8x8 2002 Annual Report Download - page 78

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manufactured by ST or sourced through ST that 8x8 sells either as a semiconductor product or incorporated in a system.
5. ST MPEG4 Code. Subject to the terms and conditions herein, ST is to provide 8x8 with its existing DIV-X MPEG4 firmware ported
for execution on the LX in source and object code form ("MPEG4 Code") as it exists upon delivery and any documentation relating to
the MPEG4 Code to the extent presently available and in its existing form. Specifically excluded from the license granted hereunder are
any future developments, enhancements, maintenance or any other technology developed relative to MPEG1, 2,4 or MPEG standards
that are unrelated to the MPEG4 Code as of the Effective Date.
6. ST MPEG4 License. Subject to the terms and conditions of this Agreement, ST hereby grants to 8x8 a royalty free, nonexclusive,
nontransferable, non-assignable world-wide license to use, operate, copy and modify the MPEG4 Code in order to make, have
manufactured, commercialize, sell and otherwise dispose of 8x8 LX Chips bundled with the MPEG4 Code or derivatives thereof
provided by ST hereunder or developed by 8x8 hereunder, provided that nothing herein entitles 8x8 to distribute the MPEG4 Code
except in object code form only. The license granted herein includes any patents, trade secrets, copyrights or other intellectual property
owned by ST now or in the future applicable to the MPEG4 Code, 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. Subject to the terms and conditions of this Agreement and in addition to the rights granted in Section 6 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
MPEG4 Code to develop, make, have manufactured, commercialize, sell or otherwise dispose of products that contain the
MPEG4 Code as bundled with the 8x8 LX Chips and in object code form only.
7. 8x8 Code. Subject to the terms and conditions herein, 8x8 is to provide ST with its H.263 and future H26L video codec firmware
ported for execution on the LX Technology (including, if any, H.263 or H.26L codec firmware targeted for operation on a system host
processor in conjunction with the LX Technology) in source and object code form ("8x8 Code") as it exists upon delivery and any
documentation relating to the 8x8 Code to the extent presently available and in its existing form. The parties understand and agree that
the H26L video codec firmware as referred to hereunder means the Joint Model Number 1 video compression recommendation
resulting from the work of the Joint Video Team formed by ITU-T SG16 Q.6 (VCEG) and ISO/IEC JTC 1/SC 29/WG 11 (MPEG).
8. 8x8 License. Subject to the terms and conditions of this Agreement, 8x8 hereby grants to ST a nonexclusive, nontransferable, non-
assignable world-wide license to use, operate, copy and modify the 8x8 Code in order to make, have manufactured, commercialize, sell
and otherwise dispose of ST semiconductor products bundled with the 8x8 Code or derivatives thereof ("ST Chip"), provided that
nothing herein entitles ST to distribute the 8x8 Code except in object code form only. The license granted herein includes any patents,
trade secrets, copyrights or other intellectual property owned by 8x8 now or in the future applicable to the 8x8 Code, provided that any
license or delivery of technology is only to the extent 8x8 is legally entitled to grant rights thereto to ST hereunder.
A.
Subject to the terms and conditions of this Agreement and in addition to the rights granted in Section 8 above, 8x8 hereby grants
to ST the right to grant to ST's ST Chip customers a non-exclusive, non-assignable, non- transferable sublicense to use the 8x8
Code to develop, make, have manufactured, commercialize, sell or otherwise dispose of products that contain the 8x8 Code as
bundled with the ST Chips and in object code form only.
9. Third Party Technology. Specifically excluded from the licenses granted hereunder are any developments, enhancements,
maintenance or any other technology received by the licensor from third parties unless such third party has allowed the licensor to pass
on such enhancements to the licensor's other licensees.
10. Custom Development. Specifically excluded from the licenses granted hereunder are any developments, enhancements, maintenance
or any other technology developed by the licensor for a third party unless such third party has allowed the licensor to pass on such
enhancements to licensor's other licensees.
11. 8x8 Code Royalty
. In return for the license described in Item 8, ST will pay 8x8 a royalty according to the below schedule for each ST
Chip it sells with which the 8x8 Code is expressly sublicensed or supplied by ST to ST customers.
12. Subject to the terms of this Agreement, in the event the 8x8 Code or any derivatives of the MPEG4 code practices patents, patent
applications, including with respect to patents any patent rights granted upon any reissue, division, continuation or continuation-in-part
applications now or hereafter filed ("Patents") by ST ,
ST agrees that it will not assert these Patents against 8x8 for 8x8's making, using,
and/or selling of the 8x8 Code. In any event this non-assert clause applies only in favor of 8x8 and 8x8 customers, and does not cover
any third parties or partners of 8x8. NOTWITHSTANDING ANYTHING TO THE CONTRARY, This non-assert clause is non-
transferable, not assignable and will automatically terminate in the event of a change of control of 8X8. For purposes of this section, a
change of control shall mean one transaction or a series of related transactions that results in a change of control through direct or
indirect ownership of fifty percent (50%) or more of the outstanding shares of stock entitled to vote for the election of directors (other
than restricted shares of stock).
13.
Subject to the terms of this Agreement, in the event the LX Technology, the MPEG4 Code, or any derivatives of the 8x8 Code practices
patents, patent applications, including with respect to patents any patent rights granted upon any reissue, division, continuation or
continuation-in-part applications now or hereafter filed ("Patents") by 8x8 ,
8x8 agrees that it will not assert these Patents against ST for
ST's making, using, or selling the LX Technology, the MPEG4 Code, or any derivatives of the 8x8 Code. In any event this non-assert
clause applies only in favor of ST and ST customers and does not cover any third parties or partners of ST. NOTWITHSTANDING
Volume
Royalty Per
Unit
Initial 4,500,000 ST Chips bundled with the H.263 based 8x8 Code $0.10
Initial 4,500,000 ST Chips bundled with the H.26L based 8x8
Code $0.10