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EXHIBIT 10.27(b)
TECHNOLOGY CROSS-LICENSE AGREEMENT
Confidential portions of this document have been deleted and filed
separately with the Securities and Exchange Commission pursuant to a
request for confidential treatment.
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TECHNOLOGY CROSS-LICENSE AGREEMENT
Table of Contents
INTRODUCTION. . . . . . . . . . . . . . . . . . . . . . . . . 1
1. DEFINITIONS. . . . . . . . . . . . . . . . . . . . . . . 1
2. MUTUAL RELEASE . . . . . . . . . . . . . . . . . . . . . 6
3. GRANTS OF LICENSE. . . . . . . . . . . . . . . . . . . . 6
4. IMMUNITY FOR CUSTOMERS AND USERS . . . . . . . . . . . . 9
5. SUBLICENSE . . . . . . . . . . . . . . . . . . . . . . . 10
6. CONFIDENTIALITY. . . . . . . . . . . . . . . . . . . . . 11
7. USE OF PROPRIETARY INFORMATION AND COMMINGLED TECHNOLOGY 12
8. WARRANTIES, LIMITATION ON LIABILITY, AND COVENANTS . . . 12
9. TERM AND TERMINATION . . . . . . . . . . . . . . . . . . 13
10. MISCELLANEOUS. . . . . . . . . . . . . . . . . . . . . . 16
ATTACHMENT A. . . . . . . . . . . . . . . . . . . . . . . . . 22
ATTACHMENT B. . . . . . . . . . . . . . . . . . . . . . . . . 25
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TECHNOLOGY CROSS-LICENSE AGREEMENT
This Technology Cross-License Agreement (this
"Agreement"), dated as of March 26, 1993, is between
ADVANCED MICRO DEVICES, INC. ("AMD"), a Delaware corporation
having its principal officeat 901 Thompson Place, Sunnyvale,
California, 94088-3453, U.S.A., and FUJITSU LIMITED ("Fujitsu"),
a Japanese corporation having its registered office at
1015 Kamikodanaka, Nakahara-ku, Kawasaki 211, Japan.
INTRODUCTION
A. Fujitsu and AMD each own or control various patent
and other intellectual property rights to which the other party
wishes to acquire a license.
B. Fujitsu and AMD are engaged in continuing
research, development and engineering with regard to Licensed
Products (as defined below).
C. Fujitsu and AMD desire to establish an amicable
and mutually beneficial relationship and, more specifically,
desire to grant licenses and exchange semiconductor technology in
accordance with the following terms and conditions.
ACCORDINGLY, in consideration of the mutual covenants
and promises contained herein, the parties hereto agree as
follows:
Article 1. DEFINITIONS.
As used in this Agreement, the following terms
shall have the following meanings:
Section 1.1. "Affiliate", with respect to a
party, shall mean the companies affiliated with such party as
specified in Attachment A hereto, which may be amended from time
to time upon the agreement of the parties.
Section 1.2. "Applicable Law" shall mean, with
respect to a party, any statute, law, ordinance, rule,
administrative interpretation, regulation, order, writ,
injunction, directive, judgment, decree or other requirement of
any Governmental Authority applicable to such party or its
properties, business or assets.
Section 1.3. "Auxiliary Part" shall mean
input/output means, supporting means, terminal members,
conductors or equivalent interconnecting members, housing means,
any environmental controlling means included within such housing
means or unitary with such housing means, and active and/or
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passive elements unitarily or separately combined with a
Semiconductor Product and any other parts, primarily usable in or
for manufacturing Semiconductor Products.
Section 1.4. "Confidential Information" shall
mean information or materials disclosed to a party by the other
party that are identified as, or provided under circumstances
indicating the information or materials are, confidential or
proprietary.
Section 1.5. [CONFIDENTIAL INFORMATION OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION].
Section 1.6. "Effective Date" shall mean the
later to occur of (a) the date of this Agreement or (b) the date
which all required Governmental Approvals have been obtained.
Section 1.7. "EPROM" or "Electrically
Programmable Read Only Memory" shall mean a non-volatile
semiconductor memory device incorporating floating gate structure
cells, which device is electrically programmable and erasable by
using ultraviolet light. The device mainly consists of such
floating gate structure cells, with auxiliary logic circuits, if
any, where such logic circuits are used solely for memory
operation or interface to other products. OTPROM or One Time
PROM, which is a certain non-volatile semiconductor device
incorporating the same chip as EPROM and packaged without
transparent windows for ultraviolet light, shall be included in
the definition of EPROM.
Section 1.8. "Flash Memory" shall mean a non-
volatile semiconductor memory device incorporating floating gate
structure cells, which device is programmable and erasable by
electrically injecting and electrically discharging electric
charges into and from floating gates. The device mainly consists
of such floating gate structure cells, with auxiliary logic
circuits, if any, where such logic circuits are used solely for
memory operation or interface to other products.
Section 1.9. "Governmental Approvals" shall mean
all approvals, consents, authorizations and similar actions from
all Governmental Authorities that the parties agree are desirable
in order to consummate the transactions hereunder.
Section 1.10. "Governmental Authority" shall mean
any foreign, domestic, national, federal, territorial,
prefectural, state or local governmental authority, quasi-
governmental authority, court, government or self-regulatory,
administrative or other agency, or any political or other
subdivision, department, or branch of any of the foregoing.
Section 1.11. "Incorporated Product", with
respect to a party, shall mean a product, other than an NVM or a
Memory Card, into which such party has incorporated NVM(s) made
by or for such party or JV, or portions of such NVM(s). Without
limitation, Incorporated Product shall include both (a) an
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information handling system, circuit board or multichip module
that incorporates such NVM(s) or (b) a Semiconductor Product that
incorporates circuits of such NVM(s) with other circuits.
Section 1.12. "IPR" or "Intellectual Property
Rights", (a) with respect to a party, shall mean such party's
Patents, Proprietary Information and Other IPR, and (b) with
respect to a third party, shall mean the equivalents of the
foregoing, except that, in any case, IPR shall exclude
trademarks, service marks, trade names and their equivalents, and
any contraction, abbreviation, or simulation thereof.
Section 1.13. "Joint Development Agreement" shall
mean the Joint Development Agreement as defined in the Joint
Venture Agreement, and any amendments or modifications thereto.
Section 1.14. "Joint Venture Agreement" shall
mean that certain joint venture agreement to be entered into by
the parties concurrently with this Agreement, and any amendments
or modifications thereto.
Section 1.15. "Joint Venture License Agreement"
shall mean the Joint Venture License Agreement as defined in the
Joint Venture Agreement, and any amendments or modifications
thereto.
Section 1.16. "JV" shall mean Fujitsu AMD
Semiconductor Limited, a Japanese corporation being formed by AMD
and Fujitsu pursuant to the Joint Venture Agreement.
Section 1.17. [Intentionally omitted]
Section 1.18. "Licensed Product" shall mean any
of the items described in the following clauses (a) through (c)
and/or parts thereof:
(a) Semiconductive Material;
(b) Auxiliary Part; or
(c) Semiconductor Product.
