Immunity Agreement - Motorola Inc. and ASE Inc.
IMMUNITY AGREEMENT
THIS AGREEMENT is effective as of the 25th day of January, 1994 by and between
MOTOROLA, INC., a Delaware corporation having an office at 3102 North 56th
Street, Phoenix, Arizona 85018, (hereinafter called "MOTOROLA"), and ASE,
Incorporated, a corporation of Kaohsiung Taiwan, ROC having an office at
Kaohsiung, Taiwan and Penang, Malaysia, (hereinafter called "ASSEMBLY HOUSE").
WHEREAS, MOTOROLA owns and has, or may have patents issued, and applications
for patents pending, in various countries of the world which relate to ball
grid array (BGA) PACKAGEs (as hereinafter defined), and
WHEREAS, ASSEMBLY HOUSE owns and has, or may have, rights in various patents
issued, and applications for patents pending, in various countries of the world
which may relate to BGA PACKAGEs, and
WHEREAS, ASSEMBLY HOUSE and MOTOROLA are engaged in continuing research,
development and engineering in regard to BGA PACKAGES and have programs for the
patenting of inventions resulting therefrom; and
WHEREAS, MOTOROLA is interested in proliferating BGA PACKAGEs as a standard in
the semiconductor industry; and
WHEREAS, ASSEMBLY HOUSE is interested in providing the service of making BGA
PACKAGEs for semiconductor manufacturers including those who are competitors of
MOTOROLA;
NOW THEREFORE, in consideration of the mutual covenants and conditions
hereinafter set forth, it is agreed as follows:
Section 1 - DEFINITIONS
1.1 SUBSIDIARY(IES) means a corporation, company, or other entity more than
fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other
managing authority) are, now or hereafter, owned or controlled,
directly or indirectly by a party hereto, but such corporation,
company, or other entity shall be deemed to be a SUBSIDIARY only so
long as such ownership or control exists.
1.2 SEMICONDUCTIVE MATERIAL means any material whose conductivity is
intermediate to that of metals and insulaters at room temperature and
whose conductivity, over some temperature range, increases with
increases in temperature. Such material shall include but not be
limited to refined products, reaction products, reduced products,
mixtures and compounds.
1.3 INTEGRATED CIRCUIT STRUCTURE means an integral unit consisting
primarily of a plurality of active and/or passive circuit elements
associated on, or in, a unitary body of SEMICONDUCTIVE MATERIAL for
performing electrical or electronic functions.
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1.4 BGA PACKAGE means a housing for an INTEGRATED CIRCUIT STRUCTURE or
STRUCTUREs in which the INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs are
mounted on one side of a substrate of printed circuit board material or
the like and are wire bonded to the substrate, plastic overlies the
INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs, and pads for receiving
solder balls or the like and providing electrical contacts to the
integrated circuit device are mounted on the substrate on the side
opposite to that on which the INTEGRATED CIRCUIT STRUCTURE or
STRUCTUREs are mounted. Some BGA packages may have some pads which are
not electrically connected to the INTEGRATED CIRCUIT STRUCTURE or
STRUCTUREs.
1.5 MOTOROLA PATENTS means all classes or types of patents, utility models,
design patents and applications for the aforementioned of all countries
of the world relating to BGA PACKAGEs and enhancements thereto which,
prior to the date of expiration or termination of this Agreement, are:
(i) issued, published or filed, and which arises out of inventions
made solely by one or more employees of MOTOROLA or a
SUBSIDIARY thereof, or
(ii) acquired by MOTOROLA or a SUBSIDIARY thereof,
and under which and to the extent to which and subject to the
conditions under which MOTOROLA or a SUBSIDIARY thereof may have, as of
the EFFECTIVE DATE of this Agreement, or may thereafter during the term
of this Agreement acquire, the right to grant licenses or rights of the
scope granted herein without the payment of royalties or other
consideration to third persons, except for payments to third persons
(a) for inventions made by said third persons while engaged by MOTOROLA
or a SUBSIDIARY thereof, and (b) as consideration for the acquisition
of such patents, utility models, design patents and applications.
