AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
TECHNOLOGY DEVELOPMENT
AND LICENSE AGREEMENT
This Technology Development and License Agreement ("Agreement") is entered into
as of October 1, 1998 (the "Effective Date"), by and between Advanced Micro
Devices, Inc. and its Subsidiaries ("AMD"), a Delaware Corporation, with
principal offices located at One AMD Place, P.O. Box 3453, Sunnyvale, California
94088-3453, and Motorola, Inc. and its Subsidiaries ("Motorola"), a Delaware
corporation, with principal offices located at 1303 East Algonquin Road,
Schaumburg, Illinois 60196.
RECITALS
Whereas, AMD and Motorola have complementary strengths in the flash memory,
embedded logic, and microprocessor businesses and in supporting technologies and
manufacturing capabilities.
Whereas, the companies believe that entering into this Agreement to take
advantage of these complementary skills and needs will have value for both
companies and their respective customers by accelerating the development of
future technologies, increasing the likelihood of success, leveraging the
capital costs required, and increasing the quantity and quality of product
offerings available from each company.
Now, therefore, in consideration of the rights and obligations set forth in this
Agreement, the parties agree as follows:
AGREEMENT
1. Definitions.
1.1. "Acquired Party" means a party to this Agreement that
undergoes a Change of Control.
1.2. "Acquiring Party" means the person or entity that acquires
fifty percent (50%) or more of the outstanding voting
securities of a party to this Agreement, such that the party
being acquired undergoes a Change of Control.
1.3. "AMD Technology" means technology developed solely and/or
owned solely by AMD and all solely owned intellectual property
pertaining thereto.
Confidential treatment has been requested for portions of this exhibit. The copy
filed herewith omits the information subject to the confidentiality request.
Omissions are designated as *****. A complete version of this exhibit has been
filed separately with the Securities and Exchange Commission.
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1.4. "Change of Control" means the acquisition by a single legal
entity or natural person of fifty percent (50%) or more of the
outstanding securities of a party entitled to vote for the
board of directors of such party.
1.5. "Confidential Information" means any information disclosed by
a party (the "Disclosing Party") to the other party (the
"Receiving Party") pursuant to this Agreement in a context
which would cause a reasonable person to believe the
information is intended to be treated as confidential,
including but not limited to, documents expressly designated
as confidential, and information related to either party's
manufacturing processes, products, employees, facilities,
equipment, security systems, information systems, finances,
product plans, marketing plans, suppliers, or distributors;
provided, however that "Confidential Information" shall not
include information that: (i) is now available or becomes
available to the public without breach of this Agreement; (ii)
is explicitly approved for release by written authorization of
the Disclosing Party; (iii) is lawfully obtained from a third
party or parties without a duty of confidentiality; (iv) is
disclosed to a third party by the Disclosing Party without a
duty of confidentiality; (v) is known to the Receiving Party
prior to disclosure; or (vi) is at any time developed by the
Receiving Party independently of any such disclosure(s) from
the Disclosing Party.
1.6. "Conforming Deliverable" means a deliverable identified in a
Statement of Work that is agreed to by the parties to
substantially conform with the acceptance criteria for that
deliverable specified in the Statement of Work.
1.7. "Customer" means a company that, as a regular course of
business, purchases substantial quantities of semiconductor
products from a party to this Agreement.
1.8. ***** means a party to this Agreement providing information,
training and support to a ***** of that party regarding a
Logic Process Technology, Embedded Flash Technology, or other
semiconductor manufacturing process developed and/or licensed
under this Agreement, and *****.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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1.9. "Data Networking Products" means semiconductor products of AMD
designed specifically for data networking applications, that
are being shipped to customers as of the Effective Date, and
specifically excludes *****, and other AMD devices which
cannot be licensed due to agreements with third parties that
were signed as of the Effective Date.
1.10. "Derivative Process" means a semiconductor fabrication
process, other than a Logic Process Technology or Embedded
Flash Technology, which incorporates, modifies or uses steps
or elements developed for and utilized in such Technologies.
1.11. "Derivative Product" means a product that incorporates, in
whole or in substantial part, a pre-existing design, or a
modification of a pre-existing design, and which may add
functionality or performance to a pre-existing design.
1.12. "Embedded Flash Technology" means a technology resulting from
incorporating a high-density non-volatile flash array process
into a logic process while maintaining compatibility with the
general design rules of the logic process. Embedded Flash
Technology includes CDR1, CDR3, HIP6F and SGEFT as are defined
generally below and are defined specifically in documents for
each Embedded Flash Technology set forth in Appendix A.