Licensed Products shall include NVMs and Memory Cards, unless
otherwise expressly provided herein.
Section 1.19. "Manufacturing Apparatus" shall
mean any instrumentality or aggregate of instrumentalities
primarily designated for use in the fabrication of Licensed
Products.
Section 1.20. "Memory Card" shall mean an EPROM
or Flash Memory card, module or board which consists mainly of
NVM(s) and auxiliary semiconductor logic, if any, where such
auxiliary semiconductor logic is used solely for memory operation
or interface to other products.
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Section 1.21. "Nondisclosure Agreements" shall
mean the Nondisclosure Agreements between Fujitsu and AMD dated
March 12, 1992 and July 20, 1992 and the Confidentiality
Agreement between Fujitsu and AMD dated October 16, 1992.
Section 1.22. "Non-Semiconductor Group", with
respect to a party, shall mean the party's internal group or
other organization that is not the Semiconductor Group of such
party. It is understood that AMD currently does not have such a
Non-Semiconductor Group. Should AMD elect to form a Non-
Semiconductor Group in the future, such Group shall at that time
have all of the rights and privileges, subject to the
obligations, of a Non-Semiconductor Group hereunder.
Section 1.23. "NVM" or "Non-Volatile Memory",
with respect to a party, shall mean any EPROM or Flash Memory in
wafer, die or packaged device form manufactured using wafer
processes with geometries of 0.5 micron or less that embodies,
incorporates or is subject to (or is manufactured through
processes or methods that embody, incorporate or are subject to)
IPR of the other party.
Section 1.24. "Other IPR", with respect to a
party, shall mean all mask work rights and copyrights relating to
software or microcode, and the equivalents of the foregoing
(under the laws of any jurisdiction, including without
limitation, all applications and registrations with respect
thereto) that both (a) are covered, embodied, or incorporated in
the materials or information deliberately provided by such party
to the other party in accordance with the Joint Development
Agreement or the Nondisclosure Agreements, or deliberately
provided by such party to JV or by JV to such party in accordance
with the Joint Venture License Agreement and (b) are wholly owned
by such party or as to which, and only to the extent and subject
to the conditions under which, such party has the right, as of
the Effective Date or thereafter during the term of this
Agreement, to grant licenses or sublicenses of the scope granted
herein, without such grant resulting in the payment of royalties
or other consideration to third parties (unless and until the
other party undertakes to reimburse such party for any payments
so made, in which case such mask work rights and copyrights and
equivalents shall be included within such party's Other IPR),
except for payments to a Subsidiary of such party sublicensed
hereunder or payments to third parties for Other IPR developed or
created by such third parties while employed by such party or any
Subsidiary of such party sublicensed hereunder.
Section 1.25. "Patents", with respect to a party,
shall mean all classes or types of patents, utility models,
design patents and reissues, importations and confirmations
thereof, and other indicia of ownership, and respective
applications therefor of all countries of the world, provided
such indicia of ownership or applications therefor meet both the
following conditions: (a) have a filing date, or claim the
benefit of a filing date, prior to the expiration or termination
of this Agreement, and (b) are wholly owned by such party prior
to the expiration or termination of this Agreement, or as to
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which, and only to the extent and subject to the conditions under
which, such party has the right, as of the Effective Date or
thereafter during the term of this Agreement, to grant licenses
or sublicenses of the scope granted herein, without such grant
resulting in the payment of royalties or other consideration to
third parties (unless and until the other party undertakes to
reimburse such party for any payments so made, in which case such
patents shall be included within such party's Patents), except
for payments to a Subsidiary of such party sublicensed hereunder
or payments to third parties for inventions made by such third
parties while employed by such party or any Subsidiary of such
party sublicensed hereunder.
Section 1.26. "Pilot Product", with respect to a
party, shall mean (i) an NVM wafer manufactured by or for (except
by the JV) such party or (ii) an NVM die or packaged device made
by or for (except by the JV) such party from such NVM wafer.
Section 1.27. [CONFIDENTIAL INFORMATION OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION].
Section 1.28. "Proprietary Information", with
respect to a party, shall mean any trade secrets, copyrighted
material (except as is otherwise provided in this Section 1.28),
know-how, data, formula, processes, confidential information, or
other information, tangible or otherwise, of such party that both
(a) comes to the knowledge of the other party (whether or not
deliberately provided by such party) in the course of performing
the Joint Development Agreement or the Joint Venture License
Agreement or pursuant to the Nondisclosure Agreements, and (b) is
wholly owned by such party or as to which, and only to the extent
and subject to the conditions under which, such party has the
right, as of the Effective Date or thereafter during the term of
this Agreement, to grant licenses or sublicenses of the scope
granted herein, without such grant resulting in the payment of
royalties or other consideration to third parties (unless and
until the other party undertakes to reimburse such party for any
payments so made, in which case such information shall be
included within such party's Proprietary Information), except for
payments to a Subsidiary of such party sublicensed hereunder or
payments to third parties for Proprietary Information developed
or created by such third parties while employed by such party or
any Subsidiary of such party sublicensed hereunder. Proprietary
Information does not include mask work rights or copyrights
relating to software or microcode or the equivalents of such
rights.
Section 1.29. "Semiconductor Group", with respect
to a party, shall mean the internal group or other organization
of such party currently having as its primary activities the
research and development, making and selling of Semiconductor
Products to the semiconductor merchant market, and controlling
semiconductor-related IPR arising by virtue of such activities.
Section 1.29.1. The Fujitsu Semiconductor Group
currently consists of (and is limited to) the Electronic Devices
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Group of Fujitsu, and will consist in the future of any successor
organization(s) which succeeds to the semiconductor-related
research and development, making, selling and/or IPR of the
Electronic Devices Group.
Section 1.29.2. The AMD Semiconductor Group
currently consists of AMD in its entirety, and will consist in
the future of any successor organization(s) which succeeds to the
semiconductor-related research and development, making, selling
and/or IPR of any current AMD operations.
Section 1.30. "Semiconductor Product" shall mean:
(a) a Semiconductive Element; or
(b) a Semiconductive Element and one or more
films of conductive, semiconductive or insulating materials
formed on a surface or surfaces of such Semiconductive Element,
said film or films comprising one or more conductors, active or
passive electrical circuit elements, or any combination thereof;
or
(c) a unitary assembly consisting of one or more
of the elements described in clauses (a) and/or (b) of this
Section 1.30 having a fixed permanent physical relationship
established therebetween; or
(d) a unitary assembly consisting primarily of
(i) one or more of the elements described in clauses (a), (b)
and/or (c) of this Section , and (ii) one or more film
devices having a fixed permanent physical relationship
established therebetween.
Semiconductor Product includes, if provided therewith as a part
thereof, (i) Auxiliary Parts and (ii) additional electrical
circuits constituted thereby and integrally included therein,
provided that such Auxiliary Parts and additional electrical
circuits are incidental to the functionality of such
Semiconductor Products.
