Exhibit 10.1
INTELLECTUAL
PROPERTY LICENSE AGREEMENT
This Intellectual
Property License Agreement (“Agreement”) is effective as of the
Closing Date, between Silicon Laboratories Inc., a Delaware corporation (“Parent
Seller”), and Silicon Laboratories International Pte. Ltd., a private limited company organized under the laws of
Singapore (“Subsidiary Seller”) (collectively “Seller”), and NXP
BV, a limited liability company organized under the laws of The Netherlands (“Parent
Buyer”), NXP Semiconductors France SAS, a company incorporated under the
laws of France (“Subsidiary Buyer,” and together with Parent Buyer, “Buyer”).
For the purpose of this Agreement, unless otherwise defined herein, all
initially capitalized terms are defined in and shall have the meaning specified
in the Sale and Purchase Agreement (as defined below).
RECITAL
WHEREAS,
Seller and certain of its Subsidiaries are engaged in, among other things, the
Business;
WHEREAS,
Seller and Buyer have entered into a Sale and Purchase Agreement, dated as of
February 8, 2007 (“Sale and Purchase Agreement”); and
WHEREAS,
as part of the foregoing, each of Buyer and Seller desire to grant the other
party certain license rights under certain Intellectual Property Rights, and
each of Seller and Buyer desires to obtain such licenses.
AGREEMENT
NOW,
THEREFORE, in consideration of the mutual promises of the parties, and for the
good and valuable consideration set forth in the Sale and Purchase Agreement,
the parties agree as follows:
ARTICLE I — DEFINITIONS
As used herein,
the terms below shall have the following meanings. Any such terms, unless the context otherwise
requires, may be used in the singular or plural, depending on the reference.
1.1 “Blocks” means all mask works,
circuit blocks, design methodologies and similar items in the Transferred
Business IPR.
1.2 “Excluded Products” means
those products and projects set forth on Schedule 1 and any products that
are substantially similar thereto.
1.3 “Field” means (i) CMOS power
amplifier integrated circuits; (ii) CMOS transceiver integrated circuits; (iii)
CMOS analog and digital baseband integrated circuits; (iv) baseband
software; and/or (v) the integration of one or more of the circuits and
software listed in (i) to (iv) above into integrated circuits or systems in
each case of (i) to (v) where such integrated circuit, system or software is
used to receive and/or transmit signals complying with any current or future
cellular communication standards, including but not limited to GSM, GPRS, EDGE,
UMTS (including WCDMA), CDMA and their derivatives, extensions and successors.
1.4 “Field IPR” means all IPR
(other than the Transferred Business IPR, any Trademarks or any IPR described
in subsection (j) of the “Excluded Assets” in the Sale and Purchase Agreement)
owned by the Seller or its Subsidiaries (or licensed by any of them,
to the extent sublicensable hereunder without additional monetary liability to
Seller or its Subsidiaries) as of the Closing Date that (i) have
been used, developed or held for use by the Seller or its
Subsidiaries in the Field at any time prior to the Closing
Date or (ii) would be infringed by any of Buyer or its Subsidiaries’ current or
future products or services within the scope of the Field, excluding for
both (i) and (ii), IPR used by Seller or its Subsidiaries as of the
Closing Date exclusively in or exclusively in connection with the products and
projects on Schedule 1.
1.5 “Field Patents” means all
Patents included in the Field IPR.
