EX-10.I.R 3 y01243a3exv10wiwr.htm EX-10.I.R: LICENSE AGREEMENT EX-10.I.R
 

Exhibit 10(i)(R)

Qimonda AG
Confidential Materials Omitted and Filed Separately with the
Securities and Exchange Commission.
Confidential Portions denoted by [***].
TESSERA, INC.
Qimonda TCC
® License Agreement
This Agreement is entered into as of this First day of July, 2006 (“Effective Date”), between TESSERA INC., a corporation organized under the laws of Delaware, having a principal place of business at 3099 Orchard Drive, San Jose, CA, 95134, USA and the Tessera Affiliates (collectively “Tessera”) and Qimonda AG, a corporation organized under the laws of Germany having a principal place of business at Munich, Germany (or any successors or assigns of Qimonda AG due to any entities resulting from the initial public offering of Qimonda AG), and the Licensee Affiliates (collectively “Licensee”) with reference to the following facts:
Recitals
WHEREAS, Tessera owns certain patents related to semiconductor integrated circuit (“IC”) packaging technology, and
WHEREAS, Licensee wishes to license the Tessera patents for certain semiconductor products in accordance with the terms hereof.
The Parties Hereto Agree:
     I. Definitions. As used herein, the following terms shall have the following meaning:
     A. The term “Licensed Product” includes IC packages using (a) polyimide or glass-epoxy or glass-laminate substrate; (b) one or more solder balls under the IC; (c) die attach adhesive attaching the IC to the polyimide or glass-epoxy or glass-laminate substrate; and (d) solder ball pitch less than or equal to 1.0mm. By way of clarification and not limitation, Licensed Products include DRAM Licensed Products, Non-DRAM Licensed Products and Multiple Substrate Licensed Products.
     B. The term “DRAM Device” means a Dynamic Random Access Memory (DRAM) IC device comprised solely of an array of DRAM cells and the associated control and I/O circuitry that are necessary to allow data to be written to, stored by, and read from the DRAM cells.
     C. The term “DRAM Licensed Product” means a Licensed Product that contains at least one IC that is a DRAM Device and does not contain an IC that is not a DRAM Device.
     D. The term “Non-DRAM Licensed Product” means a Licensed Product that contains at least one IC that is not a DRAM Device. If a Licensed Product contains both a DRAM Device and

 


 

an IC that is not a DRAM Device, the Licensed Product shall be considered a Non-DRAM Licensed Product.
     E. The term “Multiple Substrate Licensed Product” means a “Package Stack Unit” and a “Package Stack,” defined respectively as follows:
          i. The term “Package Stack Unit” means a package substrate having electrically conductive terminals and at least one IC device on the package substrate and electrically connected to at least some of the terminals, and
          ii. The term “Package Stack” means an IC package including two or more Package Stack Units, wherein said units are stacked one above the other so that at least some of the terminals on mutually adjacent units in the stack are aligned with one another, mutually adjacent units being electrically interconnected to one another by joining connectors formed at least in part from material bonded to the aligned terminals of such units.
     F. The term “Batch Technology” as used herein means any method, process, technique or Tessera Patent that covers any structures or processing methods for simultaneously forming, producing and/or connecting a plurality of electrical connections between contacts on an IC device and substrate terminals of the IC package, including: (i) any method or result of U.S. Patent Number 5,518,964 (and related Patents) for making flexible electrically conducting element(s), joining said elements to electrical contact(s) on a substantially planar electrical element such as a semiconductor integrated circuit, undiced IC wafer, or interconnect substrate, and forming said element(s) away from the plane of said contacts in a predetermined fashion into the flexible electrical lead(s) of an IC package; (ii) any method or result of U.S. Patent 5,455,390 (and related Patents) for making and forming flexible conducting element(s) on a dielectric film and then simultaneously joining said elements to electrical contacts on a substantially planar electrical element such as a semiconductor integrated circuit, undiced IC wafer or interconnect substrate to produce the flexible electrical leads of an IC package; and/or (iii) any method or result of further invention or Patent made or acquired by Tessera during the term hereof covering any batch processing method for simultaneously forming, producing and/or connecting a plurality of flexible electrical leads of an IC package. Notwithstanding, the parties expressly agree that any IC package made and/or connected individually on a semiconductor integrated circuit or undiced wafer by traditional wire bonding methods and/or tape automated bonding (TAB) gang bonding methods, is not included in Batch Technology.
     G. The term “Patent” means letters patent, utility models, allowances and applications therefor in all countries of the world, including re-issues, re-examinations, continuations, continuations-in-part, divisionals, and all corresponding foreign patents.
     H. The term “Tessera Patent” means Patent(s) or claims within such Patent(s) for the design, manufacture, and/or assembly of Licensed Products (excluding Batch Technology as defined herein) owned by Tessera prior to expiration or termination of this Agreement. The term Tessera Patent shall further include any third party patent for the design, manufacture, and/or assembly of Licensed Products (excluding Batch Technology as defined herein) under which Tessera or any successor thereof has the right to grant licenses of the scope granted herein, as of the

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Effective Date or at any time during the term of this Agreement, without the payment of royalty or other consideration to such third parties except for payment to third parties for inventions made by said parties while employed by Tessera or any successor thereof. Tessera Patents, as defined above, includes but is not limited to those Patents set forth in Attachment A as of the date stated therein. Tessera has sole discretion in the prosecution of the Tessera patent applications licensed hereunder, non-exclusively including filing continuations, continuations-in-part, divisionals, filing corresponding foreign patents applications and/or abandoning one or more of such patent applications.
     I. The term “Billable Pin” means any electrical connection to an IC electrical bond pad made or contained in any Licensed Product.
     J. The term “Licensee Affiliate” means any company which agrees to be bound by the terms and conditions of this Agreement and has more than fifty percent (50%) of the voting stock or equity owned or controlled by Licensee. A company shall be considered a Licensee Affiliate only so long as such majority ownership or control exists. Licensee shall be ultimately responsible for the actions of the Licensee Affiliates pursuant to this Agreement.
     K. The term “Tessera Affiliate” means any company which agrees to be bound by the terms and conditions of this Agreement and has more than fifty percent (50%) of the voting stock or equity owned or controlled by Tessera. A company shall be considered a Tessera Affiliate only so long as such majority ownership or control exists. Tessera shall be ultimately responsible for the actions of the Tessera Affiliates pursuant to this Agreement.
     L. The term “Licensed Package Assembler” means a party licensed by Tessera to assemble, use and sell Licensed Products for others. Tessera agrees to periodically provide Licensee a list of such parties.
     II. Licensee Rights
     A. License Grant. Subject to the terms and conditions hereinafter set forth, Licensee’s compliance with the provisions hereof including all Attachments hereto, and Licensee’s payment of the fees and royalties stated herein in Paragraph III, Tessera hereby grants Licensee a world-wide, non-exclusive, non-transferable, non-sublicensable, limited license to the Tessera Patents to make, have made, use, sell, import, and offer for sale Licensed Products that are sold as Licensee’s own products (i.e., the Licensed Products bear the Licensee’s commercial indicia).
          1. Have Made Rights and Royalties. If Licensee exercises its “have made” right hereunder, Licensee shall be responsible for the payment of all royalties due hereunder directly to Tessera for such assembly of Licensed Products regardless of whether or not the assembler of the Licensed Product is a Licensed Package Assembler. Nothing in this Paragraph II.A.1 shall prevent Licensee from agreeing with a Licensed Package Assembler that the Licensed Package Assembler shall report and pay royalties to Tessera under its license for all Licensed Products made for Licensee provided, however, that if such Licensed Package Assembler fails to report and pay such royalties, Licensee shall pay the unpaid royalties under this Agreement promptly upon notice by Tessera. Licensee shall have no obligation to pay an additional royalty under this agreement for

