{"id":42654,"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-sandisk-corp-and-sharp-corp.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"patent-cross-license-agreement-sandisk-corp-and-sharp-corp","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/patent-cross-license-agreement-sandisk-corp-and-sharp-corp.html","title":{"rendered":"Patent Cross License Agreement &#8211; SanDisk Corp. and Sharp Corp."},"content":{"rendered":"<pre>\n                         PATENT CROSS LICENSE AGREEMENT\n                                     BETWEEN\n                    SANDISK CORPORATION AND SHARP CORPORATION\n\n\n         This agreement  (\"Agreement\") is made by and among SanDisk Corporation,\na  Delaware  corporation,  having  an office at 140  Caspian  Court,  Sunnyvale,\nCalifornia  94089,  U.S.A.  (hereinafter  referred to as  \"SanDisk\"),  and Sharp\nCorporation,  a  Japanese  corporation,  having an office at 22-22  Nagaike-Cho,\nAbeno-Ku, Osaka 545 Japan (\"SHARP\").\n\n\n                                   WITNESSETH\n\n         WHEREAS,  SanDisk and Sharp each own  patents  and patent  applications\ncovering inventions  pertinent to the design and manufacture of flash memory and\nother semiconductor products; and\n\n         WHEREAS,  SanDisk  and  Sharp  are both  engaged  in  their  respective\ncontinuing  programs  of  research  and  development  of  flash  memory  related\ntechnology,  which will result in new  discoveries  and inventions many of which\nwill become the subject of new patent applications and patents; and\n\n         WHEREAS,  SanDisk  and  Sharp  each  want  to  respect  the  technology\ncontributions  of the other and want to  increase  their  freedom  to design and\nmanufacture  their own new products  without  infringing the rights of the other\nunder any patent or patent application owned or controlled by the other;\n\n         NOW,  THEREFORE,  in consideration of the mutual covenants and promises\ncontained herein, the parties agree as follows:\n\n         1.       DEFINITIONS.\n\n                  1.1a \"Subsidiary\" shall mean any corporation, company or other\nentity  more  than  fifty  percent  (50%) of whose  outstanding  shares or stock\nentitled to vote for the election of  directors  (other than any shares or stock\nwhose voting rights are subject to restriction) is owned or controlled by either\nSanDisk or Sharp, directly or indirectly.\n\n                  1.2 \"Effective Date\" shall be the date on which this Agreement\nis executed by Sharp.\n\n                  1.3  \"Integrated   Circuit  Products\"  shall  mean  a  unitary\nelectronic  circuit,  the active  circuit  elements of which are  fabricated  of\nsilicon  semiconductive  material,  such device  being in the form of a separate\ndiscrete device, or integral with a silicon wafer and severable therefrom.\n\n                  1.3a  \"Flash   Memory   Integrated   Circuit\"   shall  mean  a\nnon-volatile  memory  integrated  circuit that is electrically  programmable and\nelectrically erasable, and consists of (1) flash\n\n\n\n\n\n\nmemory  cells,  each of which has a floating  gate and utilizes no more than two\ndifferent  floating  gate  charge  levels  representing  no more than one bit of\ninformation,  and (2) any on-chip  control,  I\/O,  and other  support  circuitry\nnecessary to the operation of the memory integrated  circuit,  in both wafer and\nchip form.\n\n                  1.4  \"MLC  Flash  Memory  Integrated  Circuit\"  shall  mean  a\nnon-volatile  memory  integrated  circuit that is electrically  programmable and\nelectrically erasable, and consists of (1) flash memory cells, each of which has\na floating  gate and  utilizes at least  three  different  floating  gate charge\nlevels  representing  more  than  one bit of  information,  and (2) any  on-chip\ncontrol,  I\/O, and other  support  circuitry  necessary to the  operation of the\nmemory integrated circuit, in both wafer and chip form.\n\n                  1.5 \"Flash  Memory  Device\"  shall mean a memory  device which\nconsists   of  one  or  more  Flash   Memory   Integrated   Circuits   with  the\nhousing\/packaging and any supporting means therefor.\n\n                  1.6 \"MLC Flash Memory Device\" shall mean a memory device which\nconsists  of  one  or  more  MLC  Flash  Memory  Integrated  Circuits  with  the\nhousing\/packaging and any supporting means therefor.\n\n                  1.7a \"Flash Memory  System\"  shall mean an integrated  circuit\nmemory system (including  hardware and\/or  software),  which contains (i) one or\nmore  interconnected  Flash Memory Devices or Flash Memory Integrated  Circuits,\n(ii)  in-system  control,   I\/O  and  other  support  circuit(s)  that  are  (a)\ninterconnected  with  the  Flash  Memory  Devices  or  Flash  Memory  Integrated\nCircuits,  and (b)  necessary  to the  operation of the memory  system,  with or\nwithout the housing\/packaging and supporting means therefor.\n\n                  1.7b  \"MLC  Flash  Memory  System\"  shall  mean an  integrated\ncircuit memory system (including  hardware and\/or software),  which contains (i)\none or  more  interconnected  MLC  Flash  Memory  Devices  or MLC  Flash  Memory\nIntegrated  Circuits,  (ii) in-system control,  I\/O and other support circuit(s)\nthat are (a)  interconnected  with the MLC  Flash  Memory  Devices  or MLC Flash\nMemory  Integrated  Circuits,  and (b)  necessary to the operation of the memory\nsystem, with or without the housing\/packaging and supporting means therefor.