Appendix A will be updated as necessary to include documents
to specifically describe each new Embedded Flash Technology as
it is developed.
(a) "CDR1" means embedded flash technology in which
*****.
(b) "CDR3 and future CDR processes" mean embedded flash
technologies in which *****.
(c) "HIP6F" means a high performance process for
manufacturing stand-alone and embedded flash devices
based on HIP6L.
(d) "SGEFT" means subsequent generation embedded flash
technologies developed by the parties pursuant to
this Agreement, that are successors to HIP6F.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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1.13. "Existing Product" means a product, production units of which
were first distributed to customers prior to or no more than
six (6) months after a Change of Control.
1.14. "Executive Board of Directors" means the ultimate governance
authority for the AMD-Motorola alliance.
1.15. "Foundry" means a company that manufactures semiconductor
products for a party other than a party to this Agreement, to
be purchased and resold by such party.
1.16. ***** means a party to this Agreement providing information,
training and support to a ***** of that party regarding a
Logic Process Technology, Embedded Flash Technology, or other
semiconductor manufacturing process developed and/or licensed
under this Agreement, and *****.
1.17. "Improvement" means a change or addition to a process which
improves or modifies it in some manner, including but not
limited to increasing manufacturing throughput, increasing the
performance, quality or yield of devices manufactured using
the process, decreasing the cost of utilizing the process, or
enabling the use of different materials but does not include
the manufacture of different types of devices utilizing the
process unless specifically agreed upon by the parties hereto;
provided, however, that a change or addition will constitute
an Improvement only if the process after such Improvement
still fits within the definition for that process (e.g.,
HIP5L, HIP6L or HIP7L) set forth in this Agreement.
1.18. "Intellectual Property" means all intellectual property
including but not limited to copyrights, trade secrets, and
know how but specifically excluding patents.
1.19. "IP Expenses" are fees, costs, or other charges related to
securing and maintaining intellectual property rights other
than IP Fees and Translation Expenses.
1.20. "IP Fees" are fees or other charges required to be paid to a
governmental agency, governmental office, or other
governmental entity to secure and maintain intellectual
property rights and include filing fees, registration fees,
issue fees, maintenance fees, annual taxes, and annuities.
1.21. "Joint Technology" means: (i) with respect to copyrightable
material
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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December 3, 1998 - Execution Document
or work subject to protection under Chapter 9 of Title 17 of
the U.S. Code (Semiconductor Chip Protection Act), such
material or work qualifies as a "joint work" under 17 U.S.C.
Section 101; (ii) with respect to inventions subject to patent
protection, AMD and Motorola were "joint inventors" of such
invention under 35 U.S.C. Section 116; and (iii) with respect
to matter subject to trade secret protection, AMD and Motorola
both made substantial contributions to such matter. Where a
product or process consists of multiple parts, elements or
steps, each of which is capable of being subject to a claim of
ownership, each such part, element or step will be analyzed
separately to determine if it constitutes Joint Technology.
1.22. "Logic Process Technologies" means collectively HIP5L, HIP6L,
HIP7L, and SGLPT as are defined generally below and are
defined specifically in documents for each Logic Process
Technology set forth in Appendix B. Appendix B will be updated
as necessary to include documents to specifically describe
each new Logic Process Technology as it is developed.
(a) "HIP5L" means a high performance copper interconnect
logic process for manufacturing logic devices *****.
(b) "HIP6L" means a high performance copper interconnect
logic process for manufacturing logic devices *****.
(c) "HIP7L" means a high performance copper interconnect
logic process for manufacturing logic devices *****.
(d) "SGLPT" means subsequent generation logic process
technologies developed by the parties pursuant to
this Agreement, that are successors to HIP7L.
1.23. "Milestone" means an objectively verifiable achievement in a
Project, such as the completion of a certain stage of
development, the ability of a product or process under
development to pass certain tests, or the delivery of a
Conforming Deliverable.
1.24. "Motorola Technology" means technology developed solely and/or
owned solely by Motorola and all solely owned intellectual
property pertaining thereto.
1.25. "Non-Acquired Party" means a party to this Agreement when the
other party undergoes a Change of Control.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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1.26. "Personal Computing Environment" means a general purpose
personal computer or server including desktop, tower or
portable enclosures, intended primarily for use by a single
user where the user is allowed to install third party
application software and that is designed to operate with data
processing applications using personal computer operating
systems, such as Windows, Windows NT, Windows CE, and Mac OS,
or server operating systems such as AIX, UNIX, or OS/400, or
larger operating systems such as VM and MVS; provided,
however, that Personal Computing Environment does not include
a palmtop or PDA or a device smaller than a palmtop or PDA,
nor does it include communications, transportation, set top
box or consumer electronics applications.
