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EXHIBIT 10.27(e)
JOINT VENTURE 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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JOINT VENTURE LICENSE AGREEMENT
Table of Contents
Page
INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . 1
1. DEFINITIONS . . . . . . . . . . . . . . . . . . . . . . . 2
2. GRANTS OF LICENSE . . . . . . . . . . . . . . . . . . . . 3
3. SUPPORT AND TRAINING. . . . . . . . . . . . . . . . . . . 4
4. CONSIDERATION . . . . . . . . . . . . . . . . . . . . . . 4
5. TAXATION. . . . . . . . . . . . . . . . . . . . . . . . . 6
6. INTELLECTUAL PROPERTY RIGHTS. . . . . . . . . . . . . . . 6
7. EXCHANGE OF INFORMATION AND CONFIDENTIALITY . . . . . . . 7
8. RESIDENCE AT JV FACILITY. . . . . . . . . . . . . . . . . 8
9. THIRD PARTY CLAIM . . . . . . . . . . . . . . . . . . . . 8
10. WARRANTIES, LIMITATION ON LIABILITY, AND COVENANTS. . . . 9
11. TERM AND TERMINATION. . . . . . . . . . . . . . . . . . . 10
12. MISCELLANEOUS . . . . . . . . . . . . . . . . . . . . . . 12
ATTACHMENT A . . . . . . . . . . . . . . . . . . . . . . . . . 20
ATTACHMENT B . . . . . . . . . . . . . . . . . . . . . . . . . 21
ATTACHMENT C . . . . . . . . . . . . . . . . . . . . . . . . . 22
ATTACHMENT D . . . . . . . . . . . . . . . . . . . . . . . . . 23
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JOINT VENTURE LICENSE AGREEMENT
This Joint Venture License Agreement (this "Agreement"), dated as of
April 16, 1993, is among ADVANCED MICRO DEVICES, INC. ("AMD"), a
Delaware corporation having its principal office at 901 Thompson Place,
Sunnyvale, California 94088-3453, U.S.A., FUJITSU LIMITED ("Fujitsu"), a
Japanese corporation having its registered office at 1015 Kamikodanaka,
Nakahara-ku, Kawasaki 211, Japan, and FUJITSU AMD SEMICONDUCTOR LIMITED ("JV"),
a Japanese corporation having its registered office at 1263 Kamikodanaka,
Nakahara-ku, Kawasaki 211, Japan.
INTRODUCTION
A. Fujitsu and AMD have entered into a joint venture agreement dated
March 30, 1993 (the "Joint Venture Agreement"), and other related agreements
to establish JV to manufacture and supply certain integrated circuits.
B. Fujitsu is, among other things, in the business of designing,
developing, manufacturing and selling semiconductor products.
C. AMD is, among other things, in the business of designing, developing,
manufacturing and selling semiconductor products.
D. JV desires Fujitsu and AMD to grant to JV, and Fujitsu and AMD are
willing to grant to JV, a limited license to use their respective intellectual
property rights for manufacturing and supplying certain JV Products (as defined
in the Joint Development Agreement), subject to the terms and conditions as
hereinafter set forth.
E. JV desires to obtain from Fujitsu and AMD, and Fujitsu and AMD are
willing to supply JV, certain relevant technology, technical training and
support for such JV Products.
F. Fujitsu and AMD desire JV to grant to Fujitsu and AMD, and JV is
willing to grant to Fujitsu and AMD, a license to use JV's intellectual
property rights to make, use or sell products, subject to the terms and
conditions as hereinafter set forth.
ACCORDINGLY, in consideration of the mutual covenants and promises
contained herein, Fujitsu, AMD and JV agree as follows:
Article 1. DEFINITIONS.
As used in this Agreement, the following terms shall have the
following meanings:
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Section 1.1 The following words as used herein have the meanings
defined in the Technology Cross-License Agreement between AMD and Fujitsu
("Technology Cross-License") dated as of March 1993 (except that, for purposes
of this Agreement, references in Sections 1.9 and 1.25 of the Technology
Cross-License to "this Agreement" shall mean this Agreement).
Technology Cross-
Definition License Section
---------- -----------------
"Affiliate" 1.1.