Section 1.31. "Semiconductive Element" shall mean
an element consisting primarily of a body of Semiconductive
Material having a plurality of electrodes associated therewith,
whether or not said body consists of a single Semiconductive
Material or of a multiplicity of such materials, whether or not
said body has, therein and/or thereon, one or more junctions and
whether or not said body includes one or more layers or other
regions (constituting substantially less than the whole of said
body) of a material or materials which are of a type other than
Semiconductive Material, and if provided as a part thereof, said
element includes passivating means thereof.
Section 1.32. "Semiconductive Material" shall
mean any material whose conductivity is intermediate to that of
metals and insulators at room temperature and whose conductivity
increases with increasing temperature over some temperature
range.
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Section 1.33. "Subsidiary", with respect to a
party, shall mean any corporation, partnership or other entity,
more than fifty percent (50%) of whose shares or ownership
interests entitled to vote for the election of directors (other
than any shares whose voting rights are subject to restriction)
or, in the case of a noncorporate entity, the equivalent
interests, are owned or controlled by such party, directly or
indirectly, now or hereafter, but such corporation, partnership
or other entity shall be deemed to be a Subsidiary only for so
long as such ownership or control exists.
Section 1.34. "Transitional Event" shall mean the
earlier to occur of (i) termination or expiration of the Joint
Venture Agreement, (ii) dissolution of the JV, or (iii) Fujitsu
or AMD ceasing to be a shareholder of the JV.
Article 2. MUTUAL RELEASE.
Section 2.1. Fujitsu hereby releases, acquits and
forever discharges AMD hereunder from any and all claims or
liability for infringement or alleged infringement of any Fujitsu
IPR by performance of acts prior to the Effective Date which, if
performed on or after the Effective Date, would be acts licensed,
sublicensed or immunized hereunder.
Section 2.2. AMD hereby releases, acquits and
forever discharges Fujitsu hereunder from any and all claims or
liability for infringement or alleged infringement of any AMD IPR
by performance of acts prior to the Effective Date which, if
performed on or after the Effective Date, would be acts licensed,
sublicensed or immunized hereunder.
Article 3. GRANTS OF LICENSE.
Section 3.1. Fujitsu hereby grants to AMD a non-
exclusive and non-transferable license under Fujitsu IPR:
(a) to make, have made (it being understood that
for purposes of this Agreement the terms "make" and "have made"
shall include the acts of assembling, packaging, and/or testing),
use, sell, lease, or otherwise dispose of Licensed Products and
Incorporated Products anywhere in the world, but excluding
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION], NVMs and Memory Cards,
except as otherwise specified in Attachment B; and
(b) to make, have made and use Manufacturing
Apparatuses anywhere in the world, and to sell, lease, or
otherwise dispose of such Manufacturing Apparatuses anywhere in
the world, provided that such sale, lease or other disposition is
incidental to a technology license to make Licensed Products to
which such Manufacturing Apparatuses relate.
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Section 3.2. AMD hereby grants to Fujitsu a non-
exclusive and non-transferable license under AMD IPR:
(a) to make, have made, use, sell, lease, or
otherwise dispose of Licensed Products and Incorporated Products
anywhere in the world, but excluding [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION], NVMs and Memory Cards, except as otherwise specified
in Attachment B; and
(b) to make, have made and use Manufacturing
Apparatuses anywhere in the world, and to sell, lease, or
otherwise dispose of such Manufacturing Apparatuses anywhere in
the world, provided that such sale, lease or other disposition is
incidental to a technology license to make Licensed Products to
which such Manufacturing Apparatuses relate.
Section 3.3. Fujitsu and AMD agree that upon the
occurrence of a Transitional Event, whether or not it results in
termination under Article 9, or upon the assumption by or on
behalf of a party (including a bankruptcy trustee or
representative or debtor in possession) of the rights and
obligations of this Agreement in a bankruptcy or insolvency
proceeding involving such party, the licenses under Sections 3.1
and 3.2, respectively, shall automatically, without further
action by either party, be changed so that the licenses become
licenses to make, have made, use, sell, lease or otherwise
dispose of any volume of Licensed Products, including NVMs and
Memory Cards, anywhere in the world not subject to the conditions
of Attachment B, but excluding, in the case of Section 3.1,
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION], and, in the case of
Section 3.2, [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION].
Section 3.4.
Section 3.4.1. Notwithstanding anything to the
contrary in Sections 1.12 and 3.1, Articles 4 and 5, or any other
provision of this Agreement:
(a) The rights, licenses and immunities granted
by Fujitsu hereunder to AMD (and the definition of "IPR" included
in such grant) shall exclude IPR of any Fujitsu Non-Semiconductor
Group except that:
(i) Such Fujitsu Non-Semiconductor Group, at
its option, may grant to the AMD Semiconductor Group a license of
such Fujitsu Non-Semiconductor Group's Patents that relate to (A)
processes for manufacturing Licensed Products, (B) the device
structure (but not circuits) of Licensed Products, or (C) the
materials comprising Licensed Products (collectively,
"Semiconductor-Related"). Unless such Fujitsu Non-Semiconductor
Group grants such a license to the AMD Semiconductor Group and
such license is otherwise of a scope that is equivalent to that
of Section 3.1, such Fujitsu Non-Semiconductor Group may not
exercise the rights, licenses and immunities granted hereunder to
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Fujitsu with respect to Licensed Products, except Licensed
Products that are made by or for Fujitsu Semiconductor Group, a
Subsidiary sublicensed hereunder, the JV or another Non-
Semiconductor Group that has acquired the right (pursuant to this
Section 3.4.1(a)(i)) to exercise such rights, licenses and
immunities granted hereunder to Fujitsu.
(ii) If the Fujitsu Semiconductor Group
provides or makes available to AMD information, material or
technology in connection with activities related to the Joint
Development Agreement or the Joint Venture License Agreement, and
such information, material or technology embodies, incorporates
or is subject to any Semiconductor-Related IPR of a Fujitsu Non-
Semiconductor Group that is used by the Fujitsu Semiconductor
Group, the Fujitsu Semiconductor Group shall (unless such Fujitsu
Non-Semiconductor Group has granted a license of such IPR
pursuant to clause (i)) arrange for a license or immunity from
suit under such IPR to the AMD Semiconductor Group, provided that
AMD shall pay any related reasonable license fees or royalties.
Such license or immunity shall otherwise be of a scope equivalent
to that of Section 3.1, but shall be no broader than the rights
of the Fujitsu Semiconductor Group to such IPR.
(b) An AMD Non-Semiconductor Group may, at
its option, obtain a license hereunder of the circuit Patents of
the Fujitsu Semiconductor Group. Such license shall be of a
scope equivalent to that of Section 3.1. If such AMD Non-
Semiconductor Group obtains such a license, it shall grant back
to the Fujitsu Semiconductor Group a license hereunder of such
AMD Non-Semiconductor Group's circuit Patents. Such license
shall otherwise be of a scope equivalent to that of Section 3.2.
