{"id":42653,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/patent-cross-license-agreement-quicklogic-corp-and-actel-corp.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"patent-cross-license-agreement-quicklogic-corp-and-actel-corp","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/patent-cross-license-agreement-quicklogic-corp-and-actel-corp.html","title":{"rendered":"Patent Cross License Agreement &#8211; QuickLogic Corp. and Actel Corp."},"content":{"rendered":"<pre>\nPATENT CROSS LICENSE AGREEMENT\n\n     THIS AGREEMENT is made and entered into on the 25th day of August, 1998, by\nand between QuickLogic Corporation, a corporation incorporated under the laws of\nCalifornia  (\"QuickLogic\")  and headquartered at 1277 Orleans Drive,  Sunnyvale,\nCalifornia 94089, and Actel  Corporation,  a corporation  incorporated under the\nlaws of  California  (\"Actel\")  and  headquartered  at 955 East  Arques  Avenue,\nSunnyvale, California 94086.\n\n     WHEREAS,  QuickLogic  and Actel are parties to those  certain legal actions\nentitled Actel  Corporation v. QuickLogic  Corporation,  No. C-94 20050 JW (PVT)\nand  Actel  Corporation  v.  QuickLogic  Corporation,  No.  C-97  21107JW  (EAI)\n(collectively,  the  \"Actions\")  currently  pending  before  the  United  States\nDistrict Court for the Northern  District of California,  San Jose Division (the\n\"Court\"); and\n\n     WHEREAS,  QuickLogic  and Actel mutually  desire to settle the Actions,  as\nwell as certain other actual or potential disputes between them, as part of such\nsettlement; and\n\n     WHEREAS,  the Parties have entered into a settlement agreement of even date\nherewith   defining  with   particularity  the  terms  of  the  settlement  (the\n\"Settlement Agreement and Mutual Release\");\n\n     NOW,  THEREFORE,  the  Parties,  in  consideration  of the premises and the\nmutual  promises of the Parties  hereinafter set forth and intending to be bound\nby the terms  hereof,  hereby  agree,  effective  as of the  Effective  Date (as\ndefined below), as follows:\n\n1.   DEFINITIONS\n\n     As used in this  Agreement,  the  following  terms shall have the following\nmeanings:\n\n     1.1. \"Actel\" shall mean Actel Corporation,  a California  corporation,  and\nits successor, Actel Corporation, a Nevada corporation.\n\n     1.2. \"Actel Licensed  Patents\" shall mean all Patents (a) that Actel or any\nof its Affiliates now own or may hereafter during the term of this Agreement own\nor (b) under  which and to the extent that Actel or any of its  Affiliates  have\nacquired or may hereafter during the term of this Agreement acquire the right to\ngrant  licenses  without  the payment of a royalty or other  consideration  to a\nthird party (excluding  consideration paid to an employee in connection with the\nassignment to Actel of the employee's  rights in an invention that resulted from\nany work performed by the employee for Actel).\n\n     1.3.  \"Acquired  Party\"  shall mean a party to this  Agreement  following a\nChange in Ownership of such party.\n\n     1.4.  \"Acquiring Party\" shall mean the Person(s),  if any, in Control of an\nAcquired  Party  following  a Change in  Ownership  and the  Affiliates  of such\nPerson(s).\n\n     1.5.  \"Affiliate\" shall mean a Person that directly,  or indirectly through\none or more  intermediaries,  controls,  or is controlled by, or is under common\ncontrol with, a specified Person.\n\n     1.6.  \"Antifuse\"  shall mean a  two-terminal  switch  that is open prior to\nprogramming.\n\n     1.7. \"Antifuse Programmable Logic Device\" shall mean any Programmable Logic\nDevice in which all of the Programmable Switching Elements are Antifuses.\n\n     1.8.  \"Beneficial Owner\" shall be used in this Agreement as defined in Rule\n13d-3 under the Securities Exchange Act of 1934, as amended.\n\n     1.9.  \"Change in  Ownership\"  shall mean the  occurrence  of any one of the\nfollowing:\n\n            1.9.1.  Any  Person  is or  shall  have  the  right  to  become  the\nBeneficial  Owner,  directly or indirectly,  of Voting  Securities of such party\nrepresenting  50% or more of the  Total  Voting  Power  of such  party's  Voting\nSecurities.\n\n            1.9.2.   The   shareholders   of  a  party  approving  a  merger  or\nconsolidation of such party with any other  corporation,  other than a merger or\nconsolidation  that  would  result  in  the  Voting  Securities  of  such  party\noutstanding  immediately  prior  thereto  continuing  to  represent  (either  by\nremaining  outstanding  or by being  converted  into  Voting  Securities  of the\nsurviving  corporation) 50% or more of the Total Voting Power represented by the\nVoting  Securities  of such  party  or such  surviving  corporation  outstanding\nimmediately after such merger or consolidation.\n\n            1.9.3.  The  shareholders of a party approving a plan of dissolution\nor liquidation of such party or an agreement for the sale or disposition by such\nparty of all or  substantially  all of such party's assets in one or a series of\ntransactions.\n\n     1.10.  \"Control,\" including the terms  \"controlling,\"  \"controlled by,\" and\n\"under common control with,\" shall mean the possession,  directly or indirectly,\nof the power to direct or cause the direction of the  management and policies of\na Person,  whether through the ownership of Voting Securities,  by contract,  or\notherwise.  A  Person's  Beneficial  Ownership  of  twenty  (20%)  or  more of a\ncorporation's   outstanding   Voting   Securities   shall  create  a  rebuttable\npresumption  that such Person has control of such  corporation.  