"Applicable Law" 1.2.
"Confidential Information" 1.4.
"EPROM" or "Electrically Programmable
Read Only Memory" 1.7.
"Flash Memory" 1.8.
"Governmental Approvals" 1.9.
"Governmental Authority" 1.10.
"Incorporated Product" 1.11.
"Joint Development Agreement" 1.13.
"Memory Card" 1.20.
"Nondisclosure Agreements" 1.21.
"NVM" or "Non-Volatile Memory" 1.23.
"Other IPR" 1.24.
"Patents" 1.25.
"Pilot Product" 1.26.
"Proprietary Information" 1.28.
"Subsidiary" 1.33.
"Transitional Event" 1.34.
Section 1.2. "AMD/Fujitsu Technology" shall mean the front-end
manufacturing process technology for manufacturing JV Products and the product
design data for JV Products owned or developed by Fujitsu and/or AMD and
provided or transferred to JV by AMD or Fujitsu in accordance with this
Agreement. The major elements of AMD/Fujitsu Technology to be provided are
currently anticipated as set forth in Attachment D hereto.
Section 1.3. "Effective Date" shall mean the later to occur of
(a) the date of this Agreement or (b) the date on which all required
Governmental Approvals have been obtained.
Section 1.4. "IPR" or "Intellectual Property Rights", (a) with
respect to Fujitsu or AMD, shall have the meaning set forth in the Technology
Cross-License, and (b) with respect to JV, shall mean all Patents of JV and all
copyrights, mask works, trade secrets, know-how, data, formula, processes,
confidential information, or other information, tangible or otherwise, that are
wholly owned by JV or as to which, and only to the extent and subject to the
conditions under which, JV 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 JV is
reimbursed for any payments so made, in which case such information shall be
included within IPR for any license or sublicense to the party providing the
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reimbursement) except for payments to a Subsidiary of JV, if any, or payments
to third parties for IPR developed or created by such third parties while
employed by JV or any Subsidiary thereof.
Section 1.5. [Intentionally omitted]
Section 1.6. "JV Product" shall have the meaning set forth in
Section 1.4 of the Joint Development Agreement.
Section 1.7. [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]
Section 1.8. "Subject Technology IPR" shall have the meaning
set forth in Section 1.6 of the Joint Development Agreement.
Section 1.9. "Tripartite IPR" shall mean IPR which, during the
term of this Agreement, all of AMD, Fujitsu, and JV jointly own and/or control
as a result of the joint development and design work done by all three parties
hereunder.
Article 2. GRANTS OF LICENSE.
Section 2.1. Fujitsu hereby grants to JV a non-exclusive, non-
transferable license under Fujitsu IPR, with no right to sublicense:
(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 and/or testing) and use JV Products and to use Pilot Products
anywhere in the world; and
(b) to sell, lease or otherwise dispose of JV Products and Pilot
Products solely in the countries specified in Attachment A.
Section 2.2. AMD hereby grants to JV a non-exclusive, non-
transferable license under AMD IPR, with no right to sublicense:
(a) to make, have made and use JV Products and to use Pilot
Products anywhere in the world; and
(b) to sell, lease and otherwise dispose of JV Products and
Pilot Products solely in the countries specified in Attachment B.
Section 2.3. JV hereby grants to AMD and Fujitsu a non-
exclusive, non-transferable, perpetual, irrevocable, [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION],
worldwide license, with the right to sublicense freely, under JV IPR to make,
have made, use, sell, lease or otherwise dispose of any processes, manufacturing
apparatus, or products anywhere in the world.
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Section 2.4. JV agrees that it shall notify AMD and Fujitsu of
any significant modifications to AMD/Fujitsu Technology or JV technology.
Article 3. SUPPORT AND TRAINING.
Section 3.1. AMD and Fujitsu shall use their best efforts to
provide AMD/Fujitsu Technology to JV in accordance with the schedule set forth
in Attachment C hereto, as such schedule may be modified from time to time upon
mutual agreement of the parties.
Section 3.2. AMD and Fujitsu agree to cooperate with each other
and with JV in providing to JV the AMD/Fujitsu Technology.