1.27. "Power PC Microprocessors" means microprocessors designed for
the Personal Computing Environment and embedded applications
utilizing the industry desktop and embedded Power PC
architectures and instruction sets.
1.28. "Program Manager" means a manager who is an employee of a
party hereto and is responsible for business and operating
issues relating to a specific Project.
1.29. "Project" means a project agreed to by the Executive Board of
Directors and undertaken pursuant to this Agreement. The
parties have agreed to undertake the Projects described in
Sections 5 and 6 of this Agreement and will complete a
Statement of Work on each of those Projects ***** of the
Effective Date or as otherwise agreed to by the parties. The
parties also intend to commence other Projects under this
Agreement and will complete Statements of Work on those
Projects as provided in Section 3.1 herein.
1.30. "Statement of Work" means a development plan for a Project in
the form attached as Exhibit C, that includes a specification
of the product or process being developed, a description of
Milestones to be achieved (including, when appropriate,
deliverables and acceptance criteria), a development schedule
specifying when the Milestones are due and when the
development is supposed to be completed, a budget estimating
expenses to be incurred by each party in connection with the
Project, designation of a Program Management Team and those
items set forth in Sections 1.8 and 1.9 of Appendix D.
1.31. "Steering Committee" means the governance authority
responsible for the day-to-day operation of the AMD-Motorola
alliance.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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1.32. "Strategic Party" means a third party with whom a party to
this Agreement has a relationship to jointly develop and/or
design products or devices or portions of products or devices.
1.33. ***** means a party to this Agreement providing information,
training and support to a ***** of such party regarding a
Logic Process Technology, Embedded Flash Technology, or other
semiconductor manufacturing process developed and/or licensed
under this Agreement, and *****.
1.34. "Subsidiary" means a corporation, company, or other entity:
(a) more than forty percent (40%) of whose outstanding
shares or securities (representing the right to vote
for the election of directors or other managing
authority) are now or hereafter, owned or controlled,
directly or indirectly, by a party hereto, but such
corporation, company, or other entity shall be deemed
to be a Subsidiary only so long as such ownership or
control exists;
(b) which does not have outstanding shares or securities,
as may be the case in a partnership, joint venture or
unincorporated association, but more than forty
percent (40%) of whose ownership interest
representing the right to make the decisions for such
corporation, company, or other entity is now or
hereafter, owned or controlled, directly or
indirectly, by a party hereto, but such corporation,
company, or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control
exists.
1.35. "Technical Coordinator" means a technical manager who is an
employee of a party and is responsible for managing the
day-to-day development effort of a Project as set forth in
Section 2.4.
1.36. "Test Technology Know How" means the methods and techniques
provided to Motorola by AMD used to produce highly reliable
flash products at cost effective test times, including: stress
modes designed into the product; the characterization
techniques used to determine the conditions used in the stress
modes and their implementation into the production test
routines; the method of characterizing and testing the program
distribution and erase distribution in the product and the
application of this data in the test program that achieves
program and
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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erase distributions resulting in very low failure rate program
erase cycling; and the test methodology to reduce the effects
of manufacturing variability, resulting in improvements in
manufacturability and overall productivity. Test Technology
Know How does not include any particular production test
routines themselves.
1.37. ***** means a party to this Agreement providing information,
training and support to a ***** (any party other than Motorola
or AMD and who does not qualify as a *****, ***** under this
Agreement) regarding a Logic Process Technology, Embedded
Flash Technology, or other semiconductor manufacturing process
developed and/or licensed under this Agreement, and *****.
1.38. "Translation Expenses" are fees, costs, or other charges
related to translating patent applications and copyright
registrations.
1.39. "X86 Microprocessors" means microprocessors designed for
personal computers and servers compatible with X86 versions of
Microsoft Corporation's Windows(R) operating systems, and
utilizing the industry standard, X86 architecture and
instruction sets.
2. Alliance Governance
2.1. Executive Board of Directors.
The alliance will be governed by an Executive Board of Directors
comprised of eight (8) members. Four (4) members will be appointed by
AMD with the approval of Motorola and the other four (4) members will
be appointed by Motorola with the approval of AMD.
