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UNITED STATES
SECURITIES AND EXCHANGE COMMISSION

Washington, D.C. 20549

 

FORM 10-KT/A

(Amendment No. 1)

 

 

 

o

 

ANNUAL REPORT PURSUANT TO SECTION 13 or 15(d) OF THE SECURITIES EXCHANGE ACT OF 1934

OR

 

 

 

þ

 

TRANSITION REPORTING PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES EXCHANGE ACT OF 1934

 

 

 

 

For the transition period from July 1, 2009 to December 31, 2009

Commission File Number: 0-20784

TRIDENT MICROSYSTEMS, INC.

(Exact Name of Registrant as Specified in Its Charter)

 

 

 

 

 

Delaware

 

77-0156584

(State or other jurisdiction of

 

(I.R.S. Employer

Incorporation or Organization)

 

Identification Number)

 

 

 

3408 Garrett Drive , Santa Clara, California

 

95054-2803

(Address of principal executive offices)

 

(Zip Code)

(408) 764-8808
(Registrant’s telephone number, including area code)

Securities registered pursuant to Section 12(b) of the Act:

 

 

 

 

 

Title of each class

 

Name of each exchange on which registered

Common Stock, $0.001 par value

 

NASDAQ Global Market

Securities registered pursuant to Section 12(g) of the Act: None

Indicate by check mark if the registrant is a well-known seasoned issuer, as defined in Rule 405 of the Securities Act. Yes o No þ

Indicate by check mark if the registrant is not required to file reports pursuant to Section 13 or Section 15(d) of the Act. Yes o No þ

Indicate by check mark whether the registrant: (1) has filed all reports required to be filed by Section 13 or 15(d) of the Securities Exchange Act of 1934 during the preceding 12 months (or for such shorter period that the registrant was required to file such reports), and (2) has been subject to such filing requirements for the past 90 days. Yes þ No o

Indicate by check mark whether the registrant has submitted electronically and posted on its corporate Web site, if any, every Interactive Data File required to be submitted and posted pursuant to Rule 405 of Regulation S-T (§232.405 of this chapter) during the preceding 12 months (or for such shorter period that the registrant was required to submit and post such files). Yes o No o

Indicate by check mark if disclosure of delinquent filers pursuant to Item 405 of Regulation S-K (§229.405 of this chapter) is not contained herein, and will not be contained, to the best of registrant’s knowledge, in definitive proxy or information statements incorporated by reference in Part III of this Form 10-K or any amendment to this Form 10-K. ¨

Indicate by check mark whether the registrant is a large accelerated filer, an accelerated filer, a non-accelerated filer, or a smaller reporting company. See definition of “large accelerated filer,” “accelerated filer” and “smaller reporting company” in Rule 12b-2 of the Exchange Act. (Check one):

 

 

 

 

 

 

 

LARGE ACCELERATED FILER o

 

ACCELERATED FILER þ

 

NON-ACCELERATED FILER o

 

SMALL REPORTING COMPANY o

 

 

 

 

(Do not check if a smaller reporting company)

 

 

Indicate by check mark whether the registrant is a shell company (as defined in Rule 12b-2 of the Exchange Act). Yes o No þ

As of June 30, 2009, the aggregate market value of shares of registrant’s Common Stock held by non-affiliates of registrant was approximately $83,596,243

(based on the closing sale price of the registrant’s common stock on that date). Shares of registrant’s common stock held by the registrant’s executive officers and directors and by each entity that owns 5% or more of registrant’s outstanding common stock have been excluded in that such persons may be deemed to be affiliates. This determination of affiliate status is not necessarily a conclusive determination for other purposes.

At February 28, 2010, the number of shares of the Registrant’s common stock outstanding was 175,152,987.

DOCUMENTS INCORPORATED BY REFERENCE

Definitive Proxy Statement for the Company’s 2009 Annual Meeting of Stockholders — Part III of this Form 10-K.

