exv10w6



 





EXHIBIT 10.6

FOIA Confidential Treatment Requested




Execution Version




PATENT INDEMNIFICATION AGREEMENT



This PATENT INDEMNIFICATION AGREEMENT, dated and effective as of July 7, 2006, is entered into by
and among, on one side, Toshiba Corporation, a Japanese corporation (“Toshiba”), and, on
the other side, SanDisk Corporation, a Delaware corporation (“SanDisk Corporation”), and
SanDisk [*]and SanDisk together with Toshiba, the “Parties”).




     WHEREAS, Toshiba and SanDisk are parties to that certain Flash Partners II Master Agreement,
dated as of the date hereof (the “Master Agreement”);



     [*]



     WHEREAS, recognizing that the products SanDisk will acquire from the Company will have been
manufactured using Toshiba patents and technology, and recognizing that SanDisk, as an owner of the
equity interests in the Company, will benefit from Toshiba’s making available its patents and
technology to the Company, the Parties have determined to enter into this Agreement, which is
required by the Master Agreement.



     NOW, THEREFORE, the Parties agree as follows:




	1.	 	Indemnification.
	 
	1.1	 	Patent Infringement. With regard to any and all sales of Y4 NAND Flash
Memory Products by the Company to SanDisk (“Company Products”):
	 
	(a)	 	Subject to the terms and conditions listed below, Toshiba agrees to indemnify and
defend SanDisk in any legal proceeding, lawsuit or other judicial action, [*]claims that the
Company Products supplied by the Company infringe any [*] patent(s). With regard to any claim
of patent infringement for which Toshiba has indemnification obligations hereunder, Toshiba’s
obligations are subject to the following conditions:






	 	(i)	 	SanDisk shall notify Toshiba in writing of such claim [*]; 
	 
	 	(ii)	 	SanDisk shall also notify Toshiba, in writing [*];
	 
	 	(iii)	 	SanDisk shall provide Toshiba with notice of any other written communication
indicating potential patent infringement claims against the Company Products [*];
provided, however, SanDisk’s failure to provide such notice shall in no
way constitute a breach of this Agreement by SanDisk nor in any way excuse Toshiba’s
obligations under this Agreement;
	 
	 	(iv)	 	[*], Toshiba shall have the sole and exclusive control of the defense or
settlement







 




			
	*	 	Indicates that certain information
contained herein has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to
the omitted portions.




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EXHIBIT 10.6

FOIA Confidential Treatment Requested




Execution Version





	 		 	of such claim, [*]; and
	 
	 	(v)	 	SanDisk shall provide all reasonable assistance in defending such claim.






	(b)	 	Notwithstanding the foregoing, Toshiba shall not be obligated to indemnify or defend
SanDisk in the event that such infringement arises from:






	 	(i)	 	[*];
	 
	 	(ii)	 	[*]
	 
	 	(iii)	 	[*]






	(c)	 	[*]
	 
	(d)	 	[*]
	 
	(e)	 	In addition to the obligations set forth above, should any third party patent claim
result in a temporary or permanent injunction against the manufacture, use, sale, offer for
sale, importation or otherwise disposal of the Company Products by SanDisk, Toshiba shall use
best efforts to undertake one of the following actions:






	 	(i)	 	[*]
	 
	 	(ii)	 	[*]






	(f)	 	The total cumulative liability of Toshiba under this Agreement, exclusive of the
remedy set forth in subparagraph (e), above, shall be limited to an amount not to exceed the
greater of (x) [*]or (y) [*].
	 
	1.2	 	Qualifying Claims.
	 
	(a)	 	If either Party receives a notice of a [*] or becomes aware that the Company has
received such a notice, it shall promptly notify the other Party. Promptly following the
notified Party’s receipt of such notice from the notifying Party, the Parties shall meet and
discuss in good faith whether and how [*], in accordance with the principles set forth in
Section 1.2(b).
	 