1.6 “Intellectual Property Rights”
or “IPR” shall mean all U.S. and foreign intellectual property rights,
including without limitation (i)(a) patents and patent applications and
disclosures relating thereto (and any patents that issue as a result of those
patent applications), and any renewals, reissues, reexaminations, extensions,
continuations, continuations-in-part, divisions and substitutions relating to
any of the patents and patent applications, as well as all related foreign
patent and patent applications that are counterparts to such patents and patent
applications (“Patents”), (b) trademarks, service marks, trade
dress, logos, trade names and corporate names, whether registered or
unregistered, and the goodwill associated therewith, together with any
registrations and applications for registration thereof (“Trademarks”),
(c) copyrights and rights under copyrights, including copyrights in
Software, whether registered or unregistered, including moral rights, and any
registrations and applications for registration thereof (“Copyrights”),
(d) mask work rights and registrations and applications for registration
thereof (“Mask Works”), (e) rights in databases and data
collections (including knowledge databases, customer lists and customer
databases) under the Laws of the United States or any other jurisdiction,
whether registered or unregistered, and any applications for registration
therefore (“Databases”); (f) any rights in discoveries, inventions,
developments, processes, designs and techniques that are not included in the
definition of “Patents,” including any documents, memoranda, reports,
studies, data or analyses relating thereto, (g) and any rights in trade
secrets, know-how, and confidential, proprietary or non-public information,
including documents containing the foregoing, analyses thereof, research, and
lists (“Trade Secret Information”); and (h) Residuals.
1.7 “Other Field IPR” means all
Field IPR other than Patents.
1.8 “Residuals” means Trade Secret
Information in nontangible form (i.e., not in written or other documentary
form, including tape, disk or other storage), including without limitation
ideas, know-how or techniques, that is retained in the unaided memory of
employees due to their past work for Seller or its Subsidiaries.
ARTICLE II— LICENSE FROM SELLER
2.1 Field Patent License to Buyer. Subject to the terms and conditions of this
Agreement, Seller, on behalf of itself and its Subsidiaries, grants to Buyer
and its Subsidiaries a worldwide, paid-up, non-transferable (except as set
forth in Section 9.12 hereof), non-exclusive license under Field Patents in
connection with their current and future activities in the Field including the
right to make, have made, use, sell, offer for sale, and import products and
offer services (and to incorporate products as components, subassemblies or
subsystems in other products made, used and/or sold by or on behalf of Buyer
and its Subsidiaries) in the Field (but excluding Excluded Products), without
the right of sublicense other than as set forth in Section 2.4. For the avoidance of doubt, this license
covers (i) all Field Patents in existence as of the Closing Date, and all
subsequent divisions, continuations, continuations-in-part (but these only to the extent based on
inventions existing as of the Closing Date), re-examinations, re-issues,
provisionals, extensions and counterparts relating thereto, and (ii) all Field
Patents issuing after the Closing Date that arise from applications filed for
inventions reduced to practice prior to the Closing Date.
2.2 Other Field IPR License to Buyer. Subject to the terms and conditions of this
Agreement, Seller, on behalf of itself and its Subsidiaries, grants to Buyer
and its Subsidiaries a worldwide, paid-up, non-transferable (except as set
forth in Section 9.12 hereof), non-exclusive license under the Other Field IPR,
in connection with their current and future activities in the Field, including
the right to make, have made, use, sell, offer for sale, and import products
and offer services (and to incorporate products as components, subassemblies or
subsystems in other products made, used and/or sold by or on behalf of Buyer
and its Subsidiaries) in the Field (but excluding Excluded Products), without
the right of sublicense other than as set forth in Section 2.4.
2.3 Use of Residuals by Buyer. Seller, on behalf of itself and its
Subsidiaries, acknowledges that Buyer and its Subsidiaries may freely use in
any field of use (whether within or outside the scope of the Field) after the
Closing Date all of the Residuals possessed by Rehired Employees, subject to
Article IV. Such right to use Residuals
shall not constitute or be deemed a license under any patents of Seller or its
Subsidiaries.