 

 

  

 

 

 

 

TRIDENT MICROSYSTEMS, INC.
TABLE OF CONTENTS

 

 

 

 

 

 

 

Page

 

Explanatory Note

 

 

2

 

PART IV

 

 

 

 

 

 

 

 

 

Item 15. Exhibits and Financial Statement Schedules

 

 

2

 

Signatures

 

 

3

 

  EX-10.42

  EX-31.1

  EX-31.2

EXPLANATORY NOTE

Trident Microsystems, Inc. is filing this Amendment No. 1 on Form 10-KT/A (the “Amendment”) for the sole purpose of re-filing Exhibit 10.42 to our Transition Report on Form 10-KT for the period ended December 31, 2009 to reflect comments received from the Securities and Exchange Commission. We received certain comments in connection with our confidential treatment request for Exhibit 10.42 as originally filed with our Transition Report on Form 10-KT on March 15, 2010 and we are re-filing such exhibit. We have made no further changes to our Transition Report on Form 10-KT for the fiscal year ended December 31, 2009. This Amendment does not reflect events occurring after the filing of the Form 10-KT, nor does it modify or update the disclosures and information contained in the Form 10-KT in any way other than described in this paragraph.

As a result of this Amendment, we are also filing as an exhibit to this Amendment a currently-dated certification pursuant to Section 302 of the Sarbanes-Oxley Act of 2002.

Part IV

Item 15. Exhibits and Financial Statement Schedules

(a) The following documents are filed as part of this report:

     3. Exhibits

 

 

 

 

 

10.42(**)

 

Intellectual Property Transfer and License Agreement between Trident Microsystems (Far East) Ltd. and NXP B.V. dated February 8, 2010

 

 

 

31.1

 

Rule 13a — 14(a) Certification of Chief Executive Officer.

 

 

 

31.2

 

Rule 13a — 14(a) Certification of Chief Financial Officer.

 

 

 

 

(**)

 

Confidential treatment has been requested for portions of this exhibit.

 2

 

 

Table of Contents

SIGNATURES

Pursuant to the requirements of Section 13 or 15(d) of the Securities Exchange Act of 1934, the registrant has duly caused this Amendment No. 1 to Form 10-KT/A to be signed on its behalf by the undersigned, thereunto duly authorized.

Dated: July 16, 2010

 

 

 

 

 

 

TRIDENT MICROSYSTEMS, INC.
 

 

 

By:  

/ s/ Sylvia Summers Couder  

 

 

 

Sylvia Summers Couder 

 

 

 

Chief Executive Officer 

 

 3

 

Exhibit 10.42

CONFIDENTIAL TREATMENT REQUESTED — REDACTED COPY

 

*** Confidential Treatment has been requested for portions of this Exhibit. Confidential portions of this Exhibit are designated by [****] . A complete version of this exhibit has been filed separately with the Securities and Exchange Commission.

 

INTELLECTUAL PROPERTY TRANSFER AND LICENSE AGREEMENT

BETWEEN

NXP B.V.

AND

NXP HOLDING 1 B.V.

DATED AS OF

FEBRUARY 7, 2010

 

  

 

 

 

 

CONFIDENTIAL TREATMENT REQUESTED — REDACTED COPY

Table of Contents
(cont’d)

 

 

 

 

 

 

 

Page(s)

 

ARTICLE I TERM AND TERMINATION

 

 

2

 

1.1 Term

 

 

2

 

1.2 No Termination of Agreement

 

 

2

 

ARTICLE II TRANSFERS AND LICENSES

 

 

3

 

2.1 Transfer and Assignment of Transferred IP

 

 

3

 

2.2 Patent Licenses

 

 

3

 

2.3 Licenses to Non-Patent Intellectual Property

 

 

5

 

2.4 No Sublicensing

 

 

6

 

2.5 Delivery.

 

 

6

 

2.6 Assumed IP Contracts

 

 

7

 

2.7 [****]

 

 

7

 

2.8 Subsidiaries

 

 

7

 

2.9 [****]

 

 

7

 

2.10 Unidentified Contracts

 

 

8

 

ARTICLE III INTELLECTUAL PROPERTY RIGHTS

 

 

8

 

3.1 Transferred IP

 

 

8

 

3.2 Patents

 

 

8

 

3.3 Retained IP

 

 

9

 

3.4 Acquired [****] Technology

 

 

9

 

3.5 Prior Obligations

 

 

9

 

3.6 Maintenance

 

 

9

 

3.7 Trademarks

 

 

9

 

3.8 Reasonable Assistance in Connection with Third Party Claims

 

 

10

 

3.9 Other Limitations and Restrictions

 

 

10

 

