Cooperative Development Agreement - Nanosys Inc. and Intel Corp.
COOPERATIVE DEVELOPMENT AGREEMENT
This Cooperative Development Agreement (the "Agreement") is entered
into as of December 15, 2003 (the "Effective Date") by and between Nanosys Inc.
("Nanosys"), a Delaware corporation with a place of business at 2625 Hanover
Street, Palo Alto, California 94304 and Intel Corporation ("Intel"), a Delaware
corporation with a place of business at 2200 Mission College Boulevard, Santa
Clara, California 95052.
RECITALS
Whereas:
A. Intel has expertise with respect to memory devices and the
development, design, and manufacture thereof, and Nanosys has expertise with
respect to the design and synthesis of nanomaterials and the development of
nanotechnology-enabled systems.
B. Intel and Nanosys desire to enter into an agreement to
cooperate to investigate the feasibility of using [*** Redacted] in memory
devices.
AGREEMENT
NOW, THEREFORE, the parties agree as follows:
1. DEFINITIONS. In this Agreement, the following words and
expressions shall have the following meanings:
1.1 "Background IP" of a party means any and all intellectual
property rights that such party either (i) owned, controlled, or had rights with
respect to prior to the Effective Date; or (ii) develops, or acquires ownership,
control, or rights with respect to, during the term of this Agreement but which
is not Collaboration IP.
1.2 "CNDA" means the parties' October 11, 2002 Corporate
Non-Disclosure Agreement #5085138.
1.3 "Collaboration" means the research and development work
set forth in Exhibit A hereto.
1.4 "Collaboration Commencement Date" means the date of
commencement of the Collaboration under Section 2.1 below.
1.5 "Collaboration IP" shall mean (i) all Intellectual
Property rights in Collaboration Technology, which Intellectual Property rights
were created by the parties' Listed Representatives (solely or jointly) in the
course of working on the Collaboration and (ii) all Intellectual Property of
either party conceived or created by or for either party ("Party") prior to the
termination or
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treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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expiration of the Collaboration based on the other party's Confidential
Information disclosed to such Party in connection with the Collaboration.
1.6 "Collaboration Right" means any patent, patent right (or
similar right under foreign law), utility model, copyright or mask work right
issued or registered as a result of a Filing.
1.7 "Collaboration Technology" means (i) any and all
Technology that either party's Listed Representatives conceive (solely or
jointly) in the course of working on the Collaboration, and (ii) any and all
Technology conceived (solely or jointly) prior to the termination or expiration
of the Collaboration by or for either party ("Party") based on Confidential
Information of the other party disclosed to such Party in connection with the
Collaboration, but, in each case, excluding Technology resulting from
University/Government Activities.
1.8 "Confidential Information" is defined in the CNDA, as set
forth in Section 6 below.
1.9 "Conventional Processes" means standard semiconductor
manufacturing processes (where "standard" semiconductor manufacturing processes
may include Intel proprietary semiconductor manufacturing processes) and
reasonable incremental improvements (e.g. standard [*** Redacted] processes)
thereof, including those resulting in one or more features of [*** Redacted] of
[*** Redacted], and the resultant devices fabricated using such standard
semiconductor manufacturing processes (but excluding such resultant devices
incorporating Deposited Nanomaterials).
1.10 "Deposited Nanomaterials" means shape or size controlled
[*** Redacted], such as [*** Redacted], and [*** Redacted], having at least one
cross sectional dimension of less than 500 nanometers and such that the size
related properties of the nanomaterials are advantageous to their function, that
are subsequently [*** Redacted] as such nanomaterials [*** Redacted].
1.11 "Exclusivity Date" means the earlier of (i) the
Collaboration Commencement Date or (ii) [*** Redacted].
1.12 "Exclusivity Period" means the period from the Effective
Date until the earlier of (i) [*** Redacted], (ii) the Exclusivity Expiration
(as defined in Section 3.3 below), or (iii) any termination of this Agreement.
1.13 "Field of Interest" means memory devices based on
[*** Redacted] used primarily as [*** Redacted] (e.g. this would not include
[*** Redacted] devices, [*** Redacted], or [*** Redacted]).
1.14 "Filing" means any application for or registration of a
patent, patent right (or similar right under foreign law), utility model,
copyright or mask work right with respect to Collaboration Technology.
1.15 "Intel's Exclusive Field" means (i) compositions,
devices, articles and methods involving or involved in memory and logic devices,
but only if such compositions, devices,
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have been filed separately with the Commission.
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articles or methods are outside of Nanosys' Exclusive Field, and in each case
excluding Conventional Processes, and (ii) all Conventional Processes other than
Conventional Processes used in conjunction with Deposited Nanomaterials. For the
avoidance of doubt, (i) Conventional Processes used in conjunction with
Deposited Nanomaterials are not in Intel's Exclusive Field nor in Nanosys'
Exclusive Field and (ii) devices incorporating Deposited Nanomaterials are in
Nanosys' Exclusive Field.
1.16 "Intellectual Property" shall mean patents (and similar
rights under foreign law, and applications therefor), trade secrets, copyrights
and mask works.
