Exhibit
10.2


 


INTELLECTUAL PROPERTY AGREEMENT


 


 


between


 


 


SONY ELECTRONICS INC.


 


 


and


 


 


GSI TECHNOLOGY, INC.


 


 


August 28, 2009


 

















 


TABLE OF CONTENTS


 


	
   

  	
   

  	
  Page

  
	
   

  	
   

  	
   

  
	
  1.

  	
  Definitions

  	
  1

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  1.1

  	
  IP Agreement

  	
  2

  
	
   

  	
  1.2

  	
  Asset Purchase
  Agreement

  	
  2

  
	
   

  	
  1.3

  	
  Effective Date

  	
  2

  
	
   

  	
  1.4

  	
  Licensed Patent(s)

  	
  2

  
	
   

  	
  1.5

  	
  Transferred Patent(s)

  	
  3

  
	
   

  	
   

  	
   

  	
   

  
	
  2.

  	
  Assignment

  	
  3

  
	
   

  	
   

  	
   

  	
   

  
	
  3.

  	
  Licenses

  	
  3

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  3.1

  	
  Grant by SONY

  	
  3

  
	
   

  	
  3.2

  	
  Grant Back by PURCHASER

  	
  4

  
	
   

  	
  3.3

  	
  No Implied License or
  Other Assignment

  	
  4

  
	
   

  	
  3.4

  	
  No Sublicense Rights

  	
  4

  
	
   

  	
   

  	
   

  	
   

  
	
  4.

  	
  Each Party’s Sole Right
  to the Intellectual Property

  	
  4

  
	
   

  	
   

  	
   

  	
   

  
	
  5.

  	
  Restrictions on Use of
  SONY Trademarks

  	
  5

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  5.1

  	
  No Trademark License

  	
  5

  
	
   

  	
  5.2

  	
  Removal of SONY
  Trademarks

  	
  5

  
	
   

  	
  5.3

  	
  Packaging

  	
  5

  
	
   

  	
  5.4

  	
  No Affiliation

  	
  6

  
	
   

  	
  5.5

  	
  JTAG / Mask Works

  	
  6

  
	
   

  	
   

  	
   

  	
   

  
	
  6.

  	
  Payment

  	
  6

  
	
   

  	
   

  	
   

  	
   

  
	
  7.

  	
  Term and Termination

  	
  7

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  7.1

  	
  Term

  	
  7

  
	
   

  	
  7.2

  	
  Termination

  	
  7

  
	
   

  	
  7.3

  	
  Insolvency

  	
  7

  
	
   

  	
  7.4

  	
  Continuing Obligations

  	
  8

  
	
   

  	
   

  	
   

  	
   

  
	
  8.

  	
  Representations and
  Warranties

  	
  8

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  8.1

  	
  Power and Authority

  	
  8

  
	
   

  	
  8.2

  	
  Essential Patents

  	
  8

  
	
   

  	
  8.3

  	
  Ownership

  	
  8

  
	
   

  	
  8.4

  	
  Validity and Enforceability

  	
  8

  
	
   

  	
  8.5

  	
  Sufficiency

  	
  9

  
	
   

  	
  8.6

  	
  Non-infringement by the
  Business

  	
  9

  
	
   

  	
  8.7

  	
  Infringement by a Third
  Party

  	
  10

  
	
   

  	
  8.8

  	
  Intellectual Property
  Development

  	
  10

  



 


i

















 


TABLE OF CONTENTS

(continued)


 


	
   

  	
   

  	
  Page

  
	
   

  	
   

  	
   

  
	
   

  	
  8.9

  	
  Material Intellectual
  Property Agreements

  	
  11

  
	
   

  	
  8.10

  	
  Royalties

  	
  11

  
	
   

  	
  8.11

  	
  No Loss of Rights

  	
  12

  
	
   

  	
  8.12

  	
  Transferability

  	
  12

  
	
   

  	
  8.13

  	
  No SRAM Product
  Warranty Issues

  	
  12

  
	
   

  	
  8.14

  	
  Disclaimer

  	
  12

  
	
   

  	
   

  	
   

  	
   

  
	
  9.

  	
  Miscellaneous

  	
  13

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
  9.1

  	
  Notices

  	
  13

  
	
   

  	
  9.2

  	
  Expenses

  	
  14

  
	
   

  	
  9.3

  	
  Successors and Assigns

  	
  14

  
	
   

  	
  9.4

  	
  Waiver

  	
  15

  
	
   

  	
  9.5

  	
  Entire Agreement

  	
  15

  
	
   

  	
  9.6

  	
  Amendments and
  Supplements

  	
  15

  
	
   

  	
  9.7

  	
  Rights of Third Parties

  	
  15

  
	
   

  	
  9.8

  	
  Further Assurances

  	
  16

  
	
   

  	
  9.9

  	
  Applicable Law

  	
  16

  
	
   

  	
  9.10

  	
  Execution in
  Counterparts

  	
  16

  
	
   

  	
  9.11

  	
  Titles and Headings

  	
  16

  
	
   

  	
  9.12

  	
  Invalid Provisions

  	
  16

  
	
   

  	
  9.13

  	
  Transfer Taxes

  	
  17

  
	
   

  	
  9.14

  	
  Attorneys’ Fees

  	
  17

  



 


ii

















 


INTELLECTUAL PROPERTY AGREEMENT


 


This
Intellectual Property Agreement is made
and entered into as of August 28, 2009 by
and between GSI Technology, Inc., a Delaware corporation (“PURCHASER”), on the one hand, and Sony Electronics Inc. (“SONY”), a Delaware corporation, on the other hand. PURCHASER
and SONY are referred to individually as a “Party”
and collectively as the “Parties”.