2.4 Subsidiaries/Sublicensing. Each Subsidiary licensed under Section 2.1 or
2.2 shall be bound by the terms and conditions of this Agreement. Any such license granted to such party shall
terminate on the date such party ceases to be a Subsidiary, provided that the
parties shall negotiate in good faith a transition license period sufficient to
cover the reasonable transition needs of such Subsidiary. Buyer and its Subsidiaries may sublicense
their licensed rights (i) in Section 2.1 and 2.2, to vendors, suppliers,
distributors, customers, end-users and other parties in the normal supply and
distribution chain or other third-party licensees (“Covered Parties”)
solely (a) for the resale or redistribution of Buyer and its Subsidiaries’
products, (b) for the sale of Buyer and its Subsidiaries’ own components,
subassemblies or subsystems (“Buyer Components”) solely for incorporation
into the products to be distributed or sold by the Covered Parties (“Covered
Products”) or (c) to allow Covered Parties to make Buyer Components solely
for incorporation into Covered Products, subject to Article IV (but for the
avoidance of doubt, the above sublicenses do not cover Covered Products as a
whole, any components, subassemblies or subsystems of Covered Products (even
other components, subassemblies or subsystems sold by Buyer or its
Subsidiaries) that are not Buyer Components or the incorporation of any
components, subassemblies or subsystems other than Buyer Components into
Covered Products, but do cover the incorporation of Buyer Components into
Covered Products) and (ii) in Section 2.2, also to their authorized licensees,
sublicensees, agents, contractors or employees, subject to Article IV.
ARTICLE
III — LICENSE FROM BUYER
3.1 Transferred Business IPR License
to Seller.
3.1.1 License Outside Field. Subject to the terms and conditions of this
Agreement, Buyer, on behalf of itself and its Subsidiaries, grants to Seller
and its Subsidiaries a worldwide, paid-up, non-transferable (except as set
forth in Section 9.12 hereof), non-exclusive license under any and all
Transferred Business IPR (other than Trademarks), including without limitation
all Blocks (the “Buyer IPR”), in connection with their current and
future activities outside the Field, including the right to make, have made,
use, sell, offer for sale, and import products and offer services (and to
incorporate products as components, subassemblies or subsystems in other
products made, used and/or sold by or on behalf of Seller and its Subsidiaries)
outside the Field (and the right to use or reuse any Blocks outside the Field
in connection therewith), without the right of sublicense other than as set
forth in Section 3.4. For the avoidance
of doubt, this license includes (i) all Patents included in the Transferred
Business IPR and in existence as of the Closing Date, and all subsequent divisions,
continuations, continuations-in-part (but
these only to the extent based on inventions existing as of the Closing Date),
re-examinations, re-issues, provisionals, extensions and counterparts relating
thereto, and (ii) all Patents issuing after the Closing Date that arise from
applications filed for inventions reduced to practice prior to the Closing
Date, to the extent any of them are included in the Transferred Business IPR;
but (iii) excludes any Intellectual Property Rights owned by Buyer and its
Subsidiaries other than the Transferred Business IPR, except as expressly set
forth in this Agreement.
3.1.2 License for Components. Subject to the terms and conditions of this
Agreement, Buyer, on behalf of itself and its Subsidiaries, grants to Seller
and its Subsidiaries an additional worldwide, paid-up, non-transferable (except
as set forth in Section 9.12 hereof), non-exclusive license under any and all
Buyer IPR that does not relate exclusively to the Business, solely (i) for the
sale of their own components, subassemblies or subsystems licensed under
Section 3.1.1 (“Seller Components”) solely for incorporation into
Covered Products or (ii) to sublicense to Covered Parties, solely to allow such
Covered Parties to make Seller Components to incorporate into Covered Products,
in each case, solely for the sale of Covered Products in or outside of the
Field. For the avoidance of doubt, the
above license does not cover any Covered Product as a whole, any components,
subassemblies or subsystems of Covered Products (even other components,
subassemblies or subsystems sold by Seller or its Subsidiaries) that are not
Seller Components or the incorporation of any components, subassemblies or
subsystems other than Seller Components into Covered Products, but does cover
the incorporation of Seller Components into Covered Products. For the avoidance of doubt, this license
includes (a) all Patents included in the Transferred Business IPR and in
existence as of the Closing Date that do not relate exclusively to the Business,
and all subsequent divisions, continuations, continuations-in-part (but these only to the extent based on inventions existing
as of the Closing Date that do not relate exclusively to the Business),
re-examinations, re-issues, provisionals, extensions and counterparts relating
thereto, and (b) all Patents issuing after the Closing Date that arise from
applications filed for inventions reduced to practice prior to the Closing Date
that do not relate exclusively to the Business, to the extent any of them are
included in the Transferred Business IPR; but (iii) excludes any
Intellectual Property Rights owned by Buyer and its Subsidiaries, except as
expressly set forth in this Agreement.