1.6 ASSEMBLY HOUSE PATENTS means all classes or types of patents, utility
models, design patents and applications for the aforementioned of all
countries of the world relating to BGA PACKAGEs and enhancements
thereto which, prior to the date of expiration or termination of this
Agreement, are:
(i) issued, published or filed, and which arise out of inventions
made solely by one or more employees of ASSEMBLY HOUSE or a
SUBSIDIARY thereof, or
(ii) acquired by ASSEMBLY HOUSE or a SUBSIDIARY thereof,
and under which and to the extent to which and subject to the
conditions under which ASSEMBLY HOUSE or a SUBSIDIARY thereof may have,
as of the EFFECTIVE DATE of this Agreement, or may thereafter during
the term of this Agreement acquire, the right to grant licenses or
rights of the scope granted herein without the payment of royalties or
other consideration to third persons, except for payments to third
persons (a) for inventions made by said third persons while engaged by
ASSEMBLY HOUSE
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or a SUBSIDIARY thereof and (b) as consideration for the acquisition of
such patents, utility models, design patents and applications.
1.7 EFFECTIVE DATE means the date of the last signature hereto.
Section 2 - MUTUAL RELEASES
2.1 MOTOROLA hereby releases, acquits and forever discharges ASSEMBLY HOUSE
and its SUBSIDIARIES for any time prior to the EFFECTIVE DATE, from any
and all claims or liability for infringement or alleged infringement of
any MOTOROLA PATENTS for which immunity from suit is herein granted by
MOTOROLA.
2.2 ASSEMBLY HOUSE and its SUBSIDIARIES hereby releases, acquits and
forever discharges MOTOROLA and it SUBSIDIARIES for any time prior to
the EFFECTIVE DATE, from any and all claims or liability for
infringement or alleged infringement of any ASSEMBLY HOUSE PATENTS for
which immunity from suit is herein granted by ASSEMBLY HOUSE to
MOTOROLA.
Section 3 - IMMUNITY FROM SUIT
3.1 MOTOROLA hereby grants to ASSEMBLY HOUSE and its SUBSIDIARIES, for the
term of this Agreement, immunity from suit under MOTOROLA PATENTS for
making BGA PACKAGES, with or without solder balls or the like, for
another and for ASSEMBLY HOUSE internal use. In no event shall the
immunity from suit apply to MOTOROLA PATENTS which are infringed by the
INTEGRATED CIRCUIT STRUCTURE or STRUCTUREs independent of being
packaged in BGA PACKAGES.
3.2 ASSEMBLY HOUSE and its SUBSIDIARIES hereby grant to MOTOROLA and its
SUBSIDIARIES, for the term of this Agreement, immunity from suit under
ASSEMBLY HOUSE PATENTS for making and/or having made BGA PACKAGES, with
or without solder balls or the like, and for the subsequent sale and
use thereof. In no event shall the immunity from suit apply to ASSEMBLY
HOUSE PATENTS which are infringed by the INTEGRATED CIRCUIT STRUCTURE
or STRUCTUREs independent of being packaged in BGA PACKAGEs.
3.3 No licenses under any copyrights or mask work rights of either
MOTOROLA or ASSEMBLY HOUSE or a SUBSIDIARY thereof, are granted under
this Agreement.
Section 4 - PAYMENTS
4.1 In partial consideration of the rights granted by MOTOROLA under
Section 3, for the period beginning on the EFFECTIVE DATE and extending
to December 31, 2002, ASSEMBLY HOUSE agrees to pay MOTOROLA a royalty
based on the total number of pads on BGA PACKAGEs made by ASSEMBLY
HOUSE and its SUBSIDIARIES, and shipped and invoiced to customers of
ASSEMBLY HOUSE or its SUBSIDIARIES, excluding those made for MOTOROLA
and excluding returns.
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4.1.1 *
4.1.2 *
4.2 A payment for 1993 shall be made by February 28, 1994 and shall be
determined by the total number of pads on BGA PACKAGEs subject to the
immunity from suit of section 3.1 made, shipped and invoiced during
1993 to customers of ASSEMBLY HOUSE or its SUBSIDIARIES excluding
those made for MOTOROLA and excluding returns.
4.3 Payments for years subsequent to 1993 shall be on a quarterly basis.
Within forty-five (45) days after each calendar quarter ending March
31, June 30, September 30, and December 31, ASSEMBLY HOUSE shall pay
to MOTOROLA the royalties payable hereunder for the respective
calendar quarter ending on such date as determined above.
4.4 Any payment hereunder which shall be delayed for more than thirty (30)
days beyond the due date shall be subject to an interest charge of one
(1) percent per month on the unpaid balance payable in United States
currency until paid. The foregoing payment of interest shall not affect
MOTOROLA's right to terminate in accordance with Section 5.
4.5 ASSEMBLY HOUSE shall keep full, clear and accurate records with
respect to BGA PACKAGEs. MOTOROLA shall have the right through a
mutually agreed upon independent auditor to examine and audit no more
than once a year at a mutually agreeable time all such records and
such other records and accounts as may under recognized accounting
practices contain information hearing upon the amount of royalty
payable to MOTOROLA under this Agreement. Prompt adjustment shall be
made to compensate for any errors or omissions disclosed by such
examination or audit. Neither such right to examine and audit nor the
right to receive such adjustment shall be affected by any statement to
the contrary appearing on a check or otherwise.