Section 3.4.2. Notwithstanding anything to the
contrary in Sections 1.12 and 3.2, Articles 4 and 5, or any other
provision of this Agreement:
(a) The rights, licenses and immunities granted
by AMD hereunder to Fujitsu (and the definition of "IPR" included
in such grant) shall exclude IPR of any AMD Non-Semiconductor
Group except that:
(i) Such AMD Non-Semiconductor Group, at its option, may
grant to the Fujitsu Semiconductor Group a license of such AMD
Non-Semiconductor Group's Semiconductor-Related Patents. Unless such AMD
Non-Semiconductor Group grants such a license to the Fujitsu Semiconductor
Group and such license is otherwise of a scope that is equivalent to that of
Section 3.2, such AMD Non- Semiconductor Group may not exercise the rights,
licenses and immunities granted hereunder to AMD with respect to Licensed
Products, except Licensed Products that are made by or for AMD Semiconductor
Group, a Subsidiary sublicensed hereunder, the JV or another Non-Semiconductor
Group that has acquired the right (pursuant to this Section 3.4.2(a)(i)) to
exercise such rights, licenses and immunities granted hereunder to AMD.
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(ii) If the AMD Semiconductor Group provides
or makes available to Fujitsu information, material or technology
in connection with activities related to the Joint Development
Agreement or the Joint Venture License Agreement, and such
information, material or technology embodies, incorporates or is
subject to any Semiconductor-Related IPR of an AMD Non-
Semiconductor Group that is used by the AMD Semiconductor Group,
the AMD Semiconductor Group shall (unless such AMD Non-
Semiconductor Group has granted a license of such IPR pursuant to
clause (i)) arrange for a license or immunity from suit under
such IPR to the Fujitsu Semiconductor Group, provided that
Fujitsu shall pay any related reasonable license fees or
royalties. Such license or immunity shall otherwise be of a
scope equivalent to that of Section 3.2, but shall be no broader
than the rights of the AMD Semiconductor Group to such IPR.
(b) A Fujitsu Non-Semiconductor Group may, at its
option, obtain a license hereunder of the circuit Patents of the
AMD Semiconductor Group. Such license shall be of a scope
equivalent to that of Section 3.2. If such Fujitsu Non-
Semiconductor Group obtains such a license, it shall grant back
to the AMD Semiconductor Group a license hereunder of such
Fujitsu Non-Semiconductor Group's circuit Patents. Such license
shall otherwise be of a scope equivalent to that of Section 3.1.
Section 3.5. Fujitsu and AMD agree that they have
given full consideration to the value of the IPR of the other
party and to the costs, benefits, burdens and uncertainties of
assessing such value. Fujitsu and AMD further agree that they
have given full consideration to the possibility that one or
more patents of the other party may be invalid or unenforceable,
and the Other IPR and Proprietary Information of the other
party may decline or increase in value after the Effective
Date. Based on the foregoing, Fujitsu and AMD have determined
that the rights granted hereunder are [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION] contained in this Agreement and that any change
in the circumstances under which this Agreement is entered into
(including a final determination as to the invalidity or
unenforceability of a patent) shall not effect such determination.
Section 3.6. Notwithstanding anything else
contained herein, AMD acknowledges that the licenses granted
in Section 3.1 do not include any rights with respect to
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION] and Fujitsu acknowledges
that the licenses granted in Section 3.2 do not include any rights
with respect to [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]. The
Parties acknowledge that the exclusion of [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION] from the licenses granted to AMD in
Section 3.1(a) is based on current conditions with respect to
the role of [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] in the
business and operations of AMD. Each party agrees to negotiate
in good faith if, based on a change in such business and
operations, the other party wishes to omit such exclusion.
Article 4. IMMUNITY FOR CUSTOMERS AND USERS.
Section 4.1. Fujitsu hereby forever grants to the
customers and users of Licensed Products or Incorporated Products
that are sold, leased or otherwise disposed of by AMD pursuant
to, and subject to the conditions of, this Agreement a worldwide,
royalty-free and non-exclusive immunity from suit, damages and
claims by Fujitsu under Fujitsu IPR to use, sell, lease or
otherwise dispose of such Licensed Products or Incorporated
Products, provided that such royalty-free immunity for such
customers and users shall extend only to the use, sale, lease or
other disposition of such particular Licensed Products or
Incorporated Products that such customers and users obtained
directly or indirectly from AMD. [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION]. The sale, lease, or other disposition to customers
and users of Licensed Products or Incorporated Products by AMD
does not convey any license, by implication, estoppel, or
otherwise, to such customers and users under Patent claims
covering combinations of such Products with other devices or
elements.
Section 4.2. AMD hereby forever grants to the
customers and users of Licensed Products or Incorporated Products
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that are sold, leased or otherwise disposed of by Fujitsu
pursuant to, and subject to the conditions of, this Agreement a
worldwide, royalty-free and non-exclusive immunity from suit,
damages and claims by AMD under AMD IPR to use, sell, lease or
otherwise dispose of such Licensed Products or Incorporated
Product, provided that such royalty-free immunity for such
customers and users shall extend only to the use, sale, lease or
other disposition of such particular Licensed Products or
Incorporated Products that such customers and users obtained
directly or indirectly from Fujitsu. [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION]. The sale, lease, or other disposition to customers
and users of Licensed Products or Incorporated Products by
Fujitsu does not convey any license, by implication, estoppel, or
otherwise, to such customers and users under Patent claims
covering combinations of such Products with other devices or
elements.
Article 5. SUBLICENSE.
Section 5.1. Each party shall have the right to
grant sublicenses of the rights, licenses and immunities granted
to such party under Section 3.1 or 3.2, as well as Articles 2 and
4 and this Article 5, to a Subsidiary of such party but subject
to the condition that such Subsidiary grants a license to the
other party hereunder of the Patents, if any, of such Subsidiary,
as follows: If such Subsidiary is subject to control by a Non-
Semiconductor Group, such grant-back license (a) shall be to the
Semiconductor Group of the other party and (b) shall be of
Semiconductor-Related (as defined in Section 3.4.1(a)(i))
Patents. If such Subsidiary is subject to control by the
Semiconductor Group, such license (a) shall be to the other party
as a whole and (b) shall be of all Patents of such Subsidiary.
Any such license shall otherwise be of a scope equivalent to that
of Section 3.1 or 3.2 (as applicable). It is hereby stated, for
confirmation purposes, that (i) it is an option, and not an
obligation, for a Subsidiary to grant such a license, unless and
until such Subsidiary elects to be granted a sublicense of such
rights, licenses and immunities, and (ii) even without obtaining
such a sublicense, a Subsidiary of a party may exercise the
rights, licenses and immunities granted hereunder to the same
extent as a Non-Semiconductor Group of such party that has not
granted a license to the other party's Semiconductor Group under
Section 3.4.1(a)(i) or 3.4.2(a)(i).
Section 5.2. If requested by a party, the other
party shall cause a Subsidiary actually controlled by the
Semiconductor Group of such other party to grant a license to
such party under Section 5.1.