Section 3.3. Either AMD or Fujitsu may, upon the consent of AMD
in the case of Fujitsu or Fujitsu in the case of AMD, provide JV with new
AMD/Fujitsu Technology as a replacement for previously provided AMD/Fujitsu
Technology.
Section 3.4. Each of Fujitsu and AMD shall use best efforts to
provide to JV without charge initial technical training or support as required
in connection with the delivery of AMD/Fujitsu Technology. Such technical
training shall be provided in accordance with a schedule to be mutually agreed
upon by the JV and the party responsible for providing such Technology, but in
any event such training or support shall last no longer than ninety (90) days
from the date of the first delivery of the relevant Technology.
Section 3.5. From time to time after the provision of technical
training or support contemplated by Section 3.4, JV may request and Fujitsu
and/or AMD, as the case may be, may provide, additional technical training or
support upon terms and conditions as agreed between or among Fujitsu and/or AMD
and the JV. The responsible party as set forth in Section 3.4 above shall be
responsible for such additional technical training or support.
Section 3.6. JV shall assign one or more of its employees to be
responsible for receiving and managing AMD/Fujitsu Technology, and shall notify
AMD and Fujitsu of the name of such employee(s) prior to the delivery of any
AMD/Fujitsu Technology. When JV changes such responsible employee(s), JV shall
notify Fujitsu and AMD of such change in writing without delay.
Article 4. CONSIDERATION.
Section 4.1. In consideration of the license to Fujitsu IPR
granted under Section 2.1, and the rights in Tripartite IPR acquired by
JV under Sections 6.1 and 6.2, JV agrees to pay Fujitsu [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION] which shall be due for all JV Products sold, leased, or
otherwise transferred by JV worldwide.
Section 4.2. In consideration for the license to AMD IPR
granted under Section 2.2, and the rights in Tripartite IPR acquired by JV
under Sections 6.1 and 6.2, JV agrees to pay AMD [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]
which shall be due for all JV Products sold, leased, or otherwise transferred
by JV worldwide.
Section 4.3. [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] shall be payable
semi-annually within sixty (60) days after the end of each half of JV's fiscal
year.
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On or before the date of such payment JV shall send to Fujitsu and AMD a
report describing the basis for its [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] calculation.
Notwithstanding Sections 4.1 and 4.2 and any other provisions hereof, no
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] shall be payable by JV to a party on JV Products if such
JV Products do not embody, do not incorporate or are not otherwise subject to
(or are not manufactured through processes or methods that embody, incorporate
or are otherwise subject to) the IPR of such party, Subject Technology IPR, or
Tripartite IPR.
Section 4.4. JV shall pay to Fujitsu and/or AMD, as the case may
be, a fee for any technical training provided to JV by Fujitsu and/or AMD
pursuant to Section 3.5 at a rate to be mutually agreed by the JV, Fujitsu and
AMD, which shall include a fee for the services of any employees provided and
all actual costs incurred by Fujitsu and/or AMD, as the case may be, in
providing such training, including but not limited to, travel, hotel and per
diem expenses of such employee(s) and any costs of translation and reproduction
of written materials. JV shall pay such fee to Fujitsu and/or AMD, as the case
may be, within thirty (30) days of the date of the invoice issued by Fujitsu or
AMD.
Section 4.5. All payments made hereunder pursuant to Section 4.3
and 4.4 above shall be free and clear of all deductions, withholding taxes or
other charges, except as provided in Article 5, and shall be made by JV in
Japanese yen to Fujitsu or US dollars to AMD, by wire transfer to a bank
account(s) designated by Fujitsu or AMD, as the case may be, unless otherwise
mutually agreed upon. Any currency conversion required in connection with
payment to Fujitsu or AMD, as the case may be, shall be at the rate received by
JV at the time of such payment from the bank it utilizes to make such payment.