1.17 "Listed Representatives" of a party means, at any time,
that party's employees, agents, and contractors then working on the
Collaboration on behalf of that party, as such individuals are identified by
that party by written notice to the other party. A party's notice of Listed
Representatives shall be in effect until a subsequent such notice by that party
modifying the list. Each party shall at all times in good faith maintain an
accurate list of Listed Representatives. At commencement, Intel's Listed
Representatives shall include [*** Redacted], and Nanosys' Listed
Representatives shall include [*** Redacted].
1.18 "Nanosys' Exclusive Field" means compositions, devices,
articles and methods involving or involved in Deposited Nanomaterials, but
excluding Conventional Processes.
1.19 "Nanosys Facility" means and includes Nanosys' operations
at 2625 Hanover Street in Palo Alto, CA, any ancillary engineering facilities
owned or controlled by Nanosys, and any successor facilities owned or controlled
by Nanosys during the term of this Agreement..
1.20 "Nanosys IP" shall mean Nanosys' Intellectual Property
Rights including Background IP and Collaboration IP.
1.21 "Technology" means any and all developments, ideas,
designs, inventions, information, know-how, and technology.
1.22 "University/Government Activities" means any and all
research, development, and other activities performed either (i) with any
university (or other educational institution) funding or any government or
government agency (U.S. or otherwise) funding, (ii) in collaboration with any
university (or other educational institution) or with any government or
government agency (U.S. or otherwise), or (iii) with a primary purpose of
obtaining government funding.
2. COLLABORATION WORK.
2.1 Each party shall use its commercially reasonable efforts
to perform its Collaboration obligations as set forth in Exhibit A. It is
understood and agreed that the Collaboration is in the nature of research, that
successful completion of the research is not assured, and that, so long as a
party uses its commercially reasonable efforts as set forth in the preceding
sentence, that party will not be in default for any failure to achieve any
particular result or to complete any particular deliverable. The parties shall
commence the Collaboration December 15, 2003, provided that on one or more
written notices to Nanosys received by Nanosys at least [*** Redacted]
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treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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[*** Redacted] prior to the date when the Collaboration is then scheduled to
commence (provided that if this Agreement is signed by Intel after November 30,
2003, Intel shall be entitled to provide the initial such notice on the date of
such signature, but only if such signature date is on or before December 10,
2003), Intel shall be entitled to delay commencement of the Collaboration to any
date on or before March 31, 2004. Delays resulting in commencement of the
Collaboration after December 31, 2003 shall be subject to the payments in
Section 3.2 below. It is understood and agreed that commencement of the
Collaboration may not be delayed past March 31, 2004.
2.2 Nanosys agrees to allocate to the Collaboration at least
[*** Redacted] full-time equivalent individuals during the first quarter of the
Collaboration, at least [*** Redacted] full-time equivalent individuals during
the second quarter of the Collaboration, at least [*** Redacted] full-time
equivalent individuals during the third quarter of the Collaboration, and at
least "X" full-time equivalent individuals (FTEs) during the fourth quarter of
the Collaboration, where "X" is a number between [*** Redacted] and
[*** Redacted], inclusive, chosen by Intel by written notice to Nanosys at least
[*** Redacted] days prior to the beginning of such fourth quarter. If Intel
fails to provide such notice, "X" will be deemed to equal [*** Redacted].
2.3 It is the parties' mutual intent that most of the work and
deliverable creation under this Agreement to investigate [*** Redacted] memory
feasibility shall occur at the Nanosys Facility. Nanosys shall host Intel's
Listed Representatives on a mutually agreed upon basis, such agreement not to be
unreasonably withheld, on site at the Nanosys Facility to work on this project
and get deeply involved in complementary collaborative activities (e.g., device
integration and characterization, but not the synthesis of Deposited
Nanomaterials). Information on the design and modeling of Deposited
Nanomaterials, as well as [*** Redacted], [*** Redacted], and [*** Redacted]
related to Deposited Nanomaterials, shall be provided to Intel's Listed
Representatives, but in each case only as reasonably required for device
integration and characterization for the purpose of the Collaboration, including
but not limited to, making an informed decision about the complexity of
integrating Deposited Nanomaterials with Conventional Processes. Nanosys' Listed
Representatives may also be invited to work at Intel's facilities, for
circumstances including but not limited to, using a metrology tool that may not
be available at the Nanosys Facility. The parties shall adhere to the following
guidelines in connection with Listed Representatives working at the site of the
other party: (a) all employees of one party visiting the other party's facility
shall comply with the rules and regulations applicable at that facility as
communicated to such employees, and each party retains the right to reasonably
refuse admittance for violation of these rules; (b) the hosting party shall
maintain reasonable firewall procedures so that employees of a visiting party
are not exposed to the confidential information of a third party; (c) each party
shall maintain reasonable firewall procedures so that third parties at a party's
site are not exposed to the confidential information of the other party or
non-public information about the status of this Collaboration; and (d) in the
case of Nanosys only, cubicle space, secure Internet access, and badge access
shall be made available for use by Intel's Listed Representatives when such a
person or persons are working on site at the Nanosys Facility.
2.4 Except as set forth in Section 5, any and all materials
supplied by one party to the other party shall be used by the recipient only to
perform its Collaboration obligations.
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treatment filed with the Securities and Exchange Commission. Omitted portions
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2.5 Except as set forth in Section 3 below, each party shall
bear its own costs and expenses in carrying out the Collaboration.
2.6 Except for University/Government Activities, each party
agrees to work exclusively with the other party in the Field of Interest during
the Exclusivity Period.
