Product Designs Assignment Agreement

Exhibit10.160

[***] DENOTES CONFIDENTIAL MATERIALS OMITTED ANDFILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AREQUEST FOR CONFIDENTIAL TREATMENT.

 

INTEL/MICRON CONFIDENTIAL

 

PRODUCT DESIGNS ASSIGNMENT AGREEMENT

 

This PRODUCT DESIGNS ASSIGNMENT AGREEMENTAgreement”) is made and entered into as of this 6th day ofJanuary, 2006 (“Effective Date”), by and betweenIntel Corporation, a Delaware corporation (“Intel”),and Micron Technology, Inc., a Delaware corporation (“Micron”).  (Micron and Intel are referred to in thisAgreement individually as a “Party” andcollectively, as the “Parties.”)

 

RECITALS

 

A.                                   Micronhas produced certain NAND Flash Memory Designs (as defined hereinafter).

 

B.                                     Micronand Intel have agreed that Micron will transfer and assign to Intel all ofMicron’s ownership in and to certain NAND Flash Memory Designs (as definedhereinafter), upon the terms and subject to the conditions of this Agreement.

 

AGREEMENT

 

NOW,THEREFORE, for good and valuable consideration, the receipt and sufficiency ofwhich are hereby acknowledged, the Parties intending to be legally bound dohereby agree as follows:

 

ARTICLE 1

 

ARTICLE 1DEFINITIONS; CERTAIN INTERPRETIVE MATTERS

 

1.1                                 Definitions.

 

Inaddition to the terms defined elsewhere in this Agreement, capitalized termsused in this Agreement shall have the respective meanings set forth below:

 

“Affiliate” means, a Person that directly or indirectlythrough one or more intermediaries, controls, or is controlled by, or is undercommon control with, the Person specified.

 

“Agreement” shall have the meaning set forth in the preambleto this Agreement.

 

“Applicable Law” means any applicable laws, statutes, rules,regulations, ordinances, orders, codes, arbitration awards, judgments, decreesor other legal requirements of any Governmental Entity.

 

“[***]” shall mean the [***], if any, from the list set forthin Schedule 5 within the time period specified therein.

 



 

“Business Day” means a day that is not a Saturday, Sunday orother day on which commercial banking institutions in the State of Delaware areauthorized or required by Applicable Law to be closed.

 

“Confidentiality Agreement” means that Mutual ConfidentialityAgreement by and among the Joint Venture Company, Intel and Micron dated as ofthe Effective Date.

 

“Controller Supporting Materials” shall have the meaning setforth in Section 3.1(b).

 

“Effective Date” shall have the meaning set forth in thepreamble to this Agreement.

 

“Flash Memory Integrated Circuit” means a non-volatile memoryintegrated circuit that contains memory cells that are electricallyprogrammable and electrically erasable whereby the memory cells consist of oneor more transistors that have a floating gate, charge-trapping regions or anyother functionally equivalent structure utilizing one or more different chargelevels (including binary or multi-level cell structures) with or without anyon-chip control, I/O and other support circuitry.

 

“Force Majeure Event” means the occurrence of an event orcircumstance beyond the reasonable control of a Party and includes, withoutlimitation, (a) explosions, fires, flood, earthquakes, catastrophic weatherconditions, or other elements of nature or acts of God; (b) acts of war(declared or undeclared), acts of terrorism, insurrection, riots, civildisorders, rebellion or sabotage; (c) acts of federal, state, local or foreigngovernmental authorities or courts; (d) labor disputes, lockouts, strikes orother industrial action, whether direct or indirect and whether lawful or unlawful;(e) failures or fluctuations in electrical power or telecommunications serviceor equipment; and (f) delays caused by the other Party or third-partynonperformance (except for delays caused by a Party’s subcontractors oragents).

 

“Governmental Entity” means any governmental authority orentity, including any agency, board, bureau, commission, court, department,subdivision or instrumentality thereof, or any arbitrator or arbitration panel.

 

“In-Process Designs” means those Pre-existing Product Designslisted on Schedule 1 indicated as “In-Process.”

 

“Intel” shall have the meaning set forth in the preamble tothis Agreement.

 

“[***]” means that [***].

 

“IP Rights” means copyrights, trade secrets, Mask Work Rightsand registrations of any of the foregoing anywhere in the world.

 

“Joint Venture Company” means IM Flash Technologies, LLC, aDelaware limited liability company that is the subject of the Joint VentureDocuments.

 

“Joint Venture Documents” means that certain Master Agreementby and between the Parties dated November 18, 2005 and each agreementreferenced therein (whether directly or indirectly through reference in any ofsuch referenced agreements).