 


RECITALS


 


WHEREAS, SONY presently conducts the business of
manufacturing, marketing and selling SRAM products (the “Business”);


 


WHEREAS, SONY has agreed to sell and PURCHASER has
agreed to purchase certain assets, rights and properties of SONY used or useful
in connection with the Business, all on the terms and subject to the conditions
set forth in the Asset Purchase Agreement of even date herewith;


 


WHEREAS, SONY has or will transfer title to the
Transferred Assets to PURCHASER under the Asset Purchase Agreement;


 


WHEREAS, SONY is the owner of certain intellectual
property related to the Business; and


 


WHEREAS, SONY desires to
transfer certain patents to PURCHASER and grant to PURCHASER a license under
certain intellectual property related to the SRAM Products.


 


NOW, THEREFORE, in
consideration of the mutual covenants, representations, warranties and
agreements herein contained, the Parties hereto agree as follows:


 


1.             Definitions


 


As used in this IP
Agreement, all capitalized terms shall have the meaning ascribed to them as set
forth in the Asset Purchase Agreement, except for terms defined herein,
including the following terms, which shall have the meanings set forth below:


 


1

















 


1.1          IP Agreement


 


The term “IP Agreement”
means this Intellectual Property Agreement, including all attached Exhibits
hereto, and any amendments or supplements agreed to in writing and signed by
SONY and PURCHASER.


 


1.2          Asset Purchase Agreement


 


The term “Asset Purchase Agreement” means the Asset Purchase Agreement
dated August 28, 2009 between SONY and PURCHASER to which this IP Agreement
is attached as Exhibit F.


 


1.3          Effective Date


 


The term “Effective Date” means the Closing Date.


 


1.4          Licensed Patent(s)


 


The
term “Licensed Patent” or “Licensed Patents” means any patent or patents issued at any
time in any country (including any inventor’s certificates, extension,
reissued, renewal and reexamined patents), which
(1) is based on any invention made on or prior to the Effective Date,
including any patents for inventions disclosed in patent applications filed on
or prior to the Effective Date, and issuing from any of those patent
applications or any patent applications which are continuations, continuing
applications, continuations-in-part or divisions of those patent applications,
or on any foreign counterpart of any of those patent applications, (2) (a) is
owned by SONY or any of its Affiliates or (b) under which SONY or its
Affiliates have the right to grant licenses without payment by SONY or any of
its Affiliates of additional royalties or other consideration to a third party
(excluding payments for inventions made by that third party while employed by
SONY or any of its Affiliates), and (3) would, in the absence of a license
granted herein, be infringed by making, using, selling, offering for sale,
importing or supplying any Competing Products (including, without limitation,
the SRAM Products).  “Licensed
Patents” shall exclude the Transferred Patents.


 


2

















 


1.5          Transferred Patent(s)


 


The term “Transferred Patent” or “Transferred Patents”
means the patents and/or patent applications listed in Exhibit A to
this IP Agreement and all patents and applications claiming the priority of any
of these patents and/or patent applications and all reissues, divisions,
renewals, extensions, provisionals, and continuations thereof, and any
equivalent or similar rights anywhere in the world in inventions and
discoveries.


 


2.             Assignment


 


SONY hereby assigns to
PURCHASER SONY’s entire right, title and interest in, to and under the
Transferred Patents, and any patents that may issue therefrom (including any
foreign counterparts, divisions, continuations, renewals, continuations in
part, reexaminations or reissues thereof), along with the right to sue and
collect damages for any future infringement, and agrees to take all reasonably
necessary action to assist PURCHASER, at PURCHASER’s sole expense, to register,
confirm and perfect such assignment, including by making filings with or at any
and all necessary patent offices and/or governmental agencies. SONY retains the
right to sue and collect damages for any past infringement of the Transferred
Patents, provided that SONY obtains PURCHASER’s written consent prior to making
any infringement claim or allegation or filing any action, suit, litigation or
proceeding that could affect the Transferred Patents or PURCHASER’s ability to
use and exploit the Transferred Patents or that may result in PURCHASER being
joined as a party to the action, suit, litigation or proceeding.  PURCHASER shall not unreasonably withhold its
consent.