\n\n                  1.8  \"Triple-poly  Flash  Memory  Device\"  shall mean either a\nFlash  Memory  Device or a MLC  Flash  Memory  Device in which the Flash  Memory\nIntegrated Circuit(s) or the MLC Flash Memory Integrated Circuit(s), as the case\nmay be,  utilizes  poly-to-poly  erase and is  manufactured  on a  semiconductor\nfabrication process which utilizes three layers of polysilicon.\n\n                  1.8a  \"Triple-Poly  Flash Memory  Product\" shall mean either a\nTriple-poly  Flash Memory Device,  a Flash Memory System,  or a MLC Flash Memory\nSystem in which Triple-poly Flash Memory Devices are included.\n\n                                      -2-\n\n\n\n\n\n                  1.8b \"Etox Flash Product\" shall mean (1) a Flash Memory Device\nor a MLC Flash Memory Device which  utilizes poly to  source\/substrate  erase or\nprogram;  or (2) a Flash Memory  System or MLC Flash Memory  System in which all\nFlash  Memory  Devices   and\/or  MLC  Flash  Memory  Devices   utilize  poly  to\nsource\/substrate erase or program.\n\n                  1.9 \"Third  Party  Flash  Software\"  shall mean  software  (in\neither  source code or object code form) (1) which is used  primarily to support\nor enhance the  operations of Flash Memory  Devices,  MLC Flash Memory  Devices,\nFlash Memory Systems,  or MLC Flash Memory Systems,  (2) which is not created or\nauthored by  employee(s) of Sharp or Sharp's  Subsidiaries  or of San Disk or of\nSanDisk's Subsidiaries, and (3) the copyright ownership of which does not lie in\nSharp or Sharp's Subsidiaries or SanDisk or SanDisk's Subsidiaries.\n\n                  1.9a \"Flash  Business\"  shall mean those  units,  entities and\nassets  within  a  company  whose  primary  activity  or  usage  is  to  design,\nmanufacture,  or sell Flash  Memory  Devices,  MLC Flash Memory  Devices,  Flash\nMemory Systems, or MLC Flash Memory Systems.\n\n                  1.10  \"SanDisk  Patents\"  shall  mean all  classes or types of\npatents,  utility  models and design  patents  (including,  without  limitation,\noriginals or divisions,  continuations,  continuations-in-part  or reissues), in\nall countries or  jurisdictions  of the world now owned or controlled by SanDisk\nor acquired by SanDisk  during the term of this  Agreement  which (a) are issued\nprior to the  expiration or termination  of this  Agreement,  and (b) except for\nconsideration  paid to employees,  have no requirement to pay  consideration  to\nanother for the grant of a license  under this  Agreement,  and (c) apply to the\nuse or manufacture of Flash Memory Integrated Circuits,  Flash Memory Devices or\nFlash Memory Systems.\n\n                  1.11  \"Sharp  Patents\"  shall  mean  all  classes  or types of\npatents,  utility  models and design  patents  (including,  without  limitation,\noriginals or divisions,  continuations,  continuations-in-part  or reissues), in\nall countries or  jurisdictions of the world now owned or controlled by Sharp or\nacquired by Sharp during the term of this  Agreement  which (a) are issued prior\nto the expiration or termination of this Agreement, (b) except for consideration\npaid to employees,  have no requirement to pay  consideration to another for the\ngrant of a license under this Agreement, and (c) apply to the use or manufacture\nof Flash  Memory  Integrated  Circuits,  Flash  Memory  Devices or Flash  Memory\nSystems.\n\n                  1.12 \"SanDisk Licensed  Products\" shall mean any SanDisk Flash\nMemory Integrated Circuits,  SanDisk Flash Memory Devices,  SanDisk Flash memory\nSystems,  and Third  Party  Flash  Software  distributed  or sold by  SanDisk in\nconjunction with a SanDisk Licensed Product, and shall not include any MLC Flash\nMemory  Integrated  Circuits,  MLC Flash  Memory  Devices,  or MLC Flash  Memory\nSystems.\n\n                  1.13  \"Sharp  Licensed  Products\"  shall mean any Sharp  Flash\nMemory  Integrated  Circuits,  Sharp Flash Memory Devices and Sharp Flash Memory\nSystems; and Third Party Flash Software where such Third Party Flash Software is\ndistributed or sold by Sharp in conjunction  with a Shap Licensed  Product,  and\nshall not include any Triple-Poly Flash memory Device or Product,\n\n                                      -3-\n\n\n\n\nMLC Flash Memory  Integrated  Circuits,  MLC Flash  Memory  Devices or MLC Flash\nMemory Systems.\n\n                  1.14     \"Net Sales\" shall mean the following:\n\n                           (A) \"Net  Sales\" with  respect to any Sharp  Licensed\nProducts  which  are first  sold in the form of Flash  Memory  Devices  or Flash\nMemory Integrated  Circuits as individual items shall mean the invoice price for\nsaid Memory Devices or Flash Memory  Integrated  Circuits billed by the IC Group\nof Sharp and\/or  Subsidiaries  of Sharp;  except  that,  where such sales are to\nanother  Sharp  subsidiary,  division  or group,  then Net Sales  shall mean the\nhigher of the invoice price billed,  or the then current  average  selling price\n(ASP) for such products to third party customers of Sharp.