3.10 Composite and Component IP Blocks

 

 

10

 

3.11 Covenants with Respect to Sublicenses

 

 

10

 

3.12 Shared Masks

 

 

10

 

ARTICLE IV CONFIDENTIALITY

 

 

11

 

4.1 Trade Secrets and Confidential Information

 

 

11

 

 i

 

 

 

 

CONFIDENTIAL TREATMENT REQUESTED — REDACTED COPY

Table of Contents
(cont’d)

 

 

 

 

 

 

 

Page(s)

 

4.2 Exceptions

 

 

11

 

4.3 Source Code

 

 

12

 

4.4 Terms of the Agreement

 

 

12

 

ARTICLE V DEFINITIONS AND CONSTRUCTION

 

 

12

 

5.1 Definitions

 

 

12

 

5.2 Other Terms

 

 

19

 

5.3 Interpretation

 

 

19

 

ARTICLE VI MISCELLANEOUS

 

 

19

 

6.1 No Implied Licenses

 

 

19

 

6.2 Amendments and Waivers

 

 

19

 

6.3 Entire Agreement

 

 

19

 

6.4 Governing Law

 

 

20

 

6.5 Submission to Jurisdiction; Selection of Forum; Waiver of Trial By Jury

 

 

20

 

6.6 Notices

 

 

20

 

6.7 Counterparts

 

 

21

 

6.8 Severability

 

 

21

 

6.9 Remedies

 

 

22

 

6.10 Assignment

 

 

22

 

6.11 [****]

 

 

22

 

6.12 Independent Contractors

 

 

22

 

6.13 Power and Authority

 

 

22

 

6.14 Disclaimer

 

 

22

 

6.15 Third Party Beneficiary Rights

 

 

23

 

6.16 Section 365(n)

 

 

23

 

6.17 Export Control

 

 

23

 

 

 

 

 

 

Exhibits

 

 

 

 

Exhibit A: Form of Patent Assignment

 

Exhibit B: Form of Trademark Assignment

 

Exhibit C: NXP Logo and Trademark

 

Exhibit D: [****]

 

 ii

 

 

 

 

CONFIDENTIAL TREATMENT REQUESTED — REDACTED COPY

Table of Contents
(cont’d)

 

 

 

 

 

Schedules

 

 

 

 

Schedule 2.1(b): Chain of Title

 

Schedule 3.8: Pending Litigation

 

Schedule 5.1(a): Assumed IP Contracts

 

Schedule 5.1(b): Exclusive IP Contracts

 

Schedule 5.1(c): Identified Exclusive IP Contracts

 

Schedule 5.1(d): Specified Exclusive IP Contracts

 

Schedule 5.1(e): Licensed NXP IP

 

Schedule 5.1(f) ME/MC Transferred Patents

 

Schedule 5.1(g): Retained ME/MC and Demod Patents

 

Schedule 5.1(h): Third Party IP

 

Schedule 5.1(i): Transferred Patents

 

Schedule 5.1(j): Transferred Technology

 

Schedule 5.1(k): Transferred Trademarks

 

Schedule 5.1(l): Trimedia Core

 

Schedule 5.1(m): Acquired [****] Technology

 

Schedule 5.1(n): Demod Transferred Patents

 

Schedule 5.1(o): Demod Transferred Technology

 

Schedule 5.1(p): Current NXP Car Products

 

Schedule 5.1(q): Video Decoding Transferred Patents

 

Schedule 5.1(r): CA Security Transferred Patents

 

Schedule 5.1(s): ME/MC Transferred Technology

 

Schedule 5.1(t): CA Security Transferred Technology

 

Schedule 5.1(u): Video Decoding Transferred Technology

 

Schedule 5.1(v): Retained Reliable Motion ME/MC Patents

 

 iii

 

 

 

 

CONFIDENTIAL TREATMENT REQUESTED — REDACTED COPY

INTELLECTUAL PROPERTY TRANSFER AND LICENSE AGREEMENT

     This Intellectual Property Transfer and License Agreement (“ Agreement ”) is made and entered into, as of February 7, 2010 (the “ Closing Date ”), by and between NXP B.V., a Dutch besloten venootshap (“ NXP ”), and NXP Holding 1 B.V., a Dutch besloten venootshap (“ Dutch Newco ”).