Section 5.3. If the Semiconductor Group of a
party provides or makes available to the other party information,
material or technology in connection with activities related to
the Joint Development Agreement or the Joint Venture License
Agreement, and such information, material or technology embodies,
incorporates or is subject to any Semiconductor-Related (as
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14
defined in Section 3.4.1(a)(i)) IPR of a Subsidiary of such party
that is used by such Semiconductor Group, such Semiconductor
Group shall (unless such Subsidiary has granted a license to such
other party pursuant to Section 5.1) arrange for a license or
immunity from suit under such IPR to the Semiconductor Group of
such other party, provided that such other party shall pay any
related reasonable license fees or royalties. Such license or
immunity shall otherwise be of a scope equivalent to that of
Section 3.1 or 3.2.
Section 5.4. A party shall not have the right to
grant sublicenses hereunder except as provided herein.
Article 6. CONFIDENTIALITY.
Section 6.1. Except as expressly authorized by
the other party (including without limitation the exercise of the
rights granted to a party under this Agreement, the Joint
Development Agreement and the Joint Venture License Agreement)
each party agrees not to disclose, use or permit the disclosure
or use by others of any Confidential Information unless and to
the extent such Confidential Information (i) is not marked or
designated in writing as confidential and is provided for a
purpose that reasonably contemplates disclosure to or use by
others, (ii) becomes a matter of public knowledge through no
action or inaction of the party receiving the Confidential
Information, (iii) was in the receiving party's possession before
receipt from the party providing such Confidential Information,
(iv) is rightfully received by the receiving party from a third
party without any duty of confidentiality, (v) is disclosed to a
third party by the party providing the Confidential Information
without a duty of confidentiality on the third party, (vi) is
disclosed by the receiving party despite the exercise of the same
degree of care used by the receiving party to safeguard its own
similar Confidential Information, but the receiving party shall
take all necessary steps to prevent any further disclosure, (vii)
is disclosed with the prior written approval of the party
providing such Confidential Information, or (viii) is
independently developed by the receiving party without any use of
the other party's Confidential Information. Confidential
Information shall not be deemed to be available to the general
public for the purpose of exclusion (ii) above with respect to
each party (x) merely because it is embraced by more general
information in the prior possession of the receiving party or
others, or (y) merely because it is expressed in public
literature in general terms not specifically in accordance with
the Confidential Information.
Section 6.2. In furtherance, and not in
limitation of the foregoing Section 6.1, each party agrees to do
the following with respect to any such Confidential Information:
(i) exercise the same degree of care to safeguard the
confidentiality of, and prevent the unauthorized use of, such
information as that party exercises to safeguard the
confidentiality of its own Confidential Information, (ii)
restrict disclosure of such information to those of its
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employees, agents and sublicensees who have a "need to know", and
(iii) instruct and require such employees, agents and
sublicensees to maintain the confidentiality of such information
and not to use such information except as expressly permitted
herein. Each party further agrees not to remove or destroy any
proprietary or confidential legends or markings placed upon any
documentation or other materials.
Section 6.3. The foregoing confidentiality
obligations shall also apply to the contents of this Agreement.
Section 6.4. The obligations under this Article 6
shall not prevent the parties from disclosing the Confidential
Information or terms of this Agreement to any government agency
or body as required by law (provided that the party required to
make such disclosure in such circumstances has given the other
party prompt notice prior to making such disclosure so that the
other party may seek a protective order or other appropriate
remedy prior to such disclosure and cooperates fully with such
other party in seeking such order or remedy).
Section 6.5. The obligations under this Article 6
shall apply with respect to any Confidential Information for a
period of [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION] from the date of
disclosure of such Confidential Information to the receiving
party, unless with respect to any particular Confidential
Information the providing party in good faith notifies the
receiving party in writing that a longer period shall apply, in
which case the obligations under this Article 6 with respect to
such Confidential Information shall apply for such longer period.
Article 7. USE OF PROPRIETARY INFORMATION AND COMMINGLED
TECHNOLOGY.
Section 7.1. The parties hereto agree that each party shall
have the right to freely use for internal purposes, in accordance with the
provisions of Article 6, the Proprietary Information or Other IPR received from
the other party. Neither party will knowingly provide to a third party the
distinct and independent Proprietary Information or Other IPR received from the
other party, except as may be permitted under this Agreement, the Joint
Development Agreement or the Joint Venture License Agreement. [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION]. Both parties shall treat Commingled Technology with the same
degree of care with respect to its transfer to and use by third part(ies)
(including the imposition of confidentiality obligations on any transferee) as
they take with respect to their own Proprietary Information and Other IPR.
Section 7.2. Nothwithstanding anything else contained herein,
Fujitsu and AMD each hereby grants [CONFIDENTIAL INFORMATION OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION].
Article 8. WARRANTIES, LIMITATION ON LIABILITY, AND
COVENANTS.
Section 8.1. Each party hereto represents and
warrants to the other party that it has the right, and will
continue during the term of this Agreement to have the right, to
grant to or for the benefit of the other party the rights and
licenses granted hereunder in accordance with the terms of this
Agreement and such grant of rights and licenses does not, and
will not during the term of this Agreement, conflict with the
rights and obligations of such party under any other license,
agreement, contract or other undertaking. Each party shall
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16
indemnify, hold harmless and defend the other party against a
breach by such party of this Section 8.1.
Section 8.2. Nothing contained in this Agreement
shall be construed as:
(a) a warranty or representation by any of the
parties hereto or its Subsidiaries sublicensed hereunder as to
the validity or scope of any Fujitsu IPR or AMD IPR, as the case
may be; or
(b) conferring upon any party hereto or its
Subsidiaries sublicensed hereunder any license, right or
privilege under any patents, utility models, design patents,
copyrights, mask work rights or trade secrets except the
licenses, rights and privileges expressly granted hereunder; or
(c) a warranty or representation that any acts
licensed or sublicensed hereunder will be free from infringement
of patents, utility models, design patents, copyrights, mask work
rights or trade secrets other than those under which licenses,
rights and privileges have been expressly granted hereunder; or
(d) an arrangement to bring or prosecute actions
or suits against third parties for infringement or conferring any
right to bring or prosecute actions or suits against third
parties for infringement; or
(e) conferring any right to use in advertising,
publicly or otherwise, any trademark, service mark, trade name or
their equivalent, or any contraction, abbreviation or simulation
thereof, of either party hereto or their Subsidiaries sublicensed
hereunder.
Section 8.3. EXCEPT AS EXPRESSLY PROVIDED HEREIN,
NEITHER PARTY HERETO MAKES ANY WARRANTIES, WHETHER EXPRESS OR
OTHERWISE, CONCERNING ANY IPR, TECHNOLOGY, PRODUCTS, PROCESSES,
DESIGNS, DOCUMENTS OR INFORMATION LICENSED OR OTHERWISE PROVIDED
PURSUANT TO THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO,
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, WARRANTIES OF FREEDOM FROM ERRORS OR DEFECTS, OR
WARRANTIES OF NON-INFRINGEMENT OF THIRD PARTY INTELLECTUAL
PROPERTY RIGHTS, AND NEITHER PARTY SHALL BE RESPONSIBLE FOR ANY
INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES, HOWEVER CAUSED, ON
ANY THEORY OF LIABILITY AND WHETHER OR NOT SUCH PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES ARISING IN ANY WAY OUT
OF THIS AGREEMENT OR ANY IPR, TECHNOLOGY, PRODUCTS, PROCESSES,
DESIGNS, DOCUMENTS OR INFORMATION LICENSED OR OTHERWISE PROVIDED
PURSUANT TO THIS AGREEMENT.
