sublicenses.\n\n         1.2 TRADE SECRETS. InFocus also grants Pixelworks a worldwide, paid up,\nnon-exclusive, perpetual, non-transferrable, royalty free license to use trade\nsecrets related to the problem the Patent solves and financially or functionally\nnecessary to achieve what Pixelworks in good faith believes to be the optimal\nsolution to that problem, and that are remembered or in records held by\nPixelworks employees who were formerly employed by InFocus and who are employed\nby Pixelworks on the Effective Date. Trade secrets encompassed in this paragraph\nare called \"Trade Secrets\" herein.\n\n         1.3 SOFTWARE IMPLEMENTATIONS\/COVENANT NOT TO SUE. InFocus covenants not\nto sue third parties who run non-Pixelworks software on Products, provided that\nthis test is met: if the same software were Pixelworks software distributed by\nPixelworks, it would fall within the license grant of paragraph 1.1.\n\nPage 1 - License Agreement\n\n\n\n2. DELIVERY. InFocus shall not be required to deliver any technology to\nPixelworks. InFocus shall, however, deliver to Pixelworks copies of the patent\nprosecution history file for the Patent, and of all pending and all final issued\npatents and patent claims contained therein in any jurisdiction.\n\n3. CONSIDERATION. InFocus shall receive, in consideration for the license thus\ngranted, 156,863 shares of Pixelworks' Series D Preferred Stock, and four\nquarterly payments of $600,000 each.\n\n         3.1 TIMING AND TERMS OF CASH PAYMENTS. The first cash payment shall be\ndue March 31, 2000, and the next three on the last day of each calendar quarter\nthereafter, ending December 31, 2000. Failure to make timely payment shall\nconstitute a material breach of this Agreement in accordance with Section 5\nhereof. Interest shall accrue on late payments at the lesser of 18% per year or\nthe highest interest rate allowed under applicable law.\n\n         3.2 TERMS OF STOCK GRANT. Pixelworks shall grant the shares of Series D\nPreferred Stock pursuant to the terms and conditions of Pixelworks' Series D\nPreferred Stock financing round. InFocus shall execute the same investment\ndocuments as are executed by all other investors in that round generally, and\nthis Agreement shall be effective contemporaneous with the closing of that\nfinancing round.\n\n4.       INFRINGEMENT AND OTHER LICENSES.\n\n         4.1 INFRINGEMENTS. If Pixelworks learns of or suspects any infringement\nof the Patent by a third party, Pixelworks shall promptly inform InFocus of such\ninfringement. If InFocus determines to take action to bar the infringement,\nInFocus may do so. As of the Effective Date and within the horizon of InFocus'\nreasonably foreseeable business planning process as applicable to such matters,\nit is InFocus' intention to take action to prevent future infringement of the\nPatent. InFocus makes no representations beyond a three year horizon from the\ndate hereof. InFocus reserves the privilege of not pursuing infringers when in\nits good faith judgment the commercial impact of the suspected or actual\ninfringement is outweighed by the cost of the pursuit.\n\n         4.2 OTHER LICENSES. As of the Effective Date and within the horizon of\nInFocus' reasonably foreseeable business planning process as applicable to such\nmatters, InFocus does not plan or intend to license the Patent for commercial\nuse (other than for purposes of building products for sale or resale by InFocus)\nto any third party for consideration with a total value less than the total\nvalue of the consideration provided by Pixelworks under this Agreement, which\nvalue InFocus regards as commercially reasonable. InFocus makes no\nrepresentations beyond a three year horizon from the date hereof. InFocus\nreserves the privilege of licensing its technology on terms and for\nconsideration that in its good faith judgment are commercially reasonable for\nthe Patent under the circumstances then prevailing for the particular\ntransaction.\n\n         4.3 PATENT MAINTENANCE. InFocus shall maintain each of the constituent\npatents in the Patent in all jurisdictions in which they or equivalents have\nbeen filed, for the statutory life of patents in those jurisdictions. The\nparties agree to cooperate in connection with the maintenance of the Patent and\nto take any and all actions necessary to transfer the necessary documents and\nrights required for, and to do such other things as are from time to time\nnecessary to comply with the requirements of, this Section\n\nPage 2 - License Agreement\n\n\n\n4.3. Payment of all fees and costs incurred during the term of this Agreement\nrelating to the maintenance of the Patent shall be the responsibility of\nInFocus.