 

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“LLC Operating Agreement” means the Limited Liability CompanyOperating Agreement, dated as of the Effective Date, by and between theParties.

 

“Losses” shall mean, collectively, any and all liabilities,damages, losses, costs and expenses (including reasonable attorneys’ andconsultants’ fees and expenses).

 

“Mask Work Rights” means rights under the United StatesSemiconductor Chip Protection Act of 1984, as amended from time to time, andunder any similar counterpart laws in countries other than the United States.

 

“Micron” shall have the meaning set forth in the preamble tothis Agreement.

 

“Missing Materials” shall have the meaning set forth inSection 2.4.

 

“NAND Controller” means a discrete integrated circuit devicethat controls the data input and output to/from the memory array of the NANDFlash Memory Die.

 

“NAND Flash Memory Design” means, with respect to a NANDFlash Memory Die, the corresponding design components, materials andinformation listed on Schedule 2, and all IP Rights in and to those designcomponents, materials and information listed on Schedule 2.  Notwithstanding anything to the contrary inthe foregoing, NAND Flash Memory Design shall not include any Patent Rights.

 

“NAND Flash Memory Die” means a discrete integrated circuitdie, wherein such die includes at least one NAND Flash Memory IntegratedCircuit and such die is designed, developed, marketed and used primarily as anon-volatile memory die.

 

“NAND Flash Memory Die Package” means a discrete integratedcircuit package for a NAND Flash Memory Die, including TSOP, COB, BOC, BGA andFBGA or other type package, wherein such package contains only one or more NANDFlash Memory Die but no other die.

 

“NAND Flash Memory Integrated Circuit” means a Flash MemoryIntegrated Circuit wherein the memory cells included in the Flash MemoryIntegrated Circuit are arranged in groups of serially connected memory cells(each such group of serially connected memory cells called a “string”) in which the drain of each memory cell of a string(other than the first memory cell in the string) is connected in series to thesource of another memory cell in such string, the gate of each memory cell insuch string is directly accessible, and the drain of the uppermost bit of suchstring is coupled to the bitline of the memory array.

 

“NAND Flash Memory Product” means any NAND Flash MemoryWafer, NAND Flash Memory Die or NAND Flash Memory Die Package.

 

“NAND Flash Memory Wafer” means a prime wafer that has beenprocessed to the point of containing multiple NAND Flash Memory Die and thathas undergone Probe Testing, but before singulation of said die into individualsemiconductor die.

 

“Party” and “Parties” shallhave the meaning set forth in the preamble to this Agreement.

 

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“Patent Rights” means any and all issued and unexpiredpatents and pending patent applications in any country in the world, togetherwith any and all divisionals, continuations, continuations-in-part, reissues,reexaminations, extensions, foreign counterparts or equivalents of any of theforegoing, wherever and whenever existing.

 

“Permitted Affiliate” means, with respect to a Party, anyAffiliate of such Party except to the extent otherwise agreed by Intel andMicron in any other Joint Venture Document (such exception being applicableonly while any applicable term(s) of the Joint Venture Documents remain ineffect).

 

“Person” means any natural person, corporation, joint stockcompany, limited liability company, association, partnership, firm, jointventure, organization, individual, business, trust, estate or any other entityor organization of any kind or character from any form of association.

 

“Pre-existing Product Designs” means the NAND Flash MemoryDesigns, as and to the extent that each element thereof exists on the EffectiveDate, for each of the NAND Flash Memory Products listed on Schedule 1.

 

“Probe Testing” means testing, using a wafer test program asset forth in the applicable Specifications, of a wafer that has completed allprocessing steps deemed necessary to complete the creation of the desired NANDFlash Memory Integrated Circuits in the die on such wafer, the purpose of whichtest is to determine how many and which of the die meet the applicable criteriafor such die set forth in the Specifications.

 

“Publicly Available Software” means (a) any Software thatcontains, or is derived in any manner (in whole or in part) from, any Softwarethat is distributed as free Software, open source Software (e.g. Linux) orsimilar licensing or distribution models; and (b) any Software that requires asa condition of use, modification and/or distribution of such Software that suchSoftware or other Software incorporated into, derived from or distributed withsuch Software (i) be disclosed or distributed in source code form, (ii) be licensedfor the purpose of making derivative works, or (iii) be redistributable at nocharge.  Publicly Available Softwareincludes Software licensed or distributed under any of the following:  (1) GNU’s General Public License (GPL) orLesser/Library GPL (LGPL); (2) the Artistic License (e.g., PERL); (3) theMozilla Public License; (4) the Netscape Public License; (5) the Sun CommunitySource License (SCSL); (6) the Sun Industry Source License (SISL); and (7) theApache Software license.