Article 9. TERM AND TERMINATION.
Section 9.1. Term. This Agreement shall become
effective on the Effective Date and shall, unless and until
earlier terminated hereunder, remain in effect until the later to
occur of (i) the tenth anniversary date of the Effective Date and
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(ii) the date of a Transitional Event, at which time this
Agreement shall terminate. At the request of either party, both
parties shall negotiate in good faith to extend the term of this
Agreement, with or without amendment to the provisions hereof.
Section 9.2. Termination. Termination of this
Agreement may result from the events listed below. Each party
agrees to give prompt written notice to the other party of the
happening of any such event.
(a) If either party hereto defaults in the
performance of any material obligation hereunder, the non-
defaulting party may give written notice thereof and the parties
shall discuss the problem arising from such default in good faith
and seek to resolve such problem. If such default is not
corrected or otherwise addressed by the defaulting party to the
reasonable satisfaction of the non-defaulting party within ninety
(90) days after the written notice of such default, then the non-
defaulting party may, in addition to any other remedies it may
have, terminate this Agreement by written notice. This Agreement
shall terminate on the thirtieth (30th) day after such notice of
termination.
(b) Each party hereto may terminate this
Agreement, by giving written notice of termination to the other
party at any time, upon or after:
(i) the filing by such other party of a
petition in bankruptcy or insolvency;
(ii) any adjudication that such other party
is bankrupt or insolvent;
(iii) the filing by such other party of any
legal action or document seeking reorganization, readjustment or
arrangement of such other party's business under any law relating
to bankruptcy or insolvency;
(iv) the appointment of a receiver or
bankruptcy trustee for all or substantially all of the property
of such other party;
(v) the making by such other party of a
general assignment for the benefit of creditors; or
(vi) the institution of any proceedings for
the liquidation or winding up of such other party's business or
for the termination of its corporate charter, provided, in the
event such proceedings are involuntary, the proceedings are not
dismissed within ninety (90) days.
(c) If at any time during the term of this
Agreement, (i) a party incurs in one transaction or a series of
related transactions a change in ownership of more than
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION] of its capital stock, (ii) a
party consolidates with or merges with or into another
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18
corporation, partnership or other entity, whether or not such
party is the surviving entity of such transaction, unless
immediately after such consolidation or merger shareholders of
such party prior to the transaction continue to own more than
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION] of the outstanding shares of
stock entitled to vote for the election of directors of such new
or surviving entity, or (iii) a party sells, assigns or otherwise
transfers all or substantially all of the business or assets of
such party relating to its semiconductor merchant market business
to a third party, the other party may terminate this Agreement
upon thirty (30) days' advance written notice to such party,
provided, in each case, that the terminating party must exercise
such right no later than one (1) year after receiving written
notice from the other party of such transaction.
Section 9.3. Effect of Termination.
(a) Except as otherwise provided in this Section
9.3, all rights and obligations of the parties hereunder shall
cease upon termination or expiration of this Agreement, with the
exception of the rights and obligations of the parties under
Articles 2, 4, 6, 7, 8, 9 and 10 and Sections 3.3 and 3.5, which
shall survive termination or expiration of this Agreement.
(b) In the event of termination of this Agreement
pursuant to Section 9.1, the licenses granted by a party under
Article 3 or any sublicenses granted by a party under Article 5,
including the modification pursuant to Section 3.3, shall survive
such termination of this Agreement with respect to any IPR
licensed as of the date of such termination of this Agreement
until expiration of such IPR. Should any of the events described
in clauses (i) through (iii) of Section 9.2(c) ("Change of
Control") occur with respect to a party during the period in
which license rights are surviving pursuant to this Section
9.3(b), the other party shall have the right to exercise the
rights of a Terminating Party as described in Sections 9.3(c) and
(d), and the rights of the parties shall thereafter be as set
forth in Sections 9.3(c) and (d) rather than this Section 9.3(b).
(c) If a party (the "Terminating Party")
terminates this Agreement pursuant to Section 9.2, the licenses
granted by the Terminating Party to the other party (the
"Terminated Party") under Article 3, or any sublicenses granted
by the Terminated Party under Article 5, shall survive such
termination with respect to IPR licensed as of the date of such
termination of this Agreement until expiration of such IPR,
except that with respect to Patents such post-termination
licenses and sublicenses shall be limited solely to (i)
Incorporated Products and Licensed Products being made or have
made and sold by the Terminated Party and its Subsidiaries
sublicensed hereunder at the time of such termination and
modifications thereof that do not add functionality ("Existing
Products") and (ii) process Patents licensed at the time of such
termination ("Existing Process Patents"), whether such Existing
Process Patents are used in the manufacture of Existing Products
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19
or other Incorporated Products or Licensed Products, but subject
in any event to the requirements of Section 9.3(d).
(d) If a Change of Control occurs with respect to
the Terminated Party, whether in connection with termination of
this Agreement or thereafter:
(i) beginning on the date of such Change of
Control, the licenses granted by the Terminating Party to the
Terminated Party under Article 3, or any sublicenses granted by
the Terminated Party under Article 5, with respect to Patents
shall be limited solely to manufacture and sale of Existing
Products and (notwithstanding Section 9.3 (c)(ii)) use of
Existing Process Patents to make or have made only Existing
Products, in each case only in the operations of the Terminated
Party as such operations existed at the time of such Change of
Control, and
(ii) such licenses or sublicenses shall
terminate on the date of such Change of Control or five years
after termination of this Agreement (whichever is later), unless
(and only for so long as) the Terminating Party, its Subsidiaries
sublicensed hereunder and their customers have a world-wide,
royalty-free and non-exclusive immunity from suit, damages and
claims under all patents and patent applications of the
Terminated Party and the third party that, directly or
indirectly, controls the Terminated Party relating to Licensed
Products or Incorporated Products.
(e) Upon termination of this Agreement by the
Terminating Party pursuant to Section 9.2, the licenses granted
by the Terminated Party to the Terminating Party under Article 3,
or any sublicenses granted by the Terminating Party under
Article 5, shall survive such termination of this Agreement with
respect to any IPR licensed as of such termination until
expiration of such IPR, as if such termination had occurred as
described in Sections 9.1 and 9.3(b), except that with respect to
Patents such post-termination licenses and sublicenses shall be
subject to the requirements of Section 9.3(f).