 


3.             Licenses


 


3.1          Grant by SONY


 


SONY,
on behalf of itself and its Affiliates, hereby grants to PURCHASER a worldwide,
non-exclusive, fully paid-up, royalty-free license (a) under the Licensed
Patents to make, have made, use, offer to sell,
sell, otherwise dispose of, and import any Competing Products (including,
without limitation, the SRAM Products); and (b) to use,
reproduce, modify, prepare derivative works of, perform, display, and otherwise
practice and exploit in any manner any and all of the SRAM Intellectual
Property in connection with the use and exploitation of the 


 


3

















 


Transferred Assets, and to make, have
made, use, offer to sell, sell, otherwise dispose of, and import Competing
Products (including, without limitation, SRAM Products).


 


3.2          Grant Back by PURCHASER


 


Subject
to SONY’s compliance with the covenant not to compete in Section 8.3 of
Asset Purchase Agreement, PURCHASER hereby grants to SONY a worldwide,
non-exclusive, fully paid-up, royalty-free license, under the Transferred
Patents, to make, use, offer to sell, sell, otherwise dispose of, and import
any products, including any Competing Products. 
This Section 3.2 shall not be construed as superseding, overriding
or modifying Section 8.3 of Asset Purchase Agreement.


 


3.3          No Implied License or Other Assignment


 


Except
as expressly set out in this IP Agreement and the Asset Purchase Agreement,
neither party grants to the other Party, and each Party acknowledges and agrees
that the other Party has not granted to it, any other license explicitly or
implicitly under any Intellectual Property nor has either party made any transfer
or assignment to the other Party of any Intellectual Property or intellectual
property rights.


 


3.4          No Sublicense Rights


 


No
license granted by either party under this IP Agreement includes the right to
grant sublicenses.


 


4.             Each Party’s Sole Right to the
Intellectual Property


 


Each Party shall have the
sole right, but not the obligation, to apply for and register for protection
for, prosecute, and maintain any of its Intellectual Property and shall have
the sole right to determine whether or not, and where, to apply for and/or
register such protection, to abandon attempts to obtain protection or abandon
registered protection of any Intellectual Property, and/or to discontinue the
maintenance of any Intellectual Property without any obligation to inform the
other Party of any such action or inaction. 
Neither Party is obligated to (a) file any patent application or to
secure any patent or patent rights, or (b) maintain any patent in force or
prosecute any patent application.


 


4

















 


5.             Restrictions on Use of SONY Trademarks


 


5.1          No Trademark License


 


Both Parties agree and
recognize that, except as specifically provided in this Section 5, SONY
does not grant any trademark license to PURCHASER under any SONY slogans,
brands, trade names, monograms, logos, common law trademarks and service marks,
trademark and service mark registrations and applications or any World Wide Web
addresses, sites and domain names or any variations thereof (“SONY Branding”). PURCHASER agrees that, except as
specifically provided in this Section 5, it shall not use any slogans,
brands, trade names, monograms, logos, common law trademarks and service marks,
trademark and service mark registrations and applications or any World Wide Web
addresses, sites and domain names or any variations thereof (“PURCHASER Branding”) 
that imitate or are confusingly similar to any SONY Branding, nor shall
it use PURCHASER Branding in commerce in a manner that would be confusingly
similar to any SONY Branding.


 


5.2          Removal of SONY Trademarks


 


Except
as expressly permitted by Section 5.5 or as otherwise agreed by SONY in
writing, Purchaser
shall either remove, cover (i.e., sticker) or obliterate SONY Branding visible
to the unaided human eye from all SRAM Products and product literature whether (a) transferred
in complete or incomplete form under the Asset Purchase Agreement, (b) manufactured
under license under this IP Agreement, or (c) manufactured using the
Transferred Assets.  Notwithstanding
the foregoing, PURCHASER shall have the right to sell finished SRAM Products
bearing SONY Branding acquired by PURCHASER under the Asset Purchase Agreement,
subject to the provisions of Section 8.14 thereof.


 


5.3          Packaging


 


Except as expressly otherwise agreed by SONY in writing, all inventory of SRAM
Products shall be packaged with labels clearly indicating that it is a
PURCHASER original product.  PURCHASER is
expressly prohibited from using any SONY Branding alone or on any SRAM Product
and/or product packaging.  Notwithstanding
the foregoing, PURCHASER shall have the right to sell finished SRAM Products
bearing SONY Branding 


 


5

















 


acquired by PURCHASER under the Asset Purchase Agreement,
subject to the provisions of Section 8.14 thereof.


 


5.4          No Affiliation


 


PURCHASER shall not
represent, imply, or connote in any way that it is affiliated with SONY or,
other than as authorized by this IP Agreement, use any SONY Trademark for any
goods, parts, packaging of products, or services.