RECITALS

     WHEREAS, NXP and Trident Microsystems, Inc., a corporation organized under the laws of the State of Delaware (“ Trident ”), have entered into that certain Share Exchange Agreement, dated as of October 4, 2009 (the “ Share Exchange Agreement ”), pursuant to which NXP will exchange all of the shares of the Transferred Newcos (as defined in the Share Exchange Agreement), including Dutch Newco, as well as certain other assets and rights, for certain shares of common stock, par value $0.001 per share, of Trident;

     WHEREAS, pursuant to the terms and conditions of this Agreement, NXP shall transfer and license certain Intellectual Property relating to the Business to Dutch Newco and Dutch Newco will license certain of such Intellectual Property back to NXP;

     WHEREAS, pursuant to the terms and conditions of this Agreement, NXP shall transfer certain Trademarks relating to the Business to Dutch Newco without any right or license being granted back to NXP pursuant to this Agreement;

     WHEREAS, in consideration for the grants, transfers and assignments made by NXP to Dutch Newco under this Agreement, Dutch Newco shall issue a promissory note to NXP for the fair market value of the rights, transfers and assignments made by NXP to Dutch Newco pursuant to the terms set forth in such promissory note; and

     WHEREAS, the parties hereto desire to set forth the terms and conditions of such transfer and license of Intellectual Property.

     NOW THEREFORE, in consideration of the promises and mutual covenants and agreements contained herein, the parties hereby agree as follows:

ARTICLE I

TERM AND TERMINATION

     1.1 Term . The term of this License Agreement is perpetual, with the licenses continuing for as long as the applicable Intellectual Property licensed hereunder exist. This Agreement may only be terminated by mutual written agreement of the parties.

     1.2 No Termination of Agreement . Each party acknowledges and agrees that its remedy for breach by the other party or exceeding the scope of the licenses granted to it under this Agreement, or of any other provision hereof, is to bring a claim to recover damages or to bring a claim to seek injunctive relief for activities outside the scope of the applicable license

  

 

 

 

 

CONFIDENTIAL TREATMENT REQUESTED — REDACTED COPY

grants or both, but in no event is this Agreement terminable. A party may, in its discretion as Licensee, terminate one or more of the licenses granted to it by written notice to the Licensor.

ARTICLE II

TRANSFERS AND LICENSES

     2.1 Transfer and Assignment of Transferred IP .

     NXP hereby sells, transfers, conveys, and assigns to Dutch Newco all right, title and interest in and to the Transferred IP.

     NXP hereby agrees to execute such documents of sale, transfer and assignment, including the assignments substantially in the form attached hereto as Exhibits A (Form of Patent Assignment) and B (Form of Trademark Assignment), and, at NXP’s expense, take such other actions, in each case as may be reasonably requested by Dutch Newco to effect the sale, transfer and assignment in and to the Transferred IP. Dutch Newco is responsible for registration and/or recordation of the transfers and assignments hereunder, and the out-of-pocket fees paid to the US Patent and Trademark Office or any other government intellectual property office in connection therewith shall be shared equally by NXP and Dutch Newco, except that NXP shall bear 100% of the out-of-pocket fees and reasonable expenses incurred in connection with addressing the chain of title, recordation and other issues previously identified by Dutch Newco’s counsel, which issues are generally identified on Schedule 2.1(b) . NXP shall pay or reimburse Dutch Newco for its portion of the fees within 30 days of the date of invoice.

     It is understood and agreed that the only Patents being sold, transferred, conveyed and assigned to Dutch Newco hereunder are the Transferred Patents.

     2.2 Patent Licenses .

          (a) Licenses to Dutch Newco .

     (i) Retained Patents – Business Field . Subject to the terms and conditions of this Agreement, NXP hereby grants to the Dutch Newco Group an irrevocable, non-terminable, non-transferable (except as set forth in Section 6.10 below), non-exclusive, fully-paid, royalty-free license, under the Retained Patents and solely with respect to the Business Fields, to make (solely for any member of the Dutch Newco Group), have made (solely for any member of the Dutch Newco Group), use, sell, offer for sale, and import any products and to practice any method or process in connection with the exercise of the foregoing license, except that the license granted under this Section 2.2(a)(i) does not extend to any [****].