\n\n                           (B) \"Net  Sales\" with  respect to any Sharp  Licensed\nProducts which are first sold in the form of Flash Memory Systems shall mean the\ntotal  invoice  price of all Flash  Memory  Devices or Flash  Memory  Integrated\nCircuits used in such Flash Memory Systems when sold as individual  items by the\nIC Group of Sharp or its Subsidiaries to third party customers of Sharp, or when\nthere are no comparable  sales of the same Flash Memory  Devices or Flash Memory\nIntegrated  Circuits as individual items, Net Sales shall mean the invoice price\nfor equivalent Flash Memory Devices or Flash Memory Integrated  Circuits sold as\nindividual  items by the IC Group  of  Sharp or  Subsidiaries  of Sharp to third\nparty customers of Sharp.  In case there are no equivalent  Flash Memory Devices\nor Flash Memory Integrated  Circuits by reason of the fact that the Flash Memory\nSystem  includes only Flash Memory Devices or Flash Memory  Integrated  Circuits\nwith a total  capacity of less than the  capacity of the lowest  capacity  Flash\nMemory  Integrated  Circuit or Flash Memory Device then being sold by Sharp, Net\nSales of such Flash  Memory  Systems  shall be  calculated  by  multiplying  the\ninvoice price of the lowest  capacity Flash Memory  Integrated  Circuit or Flash\nMemory Device,  whichever is lower,  then being sold to third party customers of\nSharp,  by the fraction A\/B, where A is the capacity of the Flash Memory Devices\nor Flash Memory Integrated  Circuits included in the Flash Memory System,  and B\nis the capacity of the lowest capacity Flash Memory Integrated  Circuit or Flash\nMemory Device then being sold by Sharp. In no case, however,  shall Net Sales of\nsuch Flash Memory  Systems  exceed the invoice price of the Flash Memory Systems\nthemselves.  If the Flash Memory System  includes  Flash Memory Devices or Flash\nMemory Integrated  Circuits with a total capacity of less than 1 megabit (Mbit),\nthen sales of such Flash Memory Systems shall not be included in Net Sales.\n\n                           (C) In either case, the invoice price shall be net of\ndiscounts  actually  granted,  insurance  fees and  packing  and  transportation\ncharges as invoiced separately to customers, refunds actually paid in connection\nwith product returns,  and duties and sales taxes actually  incurred and paid by\nSharp and\/or Subsidiaries in connection with delivery of such Licensed Products.\n\n                           (D) Notwithstanding the above, once the invoice price\nof Flash Memory Devices or Flash Memory  Integrated  Circuits have been included\nin the Net Sales under paragraph  1.14(a),  any sales of the Flash Memory System\nincorporating  said Flash  Memory  Devices or Flash Memory  Integrated  Circuits\nshall not be included in Net Sales under paragraph (B).\n\n                                      -4-\n\n\n\n\n\n         2.       MUTUAL RELEASES.\n\n                  2.1 SanDisk hereby  releases,  acquits and forever  discharges\nSharp, and only Sharp,  from any and all claims or liability for infringement of\nany SanDisk  Patents  arising  prior to the  Effective  Date of this  Agreement,\nwithin the scope of the license granted herein by SanDisk.\n\n                  2.2 Sharp  hereby  releases,  acquits and  forever  discharges\nSanDisk, and only SanDisk, from any and all claims or liability for infringement\nof any Sharp  Patents  arising prior to the  Effective  Date of this  Agreement,\nwithin the scope of the license granted herein by Sharp.\n\n         3.       GRANT OF LICENSES BY SANDISK.\n\n                  3.1   SanDisk   hereby   grants   to   Sharp    non-exclusive,\nnon-transferable, worldwide licenses under SanDisk Patents (without the right to\nsublicense)  to make,  to have made,  to use, to sell, to offer for sale (either\ndirectly or indirectly), and to import, Sharp Licensed Products.\n\n                  3.2 The  license  grant of  Paragraph  3.1  does not  cover or\nextend to Sharp's  manufacture of products for a third party (commonly  referred\nto as foundry  activities)  unless such products' design  originates wholly with\nSharp or is owned or controlled wholly by Sharp;  provided,  however,  that this\nexclusion  shall not apply to (1) Sharp's  library tools or standard  cells that\nSharp  incorporates into any standard or custom integrated circuit (IC) products\nthat  Sharp  manufactures  for its  customers,  or (2) any  Sharp  semiconductor\nmanufacturing  processes which Sharp otherwise  utilizes in manufacturing  Sharp\nproducts of Sharp's own design.\n\n                  3.3 Nothing in these grants to Sharp or otherwise contained in\nthis  Agreement  shall either  expressly  or  impliedly  give Sharp the right to\nlicense  SanDisk  Patents  to others.  Nor shall the sale of any Sharp  Licensed\nProducts provide or give rise to an implied  license,  by estoppel or otherwise,\nin favor of third parties to any SanDisk Patents,  covering combinations of such\nSharp  Licensed  Products  with any other  products  or  methods  of using  such\ncombinations, except to the extent that the sale of such Sharp Licensed Products\nexhausts the relevant SanDisk Patents.