PATENT LICENSE AGREEMENTBETWEEN OPTI CORPORATIONAND INTEL CORPORATION
This Patent License Agreement ("Agreement") is entered into as of January4, 2000 ("Effective Date") by and between Opti Corporation, a corporation,
having an office at 3393 Octavius Drive Santa Clara, CA95054 ("Opti") and Intel
Corporation, a Delaware corporation, having an office at 2200 Mission College
Blvd., Santa Clara, California95052, U.S.A. ("Intel").
IN CONSIDERATION OF THE MUTUAL COVENANTS AND PROMISES CONTAINED HEREIN, THE
PARTIES AGREE AS FOLLOWS: 1. DEFINITIONS
l.1. "Capture Period" shall mean any time between the Effective Date and
the fifth anniversary of the Effective Date.
1.2 "Intel Patents" means any Patents that are owned, controlled or
licensable by Intel or any of its Subsidiaries and that have a first effective
filing date prior to the Effective Date.
1.3 "Intel Compatible Processor" shall mean any processor that (a) can
perform substantially the same functions as an Intel Processor by compatibly
executing or otherwise processing (i) a substantially portion of the instruction
set of an Intel Processor or (ii) object code versions of applications or other
software targeted to run on or with an Intel Processor, in order to achieve
substantially the same result as an Intel Processor; or (b) is substantially
compatible with an Intel Processor Bus.
1.4 "Intel Processor" shall mean a Processor first developed by, for or
with substantial participation by Intel, including without limitation the Intel
8086, 80186, 80286, 80386, 80486, Pentium(R), Pentium Pro, Pentium(R) II,
StrongARM, Merced, Itanium(R) processor, 80860 and 80960 microprocessor
families, and the 8087, 80287, and 80387 math coprocessor families.
1.5 "Intel Processor Bus" shall mean a bus capable of connecting one or
more Intel Processors to each other, to associated core logic devices (chipsets)
which provide a bridge between the Intel Processor and other system resources,
or to a main memory or cache, together with the set of protocols defining the
electrical, physical, timing and functional characteristics, sequences and
control procedures of such bus.
1.6 "Opti Patents" means any Patents that are owned, controlled or
licensable by Opti or any of its Subsidiaries and that have a first effective
filing date prior to the Effective Date.
1.7 "Opti CNS Patents" means any Patents that are owned, controlled or
licensable by Opti or any of its Subsidiaries and that have a first effective
filing date during the Capture Period.
1.8 "Patents" shall mean all classes or types of patents, utility models
and design patents (including, without limitation, originals, divisions,
continuations, continuations-in-part, extensions or reissues), and applications
for these classes or types of patent rights in all countries of the world.
1.9 "Subsidiary" shall mean any corporation, partnership or other entity,
now or hereafter, (i) at least fifty percent (50%) of whose outstanding shares
or securities entitled to vote for the election of directors or similar managing
authority is directly or indirectly owned or controlled by the applicable party,
or (ii) that does not have outstanding shares or securities but at least fifty
percent (50%) of whose ownership interest representing the right to make the
decisions for such entity is directly or indirectly owned or controlled by the
In consideration for the license granted by Opti to Intel pursuant this
Agreement, Intel shall pay to Opti the sum of thirteen million and five hundred
thousand US dollars (US$13,500,000), which Intel shall pay within fifteen (15)
business days of the Effective Date. The licenses and releases granted to Intel
shall become effective upon the payment in full of this amount by Intel.
3.1 Opti, on behalf of itself and its Subsidiaries, hereby releases,
acquits and forever discharges:
(a) Intel, its Subsidiaries, and its and their distributors and
customers, direct and indirect, from any and all claims or liability for (i)
infringement of any Opti Patents, to the extent such infringement would have
been licensed under the license granted to Intel hereunder if such license had
been in existence at the time of such infringing activity or (ii) inducement to
infringe any Opti Patents; provided, however, that if Opti sues a third party on
the Opti Patents that at the time of suit was not a Subsidiary of Intel but is
later acquired as a Subsidiary by Intel, the foregoing release shall not be
effective as to such party until such time as a judgment is obtained against
such party or a settlement is reached with Opti.
(b) Intel and its Subsidiaries from any and all statutory, regulatory
or common law claims or liability arising from antitrust, unfair competition,
interference with prospective advantage, other business tort law related to
competition and other laws regulating competition or trade.