3.2 Other Buyer License to Seller. Subject to the terms and conditions of this
Agreement, Buyer, on behalf of itself and its Subsidiaries, grants to Seller
and its Subsidiaries a worldwide, paid-up, personal and non-transferable,
non-exclusive license under any and all of its and their Patents with
respect to Seller and its Subsidiaries’ use of any Blocks in their
businesses outside the Field, provided that, in addition to Buyer’s
remedies in Article V, Seller expressly acknowledges, on behalf of itself
and its Subsidiaries, that the license in this Section 3.2 shall terminate
automatically, without the requirement of notice from Buyer, upon the
commencement of any action or proceeding (that is not a claim for breach of
this Agreement or a counterclaim) by or on behalf of Seller or any of its
Subsidiaries that Buyer or any of its Subsidiaries has Infringed any
of Seller or its Subsidiaries’ Patents.
For the avoidance of doubt, notwithstanding anything in Section 9.12 to
the contrary, this license in Section 3.2 is personal to Seller and its
Subsidiaries in existence as of the Closing Date, and may not be (i) assigned,
sublicensed (except as set forth in Section 3.4.3), or assumed in bankruptcy,
including assignments by operation of law or otherwise, including via a change
of control (which shall be deemed an “assignment” for purposes of this Section
3.2), merger or reorganization (regardless of whether Seller or its
Subsidiaries are the surviving party); or (ii) used by Seller or its
Subsidiaries in connection with any assets, businesses or lines of business
acquired from other persons after the Closing Date, in each case, without the
prior written consent of Buyer in its sole discretion. Any attempted transaction in violation of the
foregoing shall be void ab initio
and of no force or effect. For the
further avoidance of doubt, if any of Seller or its Subsidiaries’ products
contain components, subassemblies or subsystems other than the above-licensed
Blocks, the license in this Section 3.2 does not cover such products as a whole
or any components, subassemblies or subsystems of such products that are not
the above-licensed Blocks or the incorporation of such other components,
subassemblies or subsystems with or into any of the above-licensed Blocks.
3.3
Use of Residuals by Seller. Buyer, on behalf of itself and its
Subsidiaries, acknowledges that Seller and its Subsidiaries may freely use in
any field of use (whether within or outside the scope of the Field) after the
Closing Date all of the Residuals that relate to the Business and are possessed
by their employees, subject to Article IV.
Such right to use Residuals shall not constitute or be deemed a license
under any patents, of Buyer or its Subsidiaries.
3.4 Subsidiaries/Sublicensing.
3.4.1 Each Subsidiary licensed under Section
3.1 or 3.2 shall be bound by the terms and conditions of this Agreement. Any such license granted to such party shall
terminate on the date such party ceases to be a Subsidiary, provided that the
parties shall negotiate in good faith a transition license period sufficient to
cover the reasonable transition needs of such Subsidiary.
3.4.2 Seller
and its Subsidiaries may sublicense their licensed rights in Section 3.1.1 to
Covered Parties, solely (a) for the resale or redistribution of Seller and its
Subsidiaries’ products, (b) for the sale of Seller Components solely for
incorporation into Covered Products or (c) to allow Covered Parties to make
Seller Components solely for incorporation into Covered Products, in each case,
outside the Field and subject to Article IV.