2.7 The following persons ("Collaboration Managers") shall be
appointed to direct the conduct of the parties with respect to the
Collaboration:
(a) For Intel: [*** Redacted]
[*** Redacted]
Intel Corporation
2200 Mission College Blvd.
Mail Stop RN6-661
Santa Clara, CA 95052
Phone: [*** Redacted]
Fax: [*** Redacted]
E-mail: [*** Redacted]
(b) For Nanosys: Calvin Y.H. Chow
Chief Executive Officer
Nanosys Inc.
2625 Hanover Street
Palo Alto, CA 94304
Phone: (650) 331-2102
Fax: (650) 331-2101
E-mail: cchow@nanosysinc.com
The Collaboration Managers shall have the authority to approve in writing
changes to Exhibit A, including, as applicable, specifications, scope of work,
and milestones. The Collaboration Managers shall have no other authority to
amend this Agreement. Each party may change its Collaboration Manager on written
notice to the other party, provided that the replacement Collaboration Manager
is at a similar level of authority at the party making the replacement, or as
otherwise agreed by the parties.
2.8 If either party desires to propose changes to the
Collaboration, it shall notify the other party in writing of such proposal and
the reasons for such proposal. The other party will give each such proposal its
prompt attention. If Intel and Nanosys agree to any such change, the change
shall be evidenced by a written confirmation signed by the Collaboration
Managers of both parties. Such a written confirmation shall amend the terms of
Exhibit A.
2.9 If the Collaboration is completed successfully (i.e.,
neither party has terminated this Agreement under Section 10, and the parties
agree that the subject technology is promising and warrants pursuing further),
then it is the parties' intent that, at Intel's request, the parties will
negotiate, in good faith, during the Exclusivity Period to enter into a
follow-on development agreement (the "Development Agreement") to further develop
and commercialize the technology
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treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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which is the subject of this Agreement If Intel requests such a negotiation,
then, for the duration of the Exclusivity Period, Nanosys agrees that Nanosys
will not enter into any discussions regarding the subject of the Collaboration
with any third party. The parties further intend that any such Development
Agreement would reflect that, if the development and commercialization of this
technology are successful, and Intel has a good-faith intent to use the
Collaboration Materials in anticipation of a high-volume manufacturing ramp,
then:
(a) It is the parties' mutual intent that the
parties would negotiate in good faith a supply agreement that reasonably assures
the supply of Deposited Nanomaterials and any related Nanosys enabling
technology or rights to Intel (for use in the Field of Interest, the
"Collaboration Materials"). Upon Intel's request to commence such negotiations,
the parties would negotiate diligently and in good faith to reach agreement.
Further, if at the expiration of the Development Agreement the parties have not
reached agreement, notwithstanding their diligent and good faith efforts, then
Nanosys would not enter into any supply agreement, within [*** Redacted] after
the expiration of the Development Agreement, to supply Collaboration Materials
to any third party, in the Field of Interest, on terms which are more favorable
to that third party than the terms last offered by Nanosys to Intel during this
negotiation. In the first instance, the parties would use reasonable efforts to
qualify Nanosys as a supplier to Intel of the Collaboration Materials. Nanosys
acknowledges that, in order to be selected as an Intel qualified supplier,
Nanosys must demonstrate supply capability (in areas including, but not limited
to, cost, quality, and availability). Nanosys further acknowledges that the
supply agreement would include a [*** Redacted] provision which guarantees that,
[*** Redacted], Nanosys' price to Intel for Collaboration Materials is [***
Redacted] the price charged by Nanosys to [*** Redacted] for Collaboration
Materials, in the Field of Interest, on similar terms and conditions. Further,
if the parties enter into a supply agreement, the supply agreement will include
provisions to help ensure a reliable supply of Collaboration Materials to Intel,
which may include (i) safety stock and (ii) if Nanosys is unable to reasonably
provide Intel with the Collaboration Materials, then upon notice from Intel,
Nanosys' would take prompt action to arrange for such supply, which may include
designating a subcontractor, subject to Intel's consent of such subcontractor
(which shall not be unreasonably withheld), to manufacture such quantity of
Collaboration Materials that cannot be obtained from Nanosys, providing such
subcontractor agrees to pay Nanosys a reasonable royalty and agrees to
reasonable confidentiality, intellectual property protection, and commercial
provisions. Nanosys agrees to fully reasonably cooperate with Intel and the
chosen subcontractor in the transfer of technology and sufficient collaborative
engineering resources necessary to allow the subcontractor to produce
Collaboration Materials for Intel's intended use as soon as practicable after
Intel's request. Nanosys reserves the right to seek any and all legal recourse
against the subcontractor if confidentiality or other provisions of the
agreement between Nanosys and the subcontractor are violated.