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products on which a Licensed Package Assembler has already paid a full royalty under its agreement with Tessera. Any such agreement reached between Licensee and a Licensed Package Assembler shall require such Licensed Package Assembler to clearly identify Licensed Products made for Licensee in reports to Tessera, and Tessera shall be given notice of such agreement.
          2. Notice to Assemblers. When Licensee exercises this “have made” right at a Package Assembler, it shall provide a written notice to such Licensed Package Assembler, with a copy to Tessera, substantially in the form attached hereto as Attachment D.
     B. Batch Technology Excluded. Notwithstanding anything herein to the contrary, Batch Technology is excluded from the scope of this Agreement, and Licensee’s rights herein expressly exclude any right to package and/or assemble, or sell any product made using Batch Technology. Accordingly, products made using Batch Technology are not Licensed Products under this Agreement, and no royalties are due under this Agreement for products made using Batch Technology.
     C. No Implied License. Except for the licenses expressly granted in Paragraph II.A, no license, express or implied, by estoppel or otherwise, to any of Tessera’s intellectual property rights is granted or implied by this Agreement.
     D. Exclusion from License. Licensee is licensed only for Licensed Products for which it pays royalties hereunder. Tessera may, at any time during the term hereof, notify Licensee that Tessera believes that a product made, used, sold, imported, or offered for sale by Licensee (“Notified Product”) is a Licensed Product. During a sixty (60) day period after such notice, the parties will engage in good faith negotiations to include the Notified Product hereunder as Licensed Product, but neither party will commence any litigation or administrative proceedings relating to the Notified Product until after the end of the sixty (60) day period. If the parties fail to agree on including the Notified Product as a Licensed Product during such period, the Notified Product will not be licensed hereunder and either party may commence litigation or administrative proceedings upon the expiration of the sixty (60) day period.
     III. Royalty and Other Consideration
     A. Other Consideration. As partial consideration for the license under this Agreement, Licensee shall pay to Tessera the sum of Forty Million US Dollars ($40,000,000) by August 18, 2006.
     B. Royalty. As further consideration Licensee shall pay running royalties for the license granted under this Agreement four times annually (as set forth in Paragraph V) to Tessera during the term of this Agreement, as follows:
          1. DRAM Licensed Products. For each DRAM Licensed Product sold by Licensee, Licensee shall pay a royalty as set forth in Attachment B.
          2. Non-DRAM Licensed Products. For each Non-DRAM Licensed Product sold by Licensee, Licensee shall pay a royalty as set forth in Attachment B.

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          3. Multiple Substrate Licensed Products. In the case of a Multiple Substrate Licensed Product, royalties due under this Paragraph III.B shall be calculated separately for each Package Stack Unit of a Package Stack based on whether the Package Stack Unit solely contains DRAM or includes other types of ICs. For example, the royalty due for a Package Stack Unit that contains solely DRAM shall be determined according to Paragraph III.B.1 per Package Stack Unit, the royalty due for a Package Stack Unit that contains an IC that is not DRAM shall be determined according to Paragraph III.B.2 per Package Stack Unit, such that the total royalty due for a Multiple Substrate Licensed Product shall be calculated by adding together the royalty determined for each Package Stack Unit.
     C. Royalty Adjustments. In making the royalty payments due Tessera, Licensee may subtract from such royalty payments any preceding royalty payments for royalty bearing Licensed Products that are returned to Licensee from Licensee’s customers (“Royalty Adjustment”). However, if at any time such returned Licensed Products are resold by Licensee, Licensee shall pay a royalty to Tessera for such resold Licensed Products, as set forth in the Agreement. Before a Royalty Adjustment can be so subtracted, Licensee must have originally paid a royalty on the particular returned Licensed Product. All Royalty Adjustments must be specified with the information set forth in Attachment C.
     IV. Taxes
     Any taxes due to the German government relating to payments made by Licensee to Tessera pursuant to this Agreement shall be paid by Licensee and deducted from the amount payable from Licensee to Tessera. Licensee shall obtain official tax receipts from the German government indicating payment of such taxes and submit such receipts to Tessera to enable Tessera to obtain applicable tax credits. Licensee shall cooperate reasonably with Tessera, and offer such assistance as it reasonably can, in order to ensure that Tessera receives the most favorable tax treatment with respect to the payments detailed herein.

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     V. Licensee Reports and Payment
     A. Quarterly Royalty Reports & Payment. Beginning on the Effective Date of this Agreement, royalties shall be calculated and paid in full in quarter annual payment periods ending March 31, June 30, September 30 and December 31 of each year. Beginning with the first such royalty payment, Licensee shall deliver a written report (as shown in Attachment C) describing (i) the basis upon which and containing the information sufficient to determine the royalties due Tessera for the applicable payment period and (ii) the purchases by Licensee of Licensed Products from other Tessera licensees. All payments under this Paragraph shall be made in US Dollars by wire transfer to Union Bank of California, 99 Almaden Blvd., San Jose, CA 95113, Account Name: Tessera, Account No.: 6450148359, Routing No. 122000496, International Swift Code: BOFCUS33MPK, or such other bank or account as Tessera may from time to time designate in writing. The payments of royalties and submission of such reports from Licensee to Tessera under this Paragraph shall be made within thirty (30) days from the end of each quarter annual payment period and shall be considered to be made as of the day on which such payments are received in Tessera’s designated bank account.
     VI. Licensee Patents
     A. Limited Rights Under Licensee’s Patents. Licensee hereby grants to Tessera a world-wide, royalty-free, non-exclusive, non-sublicensable, non-transferable, right under Licensee's Patents for the term of this Agreement to make, use and sell Licensed Products (subject to the Batch Technology exclusion of Paragraph II.B) for the purposes of internal research and development, customer funded research and development, and in support of Tessera’s engineering services business. For the sake of clarity, the license granted to Tessera in this Section VI.A is limited to the IC package and interconnect of the Licensed Product, alone or in combination with an IC, and does not include, for example, the functional circuitry on the die or semiconductor process technology used in the formation of the functional circuitry on the IC (hereafter “Qimonda License Scope”). If Licensee elects to extend the term of this Agreement to obtain a paid-up license, then the license set forth in this Paragraph VI.A shall also become a fully paid-up and perpetual. Furthermore, to the extent that Licensee believes a third party is directly infringing Licensee’s patents within the Qimonda License Scope, Licensee agrees to pursue its claims directly with such third party and not with Tessera unless Tessera first asserts a Tessera Patent against Licensee that would require an additional royalty for Licensed Products made under this Agreement.
     VII. This section intentionally left blank
     VIII. Term and Termination
     A. Term: This Agreement shall become effective on the Effective Date and, unless earlier terminated as provided for elsewhere in this Agreement, shall remain in full force until it automatically expires on May 22, 2012, unless Licensee notifies Tessera by November 22, 2011 that Licensee elects to extend this Agreement by five (5) years until May 22, 2017, and continue to pay royalties for Licensed Products during the five (5) year extension period at rates equal to fifty percent (50%) of the amounts due under Paragraph III.B. herein. If Licensee elects to extend this