\n\n                  3.4 The releases and licenses granted herein to Sharp shall be\nextended to all Sharp  Subsidiaries in existence as of the Effective Date. Sharp\nmay, at its own  discretion,  extend the licenses  granted  under  Paragraph 3.0\nhereof to any Sharp Subsidiary that comes into existence during the term of this\nAgreement;  provided, however, that the licenses so extended shall be limited to\nthe using,  making,  having  made,  selling and offering to sell  (directly  and\nindirectly),  and importing Sharp Licensed Products only. The patents of a Sharp\nSubsidiary  to which such licenses have been so extended will be included in the\nSharp Patents.  The extension to a Sharp  Subsidiary shall apply only during the\ntime period when the business  entity meets all  requirements  of a  Subsidiary.\nUpon  written  request by SanDisk,  Sharp will give  SanDisk  written  notice to\nidentify any Sharp Subsidiary to which such a license has been extended.\n\n                                      -5-\n\n\n\n\n\n         4.       GRANT OF LICENSES BY SHARP.\n\n                  4.1   Sharp   hereby   grants   to   SanDisk    non-exclusive,\nnon-transferable,  royalty-free, worldwide licenses under Sharp Patents (without\nthe right to  sublicense)  to make,  to have made,  to use, to sell and offer to\nsell (either directly or indirectly), and to import SanDisk Licensed Products.\n\n                  4.2 The  license  grant of  Paragraph  4.1  does not  cover or\nextend to SanDisk's manufacture of products for a third party (commonly referred\nto as foundry  activities)  unless such products' design  originates wholly with\nSanDisk or is owned or controlled  wholly by SanDisk;  provided,  however,  that\nthis exclusion shall not apply to (1) SanDisk's  library tools or standard cells\nthat SanDisk  incorporates into any standard or custom  integrated  circuit (IC)\nproducts  that  SanDisk  manufactures  for its  customers,  or (2)  any  SanDisk\nsemiconductor  manufacturing  processes  which  SanDisk  otherwise  utilizes  in\nmanufacturing SanDisk products of SanDisk's own design.\n\n                  4.3 Nothing in this grant to SanDisk or otherwise contained in\nthis  Agreement  shall either  expressly or impliedly  give SanDisk the right to\nlicense Sharp Patents to others. Nor shall sale of any SanDisk Licensed Products\nprovide or give rise to an implied license,  by estoppel or otherwise,  in favor\nof third  parties to any Sharp  Patents  covering  combinations  of such SanDisk\nLicensed Products with any other products or methods of using such combinations,\nexcept to the extent that the sale of such SanDisk  Licensed  Products  exhausts\nthe relevant Sharp Patents.\n\n                  4.4 The releases and licenses  granted herein to SanDisk shall\nbe extended to all SanDisk  Subsidiaries  in existence as of the Effective Date.\nSanDisk may, at its own discretion,  extend the licenses granted under Paragraph\n4.0 hereof to any SanDisk  Subsidiary that comes into existence  during the term\nof this  agreement;  provided,  however,  that the licenses so extended shall be\nlimited  to the  using,  making,  having  made,  selling  and  offering  to sell\n(directly and indirectly),  and importing  SanDisk  Licensed  Products only. The\npatents of a SanDisk  Subsidiary  to which such  licenses  have been so extended\nwill be included in the SanDisk Patents.  The extension to a SanDisk  Subsidiary\nshall  apply only  during the time period  when the  business  entity  meets all\nrequirements of a Subsidiary.  Upon written request by Sharp,  SanDisk will give\nSharp written notice to identify any SanDisk  Subsidiary to which such a license\nhas been extended.\n\n                  4.5 Sharp shall not assert,  directly  or  indirectly,  in any\nmanner or in any forum,  any  patents or patent  claims  against any SanDisk MLC\nFlash Memory  Device or SanDisk MLC Flash Memory  System during the term of this\nAgreement,  until such time as Sharp makes commercial sales of its own MLC Flash\nMemory Devices and\/or Systems.\nSharp shall give SanDisk notice of such sales.\n\n         5.       PAYMENTS.\n\n                  5.1 As further  consideration  for the  licenses  and releases\ngranted to Sharp herein,  Sharp shall pay to SanDisk,  unless this  Agreement is\nsooner terminated by Sharp pursuant to paragraph 7.4, an initial  non-refundable\nLicense  Fee of U.S.  *, and  thereafter,  royalties  of U.S.  * to be earned as\nfollows:\n\n                                      -6-\n*Confidential treatement requested.\n\n\n\n\n       (1)      U.S. * for the period from the Effective Date to March 31, 1997\n       (2)      U.S. * for the period from April 1, 1997 to September 30, 1997\n       (3)      U.S. * for the period from October 1, 1997 to March 31, 1998\n\nPayment of the sums due under this  paragraph  5.1 shall be in  accordance  with\nparagraph 5.2.\n\nRoyalties  for  the  balance  of the  term of this  Agreement  shall  be paid in\naccordance with paragraph 5.2a.