(b) It is the parties' mutual intent that, if
the parties have not entered into a supply agreement as set forth in Section
2.9(a), notwithstanding their diligent and good faith efforts, then upon Intel's
request within [*** Redacted] after the expiration of the Development
Agreement, Nanosys would designate a contract manufacturer, subject to Intel's
consent of such contract manufacturer (which would not be unreasonably
withheld), to manufacture Collaboration Materials, licensing such contract
manufacturer to applicable Nanosys intellectual property on reasonable and
non-discriminatory terms, provided that such contract manufacturer agrees to pay
Nanosys a reasonable royalty and agrees to reasonable confidentiality,
intellectual property
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treatment filed with the Securities and Exchange Commission. Omitted portions
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protection, and commercial provisions. Nanosys shall fully and reasonably
cooperate with Intel and the chosen contract manufacturer in the transfer of
technology and sufficient collaborative engineering resources necessary to allow
the contract manufacturer to produce Collaboration Materials for Intel's
intended use as soon as practicable after Intel's request. Nanosys reserves the
right to seek all legal recourse against the contract manufacturer if
confidentiality or other provisions of the license between Nanosys and the
contract manufacturer are violated. If Nanosys fails to enter into a license
with a contract manufacturer as contemplated in this Section 2.9(b) within
[*** Redacted] after Intel's request to Nanosys, then Nanosys would be deemed
not to be entering the business of high-volume supply of Collaboration
Materials.
(c) The parties further intend that if Nanosys
chooses not to enter into the business of supply of Collaboration Materials, and
Nanosys does not license the necessary enabling technology to a third party
manufacturer as provided in Section 2.9(b) above, then Nanosys would provide to
Intel a royalty-bearing, capped fee, worldwide, perpetual, non-exclusive license
under Nanosys IP, to have made Collaboration Materials and to make, have made,
use, sell, offer to sell and import, products using or incorporating
Collaboration Materials.
3. PAYMENTS TO NANOSYS.
3.1 Intel shall pay to Nanosys the following payments at the
following times:
<CAPTION>
TIME OF PAYMENT AMOUNT OF PAYMENT
---------------------------------------- ------------------------
Collaboration Commencement Date $ [*** Redacted].
[*** Redacted] months after the Collaboration $ [*** Redacted].
Commencement Date
[*** Redacted] after the Collaboration $ [*** Redacted].
Commencement Date
[*** Redacted] after the Collaboration $ [*** Redacted]*.
Commencement Date
* $[*** Redacted] per FTE, according to the number of FTEs chosen by Intel,
pursuant to Section 2.2 above, for the fourth quarter of the Collaboration.
For the avoidance of doubt, the latter two payments (of $[*** Redacted] and
([*** Redacted])) will not be due if Intel terminates this Agreement under
Section 10.2 below.
3.2 For each month (or portion thereof) that Intel delays the
Collaboration Commencement Date, pursuant to Section 2.1 above, to a date after
December 31,2003, Intel shall pay to Nanosys [*** Redacted] dollars
($[*** Redacted]) (prorated on a day for day basis for partial months). Such
payment shall be due and payable within [*** Redacted] after Intel's notice of
delay. (By way of example only, if upon execution of this Agreement Intel
notified Nanosys of a Collaboration Commencement Date delay to [*** Redacted],
2004, Intel would pay Nanosys $[*** Redacted] within [*** Redacted] after such
notice date. If on December 15,2003 Intel then notified Nanosys of a further
delay
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in the Collaboration Commencement Date, until [*** Redacted], 2004, Intel would
pay to Nanosys an additional $[*** Redacted] by [*** Redacted], 2004 (i.e., in
this example, a total of $[*** Redacted]).)
3.3 As of the Effective Date, the "Exclusivity Expiration"
shall be [*** Redacted] after the Exclusivity Date.
(i) Intel shall be entitled to extend the
Exclusivity Expiration by [*** Redacted], to [*** Redacted] after the
Exclusivity Date, by written notice to Nanosys no later than [*** Redacted]
after the Exclusivity Date, and payment to Nanosys of [*** Redacted] dollars
($[*** Redacted]). This payment shall be due and payable no later than
[*** Redacted] after the Exclusivity Date.
(ii) If Intel has extended the Exclusivity
Expiration pursuant to paragraph (i) hereinabove, then Intel shall be entitled
to further extend the Exclusivity Expiration by an additional [*** Redacted], to
[*** Redacted] after the Exclusivity Date, by written notice to Nanosys no later
than [*** Redacted] after the Exclusivity Date, and payment to Nanosys of [***
Redacted] dollars ($[*** Redacted]). This payment will be due and payable no
later than [*** Redacted] after the Exclusivity Date.
(iii) If Intel has extended the Exclusivity
Expiration pursuant to paragraph (ii) hereinabove, then Intel shall be entitled
to further extend the Exclusivity Expiration by an additional [*** Redacted], to
[*** Redacted] after the Exclusivity Date, by written notice to Nanosys no later
than [*** Redacted] after the Exclusivity Date, and payment to Nanosys of [***
Redacted] dollars ($[*** Redacted]). This payment will be due and payable no
later than [*** Redacted] after the Exclusivity Date.
[*** Redacted] paid by Intel pursuant to this Section 3.3 may, at Intel's
option, be credited to [*** Redacted] of Intel to Nanosys under [*** Redacted]
by the parties, in the Field of Interest, entered into prior to termination of
the Exclusivity Period.
4. OWNERSHIP.
4.1 Each party shall retain its ownership of its Background
IP. No rights are granted pursuant to this Agreement with respect to any
Background IP.