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Agreement until May 22, 2017, upon expiration of the extended term, Licensee shall have a fully paid-up and perpetual license on the terms set forth in Paragraphs II.A through II.D herein to use the Tessera Patents to the same extent as Licensee was licensed to use and was using Tessera Patents immediately prior to such expiration.
     B. Termination for Breach. Either party may terminate this Agreement due to the other party’s breach of this Agreement, such as failure to perform its duties, obligations, or responsibilities herein (including, without limitation, failure to pay fees and royalties and provide reports as set forth herein). The parties agree that such breach will cause substantial damages to the party not in breach. Therefore, the parties agree to work together to mitigate the effect of any such breach; however, the non-breaching party may terminate this Agreement if such breach is not cured or sufficiently mitigated (to the non-breaching party’s satisfaction) within sixty (60) days of notice thereof.
     C. Termination for Assignment. In the event that (i) a party either sells or assigns substantially all of its assets or business to a third party (“Selling Party”) or (ii) a third party acquires more than fifty percent (50%) of the capital stock entitled to vote for directors of such party (“Purchasing Party”), the Selling Party shall notify the other party hereto of such sale or assignment of assets or the Purchasing Party’s acquisition. In any case of sale, assignment or acquisition, the Selling Party shall provide to the other party a written confirmation from such Purchasing Party stating that such Purchasing Party shall expressly undertakes all the terms and conditions of this Agreement to be performed by Selling Party. In the event that Licensee is the Selling Party and the Purchasing Party does not agree to fulfill such obligations under this Agreement, Tessera shall reserve a right to terminate this Agreement. In the event Tessera is the Selling Party, the Purchasing Party shall be bound to the terms and obligations of this Agreement.
     D. Termination for Bankruptcy. In the event that one party becomes insolvent or bankrupt, permanently ceases doing business, makes an assignment for the benefit of its creditors, commits an act of bankruptcy, commences any bankruptcy proceedings or other proceedings in the nature of bankruptcy proceedings, or has commenced against it any bankruptcy proceedings or other proceedings in the nature of bankruptcy proceedings that are not dismissed within sixty (60) days, then the other party shall have the right to terminate this Agreement immediately upon its notice.
     E. Effect of Termination. Any termination of this Agreement pursuant to this Paragraph VIII shall be deemed a termination of this Agreement in accordance with its terms (including termination of any payments of unaccrued royalties to Tessera and any rights of Licensee to use any Tessera Patent licensed hereunder).
     F. Survival Clause. Unless otherwise provided elsewhere in this Agreement, the following provisions shall survive the termination or expiration of this Agreement:
          1. Licensee’s obligation to make payments to Tessera accrued under this Agreement on or prior to expiration or termination.

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          2. Licensee’s obligation to submit written reports stipulated in Paragraph V for periods prior to termination, Licensee Reports and Payment, and to permit the inspection and audit of its records stipulated in Paragraph IX, Reasonable Audit.
          3. Paragraph VIII, Term and Termination.
          4. Paragraph X, No Warranties
          5. Paragraph XI, Limitation on Damages
          6. Paragraph XII, Confidentiality of Agreement Terms
          7. Paragraph XIV, Miscellaneous
     IX. Reasonable Audit
     A. Financial Audit. Upon reasonable written prior notice, Tessera shall have the right to examine and audit through an independent third party CPA firm, not more frequently than once per year, relevant records of Licensee that may contain information bearing upon the amount of fees and royalties payable under this Agreement; provided, that the said auditor shall have agreed in advance in writing to maintain in confidence and not to disclose to Tessera or any third party any Licensee proprietary information obtained during the course of such audit. Licensee shall permit auditors to copy and retain audit relevant records in confidence. The results of any such audit shall be final, and within thirty (30) days after receiving the auditor’s report, Licensee shall make payment to Tessera of any amount which may be found to be payable, if any, and Tessera shall make payment to Licensee of any amount which may be found to have been overpaid, if any. Tessera shall bear the expenses of such audit examinations unless fees and royalties due and owing to Tessera are determined by the auditor to be at least five percent (5%) greater than such similar amounts as calculated and/or paid by Licensee, in which case Licensee shall bear such expenses.
     X. No Warranties
     The Parties acknowledge and agree that the rights and licenses, Tessera Patents, Licensee patents and standards granted or otherwise provided hereunder are provided “AS IS”, with no warranty of any kind. NEITHER PARTY MAKES ANY WARRANTY, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, CONCERNING THE SUBJECT MATTER OF THIS AGREEMENT, INCLUDING WITHOUT LIMITATION, WARRANTIES OF FITNESS FOR A PARTICULAR PURPOSE, QUALITY, USEFULNESS, PATENT VALIDITY OR NONINFRINGEMENT. Neither Party makes any warranty that the Tessera Patents or the Licensee patents will be sufficient to yield any particular result.
     XI. Limitation on Damages
     IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR ANY OTHER PERSON OR ENTITY (UNDER ANY CONTRACT, NEGLIGENCE, STRICT

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LIABILITY OR OTHER THEORY) FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR RELATED TO THE SUBJECT MATTER OF THIS AGREEMENT, EVEN IF THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR LOSSES.
     XII. Confidentiality of Agreement Terms
     A. Confidential Terms. Tessera and Licensee shall keep the terms of this Agreement (including all Attachments hereto) confidential except:
(1) to any court or governmental body or agency compelling such disclosure; however, any disclosure shall be limited to that compelled by the governmental body or agency and the disclosing party will take all reasonable actions to obtain a protective order protecting the disclosure. With respect to any disclosure of this Agreement required by the United States Securities and Exchange Commission or similar governmental agencies (it being acknowledged and agreed that Licensee will file this Agreement as an exhibit to the registration statement on form F-1 it has filed with respect to its initial public offering), Licensee shall use reasonable efforts to secure confidential treatment of the royalty terms set forth in Attachment B hereto, provided, however, that, if after making such reasonable efforts Licensee is unable to secure such confidential treatment without adversely effecting the timing of its planned initial public offering, then Licensee need not secure such confidential treatment of the royalty terms;
(2) as may otherwise be required by law;
(3) disclosures to their respective attorneys, accountants, and financial advisors; or
(4) either party may disclose to third parties the existence of this Agreement to the extent described in the Recitals section hereof.
     B. Order to Disclose. A party receiving a request, subpoena or order for the disclosure of the terms or conditions of this Agreement shall notify the other party as soon as practicable and if, at all possible, in sufficient time to allow the other party to oppose disclose or seek appropriate protective orders. The party receiving such request, subpoena or order shall cooperate to the extent reasonably possible with the other party in any effort to oppose disclosure or seek protective orders.
     C. Breach of Confidentiality. If either party learns of a breach of this Paragraph XII, such party shall immediately send a written notification to the other party describing the circumstances of such breach.
     D. Employee Agreements. Licensee will disclose the terms of this Agreement solely to its employees who have a need to know such information.
     E. Prior Confidentiality Terms. This Paragraph XII applies only to the matters described herein and does not supersede any prior written agreements between the parties.

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     XIII. This Section Intentionally Left Blank
     XIV. Miscellaneous
     The following additional terms shall apply to this Agreement:
     A. Governing Law. This Agreement shall be governed, interpreted and construed in accordance with the laws of the State of California, irrespective of choice of laws provisions. Both parties shall use reasonable efforts to resolve by mutual agreement any disputes, controversies, claims or difference which may arise from, under, out of or in connection with this Agreement. If such disputes, controversies, claims or differences cannot be settled between the parties, any dispute resolution proceeding shall take place in the United States, but if either party files a claim in a state or federal court, such claim shall be filed in the state or federal courts within the geographic boundaries of the federal Eastern District of Texas. The parties hereby consent to personal jurisdiction and venue in the state and federal courts of the federal Eastern District of Texas. Nothing herein shall alter or affect any other rights either party may have to redress any breach or act of the other party. Notwithstanding any provision herein, after the sixty (60) day cure period set forth in Paragraph VIII.B and notice of termination of this Agreement by one of the parties, either party may bring an action in the U.S. International Trade Commission.
     B. No Waiver. Any waiver, express or implied, by either of the parties hereto of any right hereunder or default by the other party, shall not constitute or be deemed a continuing waiver or a waiver of any other right or default. No failure or delay on the part of either party in the exercise of any right or privilege hereunder shall operate as waiver thereof, nor shall any single or partial exercise of such right or privilege preclude other or further exercise thereof or of any other right or privilege.
     C. Equitable Relief. Nothing herein shall preclude either party from taking actions at any time in the courts specified in Paragraph XIV.A that are necessary to prevent immediate, irreparable harm to its interests. Otherwise, these procedures are exclusive and shall be fully exhausted prior to the initiation of any litigation.
     D. Notices. All notices, required documentation, and correspondence in connection herewith shall be in the English language, shall be provided in writing and shall be given by facsimile transmission or by registered or certified letter to Tessera and Licensee at the addresses and facsimile numbers set forth below:
         
 
  Tessera:   Tessera, Inc.
 