\n\n                  5.2 Sharp shall make payments of the license fee and royalties\ndue in accordance with paragraph 5.1 as follows:\n\n        (1)      U.S. * on or before December 27, 1996\n        (2)      U.S. * on or before April 30, 1997\n        (3)      U.S. * on or before October 30, 1997\n        (4)      U.S. * on or before April 30, 1998\n\n\n                   5.2a Sharp shall pay to SanDisk  royalties on  worldwide  Net\nSales of all Sharp Licensed Products,  exclusive of Sharp Licensed Products sold\nto Intel  Corporation  and\/or  SanDisk,  from and  after  April 1,  1998 for the\nbalance  of the  term of this  agreement,  calculated  on a  quarterly  basis in\naccordance with the percentage royalty set forth on the following schedule:\n\n   (1) For the period from April 1, 1998 to March 31, 1999, * of net sales\n   (2) For the period from April 1, 1999 to March 31, 2000, * of net sales\n   (3) For the period from April 1, 2000 to March 31, 2001, * of net sales, and;\n   (4) For the period from April 1, 2001 to March 31, 2002, * of net sales.\n\n                   5.2b  Starting  April 1, 1998,  Sharp agrees to make payments\ntwice a year  for  royalties  earned  in the  two  previous  calendar  quarters.\nPayments  will be made (1) on or before  October 30 for quarters  ending June 30\nand September 30; (2) on or before April 30 for quarters  ending December 31 and\nMarch 31.  Royalties shall accrue upon the first sale,  transfer or lease of any\nSharp Licensed Product.\n\n                   5.3 All  payments  by  Sharp  hereunder  shall be made net of\napplicable  Japanese  withholding  taxes. All payments shall be in U.S. dollars,\nwire  transferred to SanDisk in accordance  with the  instructions  set forth on\nExhibit  A.  SanDisk  shall  bear all taxes  imposed  on it with  respect to the\npayments  under  this  Section,  provided,  however,  that  if  so  required  by\napplicable  law,  Sharp  shall  withhold  the  amount  of  taxes  levied  by the\nGovernment of Japan on payments to be made by Sharp pursuant to this  Agreement,\nand shall promptly make payment of the withheld  amount to the  appropriate  tax\nauthorities of the  Government of Japan and shall  transmit to SanDisk  official\ntax  receipts  or other  evidence  issued by said  appropriate  tax  authorities\nsufficient to enable  SanDisk to support a claim for United States tax credit in\nrespect to such withheld taxes so paid by Sharp.\n\n                                      -7-\n* Confidential treatement requested.\n\n\n\n\n                  5.4 Starting on or before July 30, 1998,  Sharp shall  provide\nto SanDisk a statement of quarterly  worldwide sales of Sharp Licensed  Products\nwithin 30 days of the end of each calendar quarter. SanDisk shall have the right\nto have an independent third party accounting firm audit, at SanDisk's  expense,\nSharp's  compliance with this section 5.0, upon reasonable  notice to Sharp. The\nauditor  will  maintain  in  confidence  any cost,  margin,  or other  financial\ninformation obtained during the course of the audit, and shall not disclose such\ninformation  to SanDisk or any third party.  The auditor may only notify SanDisk\nwhether or not Sharp is in  compliance  with this section 5.0, and, if not, what\nthe correct  royalties  should have been.  Such audit shall be conducted no more\nthan once a year.  Sharp shall maintain  appropriate  records for one year after\nthe end of each accounting  year. Sharp shall promptly remedy any failure to pay\nthe correct  royalty.  Reimbursement  will be made for any  overpayment.  To the\nextent an exchange  rate between  Japanese yen and U.S.  dollars is required for\nany obligation  hereunder,  the rate used shall be the exchange rate on the last\nbusiness day of the quarterly  statement required herein which covers the period\nin which the obligation is due.\n\n         6.       COOPERATION.\n\n                  6.1 At any  time  during  the term of this  agreement,  at the\nrequest of either party,  the parties shall meet and negotiate in good faith for\na patent cross-license covering *. The value of any * patents issued at the time\nof the * negotiations shall be taken into consideration in calculating the terms\nof the *.  However,  neither  party  shall be  obligated  to enter  into  such a\nlicense.\n\n                  6.2 If at any time during the term of this agreement * desires\nto  enter  into  an *  relationship  with * for  the * and * to * of  certain  *\nproducts,  then * shall so inform * and the parties  shall meet and negotiate in\ngood faith such an arrangement;  provided,  however, that neither party shall be\nobligated to enter into such an agreement.\n\n         7.       EFFECTIVE DATE, TERM AND TERMINATION.\n\n                  7.1 This  Agreement  shall become  effective on the  Effective\nDate,  and shall  continue in effect,  unless  sooner  terminated  as  elsewhere\nprovided in this Agreement,  through March 31, 2002, expiring at the end of such\nday.\n\n                  7.2a If either party hereto commits a material  breach of this\nAgreement  and does not correct such breach  within  forty-five  (45) days after\nwritten notice complaining thereof is given to such party, this Agreement may be\nterminated  forthwith  by written  notice to that  effect  from the  complaining\nparty.\n\n                  7.2b  Either  party may  terminate  this  Agreement  by giving\nwritten notice of termination to the other at any time upon or after:\n\n                                      -8-\n* Confidential treatement requested.