This TERMINATION AGREEMENT is entered into as of November 7, 1994 ("Effective
Date") by and between VLSI Technology, Inc., a Delaware Corporation ("VLSI"),
and Intel Corporation, a Delaware Corporation ("INTEL")
Whereas, THE TECHNOLOGY AND MANUFACTURING AGREEMENT BETWEEN INTEL CORPORATION
AND VLSI TECHNOLOGY, INC., including ADDENDUM NO. 1 TO PIA AGREEMENT, both dated
July 8, 1992, and ADDENDUM NO. 2 TO PIA AGREEMENT, effective date August 1,
1993, is an agreement between the PARTIES to cooperate in the development and
marketing of the INTEL 386(TM) microprocessor architecture into a new and
undeveloped market segment, the PIA market segment (hereinafter the "PIA
Whereas, the PARTIES now agree that the intent of the PIA AGREEMENT is no longer
consistent with the business and technical needs of the PARTIES;
Whereas, the PARTIES desire to amicably end the PIA AGREEMENT, and make an
equitable and final disposition of the business and technical issues that remain
as a result of the PIA AGREEMENT;
Now therefore, the PARTIES hereto agree as follows:
1.1. All terms defined in Section 1.0 of the PIA AGREEMENT have the same
definition when used herein.
1.2. "POLAR(TM) CHIP SET" shall mean the integrated circuits designed by VLSI
where functionality is divided between (1) a device in which the INTEL
CORE is contained within a single chip combined with VLSI CELLS
("POLAR(TM) IPC"), (2) a companion device containing only VLSI CELLS
("POLAR(TM) MPC"), and (3) optionally, a PCMCIA controller integrated
circuit containing only VLSI CELLS ("ELC").
1.3 "COOPERATIVE ENGINEERING AGREEMENT" shall mean the COOPERATIVE ENGINEERING
PROGRAM AGREEMENT BETWEEN INTEL CORPORATION AND VLSI TECHNOLOGY, INC., with
an effective date of August 1, 1993.
1.4. "DRACO(TM)" shall mean the VLSI chip set product as defined and developed
in the COOPERATIVE ENGINEERING AGREEMENT.
2.1. The PIA AGREEMENT between VLSI and INTEL, including ADDENDUM NO. 1 TO PIA
AGREEMENT, both dated July 8, 1992, and ADDENDUM NO. 2 TO PIA AGREEMENT,
effective date August 1, 1993, and any other related agreements are
terminated by mutual agreement of the parties. Effective the date of
execution of this TERMINATION AGREEMENT, the licenses granted by one PARTY
to the other PARTY in the PIA AGREEMENT shall be terminated. No Sections
of the PIA AGREEMENT will survive or remain in effect. This TERMINATION
AGREEMENT will define all on-going terms and conditions related to the
activities conducted under the PIA AGREEMENT.
2.2. No VLSI FSBs were licensed to INTEL under the PIA AGREEMENT. The PARTIES
hereby agree that no VLSI FSBs were created, enhanced, improved or
modified based on INTEL CONFIDENTIAL INFORMATION during the PIA AGREEMENT.
Certain blocks have been separately licensed from INTEL under the
2.2.1. AGREEMENT FOR TRANSFER OF TECHNICAL INFORMATION FROM INTEL
CORPORATION TO VLSI TECHNOLOGY, INC. effective date June 15, 1993.
(the "POWER MANAGEMENT AGREEMENT")
2.2.2. AGREEMENT FOR EXCHANGE OF TECHNOLOGY BETWEEN INTEL CORPORATION AND
VLSI TECHNOLOGY, INC., effective date June 15, 1993, (the
"16550/82365SL EXCHANGE AGREEMENT")
2.2.3. AGREEMENT FOR TRANSFER OF 8051FX TECHNICAL INFORMATION FROM INTEL
CORPORATION TO VLSI TECHNOLOGY, INC., effective date February 16,
1993 ( the "8051FX AGREEMENT").