 

“Software” means computer program instruction code, whetherin human readable source code form, machine executable binary form, firmware,scripts, interpretive text, or otherwise. For avoidance of doubt, Software does not include databases and otherinformation stored in electronic form, other than executable instruction codesor source code that is intended to be compiled into executable instructioncodes.

 

“Specifications” means those specifications used to describe,characterize, and define the quality, functionality and/or performance of anyNAND Flash Memory Die, including any interim performance requirements at ProbeTesting or other testing.

 

“Supporting Materials” means, with respect to each NAND FlashMemory Design, those things set forth on Schedule 3 solely as and to the extent(a) such things exist on the

 

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Effective Date, (b) they are either owned by Micron orare licensed to Micron with the right to sublicense without any further paymentto any Third Party, and (c) Micron is not prohibited by Applicable Law orcontractual restriction from disclosing or licensing as contemplated under thisAgreement.

 

“Tangible Design Package” shall have the meaning set forth inSection 2.3 below.

 

“Term” shall have the meaning set forth in Section 8.1.

 

“Third Party” means any Person other than Micron or Intel.

 

1.2                                 CertainInterpretive Matters.

 

(a)                                  Unlessthe context requires otherwise, (1) all references to Sections, Articles,Exhibits, Appendices or Schedules are to Sections, Articles, Exhibits,Appendices or Schedules of or to this Agreement, (2) each accounting term nototherwise defined in this Agreement has the meaning commonly applied to it inaccordance with GAAP, (3) words in the singular include the plural and visa versa,(4) the term “including” means “including without limitation,” and (5) the terms “herein,” “hereof,” “hereunder” and words of similar import shall mean referencesto this Agreement as a whole and not to any individual Section or portionhereof.  All references to $ or dollaramounts will be to lawful currency of the United States of America.  All references to “day”or “days” will mean calendar days.

 

(b)                                 Noprovision of this Agreement will be interpreted in favor of, or against, any ofthe Parties by reason of the extent to which any such Party or its counselparticipated in the drafting thereof or by reason of the extent to which anysuch provision is inconsistent with any prior draft of this Agreement or suchprovision.

 

ARTICLE 2

 

PRE-EXISTING DESIGNS

 

2.1                                 Assignment.  Subject to the terms and conditions of thisAgreement, Micron, on behalf of itself and its Affiliates, hereby  grants, conveys and assigns (and agrees tocause its Affiliates to grant, convey and assign) to Intel, by execution ofthis Agreement (or, where appropriate or required, by execution of separateinstruments of assignment), all right, title and interest that Micron andAffiliates of Micron have in and to the Pre existing Product Designs and [***], to be held and enjoyed by Intel andIntel’s successors and assigns.

 

2.2                                 FurtherAssurances.  For a period of [***]from the Effective Date, Micron will, without receiving any furtherconsideration, at the reasonable request of Intel, do (and cause Affiliates ofMicron to do) all lawful and just acts that are necessary to record and perfectthe transfer of ownership to Intel of any IP Rights in and to the Pre-existingProduct Designs and [***], including execution and acknowledgement of (andcausing its Affiliates to execute and acknowledge) assignments and otherinstruments in a form reasonably required by Intel for each relevantjurisdiction.  All costs and expensesassociated with recording or perfecting such transfer of ownership shall beborne solely by Intel.

 

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2.3                                 Delivery.  Promptly following the Effective Date, exceptfor the In-Process Designs, Micron shall deliver to Intel the tangibleinformation and materials embodying the Pre-existing Product Designs andSupporting Materials in formats and on storage media mutually agreed to by theParties (hereinafter, the “Tangible Design Package”),in accordance with the delivery protocol set forth on Schedule 6.  Within [***] of the Effective Date, Micronshall deliver to Intel the datasheets and all errata thereto (as identified in Schedule2) associated with the Pre existing Product Designs other than theIn-Process Designs.

 

2.4                                 MissingMaterials.  If within [***] of theEffective Date, Intel identifies any information, documents or any othermaterials that is/are missing from the Tangible Design Package (“Missing Materials”) subsequent to delivery of the TangibleDesign Package by Micron, Intel may request Micron in writing to deliver theMissing Materials to Intel within a period of time identified by Intel, andMicron shall deliver such Missing Materials within such period of time and inaccordance with the delivery protocol set forth on Schedule 6, provided that:

 

(a)                                  theperiod of time identified by Intel for delivery of the Missing Materials isreasonable considering (i) the nature of those specific Missing Materials, and(ii) the reason why those Missing Materials were not previously delivered, and

 

(b)                                 Inteldescribes the Missing Materials with a degree of specificity that Micron isreasonably able to ascertain.