Notwithstanding\nthe foregoing,  a Person shall not be deemed to have control of a corporation if\nsuch Person  holds Voting  Securities,  in good faith and not for the purpose of\ncircumventing this Section, as an agent, bank, broker,  nominee,  custodian,  or\ntrustee for one or more Beneficial  Owners who do not individually or as a group\nhave control of such corporation.\n\n     1.11.  \"Effective  Date\" shall mean the date on which the  Stipulations (as\ndefined  in the  Settlement  Agreement  and Mutual  Release)  are filed with the\nCourt.\n\n     1.12.  \"Embedded  SRAM  Programmable  Logic  Device\" shall mean an Embedded\nProgrammable Logic Device in which any of the Programmable Switching Elements is\ncontrolled by SRAM.\n\n     1.13. \"Embedded  Programmable Logic Device\" shall mean a Programmable Logic\nDevice in which (x) the circuitry controlled by Programmable  Switching Elements\nand (y) the circuitry  containing  User Memories  contain in the aggregate  less\nthan 80% of the total number of transistors on the die.\n\n     1.14. \"Flash\" shall mean electrically erasable read only memory that can be\nerased more than one bit at a time.\n\n     1.15. \"GateField\" shall mean GateField Corporation, a Delaware corporation.\n\n     1.16.  \"Incumbent  Directors\"  shall  mean  directors  who  either  (a) are\ndirectors of a party to this  Agreement as of the  Effective  Date (or as of the\ndate of a Change of  Ownership,  in the case of an  Acquiring  Party) or (b) are\nelected, or nominated for election, to the Board of Directors of such party with\nthe  affirmative  votes of a least a majority of the Incumbent  Directors at the\ntime of such election or nomination, but \"Incumbent Directors\" shall not include\nany individual  whose election or nomination is in connection  with an actual or\nthreatened proxy contest relating to the election of directors of such party.\n\n     1.17.  \"Internal  Use\" by a Person  shall mean (a) use by the Person or its\nAffiliates without any sale, lease,  distribution,  or other transfer to a third\nparty  that  is not  an  Affiliate  of the  Person  or  (b)  incorporation  in a\nvalue-added  product made by the Person or its Affiliates that is sold,  leased,\ndistributed,  or otherwise transferred to a third party that is not an Affiliate\nof the Person.\n\n     1.18.  \"Licensee  Party\"  shall  mean  either  Actel or  QuickLogic  in its\ncapacity as the recipient of rights under any Patent of the other party pursuant\nto this Agreement.\n\n     1.19.  \"Licensor  Party\"  shall  mean  either  Actel or  QuickLogic  in its\ncapacity  as the  grantor of rights  under any of its  Patents  pursuant to this\nAgreement.\n\n     1.20.  \"Material Terms\" shall refer to the provisions of Sections 3 and 6.4\nof this Agreement.\n\n     1.21.  \"Matsushita\" shall mean Matsushita  Electric  Industrial Co., Ltd, a\nJapan corporation,  Matsushita Electronics Corporation, a Japan corporation, and\ntheir Affiliates.\n\n     1.22.  \"Non-Acquired  Party\" shall mean the party to this Agreement that is\nnot the Acquired Party or an Affiliate of the Acquired Party  following a Change\nin Ownership.\n\n     1.23. \"Non-Antifuse  Programmable Logic Device\" shall mean any Programmable\nLogic Device that is not an Antifuse Programmable Logic Device.\n\n     1.24.  Non-Assertion  Patent\"  shall  mean (a) any  patent  (including  any\nutility  patent,  design  patent,  patent of  importation,  patent of  addition,\ncertificate of addition,  certificate or model of utility) granted by the United\nStates or any other country, (b) any reissue,  continuation,  parent,  division,\nextension, renewal, or continuation-in-part of any of the foregoing, and (c) any\ncounterpart anywhere in the world of any of the foregoing.\n\n     1.25.  \"Patent\" shall mean (a) any patent  (including  any utility  patent,\ndesign  patent,  patent of  importation,  patent  of  addition,  certificate  of\naddition, certificate or model of utility) the application for which had a first\neffective  filing date in any country on or before the Effective  Date,  (b) any\npatent that may issue on any such  application,  (c) any reissue,  continuation,\nparent,  division,  extension,  renewal, or  continuation-in-part  of any of the\nforegoing,  and  (d)  any  counterpart  anywhere  in  the  world  of  any of the\nforegoing.\n\n     1.26.  \"Person\"  shall be used in this  Agreement as defined under Sections\n13(d) and 14(d) of the Securities Exchange Act of 1934, as amended.\n\n     1.27.  \"Programmable  Logic Device\" shall mean any integrated  circuit that\nimplements  logic the  operation  of which is  determined  after the  integrated\ncircuit has been manufactured.\n\n     1.28.  \"Programmable  Switching  Element\" shall mean a switch controlled by\nelectrical  voltage or  electrical  currents that is used to configure the logic\nfunction of a Programmable Logic Device.  Programmable  Switching Elements shall\nnot include data registers or User Memories or switches controlled by lasers.\n\n     1.29.  \"QuickLogic\"  shall  mean  QuickLogic   Corporation,   a  California\ncorporation.\n\n     1.30.  \"QuickLogic  Licensed Patents\" shall all Patents (a) that QuickLogic\nor any of its  Affiliates  now  own or may  hereafter  during  the  term of this\nAgreement own or (b) under which and to the extent that QuickLogic or any of its\nAffiliates  have  acquired or may  hereafter  during the term of this  Agreement\nacquire  the right to grant  licenses  without the payment of a royalty or other\nconsideration to a third party (excluding  consideration  paid to an employee in\nconnection  with the  assignment to QuickLogic  of the  employee's  rights in an\ninvention that resulted from any work performed by the employee for QuickLogic).