 


5.5          JTAG / Mask Works


 


Notwithstanding the
provisions of Section 5.1, PURCHASER shall have the right to use any and
all Mask Works transferred to PURCHASER under the Asset Purchase Agreement,
even if the use of such Mask Works results in a JTAG or other marking that
would otherwise indicate a connection to SONY, provided that:


 


(i)            the use of such Masks is only for the
manufacture by or for PURCHASER of SRAM Products that are qualified with
customers as of the Effective Date and updates or revisions of such SRAM
Products that would not require requalification; and


 


(ii)           PURCHASER allows SONY to audit PURCHASER’s
manufacture and testing of SRAM Products for purposes of determining the
quality of those SRAM Products that bear a marking which indicates a connection
to SONY from time to time upon reasonable request, subject to SONY’s execution
of a standard PURCHASER confidentiality agreement; and


 


(iii)          no alterations are made to any such Mask
in any way.


 


6.             Payment


 


Consideration
for the license granted by SONY under this IP Agreement is included in the
Purchase Price, and PURCHASER shall have no obligation to make any additional
payments to SONY for the license granted under this Agreement.


 


6

















 


7.             Term and Termination


 


7.1          Term


 


Unless earlier terminated
as provided below, this IP Agreement shall extend until the last date of
expiration of the SRAM Intellectual Property rights licensed under this
IP Agreement.


 


7.2          Termination


 


(a)           Should either Party fail to observe
faithfully and materially perform each of the material obligations assumed by
it in this IP Agreement for thirty (30) days after its attention has been
directed to any such breach by notice in writing from the other Party, the
non-breaching Party shall, at its option, have the right to terminate the
license granted by it under this Agreement, such termination to be effected by
serving notice in writing upon the breaching Party to that effect on or after
the expiration of such period of thirty (30) days.


 


(b)           Should PURCHASER assert against SONY a
claim based on its Patents and/or Intellectual Property, SONY shall, at its option, have the right to
terminate the license granted by SONY hereunder, such termination to be
effected by serving notice in writing upon PURCHASER to that effect not less than thirty (30)
days prior to the effective date of such termination.


 


(c)           Should SONY or any SONY Affiliate assert
against PURCHASER a claim based on its Patents and/or Intellectual Property, PURCHASER shall, at its option, have the right to
terminate the license granted by PURCHASER hereunder, such termination to be
effected by serving notice in writing upon SONY to that effect not less than thirty (30)
days prior to the effective date of such termination.


 


7.3          Insolvency


 


The licenses granted to a
Party under Section 3 hereof shall automatically terminate should such
Party become adjudicated insolvent by reason of failure to pay its debts when
due, enter into bankruptcy proceeding for its liquidation, voluntarily or
involuntarily, or make any assignment for the benefit of any one or more
creditors.


 


7
















 


7.4          Continuing Obligations


 


Termination of the
licenses granted hereunder shall not affect any liability of either of the
Parties previously accruing under this IP Agreement.


 


8.             Representations and Warranties


 


SONY hereby makes the
following representations and warranties to PURCHASER, each of which shall be
true and correct as of the date hereof and as of the Closing Date, and shall be
unaffected by any investigation heretofore or hereafter made:


 


8.1          Power and Authority


 


SONY has the right and
power to enter into this IP Agreement and to transfer the Transferred Patents
and to grant the license set forth in Section 3.1.


 


8.2          Essential Patents


 


The Transferred Patents
listed on Exhibit A comprise the Patents, both U.S. and foreign,
owned or claimed by SONY or any SONY Affiliate, that are essential to the
conduct of the Business as conducted by SONY.


 


8.3          Ownership


 


All of the Transferred
Patents are owned solely by SONY. No Transferred Patent is jointly owned by
SONY and any other Person, nor is it owned or jointly owned by any SONY
Affiliate.


 


8.4          Validity and Enforceability


 


Each of the Transferred
Patents (excluding applications) is subsisting, and, to the Knowledge of SONY,
valid and in full force and effect (except with respect to applications), and
has not expired or been cancelled or abandoned. All necessary documents and
certifications in connection with each Transferred Patent (excluding
applications) have been filed with the relevant patent, copyright or other
authorities in the United States and foreign jurisdictions, as the case may be,
for the purposes of avoiding abandonment, prosecuting and maintaining of 


 


8

















 


Transferred
Patents (excluding applications). Except for actions of the relevant jurisdiction’s
patent and trademark office or other government intellectual property office (“Office
Actions”), SONY has not, to the Knowledge of SONY, received written notice of
any pending or threatened (and at no time within the two years prior to the
Effective Date has there been pending any) action before any court,
governmental authority or arbitral tribunal in any jurisdiction challenging the
use, ownership, validity, enforceability or registerability of any of the
Transferred Patents.  Rejections of pending
applications before a national patent, trademark or intellectual properly
office will not constitute such written notice. Except for Office Actions and
broad Patent portfolio cross license agreements that SONY has signed with third
parties (“Portfolio Cross Licenses”), neither SONY nor any Affiliate of SONY
is, to the Knowledge of SONY, a party to any settlements, covenants not to sue,
consents, decrees, stipulations, judgments or orders resulting from actions
which permit third parties to use any Transferred Patents or any other SRAM  Intellectual Property included in the Transferred
Assets.  SONY has the sole right to
enforce all of the Transferred Patents and the other SRAM Intellectual Property
rights of SONY included in the Transferred Assets.


