**Exhibit 10.54**

 

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**PCOPTICAL STORAGE PATENT CROSS LICENSE AGREEMENT**

 

This PCOptical Storage Patent Cross License Agreement (“Agreement”), executedas of January 25, 2006 (the “Execution Date”), is made and enteredinto by and between Zoran Corporation, a Delaware corporation with itsprincipal place of business at 1390 Kifer Road, Sunnyvale, CA, 94086, USA,(“Zoran”) and its wholly owned subsidiary Oak Technology, Inc. (“Oak”)and MediaTek, Inc., a Taiwanese corporation with its with its principal placeof business at No. 1-2, Innovation Road 1, Science-Based IndustrialPark, Hsin-Chu City, Taiwan 300, R.O.C. (“MediaTek”). ThisAgreement shall be effective as of January 25, 2006 (the “EffectiveDate”).

 

RECITALS

 

A.                                   Theparties have filed suit against each other in the consolidated cases entitledZoran Corp. v. MediaTek, Inc. et al., United States District Court, NorthernDistrict of California, C-04-02619 RMW, C-04-04609 RMW (the “CaliforniaDistrict Court Actions”);

 

B.                                     Theparties have filed suit against each other in the consolidated case entitledMediaTek, Inc. v. Zoran Corporation, United States District Court, District ofDelaware, C.A. No. 04-895 (KAJ) (the “Delaware District Court Action”);

 

C.                                     Theparties have brought cases against each other in the International TradeCommission, namely Investigation Nos. 337-TA-506 (the “506 Investigation”)and 337-TA-523 (the “523 Investigation”) (the “ITC Cases”);

 

D.                                    MediaTekand its affiliated company, MediaTek Software Design (Shenzhen) Co., Ltd. (“MediaTekShenzhen”), has filed suit against Zoran, Zoran (Shenzen) Co. Ltd. andMisuda Co., Ltd. (the “China Defendants”) in the case entitled:  Patent Infringement Dispute Between MediaTek,Inc., MediaTek Software Design (Shenzhen) Co., Ltd. v. US Zoran Corporation,Zoran (Shenzen) Co. Ltd. and Misuda Co., Ltd. (the “China Action”); and

 

E.                                      Theparties hereto desire to settle all of the above cases and actions (theCalifornia District Court Actions, Delaware District Court Action, ITC Cases,and China Action are collectively referred to as the “Actions”) throughcertain licenses, dismissals and releases, all as is more particularlydescribed in this Agreement.

 

AGREEMENT

 

NOW,THEREFORE, in consideration of the mutual promises and covenants containedherein and of other good and valuable consideration, the parties agree asfollows:

 

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**1.**                                      DEFINITIONS

 

a.                                       **“Subsidiary”**means, with respect to a givenentity, any corporation or other entity which directly or indirectly iscontrolled by the given entity for so long as such control exists. Control willmean direct or indirect ownership by the given entity of more than fifty percent(50%) of the Voting Power or the power to direct or cause the direction of theday-to-day management, operations, business and policies of the controlledentity, whether through the ownership of voting securities, by contract orotherwise.

 

b.                                      **“After-Acquired Subsidiary”** means any entity that becomes aSubsidiary of a party during the term of this Agreement.

 

c.                                       **“Assert”** means to bring an action of any nature before anylegal, judicial, arbitration, administrative, executive or other type of bodyor tribunal that has or claims to have authority to adjudicate such action inwhole or in part. Examples of such body or tribunal include, withoutlimitation, United States State and Federal Courts, the United StatesInternational Trade Commission and any foreign counterparts of any of theforegoing.

 

d.                                      **“Change of Control”** means a transaction or series of relatedtransactions in which either (i) a party consolidates or merges with or into athird party, or sells, assigns, conveys, transfers, leases or otherwisedisposes of all or substantially all of its assets directly or indirectly to athird party, or any third party consolidates with, or merges with or into, aparty, in each case unless the direct and indirect holders of the outstandingvoting stock or of other voting rights (referred to for convenience as the “votingpower”) entitled to elect directors or other managing authority for such entityimmediately prior to the transaction or series of related transactions willhold, directly or indirectly, more than fifty (50%) of the voting power of thesurviving or transferee third party immediately after the transaction or seriesof related transactions; or (ii) a third party or “group” (as such term is usedin Rule 13d-5 under the United States Securities Exchange Act of 1934) is orbecomes, or has the right to become, the beneficial owner, directly orindirectly, of more than 50% of the total voting power of a party.

 

e.                                       **“Economic Interest”** means rights of a party to receive,directly or indirectly, a share of the profits of a Subsidiary associated withsecurities or other equity or ownership interest in such Subsidiary (including,for example, rights to receive dividends and other profit distributions),whether or not actually distributed.

 

f.                                         [****].

 

g.                                      **“Former Subsidiary”** means any entity that ceases to be aSubsidiary of a party during the term of this Agreement.

 

h.                                      **“ITC”** means the United States International TradeCommission.

 

i.                                          [****].

 

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j.                                          [****].

 

k.                                       **“Licensed Product”**means any product thatis a PC Optical Storage Device, themanufacturing, using, selling, offering to sell, leasing, or importing of whichin any country would, in the absence of the license granted by this Agreement, directlyor indirectly infringe one or more claims of a party’s Licensed Patents.

 

l.                                          **“MediaTek Licensed Patents”**means allPatents throughout the world that satisfy each of the following conditions:  [****].

 

m.                                    **“Patents”**mean (i) any patent (including any utility patent,design patent, patent of importation, patent of addition, certificate ofaddition, certificate or model of utility) granted by the United States or anyother country, (ii) any reissue, continuation, parent, division, extension,renewal, or continuation-in-part of any of the foregoing, (iii) any counterpartanywhere in the world of any of the foregoing, (iv) any patent application inthe United States or any other country, and (v) any patent application that isa continuation, continuing application, continuation-in-part or division of anysuch application.

 

n.                                      “**PC****Optical Storage Business**”means [****].

 

o.                                      “**PC****Optical Storage Device**”means any data storage device [****].

 

p.                                      **“Released Subsidiary”** and **“ReleasedSubsidiaries”** of MediaTek means each Licensed Subsidiary of MediaTekas of the Effective Date, as listed on Exhibit A.

 

q.                                      **“****Released Subsidiary”** and **“****Released Subsidiaries”** of Zoran means each LicensedSubsidiary of Zoran as of the Effective Date, as listed on Exhibit B.

 

r.                                         **“Zoran Licensed Patents”**mean all Patents [****].

 

s.                                       **“Voting Power”** means the right to exercise voting power with respect to the election ofdirectors or similar managing authority of an entity (whether through direct orindirect beneficial ownership of shares or securities of such entity orotherwise).

 

t.                                         [****].

 

**2.**                                      LICENSES

 

a.                                       Zoran’sLicense to MediaTek.

 

(i)                                     Subject to thelimitations on the scope of the license granted in Section 2(d) below, Zoran,on behalf of itself and its Subsidiaries, hereby grants to MediaTek and itsLicensed Subsidiaries, for the term of this Agreement only, a non-exclusive,non-transferable

 

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and non-assignable(except as set forth in Section 7) license, without the right to sublicense,under the Zoran Licensed Patents only, to make, have made (subject to Section2(d) below), use, import, lease, offer to sell, sell (directly or indirectly)and otherwise transfer Licensed Products and to practice any method or processin the PC Optical Storage Business.

 

(ii)                                  No implied licensesare granted hereunder. Nothing contained in this Agreement shall expressly orby implication or by estoppel or otherwise give MediaTek any right to licenseZoran Licensed Patents to any third party.

 

b.                                      MediaTek’sLicense to Zoran.