\n\n     1.31. \"Security  Agreements\" shall mean the security agreement of even date\nherewith  pursuant to which Actel has granted a security  interest to QuickLogic\nin the  proceeds  from the  sale,  assignment,  or other  transfer  of the Actel\nLicensed  Patents to secure  Actel's  obligations  under  Section  6.4.4 of this\nAgreement,  and the security  agreement of even date herewith  pursuant to which\nQuickLogic  has granted a security  interest to Actel in the  proceeds  from the\nsale, assignment, or other transfer of the QuickLogic Licensed Patents to secure\nQuickLogic's obligations under Sections 3 and 6.4.5 hereof.\n\n     1.32. \"SRAM\" shall mean static random access memory.\n\n     1.33.  \"SRAM  Programmable  Logic Device\" shall mean a  Programmable  Logic\nDevice in which any of the  Programmable  Switching  Elements is  controlled  by\nSRAM.\n\n     1.34. \"Termination Event\" shall mean any of the following:\n\n            1.34.1.  the  filing  by a party  of a  petition  in  Bankruptcy  or\ninsolvency; or\n\n            1.34.2. any adjudication that a party is bankrupt or insolvent; or\n\n            1.34.3.  the appointment of a receiver for all or substantially  all\nof the property of a party; or\n\n            1.34.4.  the  making  by a  party  of any  assignment  or  attempted\nassignment for the benefit of creditors; or\n\n            1.34.5.  the  institution of any  proceedings for the liquidation or\nwinding  up of a  party's  business  or for  the  termination  of its  corporate\ncharter; or\n\n            1.34.6.  any  assignment of this Agreement or any exercise of rights\nunder this Agreement by any successor or assign of a party, except in accordance\nwith Section 8.\n\n     1.35. \"Total Voting Power\" shall mean the total number of votes that may be\ncast  in the  election  of  directors  at a  meeting  of the  shareholders  of a\ncorporation if all Voting Securities are present and voted to the fullest extent\npossible at such meeting.\n\n     1.36. \"User Memory\" shall mean random access memory (RAM),  SRAM, read only\nmemory (ROM), or  programmable  read only memory (PROM),  erasable  programmable\nread only memory (EPROM),  electrically  erasable  programmable read only memory\n(EEPROM),  Flash, or variations thereof,  used for storing data and control bits\nduring the logic  operation of a Programmable  Logic Device.  The circuitry of a\nProgrammable Logic Device controlled by Programmable  Switching Elements and the\ncircuitry of a Programmable  Logic Device  containing User Memories are mutually\nexclusive.\n\n     1.37.  \"Voting  Securities\"  shall  mean all  securities  of a  corporation\nentitled to vote generally in the election of directors.\n\n2.   LICENSES\n\n     2.1. Subject to Sections 2.3 and 6.4.2 hereof,  QuickLogic hereby grants to\nActel a  nonexclusive,  royalty-free,  worldwide  license  under the  QuickLogic\nLicensed Patents (a) to make, have made only for Actel,  use,  import,  offer to\nsell,  sell,  lease,  distribute,  and  otherwise  transfer  Programmable  Logic\nDevices,  and  (b) to  grant  sublicenses  to  make,  have  made  only  for  the\nsublicensee,  use, import, offer to sell, sell, lease, distribute, and otherwise\ntransfer Embedded Programmable Logic Devices.\n\n     2.2.  Subject to the  payment of the  amounts set forth in Section 3 hereof\nand to Sections  2.3,  4.5,  6.4.2,  and 6.4.3  hereof,  Actel hereby  grants to\nQuickLogic  a  nonexclusive,  royalty-free,  worldwide  license  under the Actel\nLicensed Patents (a) to make, have made only for QuickLogic,  use, import, offer\nto sell, sell, lease,  distribute,  and otherwise  transfer  Programmable  Logic\nDevices,  but  excluding  all  SRAM  Programmable  Logic  Devices,  (b) to grant\nsublicenses to make, have made only for the sublicensee,  use, import,  offer to\nsell, sell, lease,  distribute,  and otherwise  transfer  Embedded  Programmable\nLogic Devices,  but excluding all Embedded SRAM Programmable Logic Devices,  and\n(c) to grant  sublicenses to make, have made (but only for a sublicensee that is\na  semiconductor  manufacturer or foundry),  and use Embedded SRAM  Programmable\nLogic Devices only for the Internal Use of the sublicensee.\n\n     2.3. The licenses  granted in Sections 2.1 and 2.2 of this Agreement  shall\nnot include any right in favor of a Licensee Party:\n\n            2.3.1.  to  grant  any  sublicense  to  any  Person,  including  any\nAffiliate of a Licensee  Party other than a wholly-owned  subsidiary,  except as\nexpressly  provided  with  respect  to  Embedded   Programmable  Logic  Devices,\nprovided,  however,  that any such sublicense may not be further sublicensed and\nmay not be assigned or otherwise  transferred except in connection with a Change\nin Ownership of the sublicensee; or\n\n            2.3.2.  to offer to sell,  sell,  lease,  distribute,  or  otherwise\ntransfer any product to any  semiconductor  manufacturer or foundry or Affiliate\nthereof,   except   exclusively  for  the  Internal  Use  of  the  semiconductor\nmanufacturer  or foundry;  provided,  however,  that Actel may sell or otherwise\ntransfer  products to Matsushita for resale by Matsushita in accordance with the\nDistribution  Agreement between  Matsushita and Actel dated as of June 29, 1995,\nand any renewal thereof; or\n\n            2.3.3. to sell, lease,  distribute,  or otherwise  transfer all or a\npart of the Licensee Party's business or the assets comprising such business, or\ntransfer  control of a subsidiary  engaged in such business,  to the extent such\npart of the Licensee Party's business or such assets or such subsidiary  include\nthe business of making and selling  products  covered by any license  granted to\nthe Licensee  Party in Sections  2.1 or 2.2 of this  Agreement,  as  applicable,\nexcept as may be permitted by Section 8; or\n\n            2.3.4.  