3.2 Intel, on behalf of itself and its Subsidiaries, hereby releases,
acquits and forever discharges Opti, its Subsidiaries that are Subsidiaries as
of the Effective Date, and its and their distributors and customers, direct and
indirect, from any and all claims or liability for (i) infringement of any Intel
Patents that arose prior to the Effective Date of this Agreement or (ii)
inducement to infringe any Intel Patents that arose prior to the Effective Date
of this Agreement.
4. GRANT OF RIGHTS
4.1 License. Opti hereby grants to Intel a non-exclusive, perpetual,
irrevocable, non-transferable, royalty-free, fully paid up, worldwide license,
without right to sublicense (except as expressly provided herein) under the Opti
Patents to make, have made (subject to 4.3 below), use, import, and directly or
indirectly sell, offer to sell and otherwise dispose of any product and practice
any method or process in the exercise of such rights. The parties intend and
agree that the license granted by Opti to Intel hereunder shall extend to any
third party acquiring licensed products from Intel for the combination of those
Intel products with other Intel licensed products and for the use of such
combination, even if such Intel products were acquired separately; provided that
it is agreed and understood that nothing herein grants any license to any such
third party for the combination of such Intel products with other products not
licensed by Opti or for the use of such combination of such Intel products and
such other products.
4.2 Licenses and Subsidiaries. The parties intend that the license granted
by Opti under this Agreement, without further act by any person, shall extend to
all of Intel's Subsidiaries. In the event that neither Opti nor any of its
Subsidiaries has the right to grant a license under any particular Opti Patent
of the scope set forth herein, then the license granted herein under such Opti
Patent shall be of the broadest scope that Opti or any of its Subsidiaries has
the right to grant; "provided, that, Opti shall not be obliged to sublicense
any Patent that requires Opti to pay royalties on account of the sublicense
grant to Intel unless Intel shall agree to pay all royalties due with respect to
its activities under such sublicense."
4.3 Have Made Rights. Any exercise of Intel's have made rights hereunder
are strictly conditioned upon the `have made' manufacturer manufacturing the
products in question exclusively on behalf of Intel or its Subsidiaries, and
based on a design are developed by or for, or otherwise owned and furnished to
the manufacturer by, Intel or its Subsidiaries.
4.4 Covenant Not to Sue.
(a) Company agrees that Company shall not bring an action of any
nature before any legal, judicial, arbitration, administrative, executive or
other like body alleging that Intel, its subsidiaries or affiliates, or their
customers (direct or indirect), distributors (direct or indirect), agents
(direct or indirect) and contractors (direct or indirect) infringe any Opti CNS
Patents in the manufacture, use, import, offer for sale or sale of any Intel
products and practice any method or process in the exercise of such rights.
(b) The covenant not to sue in (a) above shall be suspended if Intel
brings an action of any nature before any legal, judicial, arbitration,
administrative, executive or other like body alleging that Opti, its
subsidiaries or affiliates, or their customers (direct or indirect),
distributors (direct or indirect), agents (direct or indirect) and contractors
(direct or indirect) infringe any Intel Patents in the manufacture, use, import,
offer for sale or sale of Opti's products or any method or process in the
exercise of those right; provided that there shall be no suspension in the event
Intel's bringing such an action is directed at Opti's infringement of such
Intel's patents in the manufacture, use or sale of Intel Compatible Processors.
4.5 Term. The licenses granted herein shall extend for the full terms of
each Opti Patent licensed hereunder and under no circumstances shall such
licenses sooner terminate.
4.6 No Implied Licenses. There are no other licenses granted hereunder
except as expressly set forth herein, whether created by implication, estoppel
Nothing contained in this Agreement shall be construed as: (a) an agreement
to bring or prosecute actions or suits against third parties for infringement or
conferring any right to bring or prosecute actions or suits against third
parties for infringement, (b) conferring any right to use in advertising,
publicity, or otherwise, any trademark, trade name or names, or any contraction,
abbreviation or simulation thereof, of either party, or (c) an obligation to
furnish any technical information or know-how.