 

(i)                                     Subject to thelimitations on the scope of the license granted in Section 2(d) below,MediaTek, on behalf of itself and its Subsidiaries, hereby grants to Zoran andits Licensed Subsidiaries, for the term of this Agreement only, anon-exclusive, non-transferable and non-assignable (except as set forth inSection 7) license, without the right to sublicense, under the MediaTekLicensed Patents only, to make, have made (subject to Section 2(d) below), use,import, lease, offer to sell, sell (directly or indirectly) and otherwisetransfer Licensed Products and to practice any method or process in the PCOptical Storage Business.

 

(ii)                                  No implied licensesare granted hereunder. Nothing contained in this Agreement shall expressly orby implication or by estoppel or otherwise give Zoran any right to licenseMediaTek Licensed Patents to any third party.

 

c.                                       Customers.The sale or lease of a Licensed Product by a party or its Licensed Subsidiaryto a direct or indirect customer under the licenses granted in Section 2(a) orin Section 2(b), as applicable, conveys the right for such customer to use,sell (directly or indirectly), offer to sell and import such Licensed Productsas sold by a party or its Licensed Subsidiary (including as part of a largercombination through the incorporation of the Licensed Products into otherproducts to the extent necessary for the use of such Licensed Products as partof PC Optical Storage Devices).

 

d.                                      Limitations onScope of License Grant.

 

(i)                                     The licensesgranted in Sections 2(a), 2(b) and 2(c) to each party do not extend to [****].

 

(ii)                                  [****].

 

(iii)                               [****].

 

e.                                       [****] PatentLicense. Zoran represents and warrants [****].

 

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**3.**                                      DISMISSALSAND RELEASES

 

a.                                       Dismissals.

 

(i)                                     CaliforniaDistrict Court Actions. Within three (3) business days following theExecution Date, Zoran, Oak and MediaTek shall cause their respective counsel tofile with the United States District Court for the Northern District ofCalifornia a stipulation of dismissal and proposed order dismissing withprejudice the parties’ respective claims and counterclaims in the CaliforniaDistrict Court Actions. The stipulation shall provide that each party shallbear its own attorneys’ fees and costs.

 

(ii)                                  Delaware DistrictCourt Action. Within three (3) business days following the Execution Date,Zoran and MediaTek shall cause their respective counsel to file with the UnitedStates District Court for the District of Delaware a stipulation of dismissaland proposed order dismissing with prejudice the parties’ respective claims andcounterclaims in the Delaware District Court Action. The stipulation shallprovide that each party shall bear its own attorneys’ fees and costs.

 

(iii)                               523 Investigation.Within ten (10) business days following the Execution Date and pursuant to ITCRule 210.21(b), Zoran and MediaTek shall cause their respective counsel tojointly file in the 523 Investigation a motion to terminate investigation bysettlement, and to take all other actions to terminate the 523 Investigationand any appeal thereof.

 

(iv)                              506 Investigation.Within ten (10) business days following the Execution Date and pursuant to ITCRule 210.21(b), Zoran, Oak and MediaTek shall cause their respective counsel tojointly file in the 506 Investigation a motion to terminate investigation bysettlement, and to take all other actions to terminate the 506 Investigationand any appeal thereof. Specifically, within ten (10) business days followingthe Execution Date, Zoran and MediaTek will apply for the dismissal of allrelated appeals and bond forfeiture proceedings, and waive any conclusion,finding, remedy or any other ruling or issue of fact or law contained in theITC’s Notice of Final Determination or Commission’s Opinion in the 506Investigation. Zoran will support MediaTek’s efforts to secure the return ofall bond payments made by MediaTek and the other respondents during thePresidential review period following the issuance of the exclusion and ceaseand desist orders in the 506 Investigation. In addition, within two (2)business days following the Execution Date, Zoran and MediaTek will seektermination of Customs enforcement proceedings relating to the 506Investigation, and will advise Customs that the accused MediaTek products arelicensed.

 

(v)                                 China Action. Withinseven (7) business days following the Execution Date, both MediaTek andMediaTek Shenzhen shall cause to be filed an Application for Withdrawing theClaims (“Application”). The Application shall encompass all of theclaims in the China Action.

 

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b.                                      Zoran and OakRelease of MediaTek. Zoran and Oak, on behalf of themselves and theirSubsidiaries, irrevocably release, acquit and forever discharge MediaTek andits Released Subsidiaries and its and their respective officers, directors,employees, agents, successors, assigns, representatives, and attorneys, and itsand their respective direct and indirect customers, distributors, dealers,resellers, and manufacturers from any and all claims or liabilities of any kindand nature, at law, in equity, or otherwise, known and unknown, suspected andunsuspected, disclosed and undisclosed (i) arising from, included in orrelating to the Actions, or (ii) arising from infringement of Zoran Patents orExcluded Patents (whether direct, contributory or by inducement, and whether ornot willful) based on acts of MediaTek and its Released Subsidiaries prior tothe Effective Date, or (iii) arising from infringement of Zoran Patents orExcluded Patents (whether direct, contributory or by inducement, and whether ornot willful) based on products of MediaTek and its Released Subsidiariesmanufactured or sold prior to the Effective Date.

 

c.                                       MediaTekRelease of Zoran and Oak. MediaTek, on behalf of itself and itsSubsidiaries, irrevocably releases, acquits and forever discharges Zoran andOak and their Released Subsidiaries and all of their respective officers,directors, employees, agents, successors, assigns, representatives, andattorneys, and their respective direct and indirect customers, distributors,dealers, resellers, and manufacturers (with the exception of the ExcludedCompanies) from any and all claims or liabilities of any kind and nature, atlaw, in equity, or otherwise, known and unknown, suspected and unsuspected,disclosed and undisclosed (i) arising from, included in or relating to theActions, or (ii) arising from infringement of MediaTek Patents (whether direct,contributory or by inducement, and whether or not willful) based on acts ofZoran and Oak and their Released Subsidiaries prior to the Effective Date(other than activities with respect to products supplied directly or indirectlyto any of the Excluded Companies or otherwise used in any products of any ofthe Excluded Companies), or (iii) arising from infringement of MediaTek Patents(whether direct, contributory or by inducement, and whether or not willful)based on products of Zoran and Oak and their Released Subsidiaries manufacturedor sold prior to the Effective Date (other than products supplied directly orindirectly to any of the Excluded Companies or otherwise used in any productsof any of the Excluded Companies). Nothing in this Section 3 shall be construedto constitute a release by MediaTek of any Excluded Company or a release byMediaTek with respect to any products supplied directly or indirectly to any ofthe Excluded Companies or otherwise used in any products of any of the ExcludedCompanies.

 

d.                                      Waiver. Allrights under Section 1542 of the Civil Code of the State of California, andunder any and all similar laws of any governmental entity, are hereby expresslywaived. Each party is aware that said Section 1542 of the Civil Code providesas follows:

 

**“A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOESNOT KNOW OR SUSPECT TO EXIST IN HIS FAVOR AT THE TIME OF EXECUTING THE RELEASE,WHICH IF KNOWN BY HIM MUST HAVE MATERIALLY AFFECTED HIS SETTLEMENT WITH THEDEBTOR.”**

 

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e.                                       Full Settlement.The parties agree that this Agreement is in full and complete settlement of therights and obligations of the parties in connection with all of the Actions. ThisAgreement may be pleaded as full and complete defense to any action, suit orclaim and may be used as an injunction against any such action, suit, claim, orother proceeding of any type which may be prosecuted, initiated or attempted inviolation of the terms hereof. Each party shall be entitled to recover from theother party reasonable attorneys’ fees and other related legal expensesincurred in defending against any suit, action or claim brought or attempted bythe other party in violation of the terms of this Agreement.