to make,  have made,  import,  offer to sell,  sell,  lease,\ndistribute, or otherwise transfer any product that is pin interchangeable in the\nfinal  application  of the product  with a product  then offered for sale by the\nLicensor Party (excluding products having pinouts originating with a third party\nthat either (a) are not replicas of a pinout of QuickLogic or Actel or GateField\nproducts  or  (b)  reflect  standards   promulgated  by  a  standards  committee\nsanctioned  by the IEEE,  JEDEC,  or an equivalent  organization  other than the\nUnited States Department of Defense).\n\n     2.4.  Nothing  contained in this Agreement shall be construed as conferring\nby  implication,  estoppel,  or otherwise upon either party any license or other\nright except the licenses and rights  expressly  ranted hereunder to that party.\nNotwithstanding  the foregoing,  the Licensee Party and its customers shall have\nthe right to program the  products  covered by any license (or  covenant  not to\nsue) granted under this Agreement to the Licensee Party.\n\n     2.5. Each party hereby  accepts the licenses and rights  granted to it by a\nparty under this  Agreement  subject to all of the terms and  conditions of this\nAgreement.\n\n3.   PAYMENTS\n\n     3.1. As consideration  for the license granted to QuickLogic by Actel under\nSection 2.2 of this Agreement,  QuickLogic  grants to Actel the rights set forth\nin Section 2.1 of this Agreement and agrees to pay to Actel the sum of\n\n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>.  \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission> shall be due and payable\non the Effective Date of this  Agreement,  and (subject to Sections 3.2,  6.4.4,\nand 6.4.5 hereof) the balance shall be due and payable in quarterly installments\nas follows:\n\n<table>\n                                                         \n<c>  \n         3 months after Effective Date                               \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n                                                                                       \n         6 months after Effective Date                               \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         9 months after Effective Date                               \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         12 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         15 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         18 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         21 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         24 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         27 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         30 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         33 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n         36 months after Effective Date                              \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>\n\n<\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/c><\/table>\n\n            If any such  payment  is not made when due and is not  cured  within\nfifteen (15)  business days after written  notice to QuickLogic  specifying  the\nfailure to pay, all subsequently  due payments shall become  immediately due and\npayable.\n\n     3.2.  In the event  QuickLogic  effects an initial  public  offering of its\nCommon Stock  pursuant to a registration  statement  under the Securities Act of\n1933, all subsequently due payments shall become  immediately due and payable on\nthe tenth business day following the closing of such offering.\n\n4.   NON-ASSERTION AGREEMENTS\n\n     4.1.  QuickLogic  agrees that QuickLogic and its Affiliates will not assert\nduring the term of this Agreement and  thereafter,  directly or indirectly,  any\ncause of action based, in whole or in part,  upon the purported  infringement by\nActel or its  suppliers or customers,  mediate or immediate,  during the term of\nthis Agreement of any Non-Assertion Patent, whether granted by the United States\nor another  country to  QuickLogic or its  Affiliates  or any third party,  as a\nresult of the  manufacture,  use,  importation,  offer for  sale,  sale,  lease,\ndistribution,  or other transfer of (a) products first offered for sale by Actel\non or before the second  anniversary of the Effective Date of this Agreement and\n(b)  future  generations  of such  products  reflecting  the  evolution  of such\nproducts in the ordinary  course of business of  QuickLogic's  product  lines as\nthey exist on the second anniversary of the Effective Date of this Agreement.\n\n     4.2. QuickLogic agrees that no purchaser or transferee of any Non-Assertion\nPatent from  QuickLogic or its Affiliate and no assignee of the right to enforce\nany Non-Assertion Patent from QuickLogic or its Affiliate will assert during the\nterm of this  Agreement  or  thereafter,  directly or  indirectly,  any cause of\naction based, in whole or in part,  upon the purported  infringement by Actel or\nits  suppliers  or  customers,  mediate  or  immediate,  during the term of this\nAgreement of the Non-Assertion Patent sold, transferred, or assigned as a result\nof the manufacture, use, importation, offer for sale, sale, lease, distribution,\nor other  transfer of (a) products  first offered for sale by Actel on or before\nthe second  anniversary  of the Effective  Date of this Agreement and (b) future\ngenerations of such products  reflecting the evolution in the ordinary course of\nbusiness of QuickLogic's  product lines as they exist on the second  anniversary\nof the Effective Date of this Agreement.