2.3. VLSI retains no rights to use INTEL CONFIDENTIAL INFORMATION in the Cache
RAM, PLL and/or Input/Output cells provided to VLSI by INTEL under the PIA
2.4. INTEL will bear, and will forgive VLSI and waive any expenses that INTEL
has incurred and for which VLSI has not reimbursed INTEL, or any expenses
that INTEL incurs in conjunction with INTEL'S contribution to the
completion of POLAR(TM) CHIP SET , or any other outstanding obligations of
VLSI from the PIA AGREEMENT.
2.5. The PARTIES agree to execute Amendment Number 1 to the POWER MANAGEMENT
AGREEMENT, concurrently with this TERMINATION AGREEMENT, which will
include a license for VLSI to modify the INTEL Power Management block.
2.6. The PARTIES agree to execute Amendment Number 1 to the COOPERATIVE
ENGINEERING AGREEMENT concurrently with this TERMINATION AGREEMENT, which
will include forgiveness of the monies owed by VLSI to INTEL for
development activities under that agreement, and provisions for the
payment of royalties by VLSI to INTEL on VLSI'S sale of DRACO(TM) to third
2.7. There will be no royalties or INTEL CORE access fees payable by VLSI to
INTEL under the PIA AGREEMENT, or repayment of core access fees or
royalties under the COOPERATIVE ENGINEERING AGREEMENT.
3.0. INTELLECTUAL PROPERTY OWNERSHIP
3.1 No JOINT INVENTIONS were made by the PARTIES under the PIA AGREEMENT.
3.2. All intellectual property rights which each PARTY owns as of the EFFECTIVE
DATE of this TERMINATION AGREEMENT or which are developed or acquired by
each PARTY hereafter outside the scope of the PIA AGREEMENT and this
TERMINATION AGREEMENT, shall remain the sole and exclusive property of
such PARTY and no licenses are granted or implied, other than those
expressly granted herein.
3.3. To the extent that VLSI has entered into or may enter into technology
(including patent and other intellectual property) licenses with third
parties wherein such licenses require or provide for VLSI to license such
third parties to make, use or sell technology newly received by VLSI, it
is agreed and understood that:
3.3.1 INTEL does not allow VLSI to license or otherwise transfer to a
third party any INTEL intellectual property provided by INTEL to
VLSI under the PIA AGREEMENT or this TERMINATION AGREEMENT; and
3.3.2 VLSI will not license or otherwise transfer to a third party any
INTEL intellectual property provided by INTEL to VLSI under the PIA
AGREEMENT or this TERMINATION AGREEMENT.
3.4. INTEL owns all copyright and maskwork rights to the INTEL CORE in any
form. VLSI owns all copyright and maskwork rights to the VLSI CELLS. All
maskwork rights under the Semiconductor Chip Protection Act of 1984 (and
under relevant laws in countries outside the U.S.A.), and all copyrights
with respect to any POLAR(TM)CHIP SETS are the joint property of the
PARTIES regardless of which PARTY designed the POLAR(TM) CHIP SETS,
subject to (1) acknowledgment by VLSI to preexisting maskwork rights and
copyrights in the INTEL CORE by INTEL, (2) acknowledgment by INTEL to
preexisting maskwork rights and copyrights in the VLSI CELLS by VLSI,
(3) acknowledgment by the PARTIES to any pre-existing rights in any
customer provided information by such customer, and (4) the PARTIES agree
to execute such documents as are necessary to perfect such ownership
rights. Notwithstanding such joint ownership, each PARTY shall use such
maskwork rights and copyrights subject to the terms and conditions in
3.5. With respect to POLAR(TM) IPCS, INTEL shall retain any and all rights to
perfect maskwork rights and copyrights in any country. With respect to
POLAR(TM) MPC & ELC, VLSI shall retain any and all rights to perfect
maskwork and copyrights in any country.
4.0. CONFIDENTIAL INFORMATION
4.1 All disclosure of CONFIDENTIAL INFORMATION by one PARTY to the other PARTY
pursuant to the PIA AGREEMENT was made by or under the supervision of a
TECHNICAL COORDINATOR of the disclosing PARTY to a TECHNICAL COORDINATOR
of the receiving PARTY.