 

f.                                         Not anAdmission. It is understood that this Agreement does not constitute anadmission of any liability by any party, but is a compromise of disputedclaims.

 

g.                                      [****].

 

**4.**                                      TERM

 

The term of this Agreement shall commence onthe Effective Date and continue until the expiration of the last to expire ofthe Zoran Licensed Patents or MediaTek Licensed Patents, whichever is later. Thelicenses, dismissals and releases granted in this Agreement are irrevocable andnon-terminable (except to the extent such licenses are subject to limitationsupon a Change of Control as set forth in Section 7 below).

 

**5.**                                      CONFIDENTIALITYOF TERMS

 

a.                                       Neither theparties nor their Subsidiaries shall use or refer to this Agreement or any ofits provisions in any promotional activity, except that the parties shall beeach allowed to issue a press release announcing the existence of thisAgreement and the settlement of the Actions. Prior to a party’s issuance ofsuch a press release, that party shall obtain the consent of the other as tothe form and content of the press release, said consent not being unreasonablywithheld.

 

b.                                      The specificterms of this Agreement shall be confidential. No party shall disclose thespecific terms of this Agreement except:

 

(i)                                     to itsSubsidiaries in confidence;

 

(ii)                                  in the case ofMediaTek, as permitted by the prior written consent of Zoran, granted in itssole discretion;

 

(iii)                               in the case of Zoran, aspermitted by the prior written consent of MediaTek, granted in its solediscretion;

 

(iv)                              as may be required by lawor legal process (including legal requirements and regulations of the U.S.Securities and Exchange Commission and the rules of the Nasdaq Stock Market),as determined by such party based on advice and counsel from such party’soutside securities counsel that such disclosure is advisable under such law orlegal process,

 

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providedhowever, that in the event either party determines it is necessary to discloseany terms of this Agreement or to publicly file a copy of this Agreement, thedisclosing party agrees to notify the other party prior to such filing and,upon the request of the other party, to use commercially reasonable efforts toobtain confidential treatment for information deemed sensitive, to the extentsuch confidential treatment is available under applicable laws and regulations;

 

(v)                                 to the ITC (to theextent permissible by ITC rules, all such information shall be submitted inconfidence);

 

(vi)                              to state information thathas already been properly publicly disclosed pursuant to Section 5(b)(iv) or inan approved press release under Section 5(a), to the extent reasonablynecessary in response to an inquiry from industry analysts or other thirdparties, provided that neither party will issue any further press release(beyond the approved press release under Section 5(a)) or other advertising orpublicity regarding such information or this Agreement, except as the otherparty shall agree;

 

(vii)                           in confidence, to a party’sor its Subsidiaries’ accountants, legal counsel and other financial and legaladvisors in their capacity of advising the party in such matters;

 

(viii)                        in response to a valid subpoenaor as otherwise may be required by law (in confidence to the extent allowed);provided, however, that if a party or Subsidiary is required to do so by asubpoena (or other legal process) or court order seeking disclosure of theterms set forth in this Agreement, such party or Subsidiary shall, beforeresponding thereto, provide the other parties with prior written notice of suchsubpoena, legal process, order or legal requirement in sufficient time (ifreasonably feasible) to permit the other parties the opportunity to object (or,if the timing of such litigation makes advance notice impracticable, such noticeis provided within ten (10) days after such disclosure), to seek acourt-entered protective order or comparable court-ordered restriction, andshall reasonably cooperate with the other parties in their efforts to obtainsuch protective order and provided further that, the disclosing party shallseek to have the disclosure of such terms and conditions restricted, asauthorized or permitted by the court, in the same manner as is the confidentialinformation of other litigating persons; and any party and any of itsSubsidiaries is permitted to file this Agreement under seal with and discloseunder seal this Agreement, in whole or in part, and information relating tothis Agreement to a court, tribunal or government agency of competentjurisdiction in an action or proceeding brought by or against a party or aSubsidiary when reasonably necessary for such action or proceeding, subject towritten notice to the other party and an opportunity to obtain a protectiveorder or other restriction as described in this subparagraph;

 

(ix)                                to a third party inconnection with a potential Change of Control or other permitted assignment ofthis Agreement by, of or with the party, provided that such disclosure shall be(A) on a strictly limited, need-to-know basis, (B) when the party believes thatsuch transaction is reasonably likely to take place, and (C) on termsapplicable to other highly confidential information disclosed by such party inconnection with such transaction provided

 

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such termsprohibit disclosure, prohibit use for any purpose other than as required fordue diligence in connection with the potential transaction and provide forreasonable care; and

 

(x)                                   [****].

 

**6.**                                      CERTAINREPRESENTATIONS, WARRANTIES AND DISCLAIMERS

 

a.                                       MediaTekrepresents to Zoran that each entity listed on Exhibit A heretocurrently meets the definition of “Subsidiary” herein.

 

b.                                      Zoran representsto MediaTek that each entity listed on Exhibit B hereto currently meetsthe definition of “Subsidiary” herein.

 

c.                                       Zoran representsand warrants to MediaTek that it has the right to enter into this Agreement andgrant the rights and licenses granted herein, including, without limitation, tolicense the Zoran Licensed Patents, and to bind its Subsidiaries under thisAgreement.

 

d.                                      Zoran representsand warrants to MediaTek that Zoran is the sole and lawful owner of all rights,title and interest in and to each and every claim and other matters which itpurports to release herein and that Zoran has not heretofore assigned ortransferred to any person or entity any right, title or interest in thereleased matters.

 

e.                                       Zoran representsand warrants to MediaTek that: (i) Zoran has the ability to compel Oak to takethe actions described in Section 3(a) above, and (ii) Sunext Technology Co.,Ltd. will cooperate in the dismissal in Section 3(a)(ii) above and in filing ofthe motion described in Section 3(a)(iii) above.

 

f.                                         MediaTekrepresents and warrants to Zoran that it has the right to enter into thisAgreement and grant the rights and licenses granted herein, including, withoutlimitation, to license the MediaTek Licensed Patents, and to bind itsSubsidiaries under this Agreement.

 

g.                                      MediaTek representsand warrants to Zoran that MediaTek is the sole and lawful owner of all rights,title and interest in and to each and every claim and other matters which itpurports to release herein and that MediaTek has not heretofore assigned ortransferred to any person or entity any right, title or interest in thereleased matters.

 

h.                                      MediaTekrepresents and warrants to Zoran that MediaTek: (i) has the ability to compelMediaTek Shenzhen to file a dismissal of its claims against the ChinaDefendants in the China Action, and (ii) has the authority and has beenauthorized to enter into the agreements (y) set forth in Section 3(a)(i) onbehalf of the remaining defendants in the California District Court Actions,and (z) set forth in Section 3(a)(iv) on behalf of each of the remainingrespondents who are the subject of the Exclusion Order in the 506Investigation.

 

i.                                          Nothingcontained in this Agreement is or shall be construed as: (i) a warranty orrepresentation by either of the parties to this Agreement as to the validity,

 

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enforceabilityor scope of any of the Zoran Licensed Patents or the MediaTek Licensed Patents;or (ii) a warranty or representation by either of the parties that anymanufacture, sale, lease, use or other disposition of Licensed Products will befree from infringement of any patent rights or other intellectual propertyrights of any third party; or (iii) an obligation by either of the parties tofurnish any technical or other information or know-how.

 

j.                                          Except asexpressly provided herein, neither party makes any representations orwarranties, express or implied, regarding any matter, including withoutlimitations the implied warranties of merchantability, suitability, and/orfitness for a particular use or purpose.