(f) If a Change of Control occurs with respect to
the Terminating Party, whether in connection with termination of
this Agreement or thereafter:
(i) beginning on the date of such Change
of Control, the licenses granted by the Terminated Party to the
Terminating Party under Article 3, or any sublicenses granted by
the Terminating Party under Article 5, with respect to Patents
shall be limited solely to manufacture and sale of Existing
Products and use of Existing Process Patents to make or have made
only Existing Products, in each case only in the operations of
the Terminating Party as such operations existed at the time of
such Change of Control, and
(ii) such licenses or sublicenses shall
terminate on the date of such Change of Control or five years
after termination of this Agreement (whichever is later), unless
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(and only for so long as) the Terminated Party, its Subsidiaries
sublicensed hereunder and their customers have a world-wide,
royalty-free and non-exclusive immunity from suit, damages and
claims under all patents and patent applications of the
Terminating Party and the third party that, directly or
indirectly, controls the Terminating Party relating to Licensed
Products or Incorporated Products.
Article 10. MISCELLANEOUS.
Section 10.1. Force Majeure. Neither party shall
be liable for failure to perform, in whole or in material part,
its obligations under this Agreement if such failure is caused by
any event or condition not existing as of the date of this
Agreement and not reasonably within the control of the affected
party, including, without limitation, by fire, flood, typhoon,
earthquake, explosion, strikes, labor troubles or other
industrial disturbances, unavoidable accidents, war (declared or
undeclared), acts of terrorism, sabotage, embargoes, blockage,
acts of Governmental Authorities, riots, insurrections, or any
other cause beyond the control of the parties; provided, that the
affected party promptly notifies the other party of the
occurrence of the event of force majeure and takes all reasonable
steps necessary to resume performance of its obligations so
interfered with.
Section 10.2. Assignment. Neither this Agreement
nor any of the rights and obligations created hereunder may be
assigned, transferred, pledged, or otherwise encumbered or
disposed of, in whole or in part, whether voluntary or by
operation of law, or otherwise, by either party without the prior
written consent of the other party. This Agreement shall inure
to the benefit of and be binding upon the parties' permitted
successors and assigns.
Section 10.3. Notices. All notices and
communications required, permitted or made hereunder or in
connection herewith shall be in writing and shall be mailed by
first class, registered or certified air mail, postage prepaid,
or otherwise delivered by hand or by messenger, or by recognized
courier service (with written receipt confirming delivery),
addressed:
(a) If to FUJITSU, to:
Mail or Hand Delivery:
FUJITSU LIMITED
1015 Kamikodanaka, Nakahara-ku
Kawasaki-shi 211, JAPAN
Attn: Masaichi Shinoda
General Manager
Business Development Division
Electronic Devices
with a copy to:
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Mail or Hand Delivery:
FUJITSU LIMITED
Marunouchi Center Bldg., 6-1
Marunouchi 1-chome
Chiyoda-ku, Tokyo 100, JAPAN
Attn: Gen Iseki
General Manager, Legal Division
(b) If to AMD, to:
Mail:
Mikio Ishimaru, Esq.
Director of Technology Law
Advanced Micro Devices, Inc., MS 68
P. O. Box 3453
Sunnyvale, CA 94088-3453
U.S.A.
Hand Delivery:
3625 Peterson Way
Santa Clara, CA 95054
U.S.A.
with a copy to:
Mail:
Senior Vice President, Operations
Advanced Micro Devices, Inc.
P. O. Box 3453
Sunnyvale, CA 94088-3453
U.S.A.
Attn: Gene Conner
Hand Delivery:
915 DeGuigne Drive
Sunnyvale, CA 94086
U.S.A.
Each such notice or other communication shall for all
purposes hereunder be treated as effective or as having been
given as follows: (i) if delivered in person, when delivered;
(ii) if sent by airmail, at the earlier of its receipt or at
5 pm, local time of the recipient, on the seventh day after
deposit in a regularly maintained receptacle for the deposition
of airmail; and (iii) if sent by recognized courier service, on
the date shown in the written confirmation of delivery issued by
such delivery service. Either party may change the address
and/or addressee(s) to whom notice must be given by giving
appropriate written notice at least seven (7) days prior to the
date the change becomes effective.
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Section 10.4 Export Control. Without in any way
limiting the provisions of this Agreement, each of the parties
hereto agrees that no products, items, commodities or technical
data or information obtained from a party hereto nor any direct
product of such technical data or information is intended to or
shall be exported or reexported, directly or indirectly, to any
destination restricted or prohibited by Applicable Law without
necessary authorization by the Governmental Authorities,
including (without limitation) the Japanese Ministry of
International Trade and Industry, the United States Bureau of
Export Administration (the "BEA") or other Governmental
Authorities of the United States with jurisdiction with respect
to export matters. Without limiting the generality of the
foregoing, each party hereto agrees that it will not, without
authorization from the Office of Export Licensing of the BEA,
knowingly export or reexport to a destination outside of the
United States General License GTDR technical data or information
of United States origin subject to this Agreement, or the direct
product thereof, or the product of a plant or major component of
a plant that is the direct product thereof, without first
providing any applicable export assurances to the exporting
party.
Section 10.5. Arbitration.
(a) Any and all disputes arising under or
affecting this Agreement shall be resolved exclusively by
confidential arbitration pursuant to the rules of the Japan
Commercial Arbitration Association in Tokyo, Japan, or such other
location as may be agreed between the parties; provided, however,
that the arbitrators shall be empowered to hold hearings at other
locations within and without Japan. Each of the parties shall
designate one arbitrator and the two arbitrators so designated
shall select the third arbitrator. Arbitration proceedings shall
be conducted in English with simultaneous translation into
Japanese. The judgment upon award of the arbitrators shall be
final and binding and may be enforced in any court of competent
jurisdiction in the United States or Japan, and each of the
parties hereto unconditionally submits to the jurisdiction of
such court for the purpose of any proceeding seeking such
enforcement. Subject only to the provision of Applicable Law,
the procedure described in this Section 10.5 shall be the
exclusive means of resolving disputes arising under or affecting
this Agreement.
(b) All papers, documents, or evidence, whether
written or oral, filed with or presented to the panel of
arbitrators shall be deemed by the parties and by the arbitrators
to be Confidential Information. No party or arbitrator shall
disclose in whole or in part to any other person any Confidential
Information submitted in connection with the arbitration
proceedings, except to the extent reasonably necessary to assist
counsel in the arbitration or preparation for arbitration of the
dispute. Confidential Information may be disclosed (i) to
attorneys, (ii) to parties, and (iii) to outside experts
requested by either party's counsel to furnish technical or
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expert services or to give testimony at the arbitration
proceedings, subject, in the case of such experts, to execution
of a legally binding written statement that such expert is fully
familiar with the terms of this section, agrees to comply with
the confidentiality terms of this section, and will not use any
Confidential Information disclosed to such expert for personal or
business advantage.
Section 10.6. Entire Agreement. This Agreement
and the attachments hereto embody the entire agreement and
understanding between the parties with respect to the subject
matter hereof, superseding all previous communications,
agreements and understandings, whether written or oral. Neither
party has relied upon any representation or warranty of the other
party except as expressly set forth herein.