4.2 For a period of ten (10) years from the date of disclosure under the PIA
AGREEMENT, the PARTIES continue to agree to use the same degree of care
and discretion to avoid disclosure, publication or dissemination outside
of itself as it would employ with its own similar information which it
does not desire to have published, disclosed or disseminated. As a minimum
protection, the receiving PARTY shall not disclose the CONFIDENTIAL
INFORMATION of the other to any third party, individual, corporation or
other entity (except to mask vendors and subcontractors under restrictions
equivalent to those in this Section 4.0), without the prior written
consent of the disclosing PARTY. This obligation of nondisclosure shall
not apply to any information which is:
4.2.1. published or otherwise made available to the public other than by
breach of this TERMINATION AGREEMENT by the PARTY receiving the
4.2.2. rightfully received by the receiving PARTY from a third party
without restriction on disclosure; or
4.2.3. known to the PARTY receiving the CONFIDENTIAL INFORMATION prior to
the first receipt of same from the disclosing PARTY; or
4.2.4. hereinafter disclosed by the disclosing PARTY to a third party
without restriction on disclosure; or
4.2.5. independently developed by the receiving PARTY.
4.3 VLSI shall not use the INTEL CONFIDENTIAL INFORMATION for any purpose other
than as specifically authorized by INTEL under this TERMINATION AGREEMENT,
or as otherwise authorized by INTEL in writing. INTEL shall not use the
VLSI CONFIDENTIAL INFORMATION for any purpose other than as specifically
authorized by VLSI under the TERMINATION AGREEMENT, or as otherwise
authorized by VLSI in writing.
4.4 VLSI employees that have had access to the INTEL CORE or INTEL CORE
interface specification will not work on any activity at VLSI, to create
X86 DERIVATIVE products for a period of one (1) year after the Effective
Date of this TERMINATION AGREEMENT. A list of these employees is included
as Attachment B of this TERMINATION AGREEMENT.
4.5 The INTEL CONFIDENTIAL INFORMATION related to the INTEL CORE is will be
returned to INTEL within thirty (30) days of the date of execution of this
4.6 The INTEL CONFIDENTIAL INFORMATION shall be subject to the provisions in
4.7 The PARTIES affirm that the terms in Sections 4.8, 4.9 and 4.10 were
adhered to under the PIA AGREEMENT, and will remain in effect under the
4.8 With respect to the INTEL CONFIDENTIAL INFORMATION or the VLSI CONFIDENTIAL
INFORMATION when such is disclosed in writing, including such CONFIDENTIAL
INFORMATION recorded in an electronic medium such as a tape or disk,
and accepted, such writing will state the date of disclosure, that the
CONFIDENTIAL INFORMATION contained therein is confidential and that it is
being disclosed pursuant to this AGREEMENT, and will contain an
appropriate legend, such as, "INTEL CONFIDENTIAL" or "VLSI CONFIDENTIAL",
as the case may be.
4.9 At the disclosing PARTY'S request, the receiving PARTY shall (i) return to
the disclosing PARTY the original and all copies of the CONFIDENTIAL
INFORMATION provided by the disclosing PARTY and (ii) have one of its
officers certify in writing to the disclosing PARTY that it will not make
any further use of such CONFIDENTIAL INFORMATION, and specifically that the
receiving PARTY will not manufacture or have manufactured for it any
POLAR(TM) IPC or X86 DERIVATIVES incorporating the disclosing PARTY'S
CONFIDENTIAL INFORMATION, or (iii) at the disclosing PARTY'S option,
destroy such CONFIDENTIAL INFORMATION.
4.10. The INTEL CONFIDENTIAL INFORMATION related to the INTEL CORE is highly
confidential and proprietary INTEL information. This INTEL CONFIDENTIAL
INFORMATION is provided to VLSI to create useful versions of the INTEL
CORE, including the INTEL CORE netlist and behavioral model, and shall be
subject to specific controls established to limit access to the INTEL
CORE in whatever form.
4.10.1 The INTEL CORE shall be accessible only to VLSI employees within
PCD who have a need to know. The VLSI employees having access to
the INTEL CORE shall be named and this list shall be maintained by
VLSI'S TECHNICAL COORDINATOR. These employees shall sign agreements
with VLSI establishing that they will not work on any activity
while at VLSI, or for any other PARTY, for a period of one (1)
year, that relates to work in the design, development, or
manufacture of X86 DERIVATIVES.