 

k.                                       Each partyrepresents and warrants, on behalf of itself and its Subsidiaries, that withinthe twelve (12) months prior to the Effective Date neither it, nor any of itsSubsidiaries, has assigned, transferred or sold to a third party any Patentsthat, had they not been so assigned, transferred or sold, would have beenincluded within the definition of MediaTek License Patents or Zoran LicensedPatents, as the case may be.

 

l.                                          Each partyrepresents and warrants, on behalf of itself and its Subsidiaries, that neitherit nor any of its Subsidiaries has the right or power to direct any third partyto Assert against the other party any cause of action based upon the otherparty’s purported infringement of any Patent owned or enforceable by such thirdparty.

 

m.                                    No party assumesany liability with respect to any infringement of any patent or to any otherrights of third parties due to any reason, including, without limitation,another party’s conduct under the licenses granted hereunder or for anyresponsibility for the enforcement of its patents against third parties.

 

**7.**                                      ASSIGNMENT

 

a.                                       Except asotherwise expressly provided in this Section 7, neither party may assign,transfer or otherwise dispose of this Agreement or any of its rights andobligations under this Agreement (referred to as an “assignment”) to any entitywithout prior written notice to, and obtaining the prior written consent of,the other party; provided, however, that a party may assign this Agreementwithout such consent in the event of (x) a Change of Control involving thatparty or (y) as part of the transfer of all or substantially all of thebusiness or assets of a party (whether by sale, merger, operation of law or otherwise)in a transaction that is not a Change of Control, solely because the direct andindirect holders of Voting Power of the party immediately prior to thetransaction or series of related transactions will hold, directly orindirectly, more than fifty percent (50%) of the Voting Power of thesuccessor-in-interest immediately after the transaction or series of relatedtransactions. Any assignment or attempted assignment or other transfer not incompliance with the terms and conditions of this Agreement will be null andvoid. If a party consents to an assignment of this Agreement, (i) thesuccessor-in-interest must agree in writing to be bound by the terms andconditions of this Agreement; and (ii) the assigning party (to the extent

 

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it does notbecome part of the successor-in-interest as a result of the respectivetransaction) shall not retain any rights or licenses under this Agreement.

 

b.                                      Upon a Change ofControl of a party, the following terms shall apply:

 

(i)                                     The LicensedProducts of the party subject to the Change of Control (“Acquired Party”)will be limited to those Licensed Products that [****]. The licenses granted inSections 2(a) and 2(b), as the case may be, applicable to the Acquired Partyshall continue with respect to such Existing Products and Follow On Productsafter the effective date of the Change of Control. [****].

 

(ii)                                  Nothing contained inthis Section 7 shall limit the Licensed Products of the other party that is notsubject to the Change of Control.

 

(iii)                               Upon a Change of Controlof either party, the license under Section 2(a) shall be limited to Patentsthat fit within the definition of “Zoran Licensed Patents” and were owned orlicensable by Zoran or any of its Subsidiaries immediately prior to theeffective date of such Change of Control and the Acquirer’s patents (except forthe Zoran Licensed Patents acquired by the Acquirer from Zoran) shall not belicensed under this Agreement.

 

(iv)                              Upon a Change of Controlof either party, the license under Section 2(b) shall be limited to Patentsthat fit within the definition of “MediaTek Licensed Patents” and were owned orlicensable by MediaTek or any of its Subsidiaries immediately prior to theeffective date of such Change of Control and the Acquirer’s patents (except forthe MediaTek Licensed Patents acquired by the Acquirer from MediaTek) shall notbe licensed under this Agreement.

 

(v)                                 From and after theeffective date on which an After-Acquired Subsidiary becomes a Subsidiary of aparty and meets the requirements for being a Licensed Subsidiary, suchAfter-Acquired Subsidiary shall be granted the licenses set forth in Section 2.The Patents of an After-Acquired Subsidiary will be included in the licensegranted to the other party to the extent set forth in the definition ofMediaTek Licensed Patents or Zoran Licensed Patents, as applicable, as of thedate the After-Acquired Subsidiary becomes a Subsidiary. The licenses describedin Section 2 shall not have any retroactive effect for those units of productsthat were sold by the Subsidiary prior to the date on which it becomes aLicensed Subsidiary.

 

(vi)                              On the date that aLicensed Subsidiary of a party ceases to be a Licensed Subsidiary (“FormerLicensed Subsidiary”) or a Subsidiary becomes a Former Subsidiary of thatparty:

 

(A)                              Thelicenses granted to the Former Licensed Subsidiary of that party under thisAgreement shall terminate on the date the Former Licensed Subsidiary ceases tobe a Licensed Subsidiary. Notwithstanding the foregoing, such termination shallnot have any retroactive effect and the licenses granted to the Former Licensed

 

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Subsidiary under this Agreement for those units of Licensed Productspreviously sold or that have already been made and are in inventory which theFormer Licensed Subsidiary demonstrates were made by or for the Former LicensedSubsidiary prior to the date on which it ceased to be a Licensed Subsidiaryshall not be affected.

 

(B)                                Thelicenses and covenants granted hereunder to the other party and its LicensedSubsidiaries with respect to Patents of the Former Subsidiary shall continue asset forth in this Agreement; provided, however, that such licenses andcovenants shall not extend to new Patents of the Former Subsidiary that werenot Zoran Licensed Patents or MediaTek Licensed Patents, as applicable, priorto the date the Former Subsidiary ceases to be a Subsidiary.

 

(C)                                Notwithstandingthe foregoing provisions (A) and (B) of this Section 7(b)(vi), if a LicensedSubsidiary of a party is merged or subsumed into a party or another LicensedSubsidiary of a party such that the resulting entity remains a party or aLicensed Subsidiary under this Agreement, the licenses granted to the FormerSubsidiary under this Agreement shall remain in effect and shall continue toapply to the resulting party or Licensed Subsidiary, as applicable.

 

(D)                               Eachparty reserves the right to and may enter into negotiations with the FormerLicensed Subsidiary regarding cross-license or covenants to not sue agreements,and each party agrees not to improperly interfere with such negotiations.

 

c.                                       Divestitureof Material Business Unit.

 

(i)                                     [****].

 

(ii)                                  [****].

 

(iii)                               [****].

 

d.                                      Oak shall not beconsidered a “party” with respect to the rights and licenses granted to ZoranCorporation in Section 2 and this Section 7 and shall only be entitled to thebenefit of the license granted in Section 2(b) above so long as Oak continuesto be a Licensed Subsidiary of Zoran.

 

e.                                       Each party shallpromptly provide the other party with written notice upon the occurrence of apermitted assignment, Change of Control or addition of a Licensed Subsidiary afterthe Effective Date.

 

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**8.**                                      MISCELLANEOUSPROVISIONS

 

a.                                       Nothingcontained in this Agreement shall be construed as imposing any obligation toinstitute any suit or action for infringement of any patents, or to defend anysuit or action brought by a third party which challenges or concerns thevalidity or enforceability of any patents licensed under this Agreement.

 

b.                                      This Agreementwill not be binding until it has been signed below by both parties.

 

c.                                       Nothingcontained in this Agreement shall be construed as an obligation to file anypatent application or to secure any patent or to maintain any patent in force.

 

d.                                      No express orimplied waiver of any breach of any term, condition or obligation of thisAgreement shall be construed as a waiver of any subsequent breach of that term,condition or obligation or of any other term, condition or obligation of thisAgreement of the same or of a different nature.

 

e.                                       Any failure toperform any obligation hereunder shall be excused to the extent such failure iscaused by any controlling law, order, or regulation, or by any acts of war,acts of public enemies, fires, floods, acts of God, acts of terrorism, or anyother contingency beyond the control of the parties, but only so long as saidlaw, order, regulation or contingency continues.