\n\n\n\n\n                           (1) the filing by the other  party of a  petition  in\n                               bankruptcy or insolvency;\n\n                           (2) any adjudication that the other party is bankrupt\n                               or insolvent;\n\n                           (3) the filing by the other party of any  petition or\n                               answer seeking  reorganization,  readjustment  or\n                               arrangement   of  its  business   under  any  law\n                               relating to bankruptcy or insolvency;\n\n                           (4) the   appointment   of  a  receiver  for  all  or\n                               substantially  all of the  property  of the other\n                               party;\n\n                           (5) the making by the other  party of any  assignment\n                               for the benefit of creditors;\n\n                           (6) the   institution  of  any  proceedings  for  the\n                               liquidation  or winding  up of the other  party's\n                               business or for the  termination of its corporate\n                               charter.\n\n                  This Agreement shall  terminate on the forty-fifth  (45th) day\nafter such notice of termination is given.\n\n                  7.3a If this  Agreement  is  terminated  pursuant to Paragraph\n7.2(a),  the licenses granted to the defaulting party and its Subsidiaries shall\nterminate  forthwith,  but the licenses granted the non-defaulting party and its\nSubsidiaries  shall survive such termination for the balance of the term of this\nAgreement.  If this Agreement is terminated  pursuant to Paragraph  7.2(b),  the\nlicenses granted by the non-terminating  party shall survive the termination for\nthe balance of the term of this Agreement. Regardless of the date of termination\npursuant to Paragraph  7.2(b),  and to the extent that licenses granted to Sharp\nherein survive such  termination,  the payments owing by Sharp under  Paragraphs\n5.1, 5.2,  5.2a, and 5.2b shall be made as scheduled to SanDisk or its successor\ncompany.\n\n                  7.3b In the event  that  SanDisk is  acquired  by or is merged\ninto a third  party  company,  or in the event  that  SanDisk  transfers  all or\nsubstantially  all its Flash Business to such third party company,  the licenses\ngranted by Sharp to SanDisk under Paragraph 4.0 hereof may be transferred to the\ncombined company; provided,  however, that (a) the licenses so transferred shall\nbecome effective only from the date of such merger,  acquisition, or transfer of\nthe Flash Business,  and (b) the licenses so transferred shall be limited to the\nusing,  making,   having  made,  selling  and  offering  to  sell  (directly  or\nindirectly), and importing SanDisk Licensed Products only.\n\n                  7.3c In the event that Sharp is  acquired by or is merged into\na third party company, or in the event that Sharp transfers all or substantially\nall its Flash  Business to such third party  company,  the  licenses  granted by\nSanDisk to Sharp under  Paragraph 3.0 hereof may be  transferred to the combined\ncompany;  provided,  however,  that (a) the licenses so transferred shall become\neffective  only from the date of such  merger,  acquisition,  or transfer of the\nFlash Business, and (b) the licenses\n\n                                      -9-\n\n\n\n\nso transferred shall be limited to the using,  making,  having made, selling and\noffereing  to sell  (directly  or  indirectly),  and  importing  Sharp  Licensed\nProducts only.\n\n\n                  7.4  Upon  the  expiration  of this  Agreement,  the  licenses\ngranted  pursuant to this Agreement by one party hereto and its  Subsidiaries to\nthe other  party  hereto and its  Subsidiaries  under  SanDisk  Patents or Sharp\nPatents,  as the case may be, shall terminate.  Sharp shall also have the option\nto  terminate  this  Agreement  at any time  prior to March  31,  1998 by giving\nwritten notice of  termination to SanDisk prior to that date.  Upon such notice,\nthis Agreement and all licenses and releases  thereunder shall terminate.  Sharp\nshall remain  obligated to pay  royalties at the rate set forth in paragraph 5.1\npro-rated up through the date of termination.\n\n                  7.5 At any time after April 1, 2001, either party may initiate\nnegotiations  for a renewal of the cross license  agreement beyond the March 31,\n2002  expiration  date.  The royalty base for the renewed  cross license will be\nreviewed in case  SanDisk's  applicable  Flash patent  applications  are finally\nrejected by the Japanese Patent Office as of March 30, 2002.\n\n         8.       MISCELLANEOUS PROVISIONS.\n\n                  8.1 Each of the parties hereto represents and warrants that it\nhas the right to grant the other the licenses granted hereunder.