2.1.1. The following matters will require approval by the
Executive Board of Directors, in addition to any
other matters required to be approved by the
Executive Board of Directors by other terms of this
Agreement.
2.1.1.1. Appointment of new members to the Executive Board of
Directors and the Steering Committee.
2.1.1.2. Approval of Projects proposed by the Steering
Committee.
2.1.1.3. Amendments to the Logic Process Technology or
Embedded Flash Technology roadmaps.
2.1.2. Meetings: Meetings of the Executive Board of
Directors will be held
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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at least monthly for the first year and thereafter as
mutually agreed. The Executive Board of Directors'
meetings may be conducted on either a face-to-face
basis or via video or telephone conference call,
whichever is mutually agreed to by the Parties at
least ten (10) business days in advance of the
meeting. Special meetings may be called by any two
members of the Executive Board of Directors, one (1)
from each party, upon at least (i) ten (10) business
days prior notice for a face-to-face meeting or (ii)
seventy-two (72) hours prior notice for a telephonic
or video conference meeting. The Executive Board of
Directors may also act without a meeting upon
unanimous written consent of all of the Board
members.
2.1.3. Quorum
2.1.3.1. A quorum of the Executive Board of Directors will
consist of at least six (6) members, including at
least three (3) members representing AMD and three
(3) members representing Motorola. No action may be
taken at any meeting of the Executive Board of
Directors in the absence of a quorum.
2.1.3.2. Notwithstanding Section 2.1.3.1 above, in the event
all of the members representing one of the Parties
fail to attend a meeting duly noticed and called, the
members in attendance at the next duly noticed and
called meeting, which may be a special meeting called
as provided in Section 2.1.2, may take action
regardless of whether a quorum is present.
2.2. The Steering Committee.
The day-to-day operation of the alliance will be directed by the
Steering Committee.
2.2.1. Members: The Steering Committee will be comprised of an equal
number of representatives from AMD and Motorola, not to be
less than three (3) from each party, appointed by their
respective companies within ten (10) days of the effective
date of this Agreement.
2.2.2. Responsibilities;
2.2.2.1. The Steering Committee will appoint a Program
Management Team for each Project.
2.2.2.2. The Program Management Team will submit an operating
plan for the Project to the Steering Committee for
approval. Once the Steering Committee has approved
the plan, the Steering Committee will submit a brief
discussion of the Project, including a summary of its
major technical milestones and operating budget, to
the Executive
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Board of Directors. The Executive Board of Directors
must approve the Project in accordance with Section
2.1 of this Agreement in the calendar quarter in
which cost sharing is to begin.
2.2.2.3. The Steering Committee will oversee the progress of
all Projects to ensure that the Projects remain
appropriately staffed and resourced; that technical
milestones are met and that the Projects are on time
and within budget.
2.2.2.4. The Steering Committee will be responsible for
approving any amendments to the Logic Process
Technology or Embedded Flash Technology roadmaps.
Such amendments must also be approved by the
Executive Board of Directors.
2.3. Program Management Team:
The Program Management Team will consist of one (1) Program Manager and
one (1) Technical Coordinator, or one (1) Program Manager and one (1)
Technical Coordinator from each party, as appropriate and agreed to by
the parties. Each Project undertaken pursuant to this Agreement will
have a Program Management Team assigned to it by the Steering
Committee. The Program Management Team will be responsible for creating
an operating plan for the Project for managing the day-to-day
activities of the Project and for reporting on the progress of the
Project to the Steering Committee. The Program Manager will be
primarily responsible for all business and operating issues relating to
the Project, such as ensuring that the Project is appropriately staffed
and resourced and that it is on time and within budget. The Technical
Coordinator will be primarily responsible for all technical aspects of
the Project, including ensuring that technical milestones are achieved.
3. Development Projects.
3.1. Statement of Work. Prior to commencement of a Project or as
soon thereafter as possible, the parties will develop a
Statement of Work.
3.2. Development Costs.
AMD and Motorola will accrue shared development costs for
mutually agreed upon facilities, tasks and technologies, as
set forth more fully in Appendix D.