 

f.                                         Nothingcontained in this Agreement shall be construed as conferring to either partyhereof any right to use in advertising, publicity, or other promotionalactivities any name, trade name, trademark or other designation of the otherparty and its Subsidiaries (including any contraction, abbreviation orsimulation of any of the foregoing).

 

g.                                      This Agreementshall be construed in accordance with and governed by the laws of the State ofCalifornia, United States, as applied to agreements entered into and fullyperformed therein by residents thereof, excluding conflict of laws principlesthereof. In the event of a breach of this Agreement, the exclusive venue forany and all litigation brought to enforce the Agreement shall be the UnitedStates District Court, Northern District of California.

 

h.                                      If any term,clause, or provision of this Agreement shall be held to be invalid, thevalidity of any other term, clause or provision shall not be affected; and suchinvalid term, clause or provision shall be replaced by a valid term thatreflects the economic effect of the invalid term, clause or provision, or ifsuch is not possible, shall be deemed deleted from this Agreement.

 

i.                                          ThisAgreement is the result of negotiations between Zoran and MediaTek, both ofwhich have been represented by counsel during such negotiations; accordingly,this Agreement shall not be construed for or against either party.

 

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j.                                          ThisAgreement (including all Exhibits hereto, which are all incorporated by thisreference) sets forth the entire agreement and understanding between theparties as to the subject matter hereof and supersedes all prior orcontemporaneous agreements, understandings, discussions and othercommunications, if any, between the parties with respect to the subject matterhereof.

 

k.                                       No modificationor amendment to this Agreement will be effective unless it is in writing andexecuted by authorized representatives of the parties, nor will any waiver ofany rights be effective unless assented to in writing by the party to be charged.

 

l.                                          Each party tothis Agreement agrees to perform any further acts and execute and deliver anyfurther documents that may be reasonably necessary to carry out the provisionsof this Agreement.

 

m.                                    This Agreement andany counterpart original thereof may be executed and transmitted by facsimileor by emailed portable document format (“.pdf”) document. The facsimile and/or..pdf signature shall be valid and acceptable for all purposes as if it were anoriginal. This Agreement may be executed in multiple counterparts, each ofwhich shall be deemed an original, but all of which together shall constituteone and the same instrument. In making proof of this Agreement, it shall not benecessary to produce or account for more than one such counterpart.

 

**9.**                                      ATTORNEYS’FEES

 

Each partyshall bear its own attorney’s fees and related expenses incurred by or onbehalf of said party in connection with the negotiation of this Agreement.

 

[signature page follows]

 

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IN WITNESSWHEREOF, each of the parties has caused this Agreement to be executed by itsduly authorized officer as of the Execution Date.

 
| Zoran  Corporation | MediaTek,  Inc.     |
|--------------------|---------------------|
|               |                |
|               |                |
| By:                | /s/ Levy  Gerzberg  |   | By: | /s/ C.J.  Hsieh |   |
|               |                |   |   |
|               |                |   |   |
| Name:              | Levy  Gerzberg      |   | Name: | C.J. Hsieh |   |
|               |                |   |   |
| Title:             | President & CEO |   | Title: | President |   |
|               |                |   |   |
| Date:              | 1/25/06             |   | Date: | 1/25/06 |   |
|                    |                     |  |  |  |  |  |  |  |  |  |  |

 

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**EXHIBIT A**

**MEDIATEK LICENSED SUBSIDIARIES**

 

[****]

 

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**EXHIBIT B**

**ZORAN LICENSED SUBSIDIARIES**

 

[****]

 

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**EXHIBIT C**

**FORM OF [****] CROSS-LICENSE**

 

**PC OPTICAL STORAGE PATENT CROSS LICENSEAGREEMENT**

 

This PC Optical Storage Patent Cross License Agreement (“Agreement”),executed as of                                  , 2006 (the “Execution Date”),is made and entered into by and between [****] and MediaTek, Inc., a Taiwanesecorporation with its with its principal place of business at No. 1-2,Innovation Road 1, Science-Based Industrial Park, Hsin-Chu City, Taiwan 300,R.O.C. (“MediaTek”). This Agreement shall be effective as of                                     , 2006 (the “Effective Date”).

 

RECITALS

 

A.                                   [****]and MediaTek each own or control, and have the right to license, certainpatents.

 

B.                                     MediaTekbrought a case against [****] in the International Trade Commission, namelyInvestigation [****] (the “Action”).

 

C.                                     [****]and MediaTek each desire to obtain a license under certain patents of the otherparty during the term of this Agreement, all as is more particularly describedin this Agreement.

 

AGREEMENT

 

NOW,THEREFORE, in consideration of the mutual promises and covenants containedherein and of other good and valuable consideration, the parties agree asfollows:

 

**1.**                                      DEFINITIONS

 

a.                                       **“Subsidiary”**means, with respect to a givenentity, any corporation or other entity which directly or indirectly iscontrolled by the given entity for so long as such control exists. Control willmean direct or indirect ownership by the given entity of more than fifty percent(50%) of the Voting Power or the power to direct or cause the direction of theday-to-day management, operations, business and policies of the controlledentity, whether through the ownership of voting securities, by contract orotherwise.

 

b.                                      **“After-Acquired Subsidiary”** means any entity that becomes aSubsidiary of a party during the term of this Agreement.

 

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c.                                       **“Assert”** means to bring an action of any nature before anylegal, judicial, arbitration, administrative, executive or other type of bodyor tribunal that has or claims to have authority to adjudicate such action inwhole or in part. Examples of such body or tribunal include, without limitation,United States State and Federal Courts, the United States International TradeCommission and any foreign counterparts of any of the foregoing.

 

d.                                      **“Change of Control”** means a transaction or series of relatedtransactions in which either (i) a party consolidates or merges with or into athird party, or sells, assigns, conveys, transfers, leases or otherwisedisposes of all or substantially all of its assets directly or indirectly to athird party, or any third party consolidates with, or merges with or into, aparty, in each case unless the direct and indirect holders of the outstandingvoting stock or of other voting rights (referred to for convenience as the “votingpower”) entitled to elect directors or other managing authority for such entityimmediately prior to the transaction or series of related transactions willhold, directly or indirectly, more than fifty (50%) of the voting power of thesurviving or transferee third party immediately after the transaction or seriesof related transactions; or (ii) a third party or “group” (as such term is usedin Rule 13d-5 under the United States Securities Exchange Act of 1934) is orbecomes, or has the right to become, the beneficial owner, directly orindirectly, of more than 50% of the total voting power of a party.

 

e.                                       **“Economic Interest”** means rights of a party to receive,directly or indirectly, a share of the profits of a Subsidiary associated withsecurities or other equity or ownership interest in such Subsidiary (including,for example, rights to receive dividends and other profit distributions),whether or not actually distributed.

 

f.                                         **“Former Subsidiary”** means any entity that ceases to be aSubsidiary of a party during the term of this Agreement.

 

g.                                      **“ITC”** means the United States International TradeCommission.

 

h.                                      [****].

 

i.                                          [****].

 

j.                                          **“Licensed Product”**means any product thatis a PC Optical Storage Device, themanufacturing, using, selling, offering to sell, leasing, or importing of whichin any country would, in the absence of the license granted by this Agreement, directlyor indirectly infringe one or more claims of a party’s Licensed Patents.

 

k.                                       **“MediaTek Licensed Patents”**means allPatents throughout the world that satisfy each of the followingconditions:  [****].

 

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l.                                          **“Patents”**mean (i) any patent (including any utility patent,design patent, patent of importation, patent of addition, certificate ofaddition, certificate or model of utility) granted by the United States or anyother country, (ii) any reissue, continuation, parent, division, extension,renewal, or continuation-in-part of any of the foregoing, (iii) any counterpartanywhere in the world of any of the foregoing, (iv) any patent application inthe United States or any other country, and (v) any patent application that isa continuation, continuing application, continuation-in-part or division of anysuch application.