      3099 Orchard Dr.
 
      San Jose, California 95134
 
      Facsimile No.: 408-894-0190
 
      Attn.: Chief Executive Officer
 
       
 
  Licensee:   Qimonda AG
 
      Gustav-Heinemann-Ring 123,
 
      81739 München,

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      Germany
 
      Facsimile No.:+49-89-234-9550409
 
      Attn: General Counsel
     Either Party may change its address and/or facsimile number by giving the other party notice of such new address and/or facsimile number. All notices if given or made by registered or certified letter shall be deemed to have been received on the earlier of the date actually received and the date three days after the same was posted and if given or made by facsimile transmission shall be deemed to have been received at the time of dispatch, unless such date of receipt is not a business day, in which case the date of deemed receipt shall be the next succeeding business day.
     E. Invalidity. If any provision of this Agreement is declared invalid or unenforceable by a court having competent jurisdiction, it is mutually agreed that this Agreement shall endure except for the part declared invalid or unenforceable by order of such court. The parties shall consult and use their reasonable efforts to agree upon a valid and enforceable provision which shall be a reasonable substitute for such invalid or unenforceable provision in light of the intent of this Agreement.
     F. Assignment. With the exception of Paragraph VIII.C (Termination for Assignment), neither party may assign this Agreement or any of its rights or obligations hereunder without the prior written consent of the other party; provided, however, that Tessera may assign this Agreement to a Tessera Affiliate, a parent company, or any company owned or controlled by such parent company.
     G. Export Regulations. Both parties shall comply with the laws and regulations of the government of the United States and of any other country as relevant to each party hereto relating to the export of goods and information.
     H. Paragraph Headings. The headings and captions used herein shall not be used to interpret or construe this Agreement.
     I. Entire Understanding. This Agreement embodies the entire understanding between the parties relating to the subject matter hereof, whether written or oral, and there are no prior representations, warranties or agreements between the parties not contained in this Agreement. Any amendment or modification of any provision of this Agreement must be in writing, dated and signed by both parties hereto.
     J. Contingency. This Agreement shall not become effective unless and until Tessera’s Executive Committee (consisting of Tessera’s Chief Executive Officer, Chief Financial Officer and General Counsel) confirms acceptance of this Agreement on August 1, 2006, between 3:00 pm and 4:00 pm EDT. Tessera will use reasonable efforts to inform Licensee (by e-mail or facsimile) of acceptance by Tessera’s Executive Committee within an hour of such acceptance, provided, however, that Tessera shall not publish a press release prior to the delivery of such information to Infineon.
     IN WITNESS WHEREOF, the parties hereto have executed and delivered this Agreement as of the date first above written.

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TESSERA, INC.       QIMONDA AG
 
               
By:
  /s/ Christopher Pickett
 
      By:   /s/ Klaus Fleischmann
 
 
               
Print Name:
  Christopher Pickett
 
      Print Name:   Klaus Fleischmann
 
 
               
Title:
  Executive Vice President & General Counsel
 
      Title:   Vice President
 
 
               
Date:
  August 1, 2006
 
      Date:   August 1, 2006
 
 
 
            By:   /s/ Florian Bögel
 
 
               
            Print Name:   Florian Bögel
 
 
               
            Title:   Corporate Legal Counsel
 
 
               
            Date:   August 1, 2006
 

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ATTACHMENT A (current through January 1, 2005)
         
US PATENT NO.   TITLE   EXPIRATION
 
5,148,265
  SEMICONDUCTOR CHIP ASSEMBLIES
WITH FAN-IN LEADS
  9/24/2010
 
       
5,148,266
  SEMICONDUCTOR CHIP ASSEMBLIES
HAVING INTERPOSER AND FLEXIBLE LEAD
  9/24/2010
 
       
5,258,330
  SEMICONDUCTOR CHIP ASSEMBLIES
WITH FAN-IN LEADS
  11/2/2010
 
       
5,346,861
  SEMICONDUCTOR CHIP ASSEMBLIES AND
METHODS OF MAKING SAME
  9/13/2011
 
       
5,347,159
  SEMICONDUCTOR CHIP ASSEMBLIES
WITH FACE-UP MOUNTING AND REAR-SURFACE
CONNECTION TO SUBSTRATE
  9/13/2011
 
       
5,390,844
  SEMICONDUCTOR INNER LEAD BONDING
TOOL
  7/23/2013
 
       
5,398,863
  SHAPED LEAD STRUCTURE AND METHOD   7/23/2013
 
       
5,414,298
  SEMICONDUCTOR CHIP ASSEMBLIES AND
COMPONENTS WITH PRESSURE CONTACT
  3/26/2013
 
       
5,477,611
  METHOD OF FORMING INTERFACE
BETWEEN DIE AND CHIP CARRIER
  9/20/2013
 
       
5,489,749
  SEMICONDUCTOR CONNECTION
COMPONENTS AND METHODS WITH RELEASABLE
LEAD SUPPORT
  2/6/2013
 
       
5,491,302
  MICROELECTRONIC BONDING WITH LEAD
MOTION
  9/19/2014
 
       
5,525,545
  SEMICONDUCTOR CHIP ASSEMBLIES AND
COMPONENTS WITH PRESSURE CONTACT
  6/11/2013
 
       
5,536,909
  SEMICONDUCTOR CONNECTION
COMPONENTS AND METHODS WITH RELEASABLE
LEAD SUPPORT
  7/16/2013
 
       
5,548,091
  SEMICONDUCTOR CHIP CONNECTION
COMPONENTS WITH ADHESIVES AND METHODS
FOR BONDING TO THE CHIP
  10/26/2013

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US PATENT NO.   TITLE   EXPIRATION
 
5,597,470
  METHOD OF MAKING A FLEXIBLE LEAD
FOR A MICROELECTRONIC DEVICE
  6/19/2015
 
       
5,619,017
  MICROELECTRONIC BONDING WITH LEAD
MOTION
  9/19/2014
 
       
5,629,239
  MANUFACTURE OF SEMICONDUCTOR
CONNECTION COMPONENTS WITH FRANGIBLE
LEAD SECTIONS
  3/21/2015
 
       
5,659,952
  METHOD OF FABRICATING COMPLIANT
INTERFACE FOR A SEMICONDUCTOR CHIP
  9/20/2014
 
       
5,663,106
  METHOD OF ENCAPSULATING DIE AND
CHIP CARRIER
  9/2/2014
 
       
5,679,194
  FABRICATION OF LEADS ON
SEMICONDUCTOR CONNECTION COMPONENTS
  5/4/2015
 
       
5,679,977
  SEMICONDUCTOR CHIP ASSEMBLIES,
METHODS OF MAKING SAME AND COMPONENTS
FOR SAME
  9/24/2010
 
       
5,682,061
  COMPONENT FOR CONNECTING A
SEMICONDUCTOR CHIP TO A SUBSTRATE
  10/28/2014
 
       
5,685,885
  WAFER-SCALE TECHNIQUES FOR
FABRICATION OF SEMICONDUCTOR CHIP
ASSEMBLIES
  9/13/2011
 
       
5,706,174
  COMPLIANT MICROELECTRONIC
MOUNTING DEVICE
  7/7/2014
 
       
5,766,987
  MICROELECTRONIC ENCAPSULATION
METHODS AND EQUIPMENT
  9/22/2015
 
       
5,776,796
  METHOD OF ENCAPSULATING A
SEMICONDUCTOR PACKAGE
  5/19/2014
 
       
5,777,379
  SEMICONDUCTOR ASSEMBLIES WITH
REINFORCED PERIPHERAL REGIONS
  8/18/2015
 
       
5,787,581
  METHODS OF MAKING SEMICONDUCTOR
CONNECTION COMPONENTS WITH RELEASABLE
LOAD SUPPORT
  7/24/2012
 
       
5,801,446
  MICROELECTRONIC CONNECTIONS WITH
SOLID CORE JOINING UNITS
  9/1/2015

14


 