 

If Intel identifies any Missing Materials after theforegoing [***] time period but before [***] after the delivery of thePre-existing Product Designs other than the In-Process Designs, Intel mayrequest Micron in writing to deliver the Missing Materials to the Intel withina period of time identified by Intel consistent with foregoing clauses (a) and(b), and Micron shall use reasonable efforts to deliver such Missing Materialsto the extent in existence at the time of such request in the form that shouldhave been delivered previously.

 

2.5                                 Training.  During the [***] period commencing on theEffective Date, Micron will provide a reasonable level of training to designpersonnel of Intel regarding the Pre existing Product Designs, other than theIn-Process Designs, and each such design’s corresponding Supporting Materials.

 

ARTICLE 3

 

LICENSES AND RESERVATION OF RIGHTS

 

3.1                                 Licenseto Supporting Materials.

 

(a)                                  Micronhereby grants to Intel an irrevocable, perpetual, royalty free, fully paid up,worldwide, non exclusive, license under all IP Rights owned or licensable byMicron in the Supporting Materials for any and all purposes and applications,subject to the terms and conditions of this Agreement and, for so long as any applicableterm(s) of the Joint Venture Documents remain in effect, the applicable termsof the Joint Venture Documents.  Theforegoing license further includes the right of Intel to have products made bya Third Party solely for the benefit of Intel, with Intel having the right touse, make, modify, sell, offer for sale,

 

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import and otherwise exploit suchproducts.  The license granted in thefirst sentence of this Section 3.1(a) includes the right of Intel to sublicenseits Permitted Affiliates without the right of any such Permitted Affiliates tofurther sublicense, but such sublicense may include the right of any suchsublicensed Permitted Affiliates to have products made solely for the benefitof such Permitted Affiliate or Intel, with Intel and all such PermittedAffiliates having the right to use, make, modify, sell, offer for sale, importand otherwise exploit such products.

 

(b)                                 Withrespect to any of the Supporting Materials identified on Schedule 3 indicatedas specifically related to a “NAND Controller Board”(“Controller Supporting Materials”), thelicense under Section 3.1(a) is [***], but Intel shall not extract orseparate the Controller Supporting Materials from such board or attempt toreverse engineer or copy such Controller Supporting Materials.

 

(c)                                  Withrespect to any of the Supporting Materials identified on Schedule 3 thatconstitute an “IBIS model”, the license under Section3.1(a) includes the [***].

 

3.2                                 NoOther Rights.  No other rights aregranted hereunder by either Party, by implication, estoppel, statute orotherwise, except as expressly provided herein. Without limiting the generality of the foregoing, (a) Intel agrees andacknowledges that no rights are granted under this Agreement by Micron to anyPatent Rights, copyright, Mask Work Rights, trade secret, trademark or otherintellectual property right except as expressly granted hereunder with respectto the Pre-existing Product Designs or the Supporting Materials, and (b) Micronagrees and acknowledges that no rights are granted under this Agreement byIntel to any Patent Rights, copyright, Mask Work Rights, trade secret,trademark or other intellectual property right with respect to the Pre-existingProduct Designs.  [***].

 

3.3                                 Limitationon Obligation to Disclose or License. Anything to the contrary notwithstanding, Micron shall not be obligatedto disclose to Intel (or any other Person) or license to Intel any portion ofthe Supporting Materials with respect to which Micron is prevented byApplicable Law or contractual restriction from so disclosing or licensing orwhich would require payment by Micron to any Third Party.  Moreover, use of the NAND Flash MemoryDesigns, Tangible Design Package and Supporting Materials may require use ofSoftware owned by a Third Party for which no rights to use such Software areconferred by Micron to Intel hereunder. Any such Software or hardware required to use the Supporting Materialsor Tangible Design Package is solely the responsibility of Intel.  If Micron determines that it is unable todeliver any of the Supporting Materials or Tangible Design Package due to thelimitations in this Section 3.3, then Micron will promptly notify Intelof same.