\n\n     4.3.  Subject  to  Section  4.5  hereof,  Actel  agrees  that Actel and its\nAffiliates  will not assert during the term of this  Agreement  and  thereafter,\ndirectly or indirectly, any cause of action based, in whole or in part, upon the\npurported  infringement by QuickLogic or its suppliers or customers,  mediate or\nimmediate,  during  the  term of this  Agreement  of any  Non-Assertion  Patent,\nwhether  granted  by the  United  States  or  another  country  to  Actel or its\nAffiliates or any third party, as a result of the manufacture, use, importation,\noffer for sale,  sale,  lease,  distribution,  or other transfer of (a) products\nfirst offered for sale by QuickLogic on or before the second  anniversary of the\nEffective  Date of this  Agreement and (b) future  generations  of such products\nreflecting the evolution of such products in the ordinary  course of business of\nActel's  product lines as they exist on the second  anniversary of the Effective\nDate of this Agreement.\n\n     4.4.  Subject to Section 4.5 hereof,  Actel  agrees  that no  purchaser  or\ntransferee  of any  Non-Assertion  Patent  from  Actel or its  Affiliate  and no\nassignee  of the right to enforce  any  Non-Assertion  Patent  from Actel or its\nAffiliate will assert during the term of this Agreement or thereafter,  directly\nor  indirectly,  any  cause of  action  based,  in  whole  or in part,  upon the\npurported  infringement by QuickLogic or its suppliers or customers,  mediate or\nimmediate,  during the term of this Agreement of the Non-Assertion  Patent sold,\ntransferred, or assigned as a result of the manufacture, use, importation, offer\nfor sale,  sale,  lease,  distribution,  or other transfer of (a) products first\noffered  for sale by  QuickLogic  on or before  the  second  anniversary  of the\nEffective  Date of this  Agreement and (b) future  generations  of such products\nreflecting the evolution of such products in the ordinary  course of business of\nActel's  product lines as they exist on the second  anniversary of the Effective\nDate of this Agreement.\n\n     4.5.  Notwithstanding  anything in this Agreement to the contrary,  neither\nActel nor its  Affiliates  shall be precluded or in any way  restrained  by this\nAgreement  from  asserting  against any  Person,  including  QuickLogic  and any\nAcquiring  Person,  any claim of  infringement  of any Actel Licensed  Patent or\nNon-Assertion Patent as a result of the manufacture, use, importation, offer for\nsale, sale, lease,  distribution,  or other transfer of (a) an SRAM Programmable\nLogic Device prior to a Change in Ownership of  QuickLogic,  (b) a  Non-Antifuse\nProgrammable  Logic Device  following a Change in Ownership  of  QuickLogic,  or\n(c)(i)  flash  products  first  offered for sale by  GateField  on or before the\nsecond   anniversary  of  the  Effective  Date  of  this  Agreement  and  future\ngenerations  of such products  reflecting  the evolution of such products in the\nordinary  course of business of  GateField's  product lines as they exist on the\nsecond  anniversary of the Effective Date of this Agreement or (ii)  \"knockoffs\"\nsubstantially  similar to such  products,  in each case subject to the rights of\nany sublicensee authorized under Sections 2.2(b) and (c) hereof.\n\n5.   REPRESENTATIONS, WARRANTIES, AND DISCLAIMERS\n\n     5.1. Each  Licensor  Party  represents  and warrants that it has all right,\ntitle, and interest in and to the Patents  purported to be licensed by it to the\nLicensee  Party and all power and  authority  necessary to grant the licenses to\nsuch  Patents  that are  granted by the  Licensor  Party to the  Licensee  Party\nhereunder.\n\n     5.2. Each Licensor Party represents and warrants that neither it nor any of\nits  Affiliates  has the  right or power to  direct  any  third  party to assert\nagainst the Licensee  Party any cause of action based upon the Licensee  Party's\npurported infringement of any patent owned or enforceable by such third party.\n\n     5.3.  Nothing  contained in this Agreement shall be construed as a warranty\nor representation  that the manufacture,  sale, lease, use, or other transfer of\nProgrammable Logic Devices by either party or any component thereof will be free\nfrom infringement of patents, trademarks, copyrights, mask work rights, or other\nintellectual property or other rights of third parties or of the Licensor Party,\nexcept to the extent of the rights expressly  licensed hereunder to the Licensee\nParty  by the  Licensor  Party,  or  that  the  Licensee  Party  will be able to\nmanufacture  or to sell or otherwise  transfer any product based upon the rights\nit receives hereunder from the Licensor Party. Except to the extent, and only to\nthe extent,  expressly stated herein, neither party makes any warranty as to the\naccuracy, sufficiency, or suitability of any information contained in any Patent\nlicensed  hereunder.  Each  Licensee  Party  assumes  the  risk  of  defects  or\ninaccuracies in the Patent or other data or information, if any, supplied by the\nLicensor Party. Neither party shall be under any obligation by this Agreement to\nobtain any patent or, once having obtained a patent,  to maintain that patent in\nforce.