4.6 Within forty-five (45) days after 1993 and thereafter within forty-five
(45) days after each calendar quarter ending March 31, June 30,
September 30, December 31 and continuing thereafter until all royalties
payable hereunder shall have been reported and paid. ASSEMBLY HOUSE
shall furnish to MOTOROLA a detailed and complete written statement,
certified by a responsible officer of ASSEMBLY HOUSE as showing all BGA
PACKAGEs which were either manufactured, sold, leased, put into use, or
otherwise disposed of during such periods, and the amount payable
thereon. If no such BGA PACKAGEs have been manufactured, sold, leased,
put into use, or otherwise disposed of, that fact shall be shown on
such statement.
4.7 Payments hereunder are to be made to MOTOROLA's New York City account
at CITIBANK 38491386, 1 Citicorp Center, 399 Park Avenue, New York,
New York 10043. Notice of payments shall be sent by ASSEMBLY HOUSE to
MOTOROLA's address in Section 6.9.
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* Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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Section 5 - TERM AND TERMINATION AND ASSIGNABILITY
5.1 The term of this Agreement shall be from the EFFECTIVE DATE until
December 31, 2002 unless earlier terminated as elsewhere provided in
this Agreement.
5.2 In the event of any breach of this Agreement by either party hereto
(including ASSEMBLY HOUSE's obligation to make payments under Section
4), if such breach is not corrected within forty-five (45) days after
written notice describing such breach, this Agreement may be
terminated forthwith by further written notice to that effect from the
party noticing the breach.
5.3 Either party hereto shall also have the right to terminate this
Agreement forthwith by giving written notice of termination to the
other party at any time, upon or after:
5.3.1 the filing by such other party of a petition in bankruptcy or
insolvency; or
5.3.2 any adjudication that such other party is bankrupt or
insolvent; or
5.3.3 the filing by such other party of any legal action or document
seeking reorganization, readjustment or arrangement of its
business under any law relating to bankruptcy or insolvency;
or
5.3.4 the appointment of a receiver for all or substantially all of
the property of such other party; or
5.3.5 the making by such other party of any assignment for the
benefit of creditors; or
5.3.6 the institution of any proceedings for the liquidation or
winding up of such other party's business or for the
termination of its corporate charter.
5.4 In the event of termination of this Agreement by one party pursuant to
Section 5.2, the immunity and rights granted to or for the benefit of
that one party hereto and its SUBSIDIARIES under MOTOROLA PATENTS or
ASSEMBLY HOUSE PATENTS, as the case may be, depending upon who is the
party doing the terminating, shall survive such termination and shall
extend for the full term of this Agreement, but the immunity and rights
granted to or for the benefit of the other party shall terminate as of
the date termination takes effect.
5.5 At such time as is mutually agreeable, at the written request of either
party hereto to the other party hereto, but in no event less than six
(6) months prior to the expiration of this Agreement, the parties
hereto shall discuss the possible extension of or the renewal of the
term of this Agreement, including the possible amendment of the
provisions thereof.
5.6 The rights or privileges provided for in this Agreement may be assigned
or transferred by either party only with the prior written consent of
the other party and with the authorization or approval of any
governmental authority as then may be required, except to a successor
in ownership of all or substantially all of the assets of the
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assigning party. Such successor, before such assignment or transfer is
effective, shall expressly assume in writing to the other party the
performance of all of the terms and conditions of this Agreement to be
performed by the assigning party.
Section 6 - MISCELLANEOUS PROVISIONS
6.1 Each of the parties hereto represents and warrants that it has the
right to grant to or for the benefit of the other the immunity and
rights granted hereunder in Sections 2 and 3.