 

ARTICLE 4

 

PRICE AND PAYMENT

 

4.1                                 Pricefor Assignment of Product Designs. In full consideration for (a) the assignment of the Pre-existing ProductDesigns and the delivery of the Tangible Design Package and (b) the [***],Intel shall pay to Micron on the Effective Date the respective amounts thereforspecified on Schedule 4.  Forclarification, in no event shall Intel or any Affiliate of Intel owe to

 

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Micron, Affiliates of Micron, or any other Person anymoney in connection with this Agreement beyond the amount specified on Schedule4.

 

4.2                                 Payments.  All amounts owed under this Agreement arestated, calculated and shall be paid in United States Dollars ($ U.S.).

 

4.3                                 Taxes

 

(a)                                  Transferof Intangible Rights.  The Partiesagree that any rights transferred pursuant to this Agreement constituteintangible personal property rights comprised of a copyright interest and/or apatent interest (as such terms are defined in California Sale and Use TaxRegulation 1507).  Consequently, thisAgreement is considered to be a “Technology TransferAgreement” as defined in California Revenue and Taxation Codesection 6012(c)(10) and California Sale and Use Tax Regulations 1507.  Because this Agreement represents a transferof intangible property rights, and because this Agreement is considered to be aTechnology Transfer Agreement, no sales or use taxes should be imposed by thestate of Utah, Idaho or Virginia, or in California, respectively, on thetransfers pursuant to this Agreement, other than to the value of any tangiblepersonal property included in such transfer as provided in Section 4.3(b)below, and neither Party has an obligation under this Agreement to collect orremit sales or use tax on the transfer of such intangible personal propertyrights.

 

(b)                                 TangiblePersonal Property Included in Transfers. To the extent that the rights transferred pursuant to this Agreement aretransferred through the use of tangible property such as tape or compact disc,the Parties agree that the amount of any applicable sales or use tax shall bedetermined based upon a reasonable determination of fair market value for suchtangible property, and that any and all sales or use tax shall be statedseparately on Micron’s invoice, collected from Intel, and shall be remitted byMicron to the appropriate tax authority, unless Intel provides valid proof oftax exemption prior to the effective date or otherwise as permitted by lawprior to the time Micron is required to pay such taxes to the appropriate taxauthority. 

 

ARTICLE 5

 

WARRANTIES; DISCLAIMERS

 

5.1                                 Warranties.  Micron represents and warrants to Intel that,to the best of Micron’s knowledge, as of the Effective Date:

 

(a)                                  Micronhas full title to, and ownership of, the [***] and the [***] free and clear ofall liens and has the right to transfer such ownership to Intel;

 

(b)                                 [***];

 

(c)                                  Micronhas the right to transfer the Tangible Design Package to Intel;

 

(d)                                 Micronhas the right to grant the licenses to the Supported Materials grantedhereunder;

 

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(e)                                  Micronhas not granted any rights in or to the Pre-existing Product Designs orSupporting Materials that conflict with the rights granted to Intel under thisAgreement;

 

(f)                                    thereare no unresolved claims, demands or pending litigation relating to thePre-existing Product Designs or Supporting Materials; and

 

(g)                                 thePre-existing Product Designs and Supporting Materials do not contain anyPublicly Available Software.

 

Theforegoing representations and warranties shall terminate as of the tenth (10th)anniversary of the Effective Date, except for Section 5.1(f), which shallterminate as of the second (2nd) anniversary of the Effective Date.  Any claim by Intel that any representation orwarranty was untrue must be made before expiration of the applicable foregoingtime period, otherwise Micron shall have no liability whatsoever with respectto any such representations and warranties.

 

5.2                                 NoImplied Obligation.  Nothingcontained in this Agreement shall be construed as:

 

(a)                                  awarranty or representation by either of the Parties to this Agreement as to thevalidity, enforceability or scope of any class or type of intellectual propertyassigned or licensed hereunder;

 

(b)                                 awarranty or representation that any manufacture, sale, lease, use or otherdisposition of the Pre-existing Product Designs, Tangible Design Package,Supporting Materials  or any productsbased on any of the foregoing will be free from infringement, misappropriationor other violation of any Patent Rights or other intellectual property rightsother than the intellectual property licensed hereunder;

 

(c)                                  anagreement to bring or prosecute proceedings against Third Parties forinfringement or conferring any right to bring or prosecute proceedings againstThird Parties for infringement of any of the Supporting Materials;

 

(d)                                 conferringany right to use in advertising, publicity, or otherwise, any trademark, tradename or names, or any contraction, abbreviation or simulation thereof, ofeither Party; or

 

(e)                                  requiringeither Party to defend any proceeding brought by a Third Party challenging orconcerning the validity of the IP Rights in the Pre-existing Product Designs orSupporting Materials, [***].