 


8.5          Sufficiency


 


To the Knowledge of SONY,
SONY and each of SONY’s Affiliates owns, or has valid rights to use, all the
SRAM Intellectual Property material to the conduct of the Business, including,
without limitation, the design, development, manufacture, marketing, use,
distribution, import, supply, provision and sale of SRAM Products.


 


8.6          Non-infringement by the Business


 


As of the Effective Date,
SONY has not received written notice of any pending or threatened (and at no
time within the two years prior to the date of this Agreement has there been,
to the Knowledge of SONY, pending any) action alleging that the activities or
the conduct of the Business dilutes (solely with respect to trademark rights),
misappropriates, infringes, violates or constitutes the unauthorized use of, or
will dilute (solely with respect to trademark rights), misappropriate, infringe
upon, violate or constitute the unauthorized use of the Intellectual Property
of any third party, nor, to the Knowledge of SONY, does there exist any basis
therefor. Except for Office Actions pertaining to the Transferred Patents and
Patent licenses 


 


9

















 


granted by SONY
under Portfolio Cross Licenses, neither SONY nor any of SONY’s Affiliates is,
to the Knowledge of SONY, party to any settlement, covenant not to sue,
consent, decree, stipulation, judgment, or order resulting from any action
which (i) restricts SONY’s or any of its Affiliate’s rights to use any
SRAM Intellectual Property in connection with the Business, (ii) restricts
the Business in order to accommodate a third party’s Intellectual Property
rights or (iii) requires any future payment by SONY or any SONY Affiliate.


 


8.7          Infringement by a Third Party


 


To the Knowledge of SONY,
no third party is misappropriating, infringing, or violating any SRAM
Intellectual Property material to the conduct of the Business that is owned by
or exclusively licensed to SONY or any SONY Affiliate, and no Intellectual
Property or other proprietary right, misappropriation, infringement or
violation actions have been brought against any third party by SONY or any SONY
Affiliate in connection with the Business.


 


8.8          Intellectual Property Development


 


To the knowledge
of SONY:


 


(a)           Each Person who is or has been employed by
SONY or any Affiliate of SONY at any time at or prior to the date hereof in
connection with the development of any SRAM Intellectual Property or technology
material to the Business, or is or has provided consulting services to SONY or
any Affiliate of SONY in connection with the development of any SRAM
Intellectual Property or technology material to the Business at any time at or
prior to the Effective Date, has signed an agreement containing appropriate
confidentiality terms.


 


(b)           Except in the exercise of SONY’s business
judgment, other than under an appropriate confidentiality or nondisclosure
agreement or contractual provision relating to confidentiality and
nondisclosure, there has been no disclosure to any third party of material
confidential or proprietary information or trade secrets of SONY or any
Affiliate of SONY related to any SRAM Product. All current and former employees
of SONY and each Affiliate of SONY who have made any material contributions to
the development of any SRAM Product have signed an invention assignment
agreement that assigns ownership to SONY or have performed that work in the
course, and within the scope, of their employment.


 


10

















 


(c)           All consultants and independent
contractors currently or previously engaged by SONY or its Affiliates who have
made any material contributions to the development of any SRAM Product
(including, without limitation, all consultants and independent contractors who
have designed, written, or modified any firmware or software code contained in
any SRAM Product) have entered into a work-made-for-hire agreement or have
otherwise assigned to SONY or a Affiliate of SONY (or a third party that
previously conducted any business that forms any part of the Business currently
conducted by SONY and that has subsequently assigned its rights in such SRAM
Product to SONY) all of their right, title and interest (other than moral
rights, if any) in and to the portions of such SRAM Product developed by them
in the course of their work for SONY or any Affiliate.


 


(d)           Other than the employees, consultants and
contractors referred to in this Section 8.8, no other Person has made or
currently is making any material contributions to the development of any SRAM
Product.


 


8.9          Material Intellectual Property Agreements


 


Except for the SRAM
Contracts assigned to and assumed by PURCHASER under the Asset Purchase
Agreement and the Portfolio Cross Licenses, there are no contracts, licenses or
agreements between SONY or any of its Affiliates, on the one hand, and any
other Person, on the other hand, with respect to any SRAM Intellectual Property
material to the conduct of the Business, including any agreements with respect
to the manufacture or distribution of the SRAM Products.


 


8.10        Royalties


 


To the Knowledge of SONY,
except for obligations under the SRAM Contracts assigned to and assumed by
PURCHASER under the Asset Purchase Agreement, neither SONY nor any Affiliate of
SONY has any obligation to pay any third party any royalties or other fees for
the continued use of Intellectual Property which is specifically applicable to
SRAM Products, and PURCHASER will not be obligated under any contract or
agreement to pay any royalties or other fees associated with SRAM Intellectual
Property arising from the consummation of the transactions contemplated by this
Agreement.