4.2 Subject to the licenses set forth in Section 5 below,
Nanosys shall own all Collaboration IP. Subject to the licenses set forth in
Section 5 below, Intel irrevocably hereby agrees to, and hereby does, transfer,
convey and assign to Nanosys all of Intel's right, title, and interest in the
Collaboration IP, including without limitation all Intellectual Property rights
with respect thereto. Intel agrees to execute such documents, render such
assistance, and take such other action as Nanosys may reasonably request to
apply for, register, perfect, confirm, and protect Nanosys' rights in the
Collaboration IP. Subject to Sections 5, 6, and 7 below, ownership of
Collaboration Technology shall vest in Nanosys the exclusive right to determine
whether and how the Collaboration IP is to be protected and exercised throughout
the world.
5. LICENSES.
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5.1 Subject to the terms and conditions of this Agreement,
Nanosys agrees to grant, and hereby grants, to Intel a worldwide, nonexclusive
(except as set forth in Section 5.1(i) hereinbelow), nontransferable (except as
set forth in Section 11.7 below), royalty free license, only under Collaboration
IP, to design, develop, make, have made, use, import, offer to sell, and sell or
distribute any product or item and to practice any method or process, provided
that:
(i) this license shall be exclusive (including
as to Nanosys) for use of the Collaboration IP in Intel's Exclusive Field, and
(ii) no license is granted by Nanosys for use of
any Collaboration IP in Nanosys' Exclusive Field.
5.2 Intel shall have the right to grant sublicenses (and
authorize the granting of further sublicenses) under the license granted to it
in Section 5.1 above.
5.3 No party shall be obligated to provide any Technology or
deliverable in connection with the licenses granted in this Section 5; all
deliverables under this Agreement are specified exclusively in Exhibit A.
5.4 Notwithstanding this Section 5 or Section 2.4, nothing in
this Agreement shall be construed as preventing Intel or Nanosys employees from
using [*** Redacted] of the Confidential Information of the other party,
provided that such use of [*** Redacted] shall not grant to Intel or Nanosys any
implied license to any of the other party's [*** Redacted]. [*** Redacted] means
information in [*** Redacted] which is [*** Redacted]. An [*** Redacted] if the
[*** Redacted] the information for the purpose of [*** Redacted].
5.5 For purposes of this Section 5.5, the following
definitions apply:
"Applicable Intel Patents" means those claims of Intel patents which
claim inventions conceived by Intel during the [*** Redacted] following the
termination or expiration of the Collaboration, which inventions were based on
Nanosys' Confidential Information.
"Applicable Nanosys Patents" means those claims of Nanosys patents
which claim inventions conceived by Nanosys during the [*** Redacted] following
the termination or expiration of the Collaboration, which inventions were based
on Intel's Confidential Information.
"Applicable Intel Sublicensable Patents" means those claims of Intel
patents which claim inventions conceived by Intel during the [*** Redacted]
following the termination or expiration of the Collaboration, which inventions
were based on Nanosys' Confidential Information.
"Applicable Nanosys Sublicensable Patents" those claims of Nanosys
patents which claim inventions conceived by Nanosys during the [*** Redacted]
following the termination or expiration of the Collaboration, which inventions
were based on Intel's Confidential Information.
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treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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(a) Subject to the terms and conditions of this
Agreement, Nanosys agrees to grant, and hereby grants, to Intel a worldwide,
nonexclusive, nontransferable (except as set forth in Section 11.7 below),
[*** Redacted] license, only under the Applicable Nanosys Patents, to design,
develop, make, have made, use, import, offer to sell, and sell or distribute any
product or item and to practice any method or process, provided that this
license shall be limited to use within Intel's Exclusive Field and the Field of
Interest. Intel shall have the right to grant sublicenses (and authorize the
granting of further sublicenses) under the license granted to it in this Section
5.5(a), as provided in Section 5.5(b) below.
(b) Under the licenses granted under Section
5.5(a) above, but only under Applicable Nanosys Sublicensable Patents, and only
outside of the Field of Interest, Intel shall have the right to grant
sublicenses (and authorize the granting of further sublicenses).
(c) Subject to the terms and conditions of this
Agreement, Intel agrees to grant, and hereby grants, to Nanosys a worldwide,
nonexclusive, nontransferable (except as set forth in Section 11.7 below),
[*** Redacted] license, only under the Applicable Intel Patents, to design,
develop, make, have made, use, import, offer to sell, and sell or distribute any
product or item and to practice any method or process, provided that this
license shall be limited to use within Nanosys' Exclusive Field and the Field of
Interest. Nanosys shall have the right to grant sublicenses (and authorize the
granting of further sublicenses) under the license granted to it in this Section
5.5(c), as provided in Section 5.5(d) below.
(d) Under the licenses granted under Section
5.5(c) above, but only under Applicable Intel Sublicensable Patents, and only
outside of the Field of Interest, Nanosys shall have the right to grant
sublicenses (and authorize the granting of further sublicenses).
6. CONFIDENTIAL INFORMATION.
6.1 The CNDA shall apply to this Agreement, provided that, for
purposes of this Agreement:
(i) "Confidential Information" shall also
include information disclosed as a result of access to the other party's
premises or property, which information relates to any information in tangible
form subject to clause (i) of Section 1 of the CNDA, whether such disclosure or
access occurs prior to, concurrent with, or following the disclosure of such
information in tangible form.
(ii) In Section 2 of the CNDA, "a need to know"
means a need to know for the purposes of this Agreement.