 

5.3                                 Disclaimer.  EXCEPT AS PROVIDED IN SECTION 5.1,MICRON ASSIGNS THE PRE-EXISTING PRODUCT DESIGNS, TRANSFERS THE TANGIBLE DESIGNPACKAGE AND LICENSES THE SUPPORTING MATERIALS ON AN “AS IS,” “WHERE IS” (BUT SUBJECT TO MICRON’SDELIVERY OBLIGATIONS UNDER ARTICLE 2) BASIS, WITH ALL FAULTS ANDDEFECTS, AND WITHOUT ANY WARRANTY OF ANY KIND WHATSOEVER.  WITHOUT LIMITING THE FOREGOING, EXCEPT AS

 

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PROVIDED IN SECTION 5.1, MICRON DISCLAIMS ANYWARRANTY, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY,FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT WITH RESPECT TO THEFOREGOING.  EXCEPT AS PROVIDED IN SECTION5.1, MICRON MAKES NO WARRANTIES WITH RESPECT TO INTEL’S ABILITY TO:  (A) USE ANY OF THE PRE-EXISTING PRODUCTDESIGNS, TANGIBLE DESIGN PACKAGE OR SUPPORTING MATERIALS, OR (B) MANUFACTURE ORHAVE MANUFACTURED ANY PRODUCTS BASED THEREON. EXCEPT AS PROVIDED IN SECTION 5.1, MICRON MAKES NO WARRANTY,EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, THAT THE USE, PRACTICE OR COMMERCIALEXPLOITATION OF ANYTHING PROVIDED PURSUANT TO THIS AGREEMENT WILL NOT INFRINGETHE INTELLECTUAL PROPERTY RIGHTS OF ANY THIRD PARTY, AND, EXCEPT AS PROVIDEDPURSUANT TO THE IP INDEMNIFICATION AGREEMENT, INTEL HEREBY AGREES THAT ITS USE,PRACTICE OR COMMERCIAL EXPLOITATION OF ANY SUCH SUBJECT MATTER SHALL BEENTIRELY AT ITS OWN RISK.  SUCHDISCLAIMERS ARE NOT INTENDED TO AFFECT ANY DIRECT CLAIMS OR REMEDIES INTEL MAYASSERT AGAINST ANY THIRD PARTY OR PREVENT THE PASS-THROUGH OR ASSIGNMENT TOINTEL OF ANY RIGHTS MICRON MAY HAVE AGAINST ANY THIRD PARTY.

 

ARTICLE 6

 

LIMITATION OF LIABILITY

 

6.1                                 LIMITATIONOF LIABILITY.  EXCEPT FOR A BREACH OFARTICLE 7, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTYFOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL OR OTHER INDIRECT DAMAGES OR ANYPUNITIVE DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, WHETHERSUCH DAMAGES ARE BASED ON BREACH OF CONTRACT, TORT (INCLUDING NEGLIGENCE) OROTHER THEORY OF LIABILITY.  THESELIMITATIONS SHALL APPLY EVEN IF A PARTY HAS BEEN ADVISED OF THE POSSIBILITY OFSUCH DAMAGES AND NOTWITHSTANDING THE FAILURE OF ESSENTIAL PURPOSE OF ANYREMEDY.  THE PARTIES ACKNOWLEDGE THAT THELIMITATIONS ON POTENTIAL LIABILITIES SET FORTH HEREIN ARE AN ESSENTIAL ELEMENTIN THE CONSIDERATION PROVIDED BY EACH PARTY UNDER THIS AGREEMENT.

 

ARTICLE 7

 

CONFIDENTIALITY

 

7.1                                 ConfidentialityObligations.  All informationprovided, disclosed or obtained in connection with this Agreement or theperformance of any of the Parties’ activities under this Agreement shall besubject to all applicable provisions of the Confidentiality Agreement.

 

(a)                                  AllPre-existing Product Designs and the portions of the Tangible Design Packagerelated thereto shall be considered “Confidential Information”under the

 

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Confidentiality Agreement for which Micron shall beconsidered a “Receiving Party” under suchagreement.

 

(b)                                 AllSupporting Materials and the portions of the Tangible Design Package relatedthereto shall be considered “Confidential Information”under the Confidentiality Agreement for which Intel shall be considered a “Receiving Party” under such agreement.

 

(c)                                  Theterms and conditions of this Agreement shall be considered “Confidential Information” under the ConfidentialityAgreement for which Micron and Intel shall each be considered a “Receiving Party” under such agreement.