4.10.2 In no circumstances may the INTEL CORE be made available to third
parties without INTEL'S prior written permission, except as
embodied in a POLAR(TM) CHIP SET.
4.10.3 The INTEL CORE shall be available only within VLSI PCD in Tempe,
Arizona. VLSI shall maintain a log of all authorized copies of the
INTEL CORE. The VLSI TECHNICAL COORDINATOR shall be responsible to
maintain this log. This log shall be made available to INTEL at any
time upon INTEL'S request. VLSI shall maintain all copies of the
INTEL CORE under secured means, including locked files or areas
providing restricted access.
4.10.4 VLSI shall make no copies of any tangible media containing any
INTEL CORE CONFIDENTIAL INFORMATION. If additional copies are
required, the TECHNICAL COORDINATOR shall request in writing a
stated number of copies from the INTEL TECHNICAL COORDINATOR.
4.10.5 INTEL may perform an audit, at least annually, to insure that the
INTEL CORE CONFIDENTIAL INFORMATION is being protected in
accordance with the terms of this AGREEMENT.
4.10.6 The requirements in this Section 4.10 remain the responsibility of
VLSI who shall establish its own security procedures and audits to
insure compliance with these provisions. VLSI shall notify INTEL
whenever VLSI has determined that INTEL CORE CONFIDENTIAL
INFORMATION has been lost or stolen, and shall take all reasonable
efforts to locate and recover these materials. Annually, VLSI shall
reasonably permit INTEL to audit its compliance to the provisions
in this Section
5.0. MUTUAL RELEASE
Each party agrees to fully release, waive and discharge the other party and its
officers, directors, employees and SUBSIDIARIES from any and all claims of any
kind or nature, known or unknown, including any claim for attorneys' fees and
costs which it may have now or in the future which arises out of the express
terms of the PIA AGREEMENT, except for enforcement of Section 4, CONFIDENTIAL
INFORMATION, of this
TERMINATION AGREEMENT. Further the parties agree to expressly waive and
relinquish all rights and benefits afforded by Section 1542 of the Civil Code of
the State of California which states as follows:
"A general release does not extend to claims which the creditor does not
know or suspect to exist in his favor at the time of executing the release,
which if known by him must have materially affected his settlement with the
6.0. COVENANT NOT TO SUE
The parties recognize that each party may independently develop new products
which are intended to compete with products which have been discussed and
developed under the previous agreement. The parties agree and covenant not to
sue the other party on any claim by that party relating to any new product which
uses the functions and specifications contained in POLAR(TM) product, and any
know-how or trade secrets retained in the skills and knowledge of employees that
were obtained during the PIA AGREEMENT. Notwithstanding the foregoing provisions
of this Section 6, no license to any patents and copyrights of the other party
are granted directly or indirectly, or by implication, estoppel or otherwise.
7.1. The validity, performance and construction of this TERMINATION AGREEMENT
shall be governed by the laws of the State of California, USA (excluding
its conflict of laws provisions). Santa Clara County, California shall be
the appropriate venue and jurisdiction for the resolution of disputes
7.2. The prevailing party in any legal action arising out of, or related to
this TERMINATION AGREEMENT shall be entitled, in addition to any other
rights and remedies it may have, to reimbursement for its expenses
incurred in such action, including court costs and reasonable attorney's
7.3. All notices or communications to be given under this TERMINATION AGREEMENT
shall be in writing and shall be deemed delivered upon hand delivery, upon
acknowledged telex or facsimile communication, or three (3) days after
deposit in the United States mail, postage prepaid, by certified,
registered or first class mail, addressed to the parties at their
addresses set forth above.
7.4. In the event that any provision of this TERMINATION AGREEMENT is
prohibited by any law governing its construction, performance or
enforcement, such provision shall be ineffective to the extent of such
prohibition without invalidating thereby any of the remaining provisions
of the TERMINATION AGREEMENT. The captions of sections herein are intended
for convenience only, and the same shall not be interpretive of the
content of such section.