 

m.                                    “**PC****Optical Storage Business**”means [****].

 

n.                                      “**PC****Optical Storage Device**”means any data storage device [****].

 

o.                                      **“Released Subsidiary”** and **“ReleasedSubsidiaries”** of MediaTek means each Licensed Subsidiary of MediaTekas of the Effective Date, as listed on Exhibit A.

 

p.                                      **“Released Subsidiary”** and **“ReleasedSubsidiaries”** of [****] means each Licensed Subsidiary of [****] asof the Effective Date, as listed on Exhibit B.

 

q.                                      [****].

 

r.                                         **“Voting Power”** means the right to exercise voting power with respect to the election ofdirectors or similar managing authority of an entity (whether through direct orindirect beneficial ownership of shares or securities of such entity orotherwise).

 

**2.**                                      LICENSES

 

a.                                       [****]’License to MediaTek.

 

(i)                                     Subject to thelimitations on the scope of the license granted in Section 2(d) below, [****],on behalf of itself and its Subsidiaries, hereby grants to MediaTek and itsLicensed Subsidiaries, for the term of this Agreement only, a non-exclusive,non-transferable and non-assignable (except as set forth in Section 7) license,without the right to sublicense, under the [****] Licensed Patents only, tomake, have made (subject to Section 2(d) below), use, import, lease, offer tosell, sell (directly or indirectly) and otherwise transfer Licensed Productsand to practice any method or process in the PC Optical Storage Business.

 

(ii)                                  No implied licensesare granted hereunder. Nothing contained in this Agreement shall expressly orby implication or by estoppel or otherwise give MediaTek any right to license [****]Licensed Patents to any third party.

 

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b.                                      MediaTek’sLicense to [****].

 

(i)                                     Subject to thelimitations on the scope of the license granted in Section 2(d) below, MediaTek,on behalf of itself and its Subsidiaries, hereby grants to [****] and itsLicensed Subsidiaries, for the term of this Agreement only, a non-exclusive,non-transferable and non-assignable (except as set forth in Section 7) license,without the right to sublicense, under the MediaTek Licensed Patents only, tomake, have made (subject to Section 2(d) below), use, import, lease, offer tosell, sell (directly or indirectly) and otherwise transfer Licensed Productsand to practice any method or process in the PC Optical Storage Business.

 

(ii)                                  No implied licensesare granted hereunder. Nothing contained in this Agreement shall expressly orby implication or by estoppel or otherwise give [****] any right to licenseMediaTek Licensed Patents to any third party.

 

c.                                       Customers.The sale or lease of a Licensed Product by a party or its Licensed Subsidiaryto a direct or indirect customer under the licenses granted in Section 2(a) orin Section 2(b), as applicable, conveys the right for such customer to use,sell (directly or indirectly), offer to sell and import such Licensed Productsas sold by a party or its Licensed Subsidiary (including as part of a largercombination through the incorporation of the Licensed Products into otherproducts to the extent necessary for the use of such Licensed Products as partof PC Optical Storage Devices).

 

d.                                      Limitations onScope of License Grant.

 

(i)                                     The licensesgranted in Sections 2(a), 2(b) and 2(c) to each party do not extend to [****].

 

(ii)                                  [****].

 

**3.**                                      RELEASES

 

a.                                       [****] Releaseof MediaTek. [****], on behalf of itself and its Subsidiaries, irrevocablyreleases, acquits and forever discharges MediaTek and its Released Subsidiariesand its and their respective officers, directors, employees, agents,successors, assigns, representatives, and attorneys, and its and theirrespective direct and indirect customers, distributors, dealers, resellers, andmanufacturers from any and all claims or liabilities of any kind and nature, atlaw, in equity, or otherwise, known and unknown, suspected and unsuspected,disclosed and undisclosed (i) arising from, included in or relating to theAction, or (ii) arising from infringement of [****] Patents (whether direct,contributory or by

 

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inducement, and whether or not willful) based on acts of MediaTek andits Released Subsidiaries prior to the Effective Date, or (iii) arising frominfringement of [****] Patents (whether direct, contributory or by inducement,and whether or willful) based on products of MediaTek and its ReleasedSubsidiaries manufactured or sold prior to the Effective Date.

 

b.                                      MediaTekRelease of [****]. MediaTek,on behalf of itself and its Subsidiaries, irrevocably releases, acquits andforever discharges [****] and its Released Subsidiaries and its and theirrespective officers, directors, employees, agents, successors, assigns,representatives, and attorneys, and its and their respective direct andindirect customers, distributors, dealers, resellers, and manufacturers fromany and all claims or liabilities of any kind and nature, at law, in equity, orotherwise, known and unknown, suspected and unsuspected, disclosed andundisclosed (i) arising from, included in or relating to the Action, or (ii)arising from infringement of MediaTek Patents (whether direct, contributory orby inducement, and whether or not willful) based on acts of [****] and itsReleased Subsidiaries prior to the Effective Date, or (iii) arising from infringementof MediaTek Patents (whether direct, contributory or by inducement, and whetheror willful) based on products of [****] and its Released Subsidiariesmanufactured or sold prior to the Effective Date.

 

c.                                       Waiver. Allrights under Section 1542 of the Civil Code of the State of California, andunder any and all similar laws of any governmental entity, are hereby expresslywaived. Each party is aware that said Section 1542 of the Civil Code providesas follows:

 

**“A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOESNOT KNOW OR SUSPECT TO EXIST IN HIS FAVOR AT THE TIME OF EXECUTING THE RELEASE,WHICH IF KNOWN BY HIM MUST HAVE MATERIALLY AFFECTED HIS SETTLEMENT WITH THEDEBTOR.”**

 

d.                                      FullSettlement. The parties agree that this Agreement is in full and completesettlement of the rights and obligations of the parties in connection with theAction. This Agreement may be pleaded as full and complete defense to anyaction, suit or claim and may be used as an injunction against any such action,suit, claim, or other proceeding of any type which may be prosecuted, initiatedor attempted in violation of the terms hereof. Each party shall be entitled torecover from the other party reasonable attorneys’ fees and other related legalexpenses incurred in defending against any suit, action or claim brought orattempted by the other party in violation of the terms of this Agreement.

 

e.                                       Not anAdmission. It is understood that this Agreement does not constitute anadmission of any liability by any party, but is a compromise of disputedclaims.

 

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**4.**                                      TERM

 

The term of this Agreement shall commence on the Effective Date andcontinue until the expiration of the last to expire of the [****] LicensedPatents or MediaTek Licensed Patents, whichever is later. The licenses andreleases granted in this Agreement are irrevocable and non-terminable (exceptto the extent such licenses are subject to limitations upon a Change of Controlas set forth in Section 7 below).