         
US PATENT NO.   TITLE   EXPIRATION
 
5,807,453
  FABRICATION OF LEADS ON
SEMICONDUCTOR CONNECTION COMPONENTS
  5/4/2015
 
       
5,821,608
  LATERALLY SITUATED STRESS/STRAIN
RELIEVING LEAD FOR A SEMICONDUCTOR
CHIP PACKAGE
  9/6/2016
 
       
5,821,609
  SEMICONDUCTOR CONNECTION
COMPONENT WITH FRANGIBLE LEAD SECTIONS
  3/21/2015
 
       
5,834,339
  METHODS FOR PROVIDING VOID FREE
LAYERS FOR SEMICONDUCTOR ASSEMBLIES
  3/7/2016
 
       
5,848,467
  METHODS OF MAKING SEMICONDUCTOR
CHIP ASSEMBLIES
  9/13/2011
 
       
5,852,326
  FACE-UP SEMICONDUCTOR CHIP
ASSEMBLY
  9/24/2010
 
       
5,861,666
  STACKED CHIP ASSEMBLY   8/29/2016
 
       
5,868,301
  SEMICONDUCTOR INNER LEAD BONDING
TOOL
  4/10/2016
 
       
5,875,545
  METHOD OF MOUNTING A CONNECTION
COMPONENT ON A SEMICONDUCTOR CHIP WITH
ADHESIVES
  10/26/2013
 
       
5,885,849
  MICROELECTRONIC CONNECTIONS WITH
SOLID CORE JOINING UNITS
  3/28/2015
 
       
5,915,170
  MULTIPLE PART COMPLIANT INTERFACE
FOR PACKAGING OF A SEMICONDUCTOR CHIP
AND METHOD THEREFOR
  9/16/2017
 
       
5,915,752
  METHOD OF MAKING CONNECTIONS TO A
SEMICONDUCTOR CHIP ASSEMBLY
  7/24/2012
 
       
5,929,517
  COMPLIANT INTEGRATED CIRCUIT
PACKAGE AND METHOD OF FABRICATING THE
SAME
  7/27/2016
 
       
5,932,254
  SYSTEM FOR ENCAPSULATING
MICROELECTRONIC DEVICES
  9/22/2015
 
       
5,937,276
  BONDING LEAD STRUCTURE WITH
ENHANCED ENCAPSULATION
  10/8/2017

15


 

         
US PATENT NO.   TITLE   EXPIRATION
 
5,950,304
  METHODS OF MAKING SEMICONDUCTOR
CHIP ASSEMBLIES
  9/24/2010
 
       
5,966,587
  METHODS OF MAKING SEMICONDUCTOR
ASSEMBLIES WITH REINFORCED PERIPHERAL
REGIONS
  8/18/2015
 
       
5,966,592
  STRUCTURE AND METHOD FOR MAKING A
COMPLIANT LEAD FOR A MICROELECTRONIC
DEVICE
  11/21/2015
 
       
5,977,618
  SEMICONDUCTOR CONNECTION
COMPONENTS AND METHODS WITH RELEASABLE
LEAD SUPPORT
  7/24/2012
 
       
5,989,939
  PROCESS OF MANUFACTURING
COMPLIANT WIRE BOND PACKAGE
  12/12/2017
 
       
5,994,222
  METHOD OF MAKING CHIP MOUNTINGS
AND ASSEMBLIES
  4/25/2017
 
       
5,994,781
  SEMICONDUCTOR CHIP PACKAGE WITH
DUAL LAYER TERMINAL AND LEAD STRUCTURE
  5/29/2018
 
       
6,002,168
  MICROELECTRONIC COMPONENT WITH
RIGID INTERPOSER
  11/25/2017
 
       
6,012,224
  METHOD OF FORMING COMPLIANT
MICROELECTRONIC MOUNTING DEVICE
  7/7/2014
 
       
6,030,856
  BONDABLE COMPLIANT PADS FOR
PACKAGING OF A SEMICONDUCTOR CHIP AND
METHOD THEREFOR
  6/10/2017
 
       
6,045,655
  METHOD OF MOUNTING A CONNECTION
COMPONENT ON A SEMICONDUCTOR CHIP WITH
ADHESIVE
  10/26/2013
 
       
6,046,076
  VACUUM DISPENSE METHOD FOR
DISPENSING AN ENCAPSULANT AND MACHINE
THEREFOR
  12/29/2014
 
       
6,049,972
  UNIVERSAL STRIP/CARRIER FRAME
ASSEMBLY AND METHODS
  1/23/2018
 
       
6,054,337
  METHODS OF MAKING A COMPLIANT
MULTICHIP PACKAGE
  12/12/2017
 
       
6,054,756
  CONNECTION COMPONENTS WITH
FRANGIBLE LEADS AND BUS
  7/24/2012

16


 

         
US PATENT NO.   TITLE   EXPIRATION
 
6,080,605
  METHOD OF ENCAPSULATING A
SEMICONDUCTOR CHIP USING A SETTABLE
ENCAPSULANT
  10/6/2018
 
       
6,080,932
  SEMICONDUCTOR PACKAGE ASSEMBLIES
WITH MOISTURE VENTS
  4/14/2018
 
       
6,081,035
  MICROELECTRONIC BOND RIBBON DESIGN   10/24/2016
 
       
6,083,837
  FABRICATION OF COMPONENTS BY
COINING
  12/12/2017
 
       
6,107,123
  METHODS FOR PROVIDING VOID-FREE
LAYERS FOR SEMICONDUCTOR ASSEMBLIES
  3/7/2016
 
       
6,107,682
  COMPLIANT WIRE BOND PACKAGES
HAVING WIRE LOOP
  12/12/2017
 
       
6,121,676
  STACKED MICROELECTRONIC ASSEMBLY
AND METHOD THEREFOR
  12/11/2017
 
       
6,126,428
  VACUUM DISPENSE APPARATUS FOR
DISPENSING AN ENCAPSULANT
  12/29/2014
 
       
6,127,724
  PACKAGED MICROELECTRONIC ELEMENTS
WITH ENHANCED THERMAL CONDUCTION
  10/31/2017
 
       
6,130,116
  METHOD OF ENCAPSULATING A
MICROELECTRONIC ASSEMBLY UTILIZING A
BARRIER
  12/4/2017
 
       
6,133,627
  SEMICONDUCTOR CHIP PACKAGE WITH
CENTER CONTACTS
  9/24/2010
 
       
6,133,639
  COMPLIANT INTERFACE FOR A
SEMICONDUCTOR CHIP AND METHOD THEREFOR
  9/20/2014
 
       
6,147,401
  COMPLIANT MULTICHIP PACKAGE   12/12/2017
 
       
6,157,075
  SEMICONDUCTOR ASSEMBLIES WITH
REINFORCED PERIPHERAL REGIONS
  8/18/2015
 
       
6,162,661
  SPACER PLATE SOLDER BALL
PLACEMENT FIXTURE AND METHODS THEREFOR
  5/29/2018
 
       
6,169,328
  SEMICONDUCTOR CHIP ASSEMBLY   9/20/2014
 
       
6,170,151
  UNIVERSAL UNIT STRIP/CARRIER
FRAME ASSEMBLY AND METHODS
  1/23/2018

17


 