7.5. This TERMINATION AGREEMENT settles all differences between the parties
with respect to the subject matter generally described herein and shall
not in any way be construed as an admission by either party.
7.6. Except as provided in Section 6.0, COVENANT NOT TO SUE, INTEL shall
retain, and does not relinquish, rights to claims for infringement of
INTEL'S patents, copyrights, masks works, and trade secrets for any
activities conducted by VLSI or its customers. Except for functional
imitations of INTEL products, INTEL agrees to notify VLSI first regarding
any other issues or legal claims, and attempt to resolve the situation.
7.7. EXCEPT FOR MISAPPROPRIATION OR MISUSE OF CONFIDENTIAL INFORMATION, NEITHER
PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR INCIDENTAL OR CONSEQUENTIAL
OR EXEMPLARY DAMAGES TO THE OTHER PARTY, TO ANY CUSTOMER OF THE OTHER
PARTY OR ANY THIRD PARTY FOR DAMAGES ARISING OUT OF OR CONNECTED WITH THE
DELIVERY, USE OR PERFORMANCE OF THE PRODUCTS, OR OTHER ACTIVITY OR BREACH
OF ITS OBLIGATIONS TO THE OTHER PARTY UNDER THIS AGREEMENT, REGARDLESS OF
THE FORM OF ACTION, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY
OF SUCH DAMAGES.
HOWEVER, THIS SECTION 7.7 SHALL NOT LIMIT EITHER PARTY'S RIGHT TO COLLECT
ANY AMOUNTS OTHERWISE DUE UNDER THE TERMS OF THIS AGREEMENT. THE
PROVISIONS OF THIS SECTION SHALL SURVIVE THE TERMINATION OF THIS
7.8. This TERMINATION AGREEMENT sets forth the entire agreement and
understanding between the parties regarding the termination of the PIA
AGREEMENT and fully supersedes all prior agreements and understandings,
both written and oral, regarding these subjects.
ACCEPTED & AGREED:
VLSI TECHNOLOGY, INC. INTEL CORPORATION
By: /s/ Thomas F. Mulvaney By: /s/ Stephen P. Nachtsheim
signature of authorized representative signature of authorized representative
Thomas F. Mulvaney Stephen P. Nachtsheim
printed name printed name
Vice President and Secretary Vice President & G.M.
7 November 1994 November 9, 1994
SECURITY PROVISIONS WITHIN VLSI PCD REGARDING INTEL CONFIDENTIAL INFORMATION
VLSI'S Personal Computer Division ("PCD") is the operating unit responsible for
the development and marketing of products for the PIA market. During the term of
the PIA AGREEMENT and this TERMINATION AGREEMENT, PCD will receive access to
certain Intel Confidential and Trade secret Information relating to but not
limited to the following:
1. Intel's 386 CPU Core
2. Intel's 650 Process Design Rules
During the term of the PIA AGREEMENT additional CONFIDENTIAL INFORMATION
regarding the PIA market and associated products has been generated jointly by
Intel and VLSI.
Documents (hard copy or electronic media) being transferred from Intel to VLSI
or from VLSI to Intel will be reviewed by the Intel and VLSI Technical
Coordinators and will be classified according to the policy outline in VLSI'S
Information Security Classification Policy #00-00046. INTEL documents will be
classified as "RESTRICTED CONFIDENTIAL" or "REGISTERED CONFIDENTIAL". Documents
which are subsequently generated and reference or incorporate information
contained within a RESTRICTED CONFIDENTIAL or REGISTERED CONFIDENTIAL document
will carry the same classification as the source or referenced document.
Intel documents classified as RESTRICTED CONFIDENTIAL will be marked as
RESTRICTED CONFIDENTIAL INFORMATION and treated in the same manner as VLSI
RESTRICTED CONFIDENTIAL INFORMATION.
RESTRICTED CONFIDENTIAL INFORMATION will be made generally available to PCD
employees. These documents will not be made available to other VLSI divisions
but will be made available to VLSI Corporate management as required. PCD's
CONFIDENTIAL INFORMATION Manager (CIM) will be responsible for determining who
will be given access to RESTRICTED CONFIDENTIAL INFORMATION.