For the avoidance of doubt, the above sublicenses do not cover Covered
Products as a whole, any components, subassemblies or subsystems of Covered
Products (even other components, subassemblies or subsystems sold by Seller or
its Subsidiaries) that are not Seller Components or the incorporation of any
components, subassemblies or subsystems other than Seller Components into
Covered Products, but do cover the incorporation of Seller Components into
Covered Products.
3.4.3 Seller
and its Subsidiaries may sublicense their licensed rights in Section 3.2 to
Covered Parties, solely (a) for the resale or redistribution of Seller and its
Subsidiaries’ products, (b) for the sale of Seller Components solely for
incorporation into Covered Products or (c) to allow Covered Parties to make
Seller Components solely for incorporation into Covered Products, in each case,
outside the Field subject to Article IV.
For the avoidance of doubt, the above sublicenses do not cover Covered
Products as a whole, any components, subassemblies or subsystems of Covered
Products (even other components, subassemblies or subsystems sold by Seller or
its Subsidiaries) that are not Seller Components, the incorporation of any
components, subassemblies or subsystems other than Seller Components into such
Covered Product, or the incorporation of Seller Components into Covered
Products.
ARTICLE IV —
CONFIDENTIALITY
4.1 Confidentiality.
Each party, on behalf of itself and its Subsidiaries, agrees that for a
period of three years from the Closing Date, it shall (i) use commercially
reasonable internal confidentiality and security procedures, including but not
limited to written non-disclosure provisions in its dealings with other
parties, to protect the other party’s Trade Secret Information from
unauthorized disclosure, and (ii) disclose such Trade Secret Information only
to those licensees, sublicensees, agents, contractors or employees who have a
need to know same for the receiving party to exploit the benefits of its
licenses granted hereunder and who agree in writing not to disclose such Trade
Secret Information to any unauthorized person.
Notwithstanding these restrictions, either party may disclose the other
party’s Trade Secret Information to the extent disclosure is implied by its
necessary incorporation into products, provided that such party utilizes commercially
reasonable efforts to minimize the form and substance of the Trade Secret
Information disclosed thereby. Each
party agrees and acknowledges that violation of these provisions by the other
party or its Subsidiaries (or authorized third parties receiving Trade Secret
Information from any of them) will cause irreparable harm to the non-violating
party and that the non-violating party shall be entitled to seek an injunction
(without necessity to post bond) or other temporary relief in addition to the non-violating
party’s other rights at law or in equity.
4.2 Exceptions.
The obligations in Section 4.1 shall not cover any information
(i) that the owning party discloses to a third party with no further
restrictions on its disclosure; (ii) that becomes known to the industry or the
public through no fault of the receiving party; or (iii) that the
receiving party develops independently or obtains from another legitimate
source. A party may disclose information
as required to be disclosed pursuant to applicable law, statute, rule,
regulation, court order or legal process, provided that in this case, the
receiving party shall promptly notify the owning party of any such requirement,
disclose no more information than is so required and cooperate, at the owning party’s
request and expense, with all attempts by the owning party to obtain a
protective order or similar treatment.
ARTICLE V — RELEASE FROM BUYER
5.1 Buyer’s Release.
Buyer, on behalf of itself and its Subsidiaries (“Releasing Parties”),
completely and irrevocably releases and covenants not to sue Seller and/or its
Subsidiaries from any claims that their operation of the Business or use of the
Transferred Business IPR, in each case, prior to the Closing Date infringed,
misappropriated or violated (“Infringed”) any of Buyer or its
Subsidiaries’ current or future IPR.
Seller and its Subsidiaries may not assign this release, in whole or in
part, except as set forth in Section 9.12, and any such attempted assignment
shall be null and void ab initio
and of no force or effect.
5.2 Covered Parties.
The release in Section 5.1 covers Seller and its Subsidiaries and their
Covered Parties with respect to any Infringements caused by Seller and its
Subsidiaries, but do not cover any other actions of such Covered Parties. For the avoidance of doubt, if any Covered
Product contains Seller Components, the release in Section 5.1 does not cover
such Covered Product as a whole or any other components, subassemblies or
subsystems of such Covered Product (even other components sold by Seller or its
Subsidiaries) that are not Seller Components or the incorporation of any
components, subassemblies or subsystems other than Seller Components into such
Covered Product, but does cover the incorporation of Seller Components into such
Covered Product.