\n\n     5.4.  Each party  acknowledges  and agrees that the other party has made no\nstatement or  representation  as to the size of the market for the products that\nmay be made or sold utilizing the licenses granted or to be granted hereunder or\nas to the amount of revenue or  profits to be  received  by the party  obtaining\nsuch licenses. Each party acknowledges that, in entering into this Agreement, it\nis relying  entirely on its own estimate as to the market for the products  that\nmay be made and sold utilizing the license granted and to be granted hereunder.\n\n     5.5. Each party  acknowledges  and agrees that a Programmable  Logic Device\ncontaining SRAM is not and shall not be deemed to be an SRAM Programmable  Logic\nDevice  if all of the  SRAM is User  Memory;  and a  Programmable  Logic  Device\ncontaining SRAM is and shall be deemed to be an SRAM  Programmable  Logic Device\nonly if one or more of the Programmable  Switching  Elements of the Programmable\nLogic Device is controlled by SRAM.\n\n6.   TERM AND TERMINATION\n\n     6.1. The term of this  Agreement  shall commence on the Effective Date and,\nsubject to this Section 6 and to Section 8, shall expire when the last to expire\nof the Patents licensed hereunder expires.\n\n     6.2.  If  either  party  shall  fail to  perform  a  Material  Term of this\nAgreement  and such failure is not cured  within  sixty (60) days after  written\nnotice  to the  defaulting  party  specifying  the  nature of the  default,  the\ncomplaining party shall have the right at its option:\n\n            6.2.1.  to  terminate  all  rights  and  licenses   granted  by  the\ncomplaining party to the defaulting party under this Agreement by giving written\nnotice of such  termination to the defaulting  party,  effective on the sixtieth\n(60th) day after such  termination  notice is given if the  default has not then\nbeen cured; and\/or\n\n            6.2.2. to seek any other remedies available at law or in equity as a\nresult of such failure.\n\n     6.3. Each party agrees that (a) this Agreement is personal to it; (b) if it\nis the subject of a  Termination  Event  described  in Section  1.34.1 or 1.34.2\nhereof,  this  Agreement  shall  automatically  terminate;  and (c) if it is the\nsubject of any other Termination  Event, the other party shall have the right to\nterminate  this Agreement by giving written notice of termination to such party,\nsuch  termination  to be  effective on the tenth (10th) day after such notice of\ntermination  under this Section 6.3 is given in accordance  with this Agreement.\nUpon termination of this Agreement under the provisions of this Section 6.3, the\nrights and licenses granted to the party that was the subject of the Termination\nEvent shall  terminate.  The rights and licenses granted under this Agreement to\nthe other party shall  survive  termination  in accordance  with the  applicable\nterms hereof; provided, however, all such licenses to a party shall terminate no\nlater  than the last to  expire  of any  Patents  of the  other  party  that are\nlicensed hereunder.  Notwithstanding anything in this Agreement to the contrary,\nthe parties shall have the right to use,  lease,  sell, or otherwise  dispose of\nProgrammable  Logic Devices in the process of  manufacture  or in finished goods\ninventory upon the termination of this Agreement.\n\n     6.4. In the event of a Change in Ownership,  the rights and  obligations of\nthe  Acquired  Party shall  continue in full force and effect,  and the Acquired\nParty shall have the right to assign such rights  (including  the  licenses  and\nnon-assertion covenants) to the Acquiring Party, all subject to the following:\n\n            6.4.1.  The Acquiring Party shall agree in writing to be fully bound\nby all the terms and conditions of this Agreement.\n\n            6.4.2.  All  sublicenses  granted  by  the  Acquired  Party  to  the\nAcquiring Party and its Affiliates shall be limited to Internal Use.\n\n            6.4.3.  If  QuickLogic  is the  Acquired  Party,  the license  under\nSection  2.1(a) hereof shall be limited to Antifuse  Programmable  Logic Devices\nfollowing  the Change in Ownership  and any  sublicense  granted  under  Section\n2.1(b)  hereof  following  the Change in Ownership  shall be limited to Internal\nUse.\n\n            6.4.4.  Subject to Section  6.4.6  hereof,  if Actel is the Acquired\nParty,  Actel shall pay to QuickLogic  \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission> if the Change in Ownership occurs within one year after the\nEffective  Date,   \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>  of the  Change in  Ownership  occurs  one or more but less than two\nyears after the Effective Date, \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>  if the Change in  Ownership  occurs two or more but less than three\nyears after the Effective Date, \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>  if the Change in Ownership  occurs three or more but less than four\nyears after the Effective Date, and $0 if the Change in Ownership occurs four or\nmore years after the  Effective  Date (in each case,  less the  balance  owed by\nQuickLogic to Actel, if any, pursuant to Section 3 hereof).\n\n            6.4.5.  