6. MISCELLANEOUS PROVISIONS
6.1 Authority. Opti represents and warrants that it has the right to grant
Intel the licenses and releases granted hereunder. Further, Opti warrants that
it has the right to grant the license under all of the applications, disclosures
and inventions identified in Exhibit A; provided, however, that the foregoing
warranty shall expire as to any of such applications, disclosures or inventions
in the event such applications, disclosure or inventions are assigned, conveyed
or otherwise transferred to third parties.
6.2 Notice. All notices required or permitted to be given hereunder shall
be in writing and shall be delivered by hand, or if dispatched by prepaid air
courier or by registered or certified airmail, postage prepaid, addressed as
If to Opti: If to Intel:
Opti, Inc. General Counsel
3393 Octavius Drive Intel Corporation
Santa Clara, CA95054 2200 Mission College Blvd.
Attn: President Santa Clara, CA95052
United States of America
Such notices shall be deemed to have been served when received by addressee or,
if delivery is not accomplished by reason of some fault of the addressee, when
tendered for delivery. Either party may give written notice of a change of
address and, after notice of such change has been received, any notice or
request shall thereafter be given to such party as above provided at such
6.3 No Rule of Strict Construction. Regardless of which party may have
drafted this Agreement, no rule of strict construction shall be applied against
either party. If any provision of this Agreement is determined by a court to be
unenforceable, the parties shall deem the provision to be modified to the extent
necessary to allow it to be enforced to the extent permitted by law, or if it
cannot be modified, the provision will be severed and deleted from this
Agreement, and the remainder of the Agreement will continue in effect.
6.4 Taxes. Each party shall be responsible for the payment of its own tax
liability arising from this transaction.
6.5 Entire Agreement. This Agreement embodies the entire understanding of
the parties with respect 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 the subject matter hereof other than as expressly provided herein. No
oral explanation or oral information by either party hereto shall
alter the meaning or interpretation of this Agreement.
6.6 Modification; Waiver. No modification or amendment to this Agreement,
nor any waiver of any rights, will be effective unless assented to in writing by
the party to be charged, and the waiver of any breach or default will not
constitute a waiver of any other right hereunder or any subsequent breach or
6.7 Governing Law. This Agreement and matters connected with the
performance thereof shall be construed, interpreted, applied and governed in all
respects in accordance with the laws of the United States of America and the
State of California, without reference to conflict of laws principles.
6.8 Jurisdiction. Intel and Opti agree that all disputes and litigation
regarding this Agreement and matters connected with its performance shall be
subject to the exclusive jurisdiction of the courts of the Northern District of
California or of the Federal courts sitting therein. The parties agree that all
disputes shall be tried without a jury.
6.9 Confidentiality of Terms. The parties hereto shall keep the terms of
this Agreement confidential and shall not now or hereafter divulge these terms
to any third party except:
(a) with the prior written consent of the other party; or
(b) to any governmental body having jurisdiction to call therefor; or
(c) subject to (d) below, as otherwise may be required by law or legal
process, including to legal and financial advisors in their capacity of advising
a party in such matters; or
(d) during the course of litigation so long as the disclosure of such
terms and conditions are restricted in the same manner as is the confidential
information of other litigating parties and so long as (a) the restrictions are
embodied in a court-entered Protective Order and (b) the disclosing party
informs the other party in writing at least ten (10) days in advance of the
(e) in confidence to legal counsel, accountants, banks and financing
sources and their advisors solely in connection with complying with financial
(f) in confidence to an acquirer or acquiree, and such other party's
legal counsel, accountants, banks and financing sources and their advisors
solely in connection with an anticipated merger or acquisition.
The parties shall cooperate in preparing and releasing an announcement, if any,
relating to this Agreement, provided that Opti shall not make any public
disclosure regarding this Agreement without Intel's prior written consent which
Intel may withhold at its sole discretion.
6.10 Compliance with Laws. Anything contained in this Agreement to the
contrary notwithstanding, the obligations of the parties hereto and of the
Subsidiaries of the parties shall be
subject to all laws, present and future, of any government having jurisdiction
over the parties hereto or the Subsidiaries of the parties, and to orders,
regulations, directions or requests of any such government.
WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed on the date below written.
INTEL CORPORATION OPTI CORPORATION
By: By: /s/ Bernard T. Marren
Printed Name Printed Name Bernard T. Marren
Title Title President/CEO
Date Date January 4, 2000