         
US PATENT NO.   TITLE   EXPIRATION
 
6,182,546
  APPARATUS AND METHODS FOR
SEPARATING MICROELECTRONIC PACKAGES
FROM A COMMON SUBSTRATE
  3/4/2018
 
       
6,184,140
  METHODS OF MAKING MICROELECTRONIC
PACKAGES UTILIZING COINING
  12/12/2017
 
       
6,191,473
  BONDING LEAD STRUCTURE WITH
ENHANCED ENCAPSULATION
  10/8/2017
 
       
6,196,042
  COINING TOOL AND PROCESS OF
MANUFACTURING SAME FOR MAKING
CONNECTION COMPONENTS
  3/31/2019
 
       
6,197,665
  LAMINATION MACHINE AND METHOD TO
LAMINATE A COVERLAY TO A
MICROELECTRONIC PACKAGE
  4/15/2019
 
       
6,202,299
  SEMICONDUCTOR CHIP CONNECTION
COMPONENTS WITH ADHESIVES AND METHOD
OF MAKING SAME
  10/26/2013
 
       
6,204,091
  METHOD OF ASSEMBLING A
SEMICONDUCTOR CHIP PACKAGE
  12/4/2017
 
       
6,208,025
  MICROELECTRONIC COMPONENT WITH
RIGID INTERPOSER
  11/25/2017
 
       
6,214,640
  METHOD OF MANUFACTURING A
PLURALITY OF SEMICONDUCTOR PACKAGES
  8/3/2019
 
       
6,215,191
  COMPLIANT LEAD STRUCTURES FOR
MICROELECTRONIC DEVICES
  11/21/2015
 
       
6,218,213
  MICROELECTRONIC COMPONENTS WITH
FRANGIBLE LEAD SECTIONS
  6/3/2019
 
       
6,218,215
  METHODS OF ENCAPSULATING A
SEMICONDUCTOR CHIP USING A SETTABLE
ENCAPSULANT
  10/6/2018
 
       
6,225,688
  STACKED MICROELECTRONIC ASSEMBLY
AND METHOD THEREFOR
  12/11/2017
 
       
6,232,152
  METHOD OF MANUFACTURING A
PLURALITY OF SEMICONDUCTOR PACKAGES
AND THE RESULTING SEMICONDUCTOR
PACKAGE STRUCTURES
  5/19/2014

18


 

         
US PATENT NO.   TITLE   EXPIRATION
 
6,248,656
  METAL-JACKETED LEAD MANUFACTURING
PROCESS USING RESIST LAYERS
  8/13/2019
 
       
6,253,992
  SOLDER BALL PLACEMENT FIXTURES
AND METHODS
  3/17/2019
 
       
6,255,723
  LAYERED LEAD STRUCTURES   10/27/2018
 
       
6,255,738
  ENCAPSULANT FOR MICROELECTRONIC
DEVICES
  9/30/2017
 
       
6,261,863
  COMPONENTS WITH RELEASABLE LEADS
AND METHODS OF MAKING RELEASABLE LEADS
  10/24/2015
 
       
6,265,759
  LATERALLY SITUATED STRESS/STRAIN
RELIEVING LEAD FOR A SEMICONDUCTOR
CHIP PACKAGE
  9/6/2016
 
       
6,266,872
  METHOD FOR MAKING A CONNECTION
COMPONENT FOR A SEMICONDUCTOR CHIP
PACKAGE
  12/9/2017
 
       
6,272,744
  SEMICONDUCTOR CONNECTION
COMPONENTS AND METHODS WITH RELEASABLE
LEAD SUPPORT
  7/24/2012
 
       
6,274,822
  MANUFACTURE OF SEMICONDUCTOR
CONNECTION COMPONENTS WITH FRANGIBLE
LEAD SECTIONS
  7/2/2018
 
       
6,294,040
  TRANSFERABLE RESILIENT ELEMENT
FOR PACKAGING OF A SEMICONDUCTOR CHIP
AND METHOD THEREFOR
  6/20/2017
 
       
6,300,231
  METHOD FOR CREATING A DIE SHRINK
INSENSITIVE SEMICONDUCTOR PACKAGE AND
COMPONENT THEREFOR
  5/28/2019
 
       
6,300,254
  METHODS OF MAKING COMPLIANT
INTERFACES AND MICROELECTRONIC
PACKAGES USING SAME
  4/16/2019
 
       
6,306,752
  CONNECTION COMPONENT AND METHOD
OF MAKING SAME
  9/15/2019
 
       
6,309,910
  MICROELECTRONIC COMPONENTS WITH
FRANGIBLE LEAD SECTIONS
  5/18/2019

19


 

         
US PATENT NO.   TITLE   EXPIRATION
 
6,309,915
  SEMICONDUCTOR CHIP PACKAGE WITH
EXPANDER RING AND METHOD OF MAKING
SAME
  2/5/2019
 
       
6,313,528
  COMPLIANT MULTICHIP PACKAGE   12/12/2017
 
       
6,324,754
  METHOD FOR FABRICATING
MICROELECTRONIC ASSEMBLIES
  3/25/2018
 
       
6,329,224
  ENCAPSULATION OF MICROELECTRONIC
ASSEMBLIES
  4/28/2018
 
       
6,334,942
  SELECTIVE REMOVAL OF DIELECTRIC
MATERIALS AND PLATING PROCESS USING
SAME
  2/9/2019
 
       
6,358,780
  SEMICONDUCTOR PACKAGE ASSEMBLIES
WITH MOISTURE VENTS AND METHODS OF
MAKING SAME
  4/14/2018
 
       
6,359,236
  MOUNTING COMPONENT WITH LEADS
HAVING POLYMERIC STRIPS
  7/24/2012
 
       
6,359,335
  METHOD OF MANUFACTURING A
PLURALITY OF SEMICONDUCTOR PACKAGES
AND THE RESULTING SEMICONDUCTOR
PACKAGE STRUCTURES
  5/19/2014
 
       
6,370,032
  COMPLIANT MICROELECTRONIC
MOUNTING DEVICE
  7/7/2014
 
       
6,373,128
  SEMICONDUCTOR ASSEMBLIES WITH
REINFORCED PERIPHERAL REGIONS
  8/18/2015
 
       
6,373,141
  BONDABLE COMPLIANT PADS FOR
PACKAGING OF A SEMICONDUCTOR CHIP AND
METHOD THEREFOR
  6/10/2017
 
       
6,380,060
  OFF-CENTER SOLDER BALL ATTACH AND
METHODS THEREFOR
  8/31/2020
 
       
6,388,340
  COMPLIANT SEMICONDUCTOR CHIP
PACKAGE WITH FAN-OUT LEADS AND METHOD
OF MAKING SAME
  2/5/2019
 
       
6,423,907
  COMPONENTS WITH RELEASABLE LEADS   2/9/2018
 
       
6,433,419
  FACE-UP SEMICONDUCTOR CHIP
ASSEMBLIES
  9/24/2010

20


 

         
US PATENT NO.   TITLE   EXPIRATION
 
6,458,628
  METHODS OF ENCAPSULATING A
SEMICONDUCTOR CHIP USING A SETTABLE
ENCAPSULANT
  10/6/2018
 
       
6,458,681
  METHODS FOR PROVIDING VOID-FREE
LAYERS FOR SEMICONDUCTOR ASSEMBLIES
  3/7/2016
 
       
6,460,245
  METHOD OF FABRICATING
SEMICONDUCTOR CHIP ASSEMBLIES
  10/26/2013
 
       
6,465,744
  GRADED METALLIC LEADS CONNECTION
TO MICROELECTRONIC ELEMENTS
  3/26/2019
 
       
6,465,747
  MICROELECTRONIC ASSEMBLIES HAVING
SOLDER-WETTABLE PADS AND CONDUCTIVE
ELEMENTS
  3/25/2018
 
       
6,465,893
  STACKED CHIP ASSEMBLY   9/24/2010
 
       
6,468,830
  COMPLIANT SEMICONDUCTOR PACKAGE
WITH ANISOTROPIC CONDUCTIVE MATERIAL
INTERCONNECTS AND METHODS
  1/25/2019
 
       
6,468,836
  LATERALLY SITUATED STRESS/STRAIN
RELIEVING LEAD FOR A SEMICONDUCTOR
CHIP PACKAGE
  9/6/2016
 
       
6,486,003
  EXPANDABLE INTERPOSER FOR A
MICROELECTRONIC PACKAGE AND METHOD
THEREFOR
  12/10/2017
 
       
6,489,674
  METHOD FOR CREATING A DIE SHRINK
INSENSITIVE SEMICONDUCTOR PACKAGE AND
COMPONENT THEREFOR
  5/28/2019
 
       
6,492,201
  FORMING MICROELECTRONIC
COMPONENTS BY ELECTROPHORETIC
DEPOSITION
  7/10/2018
 
       
6,518,662
  METHOD OF ASSEMBLING A
SEMICONDUCTOR CHIP PACKAGE
  8/13/2018
 
       
6,521,480
  A METHOD FOR MAKING A
SEMICONDUCTOR CHIP PACKAGE
  7/25/2015
 
       
6,525,429
  METHODS OF MAKING MICROELECTRONIC
ASSEMBLIES INCLUDING COMPLIANT
INTERFACES
  9/20/2014
 
       
6,527,163
  METHODS OF MAKING BONDABLE
CONTACTS AND A TOOL FOR MAKING SUCH
CONTACTS
  11/21/2020

21


 