3.3. Audit. Each party will maintain appropriate books and records
necessary to verify its Development Costs. Each party may upon
reasonable notice and at its expense during normal business
hours and not more than once each year have a Big 6 certified
public accounting
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firm review the other party's books and records to verify the
information contained in the royalty statements. In the event
an audit reveals that a party over-reported Development Costs
and paid less or received more than it should, such party will
promptly pay the other party the amount necessary to correct
the error. If the audit reveals that a party underreported
Development Costs and paid more or received less than it
should, then such party will be entitled to, at such party's
election, either a prompt refund of the amount due or a credit
towards future Development Cost equalization payments. If the
amount of the error is more than 10% of the amount of the
Development Costs for the period being audited in favor of the
auditing party: (i) the audited party will pay the cost of the
audit; (ii) the auditing party will be permitted to conduct an
audit each quarter for the next two years, and (iii) the
audited party will institute appropriate corrective mechanisms
in its reporting process to prevent further errors.
3.4. Schedule. The achievement of Milestones will be the joint
responsibility of the parties. Each party will provide
appropriate resources, as reflected in the Statement of Work,
to complete the Project on schedule. The Program Management
Team will be primarily responsible to ensure that the Project
proceeds on schedule and will notify the Steering Committee in
the event of a significant delay in the development. The
parties will take appropriate steps to address such delays,
which may include but are not necessarily limited to:
increasing the resources on the Project, obtaining assistance
from third parties, modifying the scope of the Project, or
modifying the schedule. A Project may only be cancelled upon
joint agreement by the Executive Board of Directors.
3.5. Deliverables. For each Milestone for which a deliverable is
due, the parties will make reasonable efforts to ensure that
it is a Conforming Deliverable. The deliverable will be
promptly tested using the acceptance criteria identified in
the Statement of Work to determine whether it is a Conforming
Deliverable and the Technical Coordinator will send a notice
to each party describing any non-conformance. Any
non-conformities will be corrected as soon as possible and the
deliverable will be further tested. The Milestone will be
deemed completed only upon deliverance of a Conforming
Deliverable.
3.6. Progress Reports. For each Project, the Program Management
Team will generate a monthly progress report. Each report
shall describe the status of the Project, including but not
limited to:
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(a) Assessment of current Project schedule outlook in
comparison to Milestones;
(b) Short description of technical problems, issues or
roadblocks encountered and identification of
technical decisions that need to be made;
(c) Recommendations for resolving outstanding issues and
making pending decisions; and
(d) Proposed recovery method for addressing any delays in
the schedule.
(e) Status of the budget for the current project.
4. Ownership.
4.1. AMD Technology. AMD is the sole and exclusive owner of the AMD
Technology. Any Derivative Process developed solely by AMD
will be AMD Technology, subject to Motorola's ownership of any
Logic Process Technology, Embedded Flash Technology, or other
Motorola Technology from which such Derivative Process is
derived.
4.2. Motorola Technology. Motorola is the sole and exclusive owner
of the Motorola Technology. Any Derivative Process developed
solely by Motorola will be Motorola Technology, subject to
AMD's ownership of any Logic Process Technology, Embedded
Flash Technology, or other AMD Technology from which such
Derivative Process is derived.
4.3. Joint Technology. AMD and Motorola each have an undivided
ownership interest in Joint Technology and any intellectual
property obtained thereon. The parties shall cooperate in
executing and reviewing any documents and taking any actions
necessary to obtain and maintain intellectual property
protection of the Joint Technology. In the case of each
discovery, improvement, invention, program or code that is
Joint Technology, the parties shall determine whether or not
to file patent applications or register copyrights in the
United States and other countries. IP Expenses for preparing
each joint application or registration shall be borne by the
party that prepares and files the application or registration.
Prior to filing, the non-filing party will be notified and
requested to pay one-half (1/2) of all IP Fees and Translation
Expenses. In the event that the non-filing party does not
notify the requesting party in sixty (60) days in writing that
it will pay one-half (1/2) of such IP Fees and Translation
Expenses or if one party desires to obtain intellectual
property protection for specific Joint Technology (such as
filing for patent protection in a certain country)
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and the other party does not wish to obtain such protection
for such Joint Technology, then the party seeking such
protection will control and pay the cost of such prosecution,
but the filing will still reflect both parties as joint
owners. In the event of an enforcement action for Joint
Technology depending on intellectual property protection the
procurement of which was paid for by only one party, any
recovery will first go to reimburse the party for the cost of
obtaining such protection. Whenever the parties agree that an
infringement action should be brought based on Joint
Technology, the parties will jointly direct and share in the
cost of bringing such action. In the event one party wishes to
pursue an infringement action, and the other party does not,
the party bearing the cost will control the action and will be
allowed to retain any sums recovered in bringing such action.