 

**5.**                                      CONFIDENTIALITYOF TERMS

 

a.                                       [IntentionallyOmitted]

 

b.                                      The specificterms of this Agreement shall be confidential. No party shall disclose thespecific terms of this Agreement except:

 

(i)                                     to its Subsidiariesin confidence;

 

(ii)                                  in the case ofMediaTek, as permitted by the prior written consent of [****], granted in itssole discretion;

 

(iii)                               in the case of [****],as permitted by the prior written consent of MediaTek, granted in its solediscretion;

 

(iv)                              as may be required by lawor legal process (including legal requirements and regulations of the U.S.Securities and Exchange Commission and the rules of the Nasdaq Stock Market),as determined by such party based on advice and counsel from such party’soutside securities counsel that such disclosure is advisable under such law orlegal process, provided however, that in the event either party determines itis necessary to disclose any terms of this Agreement or to publicly file a copyof this Agreement, the disclosing party agrees to notify the other party priorto such filing and, upon the request of the other party, to use commerciallyreasonable efforts to obtain confidential treatment for information deemedsensitive, to the extent such confidential treatment is available underapplicable laws and regulations;

 

(v)                                 to the ITC (to theextent permissible by ITC rules, all such information shall be submitted inconfidence);

 

(vi)                              to state information thathas already been properly publicly disclosed pursuant to Section 5(b)(iv)

 

(vii)                           in confidence, to a party’sor its Subsidiaries’ accountants, legal counsel and other financial and legaladvisors in their capacity of advising the party in such matters;

 

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(viii)                        in response to a valid subpoenaor as otherwise may be required by law (in confidence to the extent allowed);provided, however, that if a party or Subsidiary is required to do so by a subpoena(or other legal process) or court order seeking disclosure of the terms setforth in this Agreement, such party or Subsidiary shall, before respondingthereto, provide the other parties with prior written notice of such subpoena,legal process, order or legal requirement in sufficient time (if reasonablyfeasible) to permit the other parties the opportunity to object (or, if thetiming of such litigation makes advance notice impracticable, such notice isprovided within ten (10) days after such disclosure), to seek a court-enteredprotective order or comparable court-ordered restriction, and shall reasonablycooperate with the other parties in their efforts to obtain such protectiveorder and provided further that, the disclosing party shall seek to have thedisclosure of such terms and conditions restricted, as authorized or permittedby the court, in the same manner as is the confidential information of otherlitigating persons; and any party and any of its Subsidiaries is permitted tofile this Agreement under seal with and disclose under seal this Agreement, inwhole or in part, and information relating to this Agreement to a court,tribunal or government agency of competent jurisdiction in an action orproceeding brought by or against a party or a Subsidiary when reasonablynecessary for such action or proceeding, subject to written notice to the otherparty and an opportunity to obtain a protective order or other restriction asdescribed in this subparagraph; and

 

(ix)                                to a third party inconnection with a potential Change of Control or other permitted assignment ofthis Agreement by, of or with the party, provided that such disclosure shall be(A) on a strictly limited, need-to-know basis, (B) when the party believes thatsuch transaction is reasonably likely to take place, and (C) on termsapplicable to other highly confidential information disclosed by such party inconnection with such transaction provided such terms prohibit disclosure,prohibit use for any purpose other than as required for due diligence inconnection with the potential transaction and provide for reasonable care.

 

**6.**                                      CERTAINREPRESENTATIONS, WARRANTIES AND DISCLAIMERS

 

a.                                       MediaTekrepresents to [****] that each entity listed on Exhibit A heretocurrently meets the definition of “Subsidiary” herein.

 

b.                                      [****] representsto MediaTek that each entity listed on Exhibit B hereto currently meetsthe definition of “Subsidiary” herein.

 

c.                                       [****]represents and warrants to MediaTek that it has the right to enter into thisAgreement and grant the rights and licenses granted herein, including, without

 

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limitation, to license the [****] Licensed Patents, and to bind itsSubsidiaries under this Agreement.

 

d.                                      [****] representsand warrants to MediaTek that [****] is the sole and lawful owner of allrights, title and interest in and to each and every claim and other matterswhich it purports to release herein and that [****] has not heretofore assignedor transferred to any person or entity any right, title or interest in thereleased matters

 

e.                                       MediaTekrepresents and warrants to [****] that it has the right to enter into thisAgreement and grant the rights and licenses granted herein, including, withoutlimitation, to license the MediaTek Licensed Patents, and to bind itsSubsidiaries under this Agreement.

 

f.                                         MediaTekrepresents and warrants to [****] that MediaTek is the sole and lawful owner ofall rights, title and interest in and to each and every claim and other matterswhich it purports to release herein and that MediaTek has not heretoforeassigned or transferred to any person or entity any right, title or interest inthe released matters.

 

g.                                      Nothing containedin this Agreement is or shall be construed as: (i) a warranty or representationby either of the parties to this Agreement as to the validity, enforceabilityor scope of any of the [****] Licensed Patents or the MediaTek LicensedPatents; or (ii) a warranty or representation by either of the parties that anymanufacture, sale, lease, use or other disposition of Licensed Products will befree from infringement of any patent rights or other intellectual propertyrights of any third party; or (iii) an obligation by either of the parties tofurnish any technical or other information or know-how.

 

h.                                      Except asexpressly provided herein, neither party makes any representations orwarranties, express or implied, regarding any matter, including withoutlimitations the implied warranties of merchantability, suitability, and/orfitness for a particular use or purpose.

 

i.                                          Each partyrepresents and warrants, on behalf of itself and its Subsidiaries, that withinthe twelve (12) months prior to the Effective Date neither it, nor any of its Subsidiaries,has assigned, transferred or sold to a third party any Patents that, had theynot been so assigned, transferred or sold, would have been included within thedefinition of MediaTek License Patents or [****] Licensed Patents, as the casemay be.

 

j.                                          Each partyrepresents and warrants, on behalf of itself and its Subsidiaries, that neitherit nor any of its Subsidiaries has the right or power to direct any third party

 

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to Assert against the other party any cause of action based upon theother party’s purported infringement of any Patent owned or enforceable by suchthird party.

 

k.                                       No party assumesany liability with respect to any infringement of any patent or to any otherrights of third parties due to any reason, including, without limitation,another party’s conduct under the licenses granted hereunder or for anyresponsibility for the enforcement of its patents against third parties.

 

**7.**                                      ASSIGNMENT

 

a.                                       Except asotherwise expressly provided in this Section 7, neither party may assign,transfer or otherwise dispose of this Agreement or any of its rights andobligations under this Agreement (referred to as an “assignment”) to any entitywithout prior written notice to, and obtaining the prior written consent of,the other party; provided, however, that a party may assign this Agreementwithout such consent in the event of (x) a Change of Control involving thatparty or (y) as part of the transfer of all or substantially all of thebusiness or assets of a party (whether by sale, merger, operation of law orotherwise) in a transaction that is not a Change of Control, solely because thedirect and indirect holders of Voting Power of the party immediately prior tothe transaction or series of related transactions will hold, directly orindirectly, more than fifty percent (50%) of the Voting Power of thesuccessor-in-interest immediately after the transaction or series of relatedtransactions. Any assignment or attempted assignment or other transfer not incompliance with the terms and conditions of this Agreement will be null andvoid. If a party consents to an assignment of this Agreement, (i) thesuccessor-in-interest must agree in writing to be bound by the terms andconditions of this Agreement; and (ii) the assigning party (to the extent itdoes not become part of the successor-in-interest as a result of the respectivetransaction) shall not retain any rights or licenses under this Agreement.

 

b.                                      Upon a Change ofControl of a party, the following terms shall apply:

 

(i)                                     The LicensedProducts of the party subject to the Change of Control (“Acquired Party”)will be limited to those Licensed Products that [****]. The licenses granted inSections 2(a) and 2(b), as the case may be, applicable to the Acquired Partyshall continue with respect to such Existing Products and Follow On Productsafter the effective date of the Change of Control. [****].

 

(ii)                                  Nothing contained inthis Section 7 shall limit the Licensed Products of the other party that is notsubject to the Change of Control.

 

(iii)                               Upon a Change of Controlof either party, the license under Section 2(a) shall be limited to Patentsthat fit within the definition of “[****] Licensed

 

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Patents” and were owned or licensable by [****] or any of itsSubsidiaries immediately prior to the effective date of such Change of Controland the Acquirer’s patents (except for the [****] Licensed Patents acquired bythe Acquirer from [****]) shall not be licensed under this Agreement.