\n\n                  8.2 Nothing contained in this Agreement shall be construed as:\n\n                           (a) a  warranty  or  representation  by  any  of  the\nparties to this  Agreement  as to the  validity or scope of any class or type of\npatent, utility model and\/or design patent; or\n\n                           (b)   a   warranty   or   representation   that   any\nmanufacture,  sale,  lease,  use  or  other  disposition  of  Licensed  Products\nhereunder  will be free from  infringement  of patents,  utility  models  and\/or\ndesign patents other than those under which licenses have been granted; or\n\n                           (c) an  agreement  to bring or  prosecute  actions or\nsuits against third parties for infringement or conferring any right to bring or\nprosecute actions or suits against third parties for infringement; or\n\n                           (d)  conferring  any  right  to use  in  advertising,\npublicity, or otherwise, any trademark, trade name or names, or any contraction,\nabbreviation or simulation thereof, of either party; or\n\n                           (e) conferring by implication, estoppel or otherwise,\nupon any party licensed hereunder, any license or other right under any class or\ntype of patent,  utility  model or design  patent except the licenses and rights\nexpressly granted hereunder; or\n\n                           (f) conferring by implication, estoppel or otherwise,\nupon any  party  licensed  hereunder,  any  license  or other  right  under  any\ncopyright, maskwork, or trade secret right; or\n\n                                      -10-\n\n\n\n\n                           (g)  an   obligation   to   furnish   any   technical\ninformation or know-how.\n\n                  8.3 This Agreement is personal to the parties,  and, except as\nset forth in paragraph  7.3b and 7.3c,  the Agreement or any right or obligation\nhereunder, is not assignable, whether in conjunction with a change in ownership,\nor the  sale or  transfer  of the  whole or any part of a  party=s  business  or\nassets, either voluntarily, by operation of law, or otherwise, without the prior\nwritten  consent of the other party.  Any such purported  assignment or transfer\nshall be null and void. Assignment by either party of any of its patents, or the\napplications thereof, which qualify as Licensed Patents as defined herein, shall\nnot affect the license rights acquired hereunder to such patent(s), and any such\nassignment shall be subject to the continuing license rights of the other party.\n\n                  8.4 All notices  required or permitted  to be given  hereunder\nshall be in writing and shall be valid and  sufficient  if dispatched by prepaid\nair express or by registered  airmail,  postage  prepaid,  in any post office in\nJapan or in the United States, as the case may be, addressed as follows:\n\n                           If to SanDisk:\n\n                           Ms. Cindy Burgdorf\n                           Senior Vice President and CFO\n                           SanDisk Corporation\n                           140 Caspian Court\n                           Sunnyvale, California 94089\n                                   USA\n\n                           If to Sharp:\n\n                           Division General Manager\n                           Intellectual Property Division\n                           Law Group\n                           Sharp Corporation\n                           22-22 Nagaike-Cho, Abeno-Ku\n                           Osaka 545\n                           JAPAN\n\n                  Either party may give  written  notice of as change of address\nand, after notice of such change has been received,  any notice or request shall\nthereafter be given to such party as above provided at such changed address.\n\n                  8.5 This Agreement  embodies the entire  understanding  of the\nparties  with  respect  to the  subject  matter  hereof,  and  merges  all prior\ndiscussions  between  them,  and  neither of the  parties  shall be bound by any\nconditions,  definitions,  warranties,  understandings or  representations  with\nrespect to the subject matter hereof other than as expressly provided herein. No\noral  explanation  or oral  information  by either  party hereto shall alter the\nmeaning or interpretation of this Agreement. No\n\n                                      -11-\n\n\n\n\nmodification,  alteration,  addition  or  change in the  terms  hereof  shall be\nbinding on either  party  unless  reduced to writing  and duly  executed  by the\nparties.\n\n                  8.6 This Agreement and matters  connected with the performance\nthereof shall be construed, interpreted, applied and governed in all respects in\naccordance  with the laws of the  United  States  of  America  and the  State of\nCalifornia.\n\n                  8.7 Both parties agree that the content of this Agreement will\nnot be  published  or  disclosed  to any third party  without the other  party=s\nwritten  permission  except  as  required  by  law or as  may  be  required  for\nreasonable auditing purposes or Security and Exchange Commission disclosure. The\nparties shall jointly publish the press release  attached hereto as Exhibit B on\na mutually agreed date.\n\n                  8.8  Anything  contained  in this  Agreement  to the  contrary\nnotwithstanding,  the obligations of the parties hereto and of the  Subsidiaries\nof the parties  shall be subject to all laws,  present and future and  including\nexport control laws and regulations,  of any government having jurisdiction over\nthe  parties  hereto  or  the  Subsidiaries  of  the  parties,  and  to  orders,\nregulations,  directions  or requests of any such  government.  Each party shall\nundertake to comply with and be solely  responsible for complying with such laws\napplicable to such party.  