 

7.2                                 PermittedDisclosures.

 

(a)                                  Withrespect to any of the Supporting Materials that constitute an IBIS Model (andthat is Confidential Information), Intel or its sublicensed PermittedAffiliate(s) hereunder may disclose such information or materials to a ThirdParty in connection with the sale, offer for sale, validation, testing,customer support, demonstration, evaluation or promotion of NAND Flash MemoryProducts, in each case to the extent such disclosure is consistent withstandard industry practice, and then only under a written obligation ofconfidentiality that is no less restrictive than that applicable to the Partiesunder the Confidentiality Agreement and that reasonably limits such ThirdParty’s use of such information.

 

(b)                                 Intelor its sublicensed Permitted Affiliate(s) may disclose Supporting Materials (1)to a Permitted Affiliate of Intel under a written obligation of confidentialitythat is no less restrictive than that applicable to the Parties under theConfidentiality Agreement, and (2) to a Third Party in connection with ahave-made arrangement entered into pursuant to Section 3.1, under awritten obligation of confidentiality that is no less restrictive than thatapplicable to the Parties under the Confidentiality Agreement.

 

(c)                                  Intelor its sublicensed Permitted Affiliate(s) may demonstrate the “System Board”identified on Schedule 3 to their respective customers and potentialcustomers of NAND Flash Memory Products; providedthat such demonstration is not conducted in a manner that disclosesany portion of the Supporting Materials embodied therein, Intel or itsPermitted Affiliate retains control over such System Board at all times, andthe customer or potential customer first enters a confidentiality agreement ina form consistent with the terms and conditions that Intel employs generallywhen demonstrating such or similar materials.

 

(d)                                 Withrespect to any “Confidential Information” (as that term is defined in theConfidentiality Agreement) listed in Schedule 3 that Intel desires todisclose to a Third Party and that is not otherwise allowed to be disclosed toa Third Party, Intel and Micron shall discuss and agree in writing whether suchinformation may be disclosed to such Third Party and the restrictions that willbe applicable thereto. 

 

(e)                                  Intelshall not and shall cause it Permitted Affiliates not to remove any productidentification, copyright or other proprietary notices from any of SupportingMaterials before their disclosure to any Third Party.

 

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7.3                                 Conflicts.  To the extent there is a conflict betweenthis Agreement and the Confidentiality Agreement, the terms of this Agreementshall control.

 

ARTICLE 8

 

TERM AND TERMINATION

 

8.1                                 Term.  The term of this Agreement commences on theEffective Date and continues in effect in perpetuity (such period of time, the“Term”).

 

8.2                                 NoTermination.  This Agreement may notbe terminated for any reason, including breach by a Party.

 

ARTICLE 9

 

MISCELLANEOUS

 

9.1                                 Notices.  All notices and other communicationshereunder shall be in writing and shall be deemed given upon (a) transmitter’sconfirmation of a receipt of a facsimile transmission, (a) confirmed deliveryby a standard overnight carrier or when delivered by hand, (a) the expirationof five (5) Business Days after the day when mailed in the United States bycertified or registered mail, postage prepaid, or (a) delivery in person,addressed at the following addresses (or at such other address for a party asshall be specified by like notice):

 

Ifto Intel:

 

Intel Corporation
1900 Prairie City Road
FM3-63
Folsom, CA 95630
Attention:  [***]
Fax:  [***]




 

witha copy to:

 

Intel Corporation
2200 Mission College Blvd.
Santa Clara, CA  95054
Attention:  General Counsel
Facsimile:  (408) 653-8050



 

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Ifto Micron:

 

Micron Technology, Inc.
8000 S. Federal Way
Mail Stop 1-507
Boise, ID  83716
Telephone:



                                    (208)368-4517

Facsimile:                                            (208)368-4537

Attention:                                         GeneralCounsel

 

9.2                                 Waiver.  The failure at any time of a Party to requireperformance by the other Party of any responsibility or obligation required bythis Agreement shall in no way affect a Party’s right to require suchperformance at any time thereafter, nor shall the waiver by a Party of a breachof any provision of this Agreement by the other Party constitute a waiver ofany other breach of the same or any other provision nor constitute a waiver ofthe responsibility or obligation itself.

 

9.3                                 Assignment.  This Agreement shall be binding upon andinure to the benefit of the successors and assigns of each Party hereto.  Except as permitted by the Joint VentureDocuments, neither this Agreement nor any right or obligation hereunder may beassigned or delegated by either Party in whole or in part to any other Person,without the prior written consent of the nonassigning Party.