Subject  to  Section  6.4.6  hereof,  if  QuickLogic  is the\nAcquired  Party,  QuickLogic  shall  pay to Actel  \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission> if the Change in Ownership occurs within one\nyear after the Effective Date,  \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>  of the  Change in  Ownership  occurs  one or more but less than two\nyears after the Effective Date, \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>  if the Change in  Ownership  occurs two or more but less than three\nyears after the Effective Date, \n<material has been omitted pursuant to a request for confidential treatment and filed separately with the securities exchange commission>  if the Change in Ownership  occurs three or more but less than four\nyears after the Effective Date, and $0 if the Change in Ownership occurs four or\nmore years after the  Effective  Date (in each case,  plus the  balance  owed by\nQuickLogic to Actel, if any, pursuant to Section 3 hereof).  6.4.6. The payments\ndescribed  in Sections  6.4.4 and 6.4.5 hereof shall be due and payable ten (10)\nbusiness  days  following the Change in Ownership,  provided,  however,  that no\npayment  shall be due on account of a Change in  Ownership  if all  Programmable\nLogic Devices made by or for the Acquiring Party or its Affiliates following the\nChange in Ownership are  exclusively for the Internal Use of the Acquiring Party\nand its Affiliates.\n\n     6.5. If,  following a Change in Ownership or in  anticipation  thereof,  an\nAcquiring  Party or its Affiliate  asserts  during the term of this Agreement or\nthereafter,  directly or indirectly,  any cause of action based,  in whole or in\npart, upon the purported infringement by the Non-Acquired Party or its suppliers\nor  customers,  mediate or immediate,  during the term of this  Agreement of any\nNon-Assertion Patent as a result of the manufacture, use, importation, offer for\nsale, sale, lease,  distribution,  or other transfer of (a) a Programmable Logic\nDevice,  if Actel is the  Non-Acquired  Party,  (b) a Programmable  Logic Device\nother than an SRAM Programmable  Logic Device, if QuickLogic is the Non-Acquired\nParty and QuickLogic  had not previously  been subject to a Change in Ownership,\nor (c) an Antifuse  Programmable Logic Device, if QuickLogic is the Non-Acquired\nParty and QuickLogic had previously been subject to a Change in Ownership,  then\nthe Non-Acquired Party may terminate all rights and licenses granted by it under\nthis  Agreement by giving  written  notice of such  termination to the Acquiring\nParty,  effective on the thirtieth (30th) day after such  termination  notice is\ngiven if the claim is then still being asserted against the Non-Acquired  Party,\nprovided,  however, that the Non-Acquired Party shall have no right to terminate\nthe rights and  licensed  granted by it under this  Agreement  if,  prior to the\nassertion by the  Acquiring  Party or its  Affiliate of a  Non-Assertion  Patent\nreferred to above (but  following  the Change in  Ownership  or in  anticipation\nthereof), the Non-Acquired Party had first asserted,  directly or indirectly,  a\ncause of action based, in whole or in part,  upon the purported  infringement by\nthe  Acquiring  Party  or  its  Affiliate  of  any  patent  as a  result  of the\nmanufacture,  use, importation,  offer for sale, sale, lease,  distribution,  or\nother  transfer of (i) an Antifuse  Programmable  Logic Device,  if Actel is the\nNon-Acquired  Party and QuickLogic  had  previously  been subject to a Change in\nOwnership,  (ii) a  Programmable  Logic Device  other than an SRAM  Programmable\nLogic  Device,  if  Actel  is the  Non-Acquired  Party  and  QuickLogic  had not\npreviously been subject to a Change in Ownership,  or (iii) a Programmable Logic\nDevice, if QuickLogic is the Non-Acquired Party.\n\n     6.6. Neither  suspension nor termination  shall excuse the defaulting party\nfrom any  obligation  incurred  hereunder  prior to the  date of  suspension  or\ntermination.\n\n     6.7.  The terms and  conditions  of  Sections 1, 3, 5, 6, 7, 8, and 9 shall\nsurvive the expiration,  termination, or cancellation of this Agreement from any\ncause.\n\n7.   ENFORCEMENT\n\n     7.1. The formation, effect, performance, and construction of this Agreement\nshall be governed by the laws of the State of California of the United States of\nAmerica,  except  those  pertaining  to  choice of laws,  as though  made by two\nparties  residing in  California so as to be fully  performed  with the State of\nCalifornia.\n\n     7.2. IN NO EVENT SHALL  EITHER  PARTY HAVE ANY  LIABILITY  TO THE OTHER FOR\nINDIRECT,  INCIDENTAL,  OR CONSEQUENTIAL  DAMAGES,  INCLUDING BUT NOT LIMITED TO\nLOST PROFITS,  OR FOR SPECIAL,  EXEMPLARY,  OR PUNITIVE DAMAGES,  AND EACH PARTY\nCOVENANTS  NOT TO SEEK ANY SUCH DAMAGES WITH RESPECT TO ANY CLAIM ARISING OUT OF\nOR RELATED TO THIS AGREEMENT.\n\n8.   ASSIGNMENT OF AGREEMENT\n\n     8.1.  Except as  expressly  set forth in Section  6.4 above,  neither  this\nAgreement nor the rights  granted and  obligations  undertaken  pursuant to this\nAgreement may be assigned, sold, or otherwise transferred,  in whole or in part,\nprovided,  however,  that this  Agreement  may be  assigned  by either  party in\nconnection  with  its  reincorporation  under  the  laws of a state  other  than\nCalifornia.\n\n     8.2. For all  purposes of Section 6, a reference to any license  granted by\neither party under this Agreement shall also be deemed to be a reference to that\nparty's  covenants  under Section 4 of this Agreement not to assert claims under\nits patents.\n\n     8.3. The parties  acknowledge and agree that this Agreement is an executory\ncontract governed by 11 U.S.C. ss.ss.  365(c)(i),  (e)(ii), and (n) in the event\nof a bankruptcy case with regard to either party. As such, this Agreement is not\nsubject to  assumption  or  assignment  in the event of  bankruptcy  without the\nconsent of the non-debtor party.