         
US PATENT NO.   TITLE   EXPIRATION
 
6,534,392
  METHODS OF MAKING MICROELECTRONIC
ASSEMBLIES USING BONDING STAGE AND
BONDING STAGE THEREFOR
  9/14/2021
 
       
6,541,845
  COMPONENTS WITH RELEASABLE LEADS
AND METHODS OF MAKING RELEASABLE LEADS
  10/24/2015
 
       
6,541,874
  ENCAPSULATION OF MICROELECTRONIC
ASSEMBLIES
  4/28/2018
 
       
6,572,781
  MICROELECTRONIC PACKAGING METHODS
AND COMPONENTS
  5/16/2021
 
       
6,573,459
  GRADED METALLIC LEADS FOR
CONNECTION TO MICROELECTRONIC ELEMENTS
  3/26/2019
 
       
6,602,740
  ENCAPSULATION OF MICROELECTRONIC
ASSEMBLIES
  11/22/2020
 
       
6,603,209
  COMPLIANT INTEGRATED CIRCUIT
PACKAGE
  12/29/2014
 
       
6,653,172
  METHODS FOR PROVIDING VOID-FREE
LAYERS FOR SEMICONDUCTOR ASSEMBLIES
  3/7/2016
 
       
6,664,484
  COMPONENTS WITH RELEASABLE LEADS   5/1/2018
 
       
6,686,015
  TRANSFERABLE RESILIENT ELEMENT
FOR PACKAGING OF A SEMICONDUCTOR CHIP
AND METHODTHEREFOR
  6/30/2017
 
       
6,687,980
  APPARATUS FOR PROCESSING FLEXIBLE
TAPE FOR MICROELECTRONIC ASSEMBLIES
  12/14/2018
 
       
6,699,730
  STACKED MICROELECTRONIC ASSEMBLY
AND METHOD THEREFOR
  4/15/2018
 
       
6,707,149
  LOW COST AND COMPLIANT
MICROELECTRONIC PACKAGES FOR HIGH I/O
AND FINE PITCH
  10/11/2021
 
       
6,709,469
  SPACER PLATE SOLDER BALL
REPLACEMENT FIXTURE AND METHODS
THEREFOR
  5/29/2018
 
       
6,709,895
  PACKAGED MICROELECTRONIC ELEMENTS
WITH ENHANCED THERMAL CONDUCTION
  10/31/2017
 
       
6,716,671
  METHODS OF MAMING MICROELECTRONIC
ASSEMBLIES USING COMPRESSED RESILIENT
LAYER
  3/19/2021

22


 

         
US PATENT NO.   TITLE   EXPIRATION
 
6,723,584
  METHODS OF MAKING MICROELECTRONIC
ASSEMBLIES INCLUDING COMPLIANT
INTERFACES
  9/20/2014
 
       
6,763,579
  METHODS OF MAKING COMPONENTS WITH
RELEASABLE LEADS
  2/9/2018
 
       
6,765,288
  MICROELECTRONIC ADAPTORS,
ASSEMBLIES AND METHODS
  9/6/2022
 
       
6,774,317
  CONNECTION COMPONENTS WITH POSTS   12/29/2014
 
       
6,780,747
  METHODS FOR PROVIDING VOID-FREE
LAYERS FOR SEMICONDUCTOR ASSEMBLIES
  3/7/2016
 
       
6,791,169
  COMPLIANT SEMICONDUCTOR PACKAGE
WITH ANISOTROPIC CONDUCTIVE MATERIAL
INTERCONNECTS AND METHODS THEREFOR
  1/25/2018
 
       
6,821,815
  METHODS OF ASSEMBLING A
SEMICONDUCTOR CHIP PACKAGE
  12/4/2017
 
       
6,822,320
  MICROELECTRONIC CONNECTION
COMPONENTS UTILIZING CONDUCTIVE CORES
AND POLYMERIC COATINGS
  7/10/2018
 
       
6,828,668
  FLEXIBLE LEAD STRUCTURES AND
METHODS OF MAKING SAME
  7/7/2014

23


 

         
US APPLICATION       ESTIMATED
SERIAL NO.   TITLE   EXPIRATION DATE
 
09/534,939
  CONNECTION COMPONENTS WITH
FRANGIBLE LEADS AND BUS
  7/24/2012
 
       
09/656,690
  FACE-UP SEMICONDUCTOR CHIP
ASSEMBLIES
  9/24/2010
 
       
09/766,814
  MICROELECTRONIC PACKAGES
HAVING DEFORMED BONDED AND
METHODS THEREFOR
  7/7/2014
 
       
09/827,840
  MICROELECTRONIC ASSEMBLY
HAVING ENCAPSULATED WIRE BONDING
LEADS
  9/24/2010
 
       
09/942,386
  COMPONENTS WITH CONDUCTIVE
SOLDER MASK LAYERS
  3/26/2019
 
       
10/044,121
  STACKED MICROELECTRONIC
ASSEMBLIES AND METHODS OF MAKING
SAME
  1/11/2022
 
       
10/077,145
  OFF-CENTER SOLDER BALL
ATTACH ASSEMBLY
  8/31/2020
 
       
10/077,388
  ASSEMBLIES HAVING STACKED
SEMICONDUCTOR CHIPS AND METHODS
OF MAKING SAME
  2/15/2022
 
       
10/095,561
  METHOD OF MANUFACTURING A
PLURALITY OF SEMICONDUCTOR
PACKAGES AND THE RESULTING
SEMICONDUCTOR PACKAGE
  5/19/2014
 
       
10/123,547
  METHODS OF MAKING
MICROELECTRONIC ASSEMBLIES
INCLUDING COMPLIANT INTERFACES
  9/20/2014
 
       
10/162,957
  CONNECTION COMPONENTS WITH
FRANGIBLE LEADS AND BUS
  7/24/2012
 
       
10/164,116
  SEMICONDUCTOR CHIP
ASSEMBLIES, METHODS OF MAKING
SAME AND COMPONENTS FOR SAME
  9/24/2010
 
       
10/210,160
  HIGH-FREQUENCY CHIP PACKAGES   8/1/2022
 
       
10/210,811
  METHOD OF FABRICATING
SEMICONDUCTOR CHIP ASSEMBLIES
  3/7/2016
 
       
10/235,102
  MICROELECTRONIC ASSEMBLY
FORMATION WITH RELEASABLE LEADS
  9/5/2022

24


 

         
US APPLICATION       ESTIMATED
SERIAL NO.   TITLE   EXPIRATION DATE
 
10/267,450
  STACKED PACKAGES   10/9/2022
 
       
10/281,550
  METHODS OF MAKING
MICROELECTRONIC ASSEMBLIES
INCLUDING FOLDED SUBSTRATES
  12/11/2017
 
       
10/301,188
  MICROELECTRONIC COMPONENT
AND ASSEMBLY HAVING LEADS WITH
OFFSET PORTIONS
  9/24/2010
 
       
10/487,482
  STACKED CHIP ASSEMBLY WITH
STIFFENING LAYER
  12/31/2011
 
       
10/488,210
  HIGH-FREQUENCY CHIP PACKAGES   7/31/2022
 
       
10/771,252
  METHOD FOR MAKING A
MICROELECTRONIC PACKAGE USING
PRE-PATTERNED, REUSABLE MOLD AND
METHOD FOR MAKING THE MOLD
  2/3/2024
 