Intel documents classified as REGISTERED CONFIDENTIAL will be marked as
REGISTERED CONFIDENTIAL INFORMATION and treated in the same manner as VLSI
REGISTERED CONFIDENTIAL INFORMATION. Examples of Intel REGISTERED CONFIDENTIAL
Intel's 386 CPU Core Design
Intel's 386 CPU Test Vectors
Intel's 0.8 micron 650 Process Design Rules
REGISTERED CONFIDENTIAL INFORMATION will be made available to only those PCD
employees with a need to know. Any Intel REGISTERED CONFIDENTIAL INFORMATION
needed by other VLSI organizations or Compass will only be disclosed between
that organization and Intel. Intel will be responsible for informing the PCD
Technical Coordinator when any such disclosure is made.
This attachment outlines the methods for protecting the above mentioned Intel
RESTRICTED CONFIDENTIAL and REGISTERED CONFIDENTIAL INFORMATION. It is expected
that Intel will institute similar policies and procedures for protecting VLSI
RESTRICTED CONFIDENTIAL and REGISTERED CONFIDENTIAL INFORMATION.
I. Controlled Access
REGISTERED CONFIDENTIAL INFORMATION will be released only to PCD employees
with a need to know.
The "REGISTERED CONFIDENTIAL Control Roster" will contain the list of
employees who have been given access authorization rights to the REGISTERED
The employee will not make copies of the REGISTERED CONFIDENTIAL documents
Employees will keep RESTRICTED CONFIDENTIAL and REGISTERED CONFIDENTIAL
INFORMATION documents in a locked enclosure when not being used.
The REGISTERED CONFIDENTIAL INFORMATION received by the employee is not to
be taken out of a PCD facility.
The PCD CIM will perform periodic non-scheduled audits to confirm proper
compliance to the established security procedures.
If an individual leaves PCD (terminates or transfers), the employee will be
required to surrender all REGISTERED CONFIDENTIAL and RESTRICTED
CONFIDENTIAL INFORMATION prior to being exited from PCD.
II. DOCUMENT CONTROL
The REGISTERED CONFIDENTIAL and RESTRICTED CONFIDENTIAL INFORMATION will be
physically protected by PCD using security measures to ensure that the
information is not accessible to individuals and organizations outside PCD.
Intel specific REGISTERED CONFIDENTIAL and RESTRICTED CONFIDENTIAL INFORMATION
with the Document Control Room will be maintained in separate locked storage
containers and willed be marked accordingly.
The Document Control Room will only be accessible by the PCD CIM and his
designated representatives (Authorized Employees).
Only Authorized Employees will be permitted to make copies of RESTRICTED
III. ELECTRONIC DATABASES
The Intel 386 CORE data will be located in a separate locked room with on
an isolated computer that is not connected to a network or other external
electronic means. Only individuals that are Authorized Employees will have
access to the keys to the room and the log-in privilege to the computer.
Removable media containing Intel 386 CORE data will be secured in locked
containers in this secure room.
The Computer will be maintained by an CIM Authorized Employee.
Employees are not allowed to load personal software or data on the
Employees are not allowed to make copies of REGISTERED CONFIDENTIAL or
RESTRICTED CONFIDENTIAL INFORMATION and load such information on the
Employee's personal computer equipment.
All personnel in PCD will receive training in RESTRICTED CONFIDENTIAL
INFORMATION security procedures upon their assignment to the PCD.
VLSI personnel outside of PCD with access to RESTRICTED CONFIDENTIAL
INFORMATION, trade secrets or market information will be required to read
the written PCD security policy, will sign a document acknowledging his
obligation relative to RESTRICTED CONFIDENTIAL INFORMATION and attend a
quarterly briefing by the CIM.
List of VLSI employees who had access to INTEL CORE or INTEL CORE interface
specification during the development of Polar(TM) chips and who are employed at
VLSI on the Effective Date.
[*] Text omitted -- CONFIDENTIAL TREATMENT REQUESTED -- Indicates text for which
confidential treatment has been requested and that has been omitted and filed
separately with the Commission.