(iii) The third sentence of Section 6 of the CNDA
shall not apply to this Agreement; rather, the Termination and Survival sections
of this Agreement shall govern the disposition of Confidential Information.
(iv) If the CNDA is terminated, the terms and
conditions of the CNDA shall continue to apply to disclosures in connection with
this Agreement.
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treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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(v) In addition, each party shall be entitled to disclose the
other party's Confidential Information to the extent such disclosure is required
by the order or requirement of a court, administrative agency, or other
governmental body; provided, that the party required to make the disclosure
shall provide at least fifteen (15) days (or such lesser period as may apply if
the party required to make the disclosure received fewer than fifteen (15) days
notice of the disclosure obligation), advance written notice thereof to enable
the other party to seek a protective order or otherwise prevent such disclosure.
7. INTELLECTUAL PROPERTY PROTECTION.
7.1 Nanosys IP. Nanosys shall have the sole right at its
expense to prepare, file and prosecute Filings related to any Collaboration
Technology, subject to Section 7.2 below.
7.2 Protection of Collaboration Technology. The parties shall
confer on (i) protection of Collaboration Technology (other than Collaboration
Technology developed solely by Nanosys) through Filings and/or through
maintenance of the Collaboration IP as a trade secret, and (ii) preparation,
filing, prosecution and maintenance of Filings and Collaboration Rights related
to Collaboration Technology (other than Collaboration Technology developed
solely by Nanosys). Nanosys shall be responsible for all Filing(s) in all
jurisdictions for Collaboration IP. Provided however, if only Intel wants to
protect a Collaboration development through a Filing on that development, then
Intel shall be entitled to do so, at its sole expense, and in such a case shall
be deemed sole owner of the affected Collaboration Right and Filing. In such
event, Intel shall be deemed to have granted to Nanosys a nonexclusive (except
as set forth hereinbelow), irrevocable, perpetual, fully paid, royalty free
license, with right to sublicense (and authorize the granting of further
sublicenses), only under such Collaboration Right, without restriction,
including to practice any process or method, and to design, develop, make, use,
have made, offer to sell, and sell or distribute any product or item, provided
that (A ) this license shall be exclusive (including as to Intel) for use of the
Collaboration Right in Nanosys' Exclusive Field and (B) no license is granted by
Intel for use of the Collaboration Right in Intel's Exclusive Field.
7.3 Infringement Prosecution.
(i) Nanosys shall have the sole right to
prosecute claims of infringement or misappropriation of Collaboration IP, where
such infringement or misappropriation is primarily in Nanosys' Exclusive Field.
In each such case, Intel shall, at Nanosys' expense, take all actions reasonably
requested by Nanosys in such prosecution, subject to indemnification by Nanosys
of Intel for any liability to third parties resulting from such participation.
(ii) Intel shall have the sole right to prosecute
claims of infringement or misappropriation of Collaboration IP where such
infringement or misappropriation is primarily in Intel's Exclusive Field. In
each such case, Nanosys shall, at Intel's expense, take all actions reasonably
requested by Intel in such prosecution (which may include participation as a
named plaintiff, subject to indemnification by Intel of Nanosys for any
liability to third parties resulting from such participation as a plaintiff).
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<PAGE>
7.4 Further Assurances. At any time or from time to time on
and after the date of this Agreement, each party shall at the request of the
other party (i) execute, and deliver or cause to be delivered, all such
consents, documents or further instruments of license, assignment, and transfer,
and (ii) take or cause to be taken all such other actions, in each case at the
other party's expense and as the other party may reasonably deem necessary or
desirable in order for the other party to obtain the full benefits of Section
4.2 and this Section 7 and the activities contemplated thereby.
8. WARRANTY DISCLAIMER.
NEITHER NANOSYS NOR INTEL MAKES ANY WARRANTY OF ANY KIND, WHETHER
EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, INCLUDING WITHOUT LIMITATION ANY
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. WITHOUT
LIMITING THE FOREGOING, ALL DELIVERABLES AND OTHER ITEMS ARE PROVIDED BY EACH
PARTY "AS IS," AND ALL LICENSES GRANTED BY EACH PARTY ARE GRANTED "AS IS."
9. LIMITATION OF LIABILITY.
NEITHER PARTY SHALL HAVE ANY LIABILITY FOR COSTS OF SUBSTITUTE PRODUCTS
OR SERVICES, OR FOR ANY INCIDENTAL, CONSEQUENTIAL, INDIRECT, SPECIAL OR INDIRECT
DAMAGES OR LIABILITIES, INCLUDING WITHOUT LIMITATION SUCH DAMAGES OR LIABILITIES
FOR LOSS OF REVENUE, LOSS OF BUSINESS, FRUSTRATION OF ECONOMIC OR BUSINESS
EXPECTATIONS, LOSS OF PROFITS, OR COST OF CAPITAL, REGARDLESS OF THE FORM OF THE
ACTION, WHETHER IN CONTRACT OR OTHERWISE, EVEN IF ANY REPRESENTATIVE OF A PARTY
HERETO HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT SHALL
EITHER PARTY'S LIABILITY UNDER THIS AGREEMENT EXCEED THE AMOUNTS PAID OR PAYABLE
BY INTEL TO NANOSYS UNDER THIS AGREEMENT, provided that, as to Intel, this shall
be in addition to Intel's obligation to pay such amounts. These limitations,
however, shall not apply to either party's liability, if any, (i) for
contribution or indemnity with respect to liability to third parties for
personal injury, death, or damage to tangible property, (ii) exceeding the scope
of the licenses in Section 5 (Licenses), (iii) breach of Section 6 (Confidential
Information), or (iv) infringement of the other party's intellectual property
rights.