       
10/783,314
  HIGH-FREQUENCY CHIP PACKAGES   8/1/2022
 
       
10/786,819
  BALL GRID ARRAY WITH BUMPS   2/25/2024
 
       
10/834,342
  STACKED PACKAGES   10/9/2022
 
       
10/858,167
  METHOD OF MAKING
COMPONENTS WITH RELEASABLE LEADS
CROSS-REFERENCE TO RELATED
APPLICATIONS
  2/9/2018
 
       
10/872,105
  CONNECTION COMPONENTS WITH
FRANGIBLE LEADS AND BUS
  5/8/2015
 
       
10/959,465
  FORMATION OF CIRCUITRY WITH
MODIFICATION OF FEATURE HEIGHT
  10/6/2024
 
       
10/969,527
  FOLDOVER PACKAGES AND
MANUFACTURING AND TEST METHODS
THEREFOR
  10/20/2024
 
       
10/981,067
  STACKED PACKAGES AND
SYSTEMS INCORPORATING THE SAME
  11/4/2024
 
       
10/985,119
  MICRO PIN GRID ARRAY WITH
PIN MOTION ISOLATION
  11/10/2024
 
       
10/985,126
  MICRO PIN GRID ARRAY WITH
WIPING ACTION
  11/10/2024
 
       
10/988,160
  STACKED MICROELECTRONIC
ASSEMBLIES WITH CENTRAL CONTACTS
  11/12/2024
 
       
10/994,695
  CONNECTION COMPONENTS WITH
ANISOTROPIC CONDUCTIVE MATERIAL
INTERCONNECTION
  5/9/2021
 
       
11/014,439
  MICROELECTRONIC PACKAGES AND
METHODS THEREFOR
  12/16/2024

25


 

         
FOREIGN PATENT NO.   TITLE   EXPIRATION DATE
 
EP0551382 (Euro)
  SEMICONDUCTOR CHIP
ASSEMBLIES AND METHODS
OF MAKING SAME AND
COMPONENTS FOR SAME
  9/24/2011
 
       
121621
(Korea)
  SEMICONDUCTOR CHIP
ASSEMBLIES AND METHODS
OF MAKING SAME AND
COMPONENTS FOR SAME
  9/24/2011
 
       
209457
(Korea)
  SEMICONDUCTOR
CONNECTION COMPONENTS
AND METHODS WITH
RELEASABLE LEAD SUPPORT
  7/23/2013
 
       
0322289
(Korea)
  METHOD OF FORMING
INTERFACE BETWEEN DIE
AND CHIP CARRIER
  8/5/2014
 
       
0334990
(Korea)
  MICROELECTRONIC
BONDING WITH LEAD MOTION
  9/19/2015
 
       
2924923
(Japan)
  SEMICONDUCTOR CHIP
ASSEMBLIES AND METHODS
OF MAKING SAME AND
COMPONENTS FOR SAME
  9/24/2011
 
       
3151219
(Japan)
  SEMICONDUCTOR
CONNECTION COMPONENTS
AND METHODS WITH
RELEASABLE LEAD SUPPORT
  7/23/2013
 
       
2,091,438 (Canada)
  SEMICONDUCTOR CHIP
ASSEMBLIES AND METHODS
OF MAKING SAME AND
COMPONENTS FOR SAME
  9/24/2011
 
       
NI-142874 (Taiwan)
  ENCAPSULATION OF
MICROELECTRONIC
ASSEMBLIES
  4/25/2019
 
       
0384255 (Korea)
  COMPLIANT INTERFACE
FOR A SEMICONDUCTOR CHIP
  9/20/2015
 
       
800753 (Germany)
  MICROELECTRONIC
BONDING WITH LEAD MOTION
  9/19/2015
 
       
800753 (FRANCE)
  MICROELECTRONIC
BONDING WITH LEAD MOTION
  9/19/2015
 
       
800753 (GR.BRIT)
  MICROELECTRONIC
BONDING WITH LEAD MOTION
  9/19/2015
 
       
EP0800754 (Euro)
  COMPLIANT INTERFACE
FOR A SEMICONDUCTOR CHIP
  9/20/2015

26


 

         
FOREIGN        
APPLICATION       ESTIMATED
SERIAL NO.   TITLE   EXPIRATION DATE
 
94924580.7 (Euro)
  METHOD OF FORMING INTERFACE
BETWEEN DIE AND CHIP CARRIER
  8/5/2014*
 
       
1200301.8
(Euro)
  SEMICONDUCTOR CHIP ASSEMBLIES   9/24/2011
 
       
7-505309
(Japan)
  SHAPED LEAD STRUCTURE AND METHOD   7/21/2014
 
       
8-511028
(Japan)
  MICROELECTRONIC BONDING WITH
LEAD MOTION
  9/19/2015
 
       
8-511045
(Japan)
  COMPLIANT INTERFACE FOR A
SEMICONDUCTOR CHIP
  9/20/2015
 
       
8-533523
(Japan)
  FABRICATION OF LEADS ON
SEMICONDUCTOR CONNECTION COMPONENTS
  5/3/2016
 
       
546394/2000
Japan)
  ENCAPSULATION OF
MICROELECTRONIC ASSEMBLIES
  4/26/2019
 
       
10-2000-7012035
(Korea)
  ENCAPSULATION OF
MICROELECTRONIC ASSEMBLIES
  4/26/2019

27


 

Attachment B
DRAM Licensed Products. For each DRAM Licensed Product sold by Licensee, Licensee shall pay a royalty of US$[***] per DRAM Licensed Product.
Non-DRAM Licensed Products. For each Non-DRAM Licensed Product sold by Licensee, Licensee shall pay a royalty of [***] (US$[***]) per Billable Pin. Notwithstanding the foregoing, the maximum number of payable Billable Pins per Non-DRAM Licensed Product for any royalties due hereunder shall be capped at [***].

28


 

Attachment C
Reporting Period: From                                          through                                         
ROYALTY REPORT UNDER TESSERA TCC LICENSE AGREEMENT
                                                 
PARTY                                        
ASSEMBLING                                        
LICENSED                   NUMBER                    
PRODUCT                   OF     NUMBER OF              
(Licensee or   PART     TYPE OF IC     LICENSED     BILLABLE     ROYALTY     ROYALTY  
Subcontractor)   NUMBER     DEVICE     PRODUCTS     PINS     RATE     (US$)  
 
 
                                               
 
                                               
 
                                               
 
                                               
 
                                               
TOTAL ROYALTY REMITTED:          US$                                        
PURCHASES OF LICENSED PRODUCTS FROM OTHERS
                                 
                            NUMBER OF  
SUPPLIER OF   TYPE OF             NUMBER OF     BILLABLE PINS  
LICENSED   LICENSED     TYPE OF IC     LICENSED     PER LICENSED  
PRODUCT   PRODUCT     DEVICE     PRODUCTS     PRODUCT  
 
 
                               
 
                               
 
                               
 
                               
 
                               

29


 

Attachment D
Name
Title
Subcontracting Company
Address
Dear                ,
Qimonda has entered into a license agreement with Tessera, Inc. (“Tessera”) under certain Tessera patents (including but not limited to U.S. Patent Nos. 5,679,977; 5,852,326; 6,133,627; 6,433,419 and 6,465,893) to make, use and sell BGA packages. We have determined that certain BGA packages made by you for Qimonda are covered by our license agreement with Tessera, and Qimonda will pay royalties for such BGA packages made by you going forward. If you have a license with Tessera to make such BGA packages, you do not have to pay a royalty to Tessera in addition to what Qimonda pays. However, you should understand that our payment of royalties for such BGA packages does not, in any way, affect your obligations to pay royalties to Tessera for similar BGA packages made for other customers.
A list of the packages made by you for which Qimonda is paying royalties under its license with Tessera is attached hereto. We will update the attached list from time-to-time.
If you have any questions regarding the subject matter of this letter, please feel free to contact me directly.
Sincerely,
     
 
   
 
   
 
 
   
Appropriate Qimonda signature
Copy sent to: Christopher Pickett, Executive Vice President, Licensing Business, Tessera, Inc. 3099 Orchard Drive, San Jose, CA 95134 USA; FAX +1-408-894-0190

30