Section 10.7. Modification. This Agreement may
not be modified or amended, in whole or part, except by a writing
executed by duly authorized representatives of both parties.
Section 10.8. Announcement. The parties may
announce the existence of the parties' relationship and this
Agreement at a time and in a form to be mutually determined.
Neither party shall unreasonably withhold its consent to a time
proposed by the other party.
Section 10.9. Severability. If any term or
provision of this Agreement shall be determined to be invalid or
unenforceable under Applicable Law, such provision shall be
deemed severed from this Agreement, and a reasonable valid
provision to be mutually agreed upon shall be substituted. In
the event that no reasonable valid provision can be so
substituted, the remaining provisions of this Agreement shall
remain in full force and effect, and shall be construed and
interpreted in a manner that corresponds as far as possible with
the intentions of the parties as expressed in this Agreement.
Section 10.10. No Waiver. Except to the extent
that a party hereto may have otherwise agreed in writing, no
waiver by that party of any condition of this Agreement or breach
by the other party of any of its obligations or representations
hereunder shall be deemed to be a waiver of any other condition
or subsequent or prior breach of the same or any other obligation
or representation by the other party, nor shall any forbearance
by the first party to seek a remedy for any noncompliance or
breach by the other party be deemed to be a waiver by the first
party of its rights and remedies with respect to such
noncompliance or breach.
Section 10.11. Nature of Rights. Each party
shall have the right to the other party's IPR licensed under this
Agreement when created, developed or invented, regardless of
whether physically delivered to such party. All rights and
licenses granted under or pursuant to this Agreement by a party
("licensor party") to the other party ("licensee party") are, for
purposes of Section 365(n) of the U.S. Bankruptcy Code (the
"Bankruptcy Code"), licenses of "intellectual property" within
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the scope of Section 101 of the Bankruptcy Code. The parties
agree that the licensee party, as a licensee of such rights under
this Agreement, shall retain and may fully exercise all of its
rights and elections under the Bankruptcy Code. The parties
further agree that, in the event of the commencement of a
bankruptcy or insolvency proceeding by or against the licensor
party, the licensee party shall be entitled to a complete
duplicate of (and complete access to) any such intellectual
property and all embodiments thereof. If not already in the
licensee party's possession, the licensee party has the right to
immediate delivery of such intellectual property and embodiments
upon written request of the licensee party (i) upon any such
commencement of bankruptcy proceedings, unless the licensor party
or its representative or trustee elects to continue to perform
all of its obligations under this Agreement, or (ii) if not
delivered under clause (i) above, upon the rejection of this
Agreement by or on behalf of the licensor party.
Section 10.12. Tangible Property. The parties
agree that the tangible portion of the property delivered and to
be delivered by AMD to Fujitsu is valued at [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] and by Fujitsu to AMD is valued at
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION].
Section 10.13. Governing Law. The validity,
construction, performance and enforceability of this Agreement
shall be governed in all respects by the laws of the State of
California, U.S.A.
Section 10.14. Language. This Agreement and the
attachments hereto are in the English language, which language
shall be controlling in all respects.
Section 10.15. No Agency or Partnership. This
Agreement shall not constitute an appointment of either party as
the legal representative or agent of the other party, nor shall
either party have any right or authority to assume, create or
incur in any manner any obligation or other liability of any
kind, express or implied, against, in the name or on behalf of,
the other party. Nothing herein or in the transactions
contemplated by this Agreement shall be construed as, or deemed
to be, the formation of a partnership, association, joint venture
or similar entity by or among the parties hereto.
Section 10.16. Headings. The section and other
headings contained in this Agreement are for convenience of
reference only and shall not be deemed to be a part of this
Agreement or to affect the meaning or interpretation of this
Agreement.
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Section 10.17. Counterparts. This Agreement may
be executed in counterparts, each of which shall be deemed an
original, and all of which shall be deemed to constitute one and
the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this
Agreement to be executed by their duly authorized representatives
on the date set forth above.
ADVANCED MICRO DEVICES, INC. FUJITSU LIMITED
/s/ Gene Conner /s/ Hikotara Masunaga
- - ----------------------------- -----------------------------
By: Gene Conner By: Hikotaro Masunaga
Title: Senior Vice President, Title: Managing Director
Operations
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ATTACHMENT A
TO
TECHNOLOGY CROSS-LICENSE AGREEMENT
FUJITSU AFFILIATES
1. Amdahl Corporation
2. HaL Computer Corporation
3. Such other companies (in which Fujitsu has not less
than a five percent (5%) stock ownership) as may be requested by
Fujitsu and approved (which approval shall not be unreasonably
withheld) by AMD for addition to this Attachment A.
AMD AFFILIATES
1. Such companies (in which AMD has not less than a five
percent (5%) stock ownership) as may be requested by AMD and
approved (which approval shall not be unreasonably withheld) by
Fujitsu for addition to this Attachment A.
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ATTACHMENT B
TO
TECHNOLOGY CROSS-LICENSE AGREEMENT
Each party is licensed under Section 3.1 or 3.2:
1. With regard to NVMs:
(i) Fujitsu: to sell, lease, or otherwise dispose of NVMs in the
countries [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION] Ireland, the United Kingdom,
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION].
(ii) AMD: to sell, lease, or otherwise dispose of NVMs in the
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION] countries in Europe (except
Ireland and the United Kingdom) [CONFIDENTIAL INFORMATION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION].
(iii) [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION].
(iv) Each party: to assemble, package and test, [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] and to use, NVMs anywhere in the world.
2. With regard to Pilot Products:
(i) Each party: to make [CONFIDENTIAL INFORMATION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] Pilot
Products, [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION] and to use such Pilot
Products, anywhere in the world.
(ii) [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION].
3. With regard to Memory Cards:
(i) Each party: to make [CONFIDENTIAL INFORMATION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] and to
use Memory Cards anywhere in the world.
(ii) Each party: to sell, lease or otherwise dispose of Memory
Cards as provided for NVMs in 1. above or 4. below. [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION].
4. With regard to the European Community ("EC") (and, if the
European Economic Area ("EEA") Agreement comes into effect, the EEA):
Each party: commencing five years after the first commercial sale
of each new NVM or Memory Card in the EC (and, if the EEA Agreement
comes into effect, the EEA), and notwithstanding anything else in this
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Attachment B, to sell, lease or otherwise dispose of such NVM or
Memory Card anywhere in the EC (and, if the EEA Agreement comes into
effect, the EEA). Notwithstanding the foregoing or anything else in
this Attachment B, (i) for the first five years from such first
commercial sale, each party may solicit orders, advertise, set up or
appoint distributors or sales representatives, establish warehouses,
and otherwise engage in active sales and marketing for such NVM or
Memory Card only in the countries of the EC (and, if the EEA Agreement
comes into effect, the EEA) specified for such party in 1.(i) or
1.(ii), as applicable, above, and (ii) at any time, the unsolicited
sale, lease or other disposition of NVMs or Memory Cards shall be
permitted between Member States of the EC (and, if the EEA Agreement
comes into effect, the EEA).
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