 


11

















 


8.11        No Loss of Rights


 


The consummation by SONY
of the transactions contemplated hereby will not result in any violation, loss
or impairment of ownership by SONY or any SONY Affiliate of, or impair or
restrict the right of PURCHASER to use, any Transferred Patents or any other
SRAM Intellectual Property included in the Transferred Assets, and will not
require the consent of any governmental authority or third party with respect
to any of Transferred Patents or any other SRAM Intellectual Property included
in the Transferred Assets.


 


8.12        Transferability


 


All Transferred Patents
will be fully transferable, alienable or licensable by PURCHASER from and after
the Closing without restriction and without payment of any kind to any third
party other than requirements under applicable laws to file documents with and
pay fees to patent offices.  There are no
Liens on any of the Transferred Patents. 
(For the avoidance of doubt, the Parties acknowledge that SONY’s
licensees under Portfolio Cross Licenses already hold licenses to the
Transferred Patents and do not need a license from PURCHASER to practice the
Transferred Patents.)


 


8.13        No SRAM Product Warranty Issues


 


To the Knowledge of SONY,
each SRAM Product currently offered for sale by SONY (or its Affiliates, as the
case may be) conforms with all SONY datasheet specifications, except with
respect to warranty claims made in the ordinary course of business. (For the
avoidance of doubt, epidemic failures or any substantial repeated failures of
those products to comply with specifications that have not been resolved are
not in the ordinary course of business). SONY has not received written notice
from any customer, reseller, OEM customer or governmental authority alleging
any such material non-conformance.


 


8.14        Disclaimer


 


NOTHING IN THIS IP
AGREEMENT SHALL BE DEEMED TO BE A REPRESENTATION OR WARRANTY BY EITHER PARTY OF
THE VALIDITY OF ANY PATENT.  NEITHER
PARTY SHALL HAVE ANY LIABILITY WHATSOEVER TO THE 


 


12

















 


OTHER PARTY OR ANY
OTHER PERSON FOR OR ON ACCOUNT OF ANY INJURY, LOSS, OR DAMAGE, OF ANY KIND OR
NATURE SUSTAINED BY, OR ANY DAMAGE ASSESSED OR ASSERTED AGAINST, OR ANY OTHER
LIABILITY INCURRED BY OR IMPOSED UPON THE OTHER PARTY OR ANY OTHER PERSON,
ARISING OUT OF OR IN CONNECTION WITH OR RESULTING FROM (A) THE PRODUCTION,
USE, SALE, OFFER FOR SALE, OTHER DISPOSITIONS OR IMPORTATION OF ANY APPARATUS
OR PRODUCT MADE BY THAT PARTY; OR (B) ANY ADVERTISING OR OTHER PROMOTIONAL
ACTIVITIES MADE BY THAT PARTY WITH RESPECT TO ANY OF THE FOREGOING, AND EACH
PARTY SHALL HOLD THE OTHER PARTY, AND ITS AFFILIATES, OFFICERS, AGENTS, OR
EMPLOYEES, HARMLESS IN THE EVENT IT, OR ITS OFFICERS, AGENTS, OR EMPLOYEES, IS
HELD LIABLE. THIS SECTION 8 IS NOT INTENDED TO NEGATE OR SUPERSEDE ANY
REPRESENTATION OR WARRANTY EXPRESSLY MADE BY SONY IN THIS IP AGREEMENT.


 


9.             Miscellaneous


 


9.1          Notices


 


All notices and other
communications required or permitted hereunder will be in writing and, unless
otherwise provided in this IP Agreement, will be deemed to have been duly given
when delivered in person or when dispatched by electronic facsimile transfer
(confirmed in writing by mail simultaneously dispatched) or one business day
after having been dispatched by a nationally recognized overnight courier
service to the appropriate Party at the address specified below:


 


(a)           If to PURCHASER, to:


 


GSI
Technology, Inc.

2360 Owen Street


Santa
Clara, CA  95054


Attention:  Chief Financial Officer


Facsimile
No.:  (408) 980-8377


 


13

















 


with a copy (which shall not constitute notice) to:


 


DLA Piper LLP (US)


2000 University Avenue


East
Palo Alto, CA  94303-2214


Attention:  Dennis C. Sullivan


Facsimile
No.:  (650) 867-1200


 


(b)           If  to
SONY, to:


 


Sony
Electronics Inc.


1730
N. First Street


San
Jose, CA 95112


Attention:
Law Department


Facsimile
No.: (408) 352-4169


 


with a copy  (which will not constitute notice)  to:


 


Sony
Electronics Inc.


16530
Via Esprillo, MZ7300


San
Diego, CA 92127


Attention:  General Counsel


Facsimile
No.:  (858) 942-8170


 


or to such other
address or addresses as any such Party may from time to time designate as to
itself by like notice.


 


9.2          Expenses


 


Except as otherwise
expressly provided herein, each Party shall pay any expenses incurred by it
incident to this IP Agreement, and in preparing to consummate and consummating
the transactions provided for herein.