	(b)	 	In discussing and evaluating each [*], Toshiba and SanDisk shall discuss and agree
upon [*].
	 
	(c)	 	If despite their good faith efforts the Parties are not able to agree upon [*]
pursuant to







 




			
	*	 	Indicates that certain information
contained herein has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to
the omitted portions.




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EXHIBIT 10.6

FOIA Confidential Treatment Requested




Execution Version





	 	 	Section 1.2(b) for [*], the matter shall be resolved in accordance with the dispute
resolution procedures set forth in the Master Agreement.
	 
	(d)	 	[*]
	 
	1.3	 	[*]
	 
	2.	 	termination
	 
	 	 	This Agreement shall terminate [*], and upon such termination, this
Agreement shall be of no further force and effect, and Toshiba and SanDisk shall thereafter
have no liability hereunder.
	 
	3.	 	miscellaneous 
	 
	3.1	 	Certain Definitions and Interpretive Rules.
	 
	(a)	 	As used herein, the term “Agreement” means this Patent Indemnification
Agreement together with any exhibits, schedules, appendices and attachments hereto.
	 
	(b)	 	Capitalized terms used but not defined in the main body of this Agreement shall have
the respective meanings assigned to them in attached Appendix A. If any capitalized
term used in this Agreement is not defined in either the main body of this Agreement or
Appendix A, it shall have the meaning assigned to it in the Master Agreement.
	 
	(c)	 	The rules of construction and documentary conventions and general terms and
conditions set forth in Appendix A shall apply to this Agreement.
	 
	3.2	 	[*]
	 
	(a)	 	[*]






	 	(i)	 	[*]
	 
	 	(ii)	 	[*]
	 
	 	(iii)	 	[*]






	3.3	 	Survival. Except as otherwise specifically provided in this Agreement, all
covenants, agreements, representations and warranties of the Parties made in or pursuant to
such agreement or instrument shall survive the execution and delivery of such agreement or
instrument and the closing of the transactions contemplated thereby, notwithstanding any







 




			
	*	 	Indicates that certain information
contained herein has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to
the omitted portions.




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EXHIBIT 10.6

FOIA Confidential Treatment Requested




Execution Version





	 	 	investigation by or on behalf of any party. Further, the provisions set forth in this
Article III shall survive and shall apply with respect to this Agreement following
termination thereof pursuant to Article II hereof.
	 
	3.4	 	Assignment. Neither Party shall transfer, or grant or permit to exist any
Lien (except Permitted Liens) on, this Agreement or any of its rights hereunder, (except for
any transfer to an Affiliate or in connection with a merger, consolidation or sale of all or
substantially all the assets or the outstanding securities of such Party, which transfer shall
not require any consent of the other Party) without the prior written consent of the other
Party (which consent may be withheld in each such other Party’s sole discretion), and any such
purported transfer or Lien without such consent shall be void. [*].
	 
	3.5	 	Governing Law. This Agreement shall be governed and construed as to all
matters including validity, construction and performance by and under the substantive laws of
the State of California.





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	*	 	Indicates that certain information
contained herein has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to
the omitted portions.




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EXHIBIT 10.6

FOIA Confidential Treatment Requested




Execution Version



IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed and delivered as of the
date and year first above written.




	 	 	 	 	 
	 	TOSHIBA CORPORATION

 	 
	 	By:  	
 	 
	 	Name:  	Masashi Muromachi 	 
	 	Title:  	President and CEO
Semiconductor Company
Corporate Executive Vice President 	 
	 



	 	 	 	 	 
	 	SANDISK CORPORATION

 	 
	 	By:  	
 	 
	 	Name:  	Eli Harari 	 
	 	Title:  	Chief Executive Officer


[*] 	 
	 





 




			
	*	 	Indicates that certain information
contained herein has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to
the omitted portions.



[Signature page to Patent Indemnification Agreement]