 

9.4                                 ThirdParty Rights.  Nothing in thisAgreement, whether express or implied, is intended or shall be construed toconfer, directly or indirectly, upon or give to any Person, other than theParties hereto, any legal or equitable right, remedy or claim under or inrespect of this Agreement or any covenant, condition or other provisioncontained herein.

 

9.5                                 Choiceof Law.  This Agreement shall beconstrued and enforced in accordance with and governed by the laws of the Stateof Delaware, without giving effect to the principles of conflict of lawsthereof.

 

9.6                                 Jurisdiction;Venue.  Any suit, action orproceeding seeking to enforce any provision of, or based on any matter arisingout of or in connection with, this Agreement shall be brought in a state orfederal court located in Delaware and each of the Parties to this Agreementhereby consents and submits to the exclusive jurisdiction of such courts (andof the appropriate appellate courts therefrom) in any such suit, action orproceeding and irrevocably waives, to the fullest extent permitted byApplicable Law, any objection which it may now or hereafter have to the layingof the venue of any such suit, action or proceeding in any such court or thatany such suit, action or proceeding which is brought in any such court has beenbrought in an inconvenient forum.  Processin any such suit, action or proceeding may be served on any Party anywhere inthe world, whether within or without the jurisdiction of any such court..

 

9.7                                 Headings.  The headings of the Articles and Sections inthis Agreement are provided for convenience of reference only and shall not bedeemed to constitute a part hereof.

 

9.8                                 ForceMajeure.  The Parties hereto shall beexcused from any failure to perform any obligation hereunder to the extent suchfailure is caused by a Force Majeure Event.

 

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9.9                                 ExportControl.  Each Party agrees that itwill not knowingly:  (i) export orre-export, directly or indirectly, any technical data (as defined by the U.S.Export Administration Regulations) provided by the other Party or (ii) disclosesuch technical data for use in, or export or re-export directly or indirectly,any direct product of such technical data, including Software, to anydestination to which such export or re-export is restricted or prohibited byUnited States or non United States law, without obtaining prior authorizationfrom the U.S. Department of Commerce and other competent Government Entities tothe extent required by Applicable Laws.

 

9.10                           EntireAgreement.  This Agreement, togetherwith the Schedules attached hereto and the agreements and instruments expresslyprovided for herein, and, for so long as any applicable term(s) of the JointVenture Documents remain in effect, the applicable terms of the Joint VentureDocuments, constitute the entire agreement of the Parties hereto with respectto the subject matter hereof and supersede all prior agreements andunderstandings, oral and written, between the Parties hereto with respect tothe subject matter hereof.

 

9.11                           Severability.  Should any provision of this Agreement bedeemed in contradiction with the laws of any jurisdiction in which it is to beperformed or unenforceable for any reason, such provision shall be deemed nulland void, but this Agreement shall remain in full force in all other respects.  Should any provision of this Agreement be orbecome ineffective because of changes in Applicable Laws or interpretationsthereof, or should this Agreement fail to include a provision that is requiredas a matter of law, the validity of the other provisions of this Agreementshall not be affected thereby.  If suchcircumstances arise, the Parties hereto shall negotiate in good faithappropriate modifications to this Agreement to reflect those changes that arerequired by Applicable Law.

 

9.12                           Counterparts.  This Agreement may be executed in severalcounterparts, each of which shall be deemed an original, but all of whichtogether shall constitute one and the same instrument.

 

Signature Page Follows

 

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INWITNESS WHEREOF, this Agreement has been executed and delivered as of theEffective Date.

 

 

 

INTEL CORPORATION

 

 

 

By:

/s/ ARVIND SODHANI

 

 

Name:  Arvind Sodhani

 

Title:

Senior Vice President, Intel Corporation

 

 

President, Intel Capital

 

 

 

MICRON TECHNOLOGY, INC.

 

 

 

 

By:

/s/ STEVEN R. APPLETON

 

 

Name:  Steven R. Appleton

 

Title:

Chief Executive Officer and President

 

 

THIS IS THE SIGNATURE PAGE FOR THE PRODUCT DESIGNS ASSIGNMENT AGREEMENTENTERED INTO BY AND BETWEEN INTEL CORPORATION AND MICRON TECHNOLOGY, INC.

 

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SCHEDULES

 

Schedule 1

 

Pre-Existing Product Design Designations

 

 

 

Schedule 2

 

NAND Flash Memory Design Materials and Information

 

 

 

Schedule 3

 

Supporting Materials

 

 

 

Schedule 4

 

Payments

 

 

 

Schedule 5

 

[***]

 

 

 

Schedule 6

 

Delivery Protocol

 

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