\n\n         4.4 COOPERATION. Pixelworks and InFocus shall keep each other promptly\nand fully apprised of all material developments in the maintenance of the\nPatent. Each party will cooperate as reasonably necessary to secure and maintain\nprotection applicable to the Patent.\n\n         4.5 WARRANTY OF TITLE. InFocus warrants that it has good and marketable\ntitle, and all rights necessary to grant the licenses and rights herein granted,\nto the Patent and to the right to exercise the claims it contains.. InFocus'\nliability for breach of this warranty shall be limited to return of the\nconsideration paid.\n\n5.       COVENANT REGARDING FUTURE DISPUTES. The parties commit to meet and to \ndiscuss any disputes arising under this Agreement, including without limitation\nany assertions of material breach. The discussions will take place among people\nwho from each party collectively have the authority to settle matters under\ndiscussion, in a good faith effort to resolve such matters without formal\nproceedings.\n\n6.       CONFIDENTIALITY. Pixelworks acknowledges that any Trade Secrets are \nInFocus' valuable and confidential information. Pixelworks agrees to take all \nreasonable steps to protect the confidentiality of those Trade Secrets, \nincluding employing the practices and procedures it uses to protect its own \ntrade secrets. Disclosure of the Trade Secrets will be limited to Pixelworks' \nagents or employees on a need-to-know basis, and only after such persons have \nbeen informed of, and are subject to obligations to maintain, the Trade Secrets'\nconfidentiality.\n\n7.       TERMINATION. Either party may terminate this Agreement by Notice, if\nthe other commits a material breach of this Agreement which is not cured within\nthirty days' following Notice. Any such termination shall end the license rights\ngranted to Pixelworks under Section 1, provided Pixelworks shall be entitled to\nexhaust existing inventories of Products (including as inventories Products\nalready in production).\n\n8.       PRESS RELEASES AND PUBLICITY.\n\n         8.1 LEGALLY REQUIRED DISCLOSURE PERMITTED. Each party shall be\npermitted to make such disclosure concerning this Agreement as may be required\nfor purposes of audit, financing or by any court or government agency, provided\nthat each party shall take such precautions to secure confidential treatment as\nmay be reasonably available in the particular forum. Otherwise, subject to the\nright to issue press releases under Section 8.2, this Agreement, its terms, and\nall matters leading up to it and giving rise to it are confidential, and may not\nbe disclosed by the Parties to any outside party except those under\nnondisclosure obligations who have a need to know.\n\n         8.2 PRESS RELEASES. If either party wishes to issue a press release\nconcerning this Agreement, it shall first provide the other with a copy of the\nproposed release for approval. Neither party will issue a press release until\nafter Pixelworks has completed its \"quiet period\" following registration,\nprovided that InFocus may issue an internal release in the following language.\nNo release shall be issued that describes this agreement without the approval of\nboth parties. Each party approves a press release\n\nPage 3 - License Agreement\n\n\n\nthat does no more than announces this agreement in the following terms, and\nwhich may also characterize each party using that party's own usual and\ncustomary press release language to describe itself:\n\n         InFocus Systems, Inc. and Pixelworks, Inc. have entered into a license\n         agreement covering certain InFocus patented technology that helps \n         digital display devices more clearly and sharply present video or \n         other analog-source images, (party) announced today.\n\n9.       OTHER MATTERS.\n\n         9.1 NOTICE. \"Notice\" means notice given as described here. Notice will\nbe given to Timothy M. Carlson for InFocus, and to Allen Alley for Pixelworks,\nat the address designated at the beginning of this Agreement. Each party can\nchange its own Notice address and designated Notice recipient, by Notice. Notice\nshall be effective when actually received by the designated person, in any form\nthat leaves a hard copy record of the notice in that person's possession. If\nsent certified or registered mail, postage prepaid, return receipt requested,\nnotice is considered effective on the date on which effective delivery is first\nproven, but in no event later than the date the return receipt shows the notice\nwas accepted, refused, or returned undeliverable.\n\n         9.2 SEVERABILITY. Each clause of this agreement is severable. If any\nclause is ruled void or unenforceable, the balance of the agreement shall\nnonetheless remain in effect.\n\n         9.3 NON-WAIVER. A waiver of one or more breaches of any clause of this\nagreement shall not act to waive any other breach, whether of the same or\ndifferent clauses.