5.3 Facts Unknown.
In giving the release in Section 5.1, which include claims which may be
unknown to the parties at present, the Releasing Parties hereby acknowledge
that they are aware of and understand that statutory law of certain jurisdictions
provide that a general release does not extend to claims which the releasing
party does not know or suspect to exist in his, her or its favor at the time of
executing the release, which if known by him, her or it must have materially
affected settlement with the released party.
5.4 Waiver. The
Releasing Parties hereby expressly waive and relinquish all rights and benefits
and any such law or legal principle in any jurisdiction with respect to claims
released hereby. The Releasing Parties
further understand and acknowledge the significance and consequence of such
specific waiver.
5.5 Non-Use of Certain Information. Buyer, on behalf of itself and its
Subsidiaries, covenants that it will not use any confidential information of
Seller or its Subsidiaries that Buyer or its Subsidiaries learn from the
present transaction or from Rehired Employees and that such Rehired Employees
possess due to their work for Seller and its Subsidiaries (“Restricted
Information”) to assert any claim against Seller or its Subsidiaries for
Infringing any Intellectual Property Rights owned by Buyer or its
Subsidiaries. The covenant in this
Section 5.5 covers Seller and its Subsidiaries and their Covered Parties with
respect to any Infringements caused by Seller and its Subsidiaries, but does
not cover any other actions of such Covered Parties.
ARTICLE VI — TERM AND
TERMINATION
6.1 Term. The
term of this Agreement shall be from the Closing Date until the expiration of
the last to expire of the Field IPR and Buyer IPR, unless previously terminated
as hereinafter provided. The licenses in
Section 2.1, 2.2, 3.1 and 3.2 shall expire, with respect to individual
Intellectual Property Rights licensed thereby, upon the expiration of each such
right, provided that such expiration shall not affect the validity of such
license with respect to any other licensed rights.
6.2 Voluntary Termination. By written notice to the other party, each
party may voluntarily terminate all or a specified portion of the license and
rights granted to it hereunder. Such
notice shall specify the effective date of such termination and shall clearly
specify the affected licensed rights.
Any such termination shall not affect the licenses granted to the other
party by the terminating party.
6.3 Termination for Material Breach. Either party may terminate the licenses it
has granted to the other party hereunder, effective upon notice, if it is found
in a final, non-appealable decision pursuant to Section 8.8 of this Agreement
that (i) such party has materially breached any warranty, term, condition or
covenant of this Agreement and failed to cure that breach within sixty days
after written notice, specifying such breach in reasonable detail and
(ii) termination is warranted under the circumstances. Any such termination shall not affect the
licenses granted to the other party by the breaching party.
6.4 Survival.
Termination or expiration of this Agreement and/or the licenses in
Articles II and/or III shall not affect the release granted in Section 5.1, which
is deemed irrevocable. All provisions of
this Agreement that, by their nature, would survive its expiration or
termination, are deemed to survive such circumstances.
ARTICLE VII — LIMITATION
OF LIABILITY
EXCEPT AS SET
FORTH BELOW OR IN THE SALE AND PURCHASE AGREEMENT, IN NO EVENT SHALL EITHER
PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE OTHER PARTY OR ITS SUBSIDIARIES FOR
ANY LOST PROFITS OR FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT OR INCIDENTAL
DAMAGES, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING WITHOUT
LIMITATION NEGLIGENCE), ARISING IN ANY WAY OUT OF THIS AGREEMENT, WHETHER OR
NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE FOREGOING SHALL NOT, HOWEVER, LIMIT THE
AMOUNT OR TYPES OF DAMAGES AVAILABLE TO EITHER PARTY FOR ANY DISCLOSURE OF
TRADE SECRET INFORMATION IN VIOLATION OF ARTICLE IV (CONFIDENTIALITY).