10. TERM AND TERMINATION.
10.1 Term. This Agreement shall commence as of the Effective
Date and shall continue until the expiration of the Exclusivity Period, unless
earlier terminated as set forth herein.
10.2 Q2 Checkpoint. Intel shall be entitled to terminate this
Agreement, for its convenience, on notice to Nanosys at any time within ten (10)
days after completion of the "Q2 Formal Review Meeting" milestone in Exhibit A.
10.3 Termination Due to Bankruptcy, etc. In the event a party:
(i) becomes insolvent; (ii) voluntarily files or has filed against it a petition
under applicable bankruptcy or insolvency laws which such party fails to have
released within thirty (30) days after filing;
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<PAGE>
(iii) proposes any dissolution, composition or financial reorganization with
credit ors or if a receiver, trustee, custodian or similar agent is appointed or
takes possession with respect to all or substantially all property or business
of such party; or (iv) such party makes a general assignment for the benefit of
creditors; then the other party may terminate this Agreement by notice to the
non-terminating party.
10.4 Termination Due to Breach. Either party shall have the
right to terminate this Agreement if the other party is in material breach of
any material term or condition of this Agreement and fails to remedy such breach
within [*** Redacted] after receipt of written notice of such breach given by
the non-breaching party. To terminate this Agreement, the nonbreaching party
must provide further written notice of such termination to the breaching party
prior to a cure of the breach.
10.5 Survival. Neither the termination nor expiration of this
Agreement shall relieve either party from its obligations to pay the other any
sums accrued hereunder. Upon the termination or expiration of this Agreement,
(i) Intel shall promptly return to Nanosys all Nanosys Confidential Information
and (ii) Nanosys shall promptly return to Intel all Intel Confidential
Information. The parties agree that their respective rights, obligations and
duties under Sections 1, 2.9, 4 (Ownership), 5 (Licenses), 6 (Confidential
Information), 7 (Intellectual Property Protection), 8 (Warranty Disclaimer), 9
(Limitation of Liability), 10.5 (Survival), and 11 (Miscellaneous) shall survive
any termination or expiration of this Agreement.
11. MISCELLANEOUS.
11.1 Announcement. On or after the Effective Date, Nanosys
shall be entitled to issue a press release pertaining to this Agreement, upon
written consent from Intel to the content of the press release.
11.2 Notices. All notices, requests, demands and other
communications given or made in accordance with the provisions of this Agreement
shall be in writing and shall be deemed to have been given (i) three days after
mailing when mailed (by registered or certified mail, postage paid, only), (ii)
on the date sent when made by facsimile transmission with confirmation of
receipt (with hard copy to follow by registered or certified mail, postage paid,
only), and (iii) on the date received when delivered in person or by courier,
provided that notices and communications with respect to administrative and
project matters (e.g., changes in meeting times and dates, program
specifications, and specific program development activities) (but not legal
matters or matters pertaining to or establishing rights under this Agreement),
may be provided by e-mail and will be deemed given when sent. All notices shall
be provided to the address set forth below or such other place as such party may
from time to time designate in writing. Each party may alter its address set
forth below by notice in writing to the other party, and such notice shall be
considered to have been given three (3) days after the sending thereof:
If to Nanosys: Nanosys Inc.
2625 Hanover Street
Palo Alto, California 94304
Fax:(650)331-2101
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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<PAGE>
Attn: Calvin Y.H. Chow
E-mail: cchow@nanosysinc.com
with a copy, for matters pertaining to intellectual property, to:
Nanosys Inc.
2625 Hanover Street
Palo Alto, California 94304
Fax: (650) 331-2101
Attn: Matt Murphy
E-mail: mmurphy@nanosysinc.com
If to Intel: Intel Corporation
2200 Mission College Blvd.
Santa Clara, CA 95052
ATTN: General Counsel
11.3 Amendment; Waiver. This Agreement may be amended,
modified or supplemented only by a writing that is signed by duly authorized
representatives of both parties and that specifically identifies the provision
or provisions of this Agreement being amended, modified or supplemented. No term
or provision hereof will be considered waived by either party, and no breach
excused by either party, unless such waiver or consent is in writing signed on
behalf of the party against whom the waiver is asserted. Without limiting the
foregoing, no consent by either party to, or waiver of, a breach by either
party, whether express or implied, will constitute a consent to, waiver of, or
excuse of any other, different, or subsequent breach by either party.
11.4 Severability. If any provision hereof should be held
invalid, illegal or unenforceable in any jurisdiction, the parties shall
negotiate in good faith a valid, legal and enforceable substitute provision that
most nearly reflects the original intent of the parties and all other provisions
hereof shall remain in full force and effect in such jurisdiction and shall be
liberally construed in order to carry out the intentions of the parties hereto
as nearly as may be possible. Such invalidity, illegality or unenforceability
shall not affect the validity, legality or enforceability of such provision in
any other jurisdiction.
11.5 Governing Law. This Agreement shall be governed by and
construed under the laws of the United States and the State of California, not
including its conflict of law provisions.