The other party may, at its option, cooperate in appearing as
a plaintiff in such action and in providing information and
testimony in support of such action. In connection with such
support and testimony, the party bearing the costs of the
action will pay out-of-pocket expenses of the other party
(e.g., travel expenses), but will not be required to
compensate the other party for the time of its employees and
other incidental costs (e.g., photo-copying charges).
4.4. No Implied Licenses. This Agreement grants no licenses to any
intellectual property except as expressly provided herein. It
is the intent of the parties that only the Motorola Technology
and AMD Technology provided for or developed during Projects
is to be expressly licensed.
5. Cooperation on Logic Process Technology.
5.1. Statement of Work. The parties will undertake Projects to
complete and develop Logic Process Technologies. The parties
intend to complete one or more Statement(s) of Work for HIP5L
and HIP6L ***** days of the Effective Date or as otherwise
agreed. Such Statement(s) of Work will be consistent with the
HIP5L, HIP6L Program Plan-Rev.2.0, attached hereto as Exhibit
E.
5.2. Although particular express rights are provided to each of the
parties herein, it is the intent of parties to ***** Logic
Process Technologies and Embedded Flash Technologies.
Accordingly, the parties intend to cooperate with each other
in situations necessary to *****.
5.3. In exercising the rights provided hereunder, AMD will *****
the Logic Process Technology to produce Power PC
Microprocessors or Motorola
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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proprietary processor architectures and Motorola will *****
the Logic Process Technology to produce X86 Microprocessors or
AMD proprietary processor architectures.
5.4. HIP5L Licenses.
(a) Any Improvements to HIP5L developed solely by AMD
will be deemed AMD Technology, subject to Motorola's
rights in HIP5L. Any Improvements to HIP5L developed
solely by Motorola will be deemed Motorola
Technology, subject to AMD's rights in AMD
Improvements to HIP5L.
(b) Motorola hereby grants to AMD under Motorola
Intellectual Property, a non-exclusive,
non-transferable, worldwide, royalty-free (except as
provided in Sections 6.5 and 6.6) license, without
the right to sublicense, to:
(i) practice the methods and processes of HIP5L
and Motorola Improvements to HIP5L,
(ii) make, use, import and sell devices
manufactured using HIP5L and Motorola
Improvements to HIP5L, and
(iii) make Improvements to HIP5L and Derivative
Processes using HIP5L technology.
(c) AMD hereby grants to Motorola under AMD Intellectual
Property, a non-exclusive, non-transferable,
worldwide, royalty-free license to:
(i) practice the methods and processes of HIP5L
and AMD Improvements to HIP5L,
(ii) make, have made, use, import and sell
devices manufactured using HIP5L and AMD
Improvements to HIP5L,
(iii) make further Improvements to HIP5L and AMD
Improvements to HIP5L and Derivative
Processes using HIP5L and AMD Improvements
to HIP5L, and
(iv) undertake ***** with respect to HIP5L and
sublicense the rights granted in Section
5.4(c)(i), (ii) and (iii) only as part of
such *****,
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Page 14
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(v) undertake ***** with respect to HIP5L and
sublicense the rights granted in Section
5.4(c)(i), (ii), and (iii) only as part of
such *****,
(vi) undertake ***** with respect to HIP5L and
sublicense the rights granted in Section
5.4(c)(i), (ii), and (iii) only as part of
such *****,
(vii) undertake ***** with respect to HIP5L and
sublicense the rights granted in Section
5.4(c)(i), (ii), and (iii) only as part of
such *****.
(d) In the event that Motorola exercises its rights
granted by AMD in Section 5.4(c) (iv)-(vii), AMD will
negotiate in good faith with such ***** for
a license under AMD patents essential to utilize
HIP5L and Improvements thereto on reasonable terms,
or, at AMD's option, will represent and warrant to
Motorola that it will not assert it's patents
essential to utilize HIP5L against the *****.
(e) AMD will assign engineers to work in agreed-upon
wafer fabrication facilities of Motorola in order to
gain an understanding of HIP5L. AMD will, *****.
Motorola will train and support the AMD engineers
with respect to HIP5L including but not limited to,
disclosing all necessary information and know-how,
and providing all necessary documentation and
technical support.
5.5. HIP6L Licenses.
(a) The parties intend to create a Statement of Work on
HIP6L and to collaborate on the remaining development
of that technology. It is anticipated that each party
will make contributions to the development of that
technology. Any contributions or Improvements to
HIP6L developed solely by AMD will be deemed AMD
Technology, subject to Motorola's rights in HIP6L.
Any