ARTICLE VIII — DISCLAIMER
OF WARRANTIES
EXCEPT AS
OTHERWISE SET FORTH IN THE SALE AND PURCHASE AGREEMENT, EACH PARTY ACKNOWLEDGES
AND AGREES THAT ALL INTELLECTUAL PROPERTY RIGHTS LICENSED HEREUNDER ARE
LICENSED WITHOUT ANY WARRANTIES WHATSOEVER, AND EACH PARTY DISCLAIMS ALL
WARRANTIES OF ANY KIND WHETHER EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT
LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, TITLE OR NON-INFRINGEMENT. Each
party makes no warranty or representation under this Agreement as to the
validity and/or scope of any IPR licensed by such party and its Subsidiaries to
the other party hereunder or any warranty or representation that any
manufacture, use, importation, offer for sale or sale of any product or service
by a licensed party hereunder will not Infringe any IPR of any person.
ARTICLE IX —
MISCELLANEOUS
9.1 No Implied Licenses. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any IPR other than the rights expressly granted in this Agreement.
9.2 Licensee Bankruptcy Protection. All rights and licenses granted under or
pursuant to this Agreement are, and shall otherwise be deemed to be, for
purposes of Section 365(n) of title 11 of the United States Code (the “Bankruptcy
Code”), licenses of rights to “intellectual property” as defined under
Section 101 of the Bankruptcy Code. The
parties agree that each of Seller and Buyer and their Subsidiaries, as
licensees of such rights under Articles I and/or III of this Agreement, shall
retain and may fully exercise all of their rights and elections under the
Bankruptcy Code.
9.3 Infringement Suits.
Neither party shall have any obligation hereunder to institute or
maintain any claim against any party for the Infringement of any Intellectual
Property Rights licensed hereunder, or to defend any claim brought by any
person which challenges or concerns the validity of any of such rights. A licensed party shall not have any right to
institute any claim against any person for the Infringement of any Intellectual
Property Rights licensed to such licensed party hereunder.
9.4 No Obligation to Provide Technical Assistance.
Except as otherwise set forth in the Sale and Purchase Agreement and Transition
Services Agreement, Seller shall not be obligated to provide Buyer with any
technical assistance or to furnish Buyer with or obtain any documents, materials
or other information.
9.5 No Obligation
to Obtain or Maintain IPR.
Neither party is obligated to (a) file any patent application or to
secure any patent or patent rights, (b) maintain any patent in force, (c) file
any copyright registration application or to secure any registered copyright
rights, or (d) file any mask work application or to secure any mask work
rights, in each case, with respect to the Intellectual Property Rights it
licenses to the other party hereunder.
9.6 Entire Agreement; Amendment; Waiver. This Agreement, the Sale and Purchase
Agreement and the Ancillary Agreements, together with all exhibits and
schedules hereto and thereto (including the Disclosure Schedules to the Sale
and Purchase Agreement), constitute the entire agreement among the parties
pertaining to the subject matter hereof and supersede all prior agreements,
understandings, negotiations and discussions, whether oral or written, of the
parties. This Agreement may not be
amended except by an instrument in writing signed on behalf of each of the
parties hereto. No amendment,
supplement, modification or waiver of this Agreement or any exhibits or
schedules hereto shall be binding unless executed in writing by the party to be
bound thereby. No waiver of any of the
provisions of this Agreement shall be deemed or shall constitute a waiver of
any other provision hereof (whether or not similar), nor shall such waiver
constitute a continuing waiver unless otherwise expressly provided in writing.
9.7 Governing Law.
This Agreement shall be governed by and construed in accordance with the
internal laws of the State of New York.