 

(iv)                              Upon a Change of Controlof either party, the license under Section 2(b) shall be limited to Patentsthat fit within the definition of “MediaTek Licensed Patents” and were owned orlicensable by MediaTek or any of its Subsidiaries immediately prior to theeffective date of such Change of Control and the Acquirer’s patents (except forthe MediaTek Licensed Patents acquired by the Acquirer from MediaTek) shall notbe licensed under this Agreement.

 

(v)                                 From and after theeffective date on which an After-Acquired Subsidiary becomes a Subsidiary of aparty and meets the requirements for being a Licensed Subsidiary, such After-AcquiredSubsidiary shall be granted the licenses set forth in Section 2. The Patents ofan After-Acquired Subsidiary will be included in the license granted to theother party to the extent set forth in the definition of MediaTek LicensedPatents or [****] Licensed Patents, as applicable, as of the date theAfter-Acquired Subsidiary becomes a Subsidiary. The licenses described inSection 2 shall not have any retroactive effect for those units of productsthat were sold by the Subsidiary prior to the date on which it becomes aLicensed Subsidiary.

 

(vi)                              On the date that aLicensed Subsidiary of a party ceases to be a Licensed Subsidiary (“FormerLicensed Subsidiary”) or a Subsidiary becomes a Former Subsidiary of thatparty:

 

(A)                              Thelicenses granted to the Former Licensed Subsidiary of that party under thisAgreement shall terminate on the date the Former Licensed Subsidiary ceases tobe a Licensed Subsidiary. Notwithstanding the foregoing, such termination shallnot have any retroactive effect and the licenses granted to the Former LicensedSubsidiary under this Agreement for those units of Licensed Products previouslysold or that have already been made and are in inventory which the FormerLicensed Subsidiary demonstrates were made by or for the Former LicensedSubsidiary prior to the date on which it ceased to be a Licensed Subsidiaryshall not be affected.

 

(B)                                Thelicenses and covenants granted hereunder to the other party and its LicensedSubsidiaries with respect to Patents of the Former Subsidiary shall continue asset forth in this Agreement; provided, however, that such licenses andcovenants shall not extend to new Patents of the Former Subsidiary that werenot [****]

 

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Licensed Patents or MediaTek Licensed Patents, as applicable, prior tothe date the Former Subsidiary ceases to be a Subsidiary.

 

(C)                                Notwithstandingthe foregoing provisions (A) and (B) of this Section 7(b)(vi), if a LicensedSubsidiary of a party is merged or subsumed into a party or another LicensedSubsidiary of a party such that the resulting entity remains a party or aLicensed Subsidiary under this Agreement, the licenses granted to the FormerSubsidiary under this Agreement shall remain in effect and shall continue toapply to the resulting party or Licensed Subsidiary, as applicable.

 

(D)                               Eachparty reserves the right to and may enter into negotiations with the FormerLicensed Subsidiary regarding cross-license or covenants to not sue agreements,and each party agrees not to improperly interfere with such negotiations.

 

c.                                       Divestitureof Material Business Unit.

 

(i)                                     [****].

 

(ii)                                  [****].

 

(iii)                               [****].

 

d.                                      Each party shallpromptly provide the other party with written notice upon the occurrence of apermitted assignment, Change of Control or addition of a Licensed Subsidiaryafter the Effective Date.

 

**8.**                                      MISCELLANEOUSPROVISIONS

 

a.                                       Nothingcontained in this Agreement shall be construed as imposing any obligation toinstitute any suit or action for infringement of any patents, or to defend anysuit or action brought by a third party which challenges or concerns thevalidity or enforceability of any patents licensed under this Agreement.

 

b.                                      This Agreementwill not be binding until it has been signed below by both parties.

 

c.                                       Nothingcontained in this Agreement shall be construed as an obligation to file anypatent application or to secure any patent or to maintain any patent in force.

 

d.                                      No express orimplied waiver of any breach of any term, condition or obligation of thisAgreement shall be construed as a waiver of any subsequent breach of that term,condition or obligation or of any other term, condition or obligation of thisAgreement of the same or of a different nature.

 

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e.                                       Any failure toperform any obligation hereunder shall be excused to the extent such failure iscaused by any controlling law, order, or regulation, or by any acts of war,acts of public enemies, fires, floods, acts of God, acts of terrorism, or anyother contingency beyond the control of the parties, but only so long as saidlaw, order, regulation or contingency continues.

 

f.                                         Nothingcontained in this Agreement shall be construed as conferring to either partyhereof any right to use in advertising, publicity, or other promotionalactivities any name, trade name, trademark or other designation of the otherparty and its Subsidiaries (including any contraction, abbreviation orsimulation of any of the foregoing).

 

g.                                      This Agreementshall be construed in accordance with and governed by the laws of the State ofCalifornia, United States, as applied to agreements entered into and fullyperformed therein by residents thereof, excluding conflict of laws principlesthereof. In the event of a breach of this Agreement, the exclusive venue forany and all litigation brought to enforce the Agreement shall be the UnitedStates District Court, Northern District of California.

 

h.                                      If any term,clause, or provision of this Agreement shall be held to be invalid, thevalidity of any other term, clause or provision shall not be affected; and suchinvalid term, clause or provision shall be replaced by a valid term that reflectsthe economic effect of the invalid term, clause or provision, or if such is notpossible, shall be deemed deleted from this Agreement.

 

i.                                          ThisAgreement is the result of negotiations between [****] and MediaTek, both ofwhich have been represented by counsel during such negotiations; accordingly,this Agreement shall not be construed for or against either party.

 

j.                                          ThisAgreement (including all Exhibits hereto, which are all incorporated by thisreference) sets forth the entire agreement and understanding between theparties as to the subject matter hereof and supersedes all prior orcontemporaneous agreements, understandings, discussions and othercommunications, if any, between the parties with respect to the subject matterhereof.

 

k.                                       No modificationor amendment to this Agreement will be effective unless it is in writing andexecuted by authorized representatives of the parties, nor will any waiver ofany rights be effective unless assented to in writing by the party to becharged.

 

l.                                          Each party tothis Agreement agrees to perform any further acts and execute and deliver anyfurther documents that may be reasonably necessary to carry out the provisionsof this Agreement.

 

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m.                                    This Agreement andany counterpart original thereof may be executed and transmitted by facsimileor by emailed portable document format (“.pdf”) document. The facsimile and/or..pdf signature shall be valid and acceptable for all purposes as if it were anoriginal. This Agreement may be executed in multiple counterparts, each ofwhich shall be deemed an original, but all of which together shall constituteone and the same instrument. In making proof of this Agreement, it shall not benecessary to produce or account for more than one such counterpart.

 

**9.**                                      ATTORNEYS’FEES

 

Each partyshall bear its own attorney’s fees and related expenses incurred by or onbehalf of said party in connection with the negotiation of this Agreement.

 

[signature page follows]

 

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IN WITNESSWHEREOF, each of the parties has caused this Agreement to be executed by itsduly authorized officer as of the Execution Date.

 
| [****]  Corporation | MediaTek,  Inc. |
|---------------------|-----------------|
|                |            |
|                |            |
| By:                 |            |   | By: |   |
|                |            |   |
|                |            |   |
| Name:               |            |   | Name: |   |
|                |            |   |
| Title:              |            |   | Title: |   |
|                |            |   |
| Date:               |            |   | Date: |   |
|                     |                 |  |  |  |  |  |

 

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**EXHIBIT A**

**MEDIATEK LICENSED SUBSIDIARIES**

 

[****]

 

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**EXHIBIT B**

**[****] LICENSED SUBSIDIARIES**

 

[****]

 

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**EXHIBIT D**

**EXCLUDED PATENTS**

 

[****]

 

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