 


9.3          Successors and Assigns


 


This IP Agreement will be
binding upon and inure to the benefit of the Parties hereto and their
respective successors and permitted assigns, but will not be assignable or
delegable by any Party without the prior written consent of the other Party.
Notwithstanding the foregoing, a Party may transfer or assign its rights under
this IP Agreement in connection with a merger, acquisition or sale of all or
substantially all of its assets, on condition that it provides the 


 


14

















 


other Party with
notice of the transfer or assignment. 
Any attempted transfer in contravention of this Section 9.3 shall
be null and void.


 


9.4          Waiver


 


No action taken pursuant
to this IP Agreement will be deemed to constitute a waiver of compliance with
any representations, warranties, conditions or covenants contained in this IP
Agreement unless it is in writing, and no such waiver will operate or be
construed as a waiver of any subsequent breach, whether of a similar or
dissimilar nature.


 


9.5          Entire Agreement


 


This IP Agreement and the
Asset Purchase Agreement (including the Schedules and Exhibits hereto and
thereto and the ancillary documents thereto) supersedes any other agreement,
whether written or oral, that may have been made or entered into by any Party
relating to the matters contemplated hereby and constitutes the entire
agreement by and among the Parties with respect to the subject matter hereof
and thereof.


 


9.6          Amendments and Supplements


 


This IP Agreement may be
amended or supplemented at any time by additional written agreements as may
mutually be determined by PURCHASER and SONY to be necessary, desirable or
expedient to further the purposes of this IP Agreement or to clarify the
intention of the Parties.


 


9.7          Rights of Third Parties


 


Other than Affiliates of
a Party, nothing expressed or implied in this IP Agreement is intended or will
be construed to confer upon or give any Person other than the Parties any
rights or remedies under or by reason of this IP Agreement or any transaction
contemplated hereby.


 


15

















 


9.8          Further Assurances


 


From time to time, as and
when requested by either Party, the other Party will execute and deliver, or
cause to be executed and delivered, all such documents and instruments, make
such other deliveries and take such other actions as may be reasonably
necessary to consummate the transactions contemplated by this IP Agreement.


 


9.9          Applicable Law


 


This IP Agreement and the
legal relations among the Parties will be governed by and construed in
accordance with the rules and substantive Laws of the State of California,
United States of America, without regard to conflicts of law provisions.


 


9.10        Execution in Counterparts


 


This IP Agreement may be
executed in two or more counterparts, each of which will be deemed an original,
but all of which together will constitute one and the same agreement.


 


9.11        Titles and Headings


 


Titles and
headings to Sections herein are inserted for convenience of reference only, and
are not intended to be a part of or to affect the meaning or interpretation of
this IP
Agreement.


 


9.12        Invalid Provisions


 


If any provision of this
IP Agreement is held to be illegal, invalid, or unenforceable under any present
or future Law, (a) such provision will be fully severable; (b) this
IP Agreement will be construed and enforced as if such illegal, invalid, or
unenforceable provision had never comprised a part hereof; (c) the
remaining provisions of this IP Agreement will remain in full force and effect
and will not be affected by the illegal, invalid, or unenforceable provision or
by its severance from this IP Agreement; and (d) in lieu of such illegal,
invalid, or unenforceable provision, there will be added automatically as a
part of this IP Agreement a legal, valid, and enforceable provision as similar
in terms to such illegal, invalid, or unenforceable provision as may be
possible.


 


16

















 


9.13        Transfer Taxes


 


All sales, use, transfer,
stamp, conveyance, value added or other similar taxes, duties, excises or
governmental charges imposed by any taxing jurisdiction, domestic or foreign,
and all recording or filing fees, notary fees or other similar costs of Closing
with respect to the transfer of the Transferred Assets or otherwise on account
of this IP Agreement or the transactions contemplated hereby will be borne by
PURCHASER.


 


9.14        Attorneys’ Fees


 


If any action at law or
in equity is necessary to enforce or interpret the terms of this IP Agreement,
the Person prevailing shall be entitled to recover in such action its
reasonable attorneys’ fees, costs and necessary disbursements in addition to
any other relief to which it may be entitled.


 


IN WITNESS
WHEREOF, the Parties have caused this IP Agreement to be executed in duplicate
by their duly authorized officers as of the day and year first above written.


 


	
  GSI TECHNOLOGY, INC.

  	
   

  	
  SONY
  ELECTRONICS INC.