     (ii) Retained ME/MC and Demod Patents – All Fields . Subject to the terms and conditions of this Agreement, NXP hereby grants to the Dutch Newco Group a non-exclusive, irrevocable, non-terminable, non-transferable (except as set forth in Section 6.10 below), fully-paid, royalty-free license, under the Retained ME/MC and Demod Patents, to make, have made, use, sell, offer for

 2

 

 

 

 

CONFIDENTIAL TREATMENT REQUESTED — REDACTED COPY

sale, and import any products and to practice any method or process in connection with the exercise of the foregoing license.

     (iii) Retained Reliable Motion ME/MC Patents – All Fields and Exclusive within Business Fields . Subject to the terms and conditions of this Agreement, NXP hereby grants to the Dutch Newco Group an irrevocable, non-terminable, non-transferable (except as set forth in Section 6.10 below), fully-paid, royalty-free license, under the Retained Reliable Motion ME/MC Patents and with full rights to sublicense with respect to the practice of the Retained Reliable Motion ME/MC Patents in the Business Fields, to make, have made, use, sell, offer for sale, and import any products and to practice any method or process in connection with the exercise of the foregoing license. This license is exclusive with respect to the Business Fields (even as to NXP and its Affiliates) and non-exclusive with respect to all other fields.

          (b) License to NXP .

     (i) Demod Transferred Patents . Subject to the terms and conditions of this Agreement and Section 7.10 of the Share Exchange Agreement, Dutch Newco hereby grants to NXP and its Subsidiaries a non-exclusive, irrevocable, non-terminable, non-transferable (except as set forth in Section 6.10 below), fully-paid, royalty-free license, under the Demod Transferred Patents and solely with respect to the NXP Fields, to make (solely for NXP or a NXP Subsidiary), have made (solely for NXP or a NXP Subsidiary), use, sell, offer for sale, and import any TV Front End Products and to practice any method or process in connection with the exercise of the foregoing license.

     (ii) ME/MC Transferred Patents . Subject to the terms and conditions of this Agreement and Section 7.10 of the Share Exchange Agreement, Dutch Newco hereby grants to NXP and its Subsidiaries, for use by the NXP Software business, a non-exclusive, irrevocable, non-terminable, non-transferable (except as set forth in Section 6.10 below), fully-paid, royalty-free license, under the ME/MC Transferred Patents and solely with respect to the NXP Fields, to make (solely for NXP or a NXP Subsidiary), have made (solely for NXP or a NXP Subsidiary), use, sell, offer for sale, and import only software implementations that satisfy both of the following requirements: (i) they are used solely in mobile phones and handsets and (ii) they are NXP Software branded.

     (iii) Current NXP Car Products . Subject to the terms and conditions of this Agreement and Section 7.10 of the Share Exchange Agreement, Dutch Newco hereby grants to NXP and its Subsidiaries a non-exclusive, irrevocable, non-terminable, non-transferable (except as set forth in Section 6.10 below), fully-paid, royalty-free license, under the Video Decoding Transferred Patents and ME/MC Transferred Patents and solely with respect to the NXP Fields, to make (solely for NXP or a NXP Subsidiary), have made (solely for NXP or a NXP Subsidiary), use, sell, offer for sale, and import each Current NXP Car

 3

 

 

 

 

CONFIDENTIAL TREATMENT REQUESTED — REDACTED COPY

Product and to practice any method or process in connection with the exercise of the foregoing license.

     (iv) NXP Patent Licensed Products . Subject to the terms and conditions of this Agreement and Section 7.10 of the Share Exchange Agreement, Dutch Newco hereby grants to NXP and its Subsidiaries a non-exclusive, irrevocable, non-terminable, non-transferable (except as set forth in Section 6.10 below), fully-paid, royalty-free license, under the Other Transferred Patents and solely with respect to the NXP Fields, to make (solely for NXP or a NXP Subsidiary), have made (solely for NXP or a NXP Subsidiary), use, sell, offer for sale, and import the NXP Patent Licensed Products and to practice any method or process in connection with the exercise of the foregoing license.

     2.3 Licenses to Non-Patent Intellectual Property .

     (a) License to Dutch Newco . Subject to the terms and conditions of this Agreement, NXP hereby grants to the Dutch Newco Group an irrevocable, non-terminable, non-transferable (except as set forth in Section 6.10


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