6.2 Nothing contained in this Agreement shall be construed as:
6.2.1 restricting the right of MOTOROLA or any of its SUBSIDIARIES
to make, use, sell, lease or otherwise dispose of any
particular product or products not herein licensed;
6.2.2 restricting the right of ASSEMBLY HOUSE or any of its
SUBSIDIARIES to make, use, sell, lease or otherwise dispose of
any particular product or products not herein licensed;
6.2.3 an admission by ASSEMBLY HOUSE of, or a warranty or
representation by MOTOROLA as to, the validity and/or scope of
the MOTOROLA PATENTS, or a limitation on ASSEMBLY HOUSE to
contest, in any proceeding, the validity and/or scope thereof;
6.2.4 an admission by MOTOROLA of, or a warranty or representation
by ASSEMBLY HOUSE as to, the validity and/or scope of the
ASSEMBLY HOUSE PATENTS, or a limitation on MOTOROLA to
contest, in any proceeding, the validity and/or scope thereof;
6.2.5 conferring any license or other right, by implication,
ostoppel or otherwise, under any patent application, patent or
patent right, except as herein expressly granted under the
MOTOROLA PATENTS, and the ASSEMBLY HOUSE PATENTS;
6.2.6 conferring any license or right with respect to any
trademark, trade or brand name, a corporate name of either
party or any of their respective SUBSIDIARIES, or any other
name or mark, or contraction, abbreviation or simulation
thereof;
6.2.7 imposing on MOTOROLA any obligation to institute any suit or
action for infringement of any MOTOROLA PATENTS, or to defend
any suit or action brought by a third party which challenges
or concerns the validity of any MOTOROLA PATENTS;
6.2.8 imposing upon ASSEMBLY HOUSE any obligation to institute any
suit or action for infringement of any ASSEMBLY HOUSE PATENTS,
or to defend any suit or action brought by a third party which
challenges or concerns the validity of any ASSEMBLY HOUSE
PATENTS;
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6.2.9 imposing on either party any obligation to file any patent
application or to secure any patent or maintain any patent in
force; or
6.2.10 an obligation on either party to furnish any manufacturing or
technical information under this Agreement except as the same
is specifically provided for herein.
6.3 No express or implied waiver by either of the parties to this
Agreement of any breach of any term, condition or obligation of this
Agreement by the other party shall be construed as a waiver of any
subsequent breach of that term, condition or obligation or of any other
term, condition or obligation of this Agreement of the same or of a
different nature.
6.4 Anything contained in this Agreement to the contrary notwithstanding,
the obligations of the parties hereto shall be subject to all laws,
both present and future, of any Government having jurisdiction over
either party hereto, and to orders or regulations of any such
Government, or any department, agency, or court thereof, and acts of
war, acts of public enemies, strikes, or other labor disturbances,
fires, floods, acts of God, or any causes of like or different kind
beyond the control of the parties, and the parties hereto shall be
excused from any failure to perform any obligation hereunder to the
extent such failure is caused by any such law, order, regulation, or
contingency but only so long as said law, order, regulation or
contingency continues.
6.5 The captions used in this Agreement are for convenience only, and are
not to be used in interpreting the obligations of the parties under
this Agreement.
6.6 This Agreement and the performance of the parties hereunder shall be
construed in accordance with and governed by the laws of the State of
Illinois.
6.7 If any term, clause, or provision of this Agreement shall be judged to
be invalid, the validity of any other term, clause, or provision shall
not be affected; and such invalid term, clause, or provision shall be
deemed deleted from this Agreement.
6.8 This Agreement sets forth the entire Agreement and understanding
between the parties as to the subject matter hereof and merges all
prior discussions between them, and neither of the parties shall be
bound by any conditions, definitions, warranties, understandings or
representations with respect to such subject matter other than as
expressly provided herein or as duly set forth on or subsequent to the
date hereof in writing and signed by a proper and duly authorized
officer or representative of the party to be bound thereby.
6.9 All notices required or permitted to be given hereunder shall be in
writing and shall be valid and sufficient if dispatched by registered
airmail, postage prepaid, in any post office in the United States,
addressed as follows:
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6.9.1 If to MOTOROLA:
Motorola Inc.
1303 East Algonquin Road
Schaumburg, Illinois 60196
Attention: Vice President for
Patents, Trademarks & Licensing
6.9.2 If to ASE:
ASE, Incorporated
7855 South River Parkway, Suite 106
Tempe, Arizona 85284
Attention: Jim Kelley, Vice President of Marketing and
Sales
6.9.3 The date of receipt of such a notice shall be the date for the
commencement of the running of the period provided for in such notice,
or the date at which such notice takes effect, as the case may be.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate.
MOTOROLA, INC. ASE, INC.
/s/ GARY M. JOHNSON /s/ WALT DELAUDER
------------------------------------ -------------------------------------
Gary Johnson Walt DeLauder
Sr. Vice President & General Manager President ASE (US)
Logic and Analog Technologies Group
Semiconductor Products Sector Date: 7 Jan. 94
Motorola, Inc. --------------------------------
Date: 1/20/94
-------------------------------
/s/ JAMES W. GILLMAN
------------------------------------
James W. Gillman
Corporate Vice President, Patents,
Trademarks, and Licensing
Motorola, Inc.
Date: 1/25/94
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