Section 4.6. Fujitsu and AMD shall each have the right, at its
own expense, upon reasonable notice and at reasonable times, but not more than
once each fiscal year for each party, to inspect, through an independent
auditor or another person reasonably acceptable to JV, JV's records for the
purpose of verifying the accuracy of JV's calculations of [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION]. JV shall keep records showing the JV Products sold or otherwise
disposed of under the licenses granted herein and the calculation of Net Sales
in sufficient detail to enable the [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] payable to Fujitsu or
AMD to be determined. Such records shall be maintained for a period of at
least [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION] after the date when payment is due by JV.
Section 4.7. In the event Fujitsu or AMD, as the case may be, is
required to pay a fee to a third party pursuant to any license agreement or
amendment to an existing license agreement for sublicensing such third party's
intellectual property rights to JV, JV shall be responsible for such fee to the
extent such fee is a separate [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] on sales by JV. Where
such fee is part of a general lump sum payment, the sublicensing party and JV
shall agree upon a mutually acceptable allocation of such payment.
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Section 4.8. The parties have established the [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION] rates set forth in Sections 4.1 and 4.2 based on what they believe
are commercially appropriate arm's-length [CONFIDENTIAL INFORMATION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] rates given the
anticipated economic performance of JV. If the profits of JV exceed, or fall
short of, those reasonably contemplated by the parties, the parties agree to
make appropriate adjustments to the [CONFIDENTIAL INFORMATION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] rates.
Article 5. TAXATION.
Section 5.1. If required by applicable laws, JV may withhold
income tax from any payment to AMD or Fujitsu, as the case may be. In the case
of such withholding, JV shall, without delay, pay the withheld tax to the
appropriate tax office and furnish Fujitsu or AMD, as the case may be, with
appropriate evidence of the tax payment.
Section 5.2. JV shall bear all sales, use and other governmental
taxes or transaction charges imposed in any jurisdiction which arise in
connection with the delivery or use of AMD/Fujitsu Technology, or the
manufacture or sale of JV Products by JV hereunder.
Section 5.3. The parties agree that the tangible portion of the
property delivered and to be delivered by AMD to JV is valued at [CONFIDENTIAL
INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION] and by Fujitsu to JV is valued at [CONFIDENTIAL INFORMATION OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION].
Article 6. INTELLECTUAL PROPERTY RIGHTS.
Section 6.1. Except as provided in Section 6.2, all Tripartite
IPR hereunder shall be jointly owned by JV, AMD and Fujitsu. None of the
parties hereto may file an application for a Patent, with respect to such
Tripartite IPR without the prior written consent of the other parties hereto.
The parties agree to cooperate in applying for, prosecuting and maintaining any
Patents as may be mutually agreed and in protecting such Tripartite IPR, and in
each case, to equally divide the expenses thereof. Except for the
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] payments required by Sections 4.1 and 4.2, each of
Fujitsu, AMD and JV shall have the right to make, have made, use and sell
products and processes using the Tripartite IPR and to license (except in case
of JV, any such license to be subject to appropriate Board of Directors
approval) Tripartite IPR without accounting to the other parties unless
otherwise mutually agreed upon in writing, except that neither Fujitsu, AMD nor
JV shall assign its ownership interest in any Tripartite IPR to a third party
without the prior written consent of the other parties.
Section 6.2. Where any technology related to JV Products is
developed independently by any party hereto, or by JV jointly with either
Fujitsu or AMD,
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without use of the Confidential Information of the other party(ies), in the
course of development and design work in accordance with the terms of this
Agreement, the ownership and the right to file for a Patent for such
technology shall rest solely with the party(ies) developing such technology.
All Other IPR and Proprietary Information in such technology shall be owned
jointly by the parties, shall be considered Tripartite IPR and shall be
subject to the provisions of this Agreement regarding Tripartite IPR. Pursuant
to the Technology Cross-License and the Joint Development Agreement and
Article 2 of this Agreement, each of Fujitsu, AMD, and JV will grant to the
others a license to the IPR covering any such technology developed
independently by such party and patented by such party in accordance with this
Section 6.2.
Article 7. EXCHANGE OF INFORMATION AND CONFIDENTIALITY.
Section 7.1. During the term of this Agreement, Fujitsu, AMD and
JV shall exchange their Confidential Information relevant to NVMs as necessary
(but only to the extent as legally permitted) to enable the parties to
cooperate fully in developing NVMs.