The parties  hereto shall be excused from any failure\nto perform any obligation hereunder to the extent such failure is caused by war,\nacts of public enemies, strikes or other labor disturbances, fires, floods, acts\nof God,  or any  causes of like or  different  kind  beyond  the  control of the\nparties.\n\n                  8.9 All disputes  arising  directly under the express terms of\nthis Agreement  shall be resolved as follows:  First,  the senior  management of\nboth  parties  shall meet to attempt to resolve such  disputes.  If the disputes\ncannot be resolved  by the senior  management,  either  party may make a written\ndemand for formal  dispute  resolution.  Within  thirty days after such  written\nnotification,  the parties shall meet for one day with an impartial mediator and\nconsider  dispute  resolution   alternatives   other  than  litigation.   If  an\nalternative  method of dispute  resolution is not agreed upon within thirty days\nafter the one day mediation, either party may begin litigation proceedings.\n\n                                      -12-\n\n\n\n\n\n\n         IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be\nduly executed on the date below written.\n\n\nFOR SHARP CORPORATION                      FOR SANDISK CORPORATION\n\n\nBy:    \/s\/ Atsushi Asada                   By: \/s\/ Eli Harari\n   --------------------------------           -----------------------------\n       Printed Name Atsushi Asada              Printed Name Eli Harari\n       \n       Corporate Senior Executive\nTitle: Vice President                      Title:   President &amp; CEO\n      -----------------------------              --------------------------\n\nDate:    December 24, 1996                 Date:    December 16, 1996\n      -----------------------------              --------------------------\n\n\n\n\n                                      -13-\n\n\n\n\n                                    EXHIBIT A\n\n                                  WIRE TRANSFER\n                             REMITTANCE INFORMATION\n***************************************************************************\n\n         ALL CHARGES WILL BE ABSORBED BY REMITTER.\n\n\n         Bank:                      UNION BANK\n                                    99 Almaden Blvd.\n                                    San Jose, CA  95113\n\n         Bank Swift #:              UBLAUS66\n\n         Account Name:              SANDISK CORPORATION\n\n         Account #:                 6450147581\n\n         Bank ABA#:                 122000496\n\n********************************************************************************\n\n\n\n\n\n\n\n\n                                      -14-\n\n\n\n\n                                    EXHIBIT B\n\n\n\nCONTACT: Cindy Burgdorf                                      NOT FOR RELEASE\n         SanDisk Corporation                                 UNTIL DEC XX, 1996\n\n\n\n                       SHARP AND SANDISK SIGN FLASH PATENT\n\n                            CROSS-LICENSING AGREEMENT\n\n\n         SUNNYVALE,   CA,  Dec.  XX,  1996  --  Sharp  Corporation  and  SanDisk\nCorporation   (NASDAQ:   SNDK)   today   announced   that  they  have  signed  a\ncross-licensing agreement for flash memory related patents.\n\n         Under the  agreement,  Sharp and SanDisk  have  licensed  each  other's\npatents  covering the design and  manufacture of flash memory  products,  giving\nboth  companies  worldwide  rights to use those  patents.  Specific terms of the\nagreement  are  confidential  but SanDisk will receive a license fee and royalty\npayments from Sharp.\n\n         __________________________  (Sharp  to  supply  the name and title of a\nSharp executive and provide a quote.)\n\n\n\n         Eli  Harari,  SanDisk  CEO and  president,  said,  \"This is a long term\nagreement that acknowledges the significant  flash memory  contributions of both\nSharp and SanDisk.  It will allow both  companies to continue  developing  their\nrespective flash technologies and to compete freely in the rapidly growing flash\nmarketplace.  It is also our hope  that  this  agreement  will open the door for\nfuture mutual flash memory business cooperation between Sharp and SanDisk.\"\n\n         ____________________________  (Sharp to  provide  paragraph  describing\nSharp.)\n\n         SanDisk     Corporation     designs,     manufactures    and    markets\nindustry-standard,  solid-state  data,  image and audio storage  products  using\nproprietary,  high density flash memory and controller  technology.  SanDisk has\nstrategic  alliances with Seagate Technology,  Matsushita  Electronic Corp., NEC\nCorp. and LG Semicon.  Seagate holds a 25 percent  equity stake in SanDisk.  The\ncompany is based in Sunnyvale, CA.\n\n                                      -15-\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[8752],"corporate_contracts_industries":[9508],"corporate_contracts_types":[9613,9616],"class_list":["post-42654","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-sandisk-corp","corporate_contracts_industries-technology__hardware","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\/42654","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=42654"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42654"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42654"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42654"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}