\n\n         9.4 ASSIGNMENT. This agreement may not be assigned by Pixelworks\nwithout the express written consent of InFocus, which consent will not be\nunreasonably withheld.\n\n         9.5 GOVERNING LAW, JURISDICTION. This agreement is governed by the laws\nof the state of Oregon. Any action brought between the parties may be brought\nonly in the state or federal courts located in Portland, Oregon, and in no other\nplace unless the parties expressly agree in writing to waive this requirement.\nEach party consents to jurisdiction in that location. Each party consents to\nservice of process through the method prescribed for Notice in this agreement.\n\n         9.6 ATTORNEYS' FEES. The prevailing party in any suit, action,\narbitration, or appeal filed or held concerning this agreement shall be entitled\nto reasonable attorneys' fees.\n\n         9.7 REPRESENTATION. This document is the result of negotiations between\nparties, each of whom was represented or had the opportunity to be represented\nin the transaction, and has had the opportunity to have had the transactional\ndocuments reviewed by counsel of their own choice.\n\n         9.8 INTEGRATION. This agreement is the complete agreement between the\nparties as of the date hereof, and supersedes all prior agreements, written or\noral, excepting only the nondisclosure agreement in place between the parties,\nand contracts and agreements anticipated under Section 3.2 hereof. This\nAgreement resolves and satisfies all claims or disputes between the parties\nconcerning the Patent, Trade Secrets, or any InFocus patents, issued or pending,\nas of the effective date that address the \n\nPage 4 - License Agreement\n\n\n\n\nsame set of problems solved by the Patent, arising at any point prior to the \neffective date hereof, and any dispute that could arise between InFocus and any\nPixelworks customer (direct or indirect) with respect to that Customer's own \nuse of Pixelworks' Products to run Customer software in a combination that \ncould infringe the Patent. Pixelworks' direct and indirect customers are \nintended third party beneficiaries of this integration and resolution. This \nAgreement may be modified only in writing signed by the original parties \nhereto, or by their successors or superiors in office.\n\n\nINFOCUS SYSTEMS, INC.                       PIXELWORKS, INC.\n\n\nBy: \/s\/ Mark Pruitt                         By:  \/s\/ Allen H. Alley\n   -------------------------------               ------------------------------\n\nPrint:  Mark Pruitt                         Print:   Allen H. Alley\n   -------------------------------               ------------------------------\n\nTitle:  Vice President, R&amp;D                 Title:   President &amp; CEO\n   -------------------------------               ------------------------------\n\nDate:   2\/24\/2000                           Date:    2\/24\/2000\n   -------------------------------               ------------------------------\n\n\nPage 5 - License Agreement\n\n\n\n TYPE:  EX-23.2\n SEQUENCE:  14\n DESCRIPTION:  EXHIBIT 23.2\n\n\n\n                                                                    EXHIBIT 23.2\n \n                        CONSENT OF INDEPENDENT AUDITORS\n \nThe Board of Directors\nPixelworks, Inc.:\n \nWe consent to the use of our Independent Auditors' Report dated January 26, 2000\nrelating to the balance sheets of Pixelworks, Inc. as of December 31, 1998 and\n1999, and the related statements of operations, redeemable convertible preferred\nstock and shareholders' equity (deficit) and cash flows for the period from\nJanuary 16, 1997 (date of inception) through December 31, 1997 and for each of\nthe years in the two-year period ended December 31, 1999 which report is\nincluded in the Registration Statement and Prospectus, dated February 24, 2000,\nof Pixelworks, Inc., and to the reference to our firm under the heading\n\"Experts\" in the Prospectus.\n \n                                          \/s\/ KPMG LLP\n \nPortland, Oregon\nFebruary 24, 2000\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[7851,8533],"corporate_contracts_industries":[9508,9512],"corporate_contracts_types":[9613,9616],"class_list":["post-42463","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-infocus-corp","corporate_contracts_companies-pixelworks-inc","corporate_contracts_industries-technology__hardware","corporate_contracts_industries-technology__semiconductors","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42463","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42463"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42463"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42463"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42463"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}