Section 7.2. Except as expressly authorized among the parties,
(including, without limitation, the exercise of the rights granted to a party
under this Agreement, the Technology Cross-License and the Joint Development
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 any others, (ii) or 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. 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 recipient or others, or (y) merely because it is expressed
in public literature in general terms not specifically in accordance with the
Confidential Information.
Section 7.3. In furtherance, and not in limitation of the
foregoing Section 7.2, 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
information, (ii) restrict disclosure of such information to those of its
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
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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 7.4. The foregoing confidentiality obligation shall also
apply to the contents of this Agreement.
Section 7.5. The obligations under this Article 7 shall not
prevent the parties from disclosing the Confidential Information or the terms
of this Agreement to any government agency as required by law (provided that
the party intending to make such disclosure in such circumstances has given
prompt notice to the party providing such Confidential Information prior to
making such disclosure so that such 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 7.6. The obligations under this Article 7 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
that a longer period shall apply, in which case the obligations under this
Article 7 with respect to such Confidential Information shall apply for such
longer period.
Article 8. RESIDENCE AT JV FACILITY.
Fujitsu and/or AMD shall be permitted to have a limited number
of engineers and technical personnel reside at JV's facilities at such party's
own cost to enhance information exchange among Fujitsu, AMD and JV. The number
of engineers, and technical personnel, shall be subject to JV's prior
reasonable approval. Any JV IPR obtained or learned by such engineers, and
technical personnel, during such period shall be included within the licenses
granted under Section 2.3.
Article 9. THIRD PARTY CLAIM.
Section 9.1. JV shall indemnify and hold harmless AMD, Fujitsu,
and their Subsidiaries from any loss or damages (including reasonable
attorney's fees) arising from any and all claims or actions brought against JV,
Fujitsu or AMD, based upon any JV Product sold by JV. JV shall control the
defense of such claims or actions and AMD and Fujitsu shall render reasonable
support to JV.
Section 9.2. Fujitsu and AMD shall indemnify and hold harmless
JV from any loss or damages (including reasonable attorney's fees) arising from
any and all claims or actions brought against JV based upon the AMD/Fujitsu
Technology as and to the extent hereinafter provided. With respect to
AMD/Fujitsu Technology that is owned jointly by AMD and Fujitsu, AMD and
Fujitsu shall jointly (but not severally) indemnify JV. With respect to
AMD/Fujitsu Technology that is transferred to JV and that is owned solely by
either AMD or Fujitsu, such transferring party shall indemnify JV. In the
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event of the joint indemnification, AMD and Fujitsu shall cooperate
fully in the defense of such claims or actions and the costs and expenses
(including any losses or damages (including reasonable attorney's fees)) shall
be shared equally. In the event the indemnity is by either AMD or Fujitsu, such
party shall control the defense of such claims or actions. The JV and the other
party shall render reasonable support to the party or parties indemnifying JV
hereunder.
Article 10. WARRANTIES, LIMITATION ON LIABILITY, AND COVENANTS.
Section 10.1. Each of the parties hereto represents and warrants
to each 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
parties 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 indemnify, hold harmless and defend the other parties against
a breach by such party of this Section 10.1.
Section 10.2. 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 JV
IPR, Tripartite IPR, 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, publicity 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 10.3. EXCEPT AS EXPRESSLY PROVIDED HEREIN, NONE OF THE
PARTIES 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
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PURPOSE, WARRANTIES OF FREEDOM FROM ERRORS OR DEFECTS, OR WARRANTIES OF
NON-INFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY RIGHTS, AND NONE OF THE
PARTIES HERETO 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 11. TERM AND TERMINATION.
Section 11.1. Term. This Agreement shall become effective as of
the Effective Date and, unless and until terminated hereunder, shall continue
until the occurrence of a Transitional Event, at which time this Agreement
shall terminate.
Section 11.2. Termination. Termination of this Agreement may
result from the events listed below. Each party agrees to give prompt written
notice to the other parties of the happening of any such event.