11.6 Force Majeure. Except for the payment of sums accrued,
neither party will be liable for any failure or delay in performance under this
Agreement due to fire, explosion, earthquake, storm, flood or other weather,
unavailability of necessary utilities or raw materials, war, insurrection, riot,
act of God or the public enemy, law, act, order, proclamation, decree,
regulation, ordinance, or instructions of government or other public
authorities, or any other event beyond the reasonable control of the party whose
performance is to be excused. If, however, a party's performance is prevented
for [*** Redacted], then the other party shall be entitled to terminate this
Agreement on written notice to the party suffering the force majeure at any time
prior to resumption of performance by the party suffering the force majeure.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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<PAGE>
11.7 Assignment. Neither party may transfer or assign this
Agreement, whether by operation of law or otherwise, without the prior written
consent of the other party and any attempt to do so without such consent will be
void. This Agreement will bind and inure to the benefit of the parties and their
respective permitted successors and permitted assigns. Notwithstanding anything
in this Agreement, however, either party may assign this Agreement without the
other party's prior written consent to a successor to all or substantially all
of its assets pertaining to the Collaboration (e.g., the surviving entity in a
merger or consolidation in which it participates or to a purchaser of all or
substantially all of its assets pertaining to the Collaboration), so long as
such surviving entity or purchaser shall assume (expressly in writing or by
operation of law) the performance of all of the terms of this Agreement.
11.8 No Third Party Beneficiaries. No person or entity other
than Intel and Nanosys will have any rights or obligations pursuant to this
Agreement.
11.9 Relationship of the Parties. The parties to this
Agreement are independent contractors. There is no relationship of agency,
partnership, joint venture, employment, or franchise between the parties and
this Agreement is negotiated at arm' s length with both sides represented by
counsel of their choice. Neither party has the authority to bind the other or to
incur any obligation on its behalf. Any such act will create a separate
liability in the party so acting to any and all third parties affected thereby.
11.10 Counterparts. This Agreement may be executed in two
counterparts, each of which shall be deemed an original, but both of which
together shall constitute one and the same instrument. If this Agreement is
executed in counterparts, no signatory hereto shall be bound until both the
parties named below have duly executed or caused to be duly executed a
counterpart of this Agreement.
11.11 Confidentiality of Agreement. Subject to Section 6.1(v)
and Section 11.1, each party agrees that the existence of and the terms and
conditions of this Agreement shall be treated as confidential, provided,
however, that each party may disclose the terms and conditions of this
Agreement: (i) as required by any court or other governmental body; (ii) as
otherwise required by law; (iii) to legal counsel of the parties; (iv) in
connection with the requirements of a public offering or securities filing; (v)
in confidence, to accountants, banks, and financing sources and their advisors;
(vi) in confidence, in connection with the enforcement of this Agreement or
rights under this Agreement; or (vii) in confidence, in connection with a merger
or acquisition or proposed merger or acquisition, or the like.
11.12 Authority. Each party represents and warrants to the
other party at the Effective Date (i) that it has the legal right, power, and
authority to enter into this Agreement and to fully perform its obligations
under this Agreement, and (ii) that the performance of such obligations will not
conflict with any agreements, contracts or other arrangements to which it is a
party or by which it is bound.
11.13 Entire Agreement. This Agreement, including all Exhibits
to this Agreement, together with the CNDA (as set forth in Section 6 above),
constitutes the entire agreement between the parties relating to this subject
matter and supersedes all prior or simultaneous representations,
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<PAGE>
discussions, negotiations, letters of intent, and agreements, whether written or
oral, with respect to the subject matter hereof.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement on
the dates set forth below effective as of the Effective Date.
NANOSYS INC. INTEL CORPORATION
By: /s/ CALVIN CHOW By: /s/ PATRICK P GELSINGER
----------------------------- -----------------------------
Print Name: CALVIN CHOW Print Name: PATRICK P GELSINGER
Title: CEO Title: Sr VP / CTO
LEGAL OK
----------
p 12/8/03
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<PAGE>
EXHIBIT A
Collaboration Statement of Work (SOW) Summary
Construction of [*** Redacted] devices (similar to the concept figure
below) to evaluate key technical areas required for a [*** Redacted] memory unit
and to project the performance limits of the technology.
[*** Redacted]
Device will have an [*** Redacted] and will be utilized to evaluate:
- [*** Redacted] and [*** Redacted].
- [*** Redacted] characteristics (e.g. [*** Redacted], etc.)
- [*** Redacted] - including [*** Redacted] characteristics.
- Effects of [*** Redacted], and [*** Redacted] modifications.
- Variations of [*** Redacted].
- [*** Redacted] (e.g. [*** Redacted])
- Variations of processing means.
and to construct a model for [*** Redacted] of a [*** Redacted] or [***
Redacted] device.
In Q1 and Q2, the project would focus on modeling and generating/testing
[*** Redacted] in order to reconcile the validity of the model. Q3 and Q4 would
focus on a [*** Redacted] to better select [*** Redacted]. The [*** Redacted]
work would be done on [*** Redacted] devices in a [*** Redacted]. A more
detailed plan of activities will be generated by the Collaboration team upon
Commencement of the Collaboration.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
<PAGE>
The parties will hold a Q2 Formal Review Meeting no later than [*** Redacted]
after the end of Q2.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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