\n\n9.   MISCELLANEOUS\n\n     9.1. This Agreement,  the Settlement  Agreement and Mutual Release, and the\nSecurity  Agreements  incorporate the entire  understanding  of the parties with\nrespect to the subject matter of this  Agreement and merge all prior  agreements\nand understanding between the parties,  whether oral or written, with respect to\nthis subject matter.  This Agreement shall be interpreted in accordance with the\nlaw of California  such as applied to a contract to be wholly  performed  within\nthe state of California.\n\n     9.2. Except as may be expressly set forth herein, nothing in this Agreement\nshall be construed as obligating any party to manufacture or sell any particular\nproduct  hereunder or as restricting  the right of either party herein to engage\nin any  development  of, or to make,  have made,  use,  lease,  loan,  sell,  or\notherwise dispose of any product,  other than the products with respect to which\nlicenses are herein granted.\n\n     9.3. All notices  required or permitted to be given  hereunder  shall be in\nwriting and shall be sent by  facsimile,  receipt to be  confirmed by sender via\ntelephone call, or by registered or certified mail,  postage prepaid,  addressed\nas  follows:\n\nIf  to  QuickLogic:                  QuickLogic  Corporation\n                                     1277  Orleans  Drive\n                                     Sunnyvale, California 94089 \n                                     Telecopier No.: 408-990-4040\n                                     Attention: President\n\nIf to Actel:                         Actel Corporation\n                                     955 East Arques Avenue\n                                     Sunnyvale, CA 94086\n                                     Telecopier No.:  (408) 739 - 0706\n                                     Attention:  President\n\n            Either  party may change its address by a notice  given to the other\nparty in the manner set forth above.  Notices given as herein  provided shall be\nconstrued to have been given (a) on the day received if sent by facsimile or (b)\nfive (5) days after the sending thereof by registered or certified mail,  unless\nthe  receiving  party  proves that the notice was  actually  received at a later\ndate.\n\n     9.4. The failure of any party hereunder to perform any obligation otherwise\ndue as a result of governmental action, laws, orders, regulations, directions or\nrequests, or as a result of events, such as war, acts of public enemies, strikes\nor other labor disturbances,  fires,  floods, acts of God, or any causes of like\nor  different  kind  beyond the control of the parties is excused for so long as\nsaid cause  exists to the  extent  such  failure is caused by such lain,  order,\nregulation, direction, request, or other event.\n\n     9.5. No failure or delay on the part of either party in the exercise of any\nright  or  privilege  hereunder  shall  operate  as a waiver  thereof  or of the\nexercise  of any other  right or  privilege  hereunder  nor shall any  single or\npartial  exercise  of any such  right or  privilege  preclude  other or  further\nexercise thereof or of any other right or privilege.\n\n     9.6. Any title or caption  included herein is for  convenience  only and is\nnot to be used in the interpretation of this Agreement.\n\n     9.7.  Nothing  contained  herein or done pursuant to this  Agreement  shall\nconstitute  the parties as entering upon a joint venture or partnership or shall\nconstitute  either  party hereto the agent of the other party for any purpose or\nin any sense whatsoever.\n\n     9.8.  This  Agreement  may  be  executed  simultaneously  in  two  or  more\ncounterparts,  each of  which  shall be  deemed  an  original,  but all of which\ntogether constitute one and the same Agreement.\n\n     9.9. Should any clause, sentence, or paragraph of this Agreement judicially\nbe declared to be  invalid,  unenforceable,  or void,  such  decision  shall not\ninvalidate or void the remainder of this Agreement, and the parties hereby agree\nthat the part or parts of this  Agreement so held to be invalid,  unenforceable,\nor void shall be deemed to have been stricken,  and the remainder shall have the\nsame force and effect as if such part or parts had never been included herein.\n\n     IN WITNESS  WHEREOF,  the parties have caused this Agreement to be executed\nin their respective corporate names.\n\n   ACTEL CORPORATION                      QUICKLOGIC CORPORATION\n\nBy: \/s\/ John C. East                      By: \/s\/ E. Thomas Hart\n\nName:   John C. East                      Name:   E. Thomas Hart\n\nTitle:  President &amp; CEO                   Title:  President &amp; CEO\n\nDate:   August 25, 1998                   Date:   August 25, 1998\n\n<\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/material><\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[6560,8625],"corporate_contracts_industries":[9512],"corporate_contracts_types":[9613,9616],"class_list":["post-42653","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-actel-corp","corporate_contracts_companies-quicklogic-corp","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\/42653","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=42653"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42653"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42653"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42653"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}