(a) If any party hereto defaults in the performance of any
material obligation hereunder, a 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 satisfaction of all of
the non-defaulting parties within ninety (90) days after the written notice of
such default then a non-defaulting party may, in addition to any other remedies
it or they may have, terminate this Agreement by written notice. This
Agreement shall terminate on the thirtieth (30th) day after such notice of
termination.
(b) Any party hereto may terminate this Agreement by giving
written notice of termination to the other parties 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 any general
assignment for the benefit of creditors; or
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(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) AMD
or Fujitsu 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) AMD or Fujitsu consolidates with or merges with or into another
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) AMD or Fujitsu 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, any other party
may terminate this Agreement upon thirty (30) days' advance written notice to
the other parties, provided, in each case, that the terminating party must
exercise such right no later than one (1) year after receiving written notice
of such transaction from the affected party.
(d) In the event that a third party (other than a bank,
insurance company or other financial or investment company or institution)
acquires greater than [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION] ownership of AMD or Fujitsu and
either a position on the board of directors or a position of management in such
party, where such acquisition of ownership and management position or board
position in such party is judged by any other party hereto after careful
consideration to be detrimental to such other party, such other party may
terminate this Agreement upon thirty (30) days' advance written notice to such
party, provided that the terminating party must exercise such right not later
than one (1) year after receiving written notice of such transaction from the
affected party.
(e) AMD or Fujitsu may terminate this Agreement upon thirty
(30) days' written advanced notice to the other party and JV where such other
party ceases to own more than [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] of the issued and
outstanding capital stock of JV.
(f) In the event that a change occurs in the management of AMD
or Fujitsu as a result of a proxy solicitation contest, which change is judged
by any other party after careful consideration to be detrimental to the affairs
of JV, either of the other parties may terminate this Agreement upon thirty
(30) days' written advance notice to the other parties, provided that the
terminating party must exercise such right not later than one (1) year after
receiving written notice of such event from the affected party.
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Section 11.3. Effect of Termination.
(a) Except as otherwise provided in this Section 11.3, 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 5, 6, 7, 9, 10, 11 and 12, and Sections 2.3, 4.6,
4.7 and 4.8 which shall survive termination or expiration of this Agreement.
(b) Upon termination of this Agreement for whatever reason, (i)
all IPR licensed pursuant to this Agreement prior to its termination shall
continue in full force and effect, and (ii) JV, Fujitsu and AMD shall (A)
jointly own all JV IPR and Tripartite IPR, (B) cooperate (if agreed by AMD and
Fujitsu) in applying for, prosecuting and maintaining any Patents, and
protecting such IPR developed prior to termination of this Agreement and
equally dividing the expenses thereof, and (C) except as otherwise provided in
Section 11.3.(c), have the unlimited right to use and to license such JV IPR
and Tripartite IPR and the right to make, have made, use, reproduce, modify,
distribute, sell, lease or otherwise dispose of any processes and products
based upon or incorporating such IPR without restriction or accounting to the
other party unless otherwise mutually agreed upon in writing, except that
neither Fujitsu nor AMD shall assign its ownership interest in any such IPR to
a third party without the prior written consent of the other party.
(c) The surviving licenses to the JV pursuant to this
Subsection 11.3 shall be subject to the payment of [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] by JV
to AMD and Fujitsu as may be mutually agreed by the parties at the time of
termination, provided that if the parties are unable to mutually agree upon
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] at such time, the [CONFIDENTIAL INFORMATION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] shall be set at
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] of Net Sales to each party for all JV Products sold by JV
for [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION] after termination, payable semi-annually in accordance
with the provisions of Sections 4.3, 4.5, 4.6 and Article 5 and the surviving
licenses to the JV shall hereafter be paid-up and royalty-free.
Article 12. MISCELLANEOUS.
Section 12.1. Force Majeure. No 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 parties 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 12.2. 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
voluntarily or by operation of law, or otherwise, by any party without the
prior written consent of the other parties. This Agreement shall inure to the
benefit of and be binding upon the parties' permitted successors and assigns.
Section 12.3. 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 mail (and if overseas,
by airmail), postage prepaid, or otherwise delivered by hand or by messenger,
or by recognized courier service (with written receipt confirming delivery),
addressed:
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(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:
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:
Senior Vice President,
Operations Advanced Micro Devices, Inc.