9.8 Arbitration.
Notwithstanding anything herein to the contrary, any claim or dispute
arising out of or related to this Agreement, the interpretation, making
performance, breach or termination thereof, shall be finally and exclusively
settled by binding arbitration to be held in New York, New York. The arbitration shall be made in accordance
with the then current Commercial Arbitration Rules of the American Arbitration
Association and such arbitration shall be conducted by an arbitrator chosen by
mutual agreement of Buyer and Seller; failing such agreement, the arbitration
shall be conducted by 3 independent arbitrators, one chosen by Seller, one
chosen by Buyer and such two arbitrators shall mutually select a third
arbitrator, with any decision of two such arbitrators shall be binding; provided, however, if such arbitrators
fail to agree on a third arbitrator within 20 days, either Buyer or Seller
may make written application to Judicial Arbitration and Mediation Services (“JAMS”),
New York, New York, for the appointment of a single arbitrator (the “JAMS
Arbitrator”) to resolve the dispute by arbitration. At the request of JAMS the parties involved
in the dispute shall meet with JAMS at its offices within 10 days of such
request to discuss the dispute and the qualifications and experience which each
party respectively believes the JAMS Arbitrator should have; provided, however, the selection of the JAMS Arbitrator
shall be the exclusive decision of JAMS and shall be made within 30 days
of the written application to JAMS. The
arbitrator(s) shall have the authority to grant any equitable and legal
remedies that would be available in any judicial proceeding instituted under
New York law to resolve the dispute.
Judgment upon the award rendered by the arbitrator may be entered in any
court having jurisdiction thereof. Each
party shall pay its own costs and expenses (including counsel fees) of any such
arbitration. The parties hereto
expressly waive all rights whatsoever to file an appeal against or otherwise to
challenge any award by the arbitrator(s) hereunder; provided, however, the foregoing shall not limit the rights
of either party to bring a proceeding in any applicable jurisdiction to
conform, enforce or enter judgment upon such award (and the rights of the other
party, if such proceeding is brought, to contest such confirmation, enforcement
or entry of judgment).
9.9 Injunctive Relief.
Notwithstanding the above arbitration provision, nothing shall prevent
either party from seeking interim or injunctive relief from a court of
competent jurisdiction in order to protect its Intellectual Property Rights.
9.10 Section Headings.
The section headings contained in this Agreement are inserted for
reference purposes only and are not intended to be a part, nor should they
affect the meaning or interpretation, of this Agreement.
9.11 Notices. All
notices, requests, demands and other communications which are required or may
be given under this Agreement shall be in writing and shall be deemed to have
been duly given when received if personally delivered; when transmitted if
transmitted by telecopy, electronic or digital transmission method; the day
after it is sent, if sent for next day delivery to a domestic address by
recognized overnight delivery service (e.g., Federal Express); and upon
receipt, if sent by certified or registered mail, return receipt
requested. In each case notice shall be
sent to:
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If to Seller, addressed to:
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Silicon Laboratories Inc.
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400 West Cesar Chavez
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Austin, Texas 78701
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Attention: General Counsel
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Fax: (512) 428-1504
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With a copy to:
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DLA Piper US LLP
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1221 South MoPac Expwy
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Suite 400
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Austin, Texas 78746
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Attention: Philip Russell, P.C.
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Fax: (512) 457-7001
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If to Buyer, addressed to:
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NXP B.V.
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High Tech Campus 60
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5656 AG Eindhoven
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The Netherlands
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Attention: Guido R.C. Dierick
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With a copy to:
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Simpson Thacher & Bartlett LLP
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425 Lexington Avenue
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New York 10017
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Attention: Lori Lesser
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Fax: (212) 455-2502
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or to such other
place and with such other copies as either party may designate as to itself by
written notice to the others.
9.12 Assignability.
9.12.1 Except
as provided in Section 9.12.2, neither party or its Subsidiaries may, directly
or indirectly, in whole or in part, assign or transfer this Agreement or its
rights or obligations hereunder, without the other party’s prior written
consent in its sole discretion. Any
attempted assignment or transfer without such prior written consent shall be
void ab initio and of no force or effect.