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  By:

  	
  /s/
  Lee-Lean Shu

  	
   

  	
  By:

  	
  /s/
  Tomoya Hayakawa

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
  Lee-Lean
  Shu

  	
   

  	
  Name:
  

  	
  Tomoya
  Hayakawa

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
  President & CEO

  	
   

  	
  Title:

  	
  President of CSBD

  



 


17

















 


Exhibit F:


 


Exhibit A to the IP Agreement: List of
Assigned Patents


 


	
  Filing Date

  	
   

  	
  Title

  	
   

  	
  Country/

  Region

  	
   

  	
  Serial #

  	
   

  	
  Publ.  #

  	
   

  	
  Patent #

  	
   

  	
  Inventors

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  28-Apr-06

  	
   

  	
  Test semiconductor
  device in full frequency with half frequency tester

  	
   

  	
  United States

  	
   

  	
  11/414,612

  	
   

  	
  2007-0266286

  	
   

  	
  7516385

  	
   

  	
  Chen,
  Suzanne; & Kim, Jae-Hyeong; & Tseng, Chih-Chiang

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  24-Apr-06

  	
   

  	
  Minimized line skew
  generator.

  	
   

  	
  United States

  	
   

  	
  11/410,352

  	
   

  	
  2007-0096790

  	
   

  	
  Not yet patented

  	
   

  	
  Chuang,
  Patrick; & Kim, Jae-Hyeong; & Lu, Chungji (Jay)

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  30-Oct-06

  	
   

  	
  Performing Read and
  Write Operations in the Same Cycle for an SRAM Device.

  	
   

  	
  Japan

  	
   

  	
  2006-294640

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  Chen, Suzanne; & Huang, M.H. Mu-Hsiang; & Tseng,
  Chih-Chiang

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  14-Apr-06

  	
   

  	
  Performing read and
  write operations in the same cycle for an SRAM device.

  	
   

  	
  United States

  	
   

  	
  11/404,191

  	
   

  	
  2007-0097780

  	
   

  	
  7355907

  	
   

  	
  Chen, Suzanne; & Huang, M.H. Mu-Hsiang; & Tseng,
  Chih-Chiang

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  30-Oct-06

  	
   

  	
  Shift Registers Free of
  Timing Race Boundary Scan Registers with Two-Phase Clock Control.

  	
   

  	
  Japan

  	
   

  	
  2006-294617

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  Chen, Suzanne; & Chuang, Patrick; & Huang, M.H.
  Mu-Hsiang

  



 

















 


	
  14-Apr-06

  	
   

  	
  Shift registers free of
  timing race boundary scan registers with two-phase clock control.

  	
   

  	
  United States

  	
   

  	
  11/404,353

  	
   

  	
  2007-0101222

  	
   

  	
  7389457

  	
   

  	
  Chen, Suzanne; & Chuang, Patrick; & Huang, M.H.
  Mu-Hsiang

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  3-May-06

  	
   

  	
  Dynamic sense amplifier
  for SRAM.

  	
   

  	
  United States

  	
   

  	
  11/417,805

  	
   

  	
  2007-0097765

  	
   

  	
  7313040

  	
   

  	
  Chuang, Patrick; & Huang, M.H. Mu-Hsiang; & Kim,
  Jae-Hyeong

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  30-Oct-06

  	
   

  	
  Dynamic sense amplifier
  for SRAM.

  	
   

  	
  Japan

  	
   

  	
  2006-294706

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  Chuang, Patrick; & Huang, M.H. Mu-Hsiang; & Kim,
  Jae-Hyeong

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  17-May-06

  	
   

  	
  Programmable impedance
  control circuit calibrated at Voh Vol level

  	
   

  	
  United States

  	
   

  	
  11/436,260

  	
   

  	
  2007-0268039

  	
   

  	
  7312629

  	
   

  	
  Huang, M.H.
  Mu-Hsiang; & Ichihashi, Masahiro; & Miyajima,
  Yoshifumi; & Nakashima, Katsuya

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  4-Apr-08

  	
   

  	
  DYNAMIC DUAL CONTROL
  ON-DIE TERMINATION.

  	
   

  	
  United States

  	
   

  	
  12/078,782

  	
   

  	
  2008-0272800

  	
   

  	
  Not yet patented

  	
   

  	
  Chuang,
  Patrick; & Haig, Robert

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  24-Mar-08

  	
   

  	
  An efficient method for
  implementing programmable impedance output drivers and 

  	
   

  	
  United States

  	
   

  	
  12/079,100

  	
   

  	
  Not yet published

  	
   

  	
  Not yet patented

  	
   

  	
  Chuang,
  Patrick; & Haig, Robert; & Kwon, Kookhwan;

  



 


2

















 


	
   

  	
   

  	
  programmable input on
  die termination on a bi-directional data bus

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  & Tseng, Chih

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  9-Mar-09

  	
   

  	
  Programmable
  input/output structures and method for implementing a bi-directional data
  busses.

  	
   

  	
  China

  	
   

  	
  200910127224.8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  Chuang,
  Patrick; & Haig, Robert; & Kwon, Kookhwan; &
  Tseng, Chih

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  13-Feb-09

  	
   

  	
  An efficient method for
  implementing programmable impedance output drivers and programmable input on
  die termination on a bi-directional data bus

  	
   

  	
  EPO

  	
   

  	
  09250396.0

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  Chuang,
  Patrick; & Haig, Robert; & Kwon, Kookhwan; &
  Tseng, Chih

  



 


3