P.O. Box 3453
Sunnyvale, CA 94088-3453
U.S.A.
Attn: Gene Conner
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.
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16
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.
(c) If to JV:
Mail or Hand Delivery:
Fujitsu AMD Semiconductor, Limited
1015 Kamikodanaka
Nakahara-Ku
Kawasaki 211
Japan
Attn: Kimio Yanagida, President
with two copies 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
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with a copy to:
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
with two copies 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.
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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 mail or 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 mail or
airmail, as the case may be; 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.
Section 12.4. 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 12.5. 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 agreed between the parties; provided, however, that the
arbitrators shall be empowered to hold hearings at other locations within or
without Japan. Fujitsu and AMD shall each designate one arbitrator and the two
arbitrators so designated shall select the third arbitrator. Arbitration
proceedings shall be conducted in English with simultaneous translations 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 12.5 shall be the exclusive means of
resolving disputes involving AMD and arising under 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 any party's counsel to furnish technical or 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, that such expert
agrees to comply with the confidentiality terms of this section, and that such
expert will not use any Confidential Information disclosed to such expert for
personal or business advantage.
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19
Section 12.6. Entire Agreement. This Agreement, the Joint
Venture Agreement, the other Associated Agreements (as defined in the Joint
Venture Agreement), and the attachments and exhibits hereto and thereto, embody
the entire agreement and understanding between the parties with respect to the
subject matter hereof, superseding all previous and contemporaneous
communications, representations, agreements and understandings, whether written
or oral, including without limitation that certain Memorandum of Understanding
between Fujitsu and AMD dated July 13, 1992 and the Nondisclosure Agreements.
No party has relied upon any representation or warranty of any other party
except as expressly set forth herein, in the Joint Venture Agreement and in the
Associated Agreements.
Section 12.7. Modification. This Agreement may not be modified
or amended, in whole or part, except by a writing executed by duty authorized
representatives of all parties.
Section 12.8. 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. No party shall unreasonably withhold its
consent to a time proposed by any other party.
Section 12.9. 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 12.10. 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 any 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 any other party, nor shall any forbearance by
the first party to seek a remedy for any noncompliance or breach by any other
party be deemed to be a waiver by the first party of its rights and remedies
with respect to such noncompliance or breach.
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20
Section 12.11. Nature of Rights. Each party shall have the
rights licensed under this Agreement to any other party's technology and the
related IPR 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 another party
("licensee party") are, for purposes of Section 365(n) of the U.S. Bankruptcy
Code (the "Bankruptcy Code"), licenses of "intellectual property" within the
scope of Section 101 of the Bankruptcy Code. The parties agree that each
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, each
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, such 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 12.12. 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 12.13. 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 12.14. Language. This Agreement, and the attachments
hereto, are in the English language, which language shall be controlling in all
respects.
Section 12.15. No Agency or Partnership. This Agreement shall
not constitute an appointment of any party as the legal representative or agent
of any other party, nor shall any 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, any 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 12.16. 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 12.17. 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 in triplicate by their duly authorized representatives on the date
set forth above.
ADVANCED MICRO DEVICES, INC. FUJITSU LIMITED
/s/ GENE CONNER /s/ HIKOTARO MASUNAGA
By: Gene Conner By: Hikotaro Masunaga
Title: Senior Vice President, Operations Title: ManagingDirector
FUJITSU AMD SEMICONDUCTOR LIMITED
/s/ K. YANAGIDA
By: KIMO YANAGIDA
Title: President
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ATTACHMENT A
TO
JOINT VENTURE LICENSE AGREEMENT
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]
20
23
ATTACHMENT B
TO
JOINT VENTURE LICENSE AGREEMENT
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]
21
24
ATTACHMENT C
TO
JOINT VENTURE LICENSE AGREEMENT
[CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]
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25
ATTACHMENT D
TO
JOINT VENTURE LICENSE AGREEMENT
1. Process Information
A. Basic Process Data
B. Manufacturing Specifications
C. Process Evaluation Data
2. Device Design Information for Each JV Product
A. Product Specifications
B. Design Data
C. Device Evaluation Data
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