8x8 2002 Annual Report Download - page 77

Exhibit 10.21
STMICROELECTRONICS N.V. AND 8X8 LX VIDEO DEVELOPMENT AND LICENSE
This Agreement is made as of March___, 2002 (the "Effective Date") between 8x8, Inc., a corporation organized and existing under the laws of
the State of Delaware (hereafter "8x8") and STMicroelectronics N.V., a Dutch corporation having its principal place of business at
Strawinskylaan 1725, Tower B 17
th
floor, 1077 Amsterdam, The Netherlands, acting for the purpose of this Agreement through its Swiss
branch, ICC Bloc A, Route de Pré-bois 20, 1215 Geneva 15, Switzerland (hereafter "ST").
1. ST LX Technology . Subject to the terms and conditions herein, ST is to provide 8x8 with sufficient information to enable 8x8 to
develop semiconductor products that incorporate the ST LX based processor core technology.. For purposes of this Agreement, "LX
Technology" shall mean the LX based processor core technology known as ST 210 and ST 220 and a specific ST220 enhanced core
(hereafter known as ST220-26L) which will be for the purpose of accommodating the performance requirements of the H26L
specification. For purposes of this Agreement, the "8x8 LX Chips" shall mean chips designed by 8X8 and incorporating the LX
Technology, 8x8 circuitry and possibly other ST or third party circuitry. The information to be provided by ST hereunder ("LX
Information") includes, but is not limited to, the following as it relates to the LX Technology and as it exists on the Effective Date or
upon delivery:
A. All applicable netlists; schematics; layouts; software, high level, behavioral, C-, Verilog and timing models; simulation
patterns, validation and test suites and test programs; and standard cell libraries and models.
B. All internal ROM microcodes and microcode models and tools
C. Documentation relating to these items to the extent presently available and in its existing form.
2. ST LX Tools. ST will provide 8X8 the ST220 simulator and compiler (known as the Multi-Flow tools chain) and successor simulators
and compilers related to the LX Technology (the "LX Tools") in binary code format. ST will provide 8x8 with five (5) ST210
development platforms and five (5) ST220/Web-Buddy development platforms. ST will provide 8x8 with documentation relating to
these items to the extent presently available and in its existing form.
3. ST LX License . Subject to the terms and conditions of this Agreement, ST hereby grants to 8x8, a non-exclusive, non-transferable,
non- assignable, world-wide license to use, operate and copy the LX Technology, LX Information and LX Tools in order to make, have
manufactured, commercialize, sell and otherwise dispose of 8x8 LX Chips and 8x8 software. The license granted herein includes any
patents, trade secrets, copyrights or other intellectual property owned by ST or its Affiliates now or in the future applicable to the LX
Technology, LX Information and LX Tools provided that any license or delivery of technology is only to the extent ST is legally
entitled to grant rights thereto to 8x8 hereunder.
A. 8x8 shall have the rights to choose, at its sole discretion, at which foundry to manufacture the 8x8 LX Chips, provided that ST
shall first be offered an opportunity to meet or beat all terms and conditions offered by 8x8's chosen foundry vendor including
but not limited to such terms as unit pricing, tooling, capacity allocation, prototype and production delivery, quality and
reliability.
I. 8x8 shall present to ST a request for quotation ("RFQ") that contains sufficient information with which ST can provide a
quotation to 8x8 including any relevant competitive terms and conditions, without violating any existing Non Disclosure
Agreements in affect between 8x8 and a 3
rd
party. ST will provide 8x8 with a quotation within a reasonable timeframe
as mutually agreed to between the parties. If such ST quotation does not meet competitive terms and conditions or is not
received by 8x8 in a timely manner , 8x8 can choose, at its sole discretion, to build the 8x8 LX Chips at alternative, non-
ST foundry of its choice.
II.
If ST does respond to the RFQ in a timely manner and with competitive terms, 8x8 may at its own discretion, still choose
to manufacture the 8x8 LX Chip at another foundry. However, 8x8 will ensure that at least 80% of the annual unit
volume that it purchases of such an 8x8 LX Chip is manufactured or sourced through ST provided that ST maintains
competitive terms and conditions.
III. 8x8 acknowledges that ST may subcontract some or all of the manufacturing of the 8x8 LX Chips to an external, third
party foundry. Accordingly, design package information provided by 8x8 to ST for the manufacture of the 8x8 LX Chips
may be, at 8x8's sole discretion, targeted towards the appropriate third party foundry process.
B. Subject to the terms and conditions of this Agreement and in addition to the rights granted in Section 3 above, ST hereby grants
to 8x8 the right to grant to 8x8's 8x8 LX Chip customers a non-exclusive, non-assignable, non-transferable sublicense to use the
8x8 LX Chips to develop, make, have manufactured, commercialize, sell or otherwise dispose of board, subsystem or system
level products that contain the 8x8 LX Chip.
4. LX Royalty . In return for the license described in Item 3, 8x8 will pay ST a royalty of $0.25 for each of the first five (5) million, $0.15
for each of the units between five (5) and ten (10) million, and $0.10 for each unit above ten (10) million 8x8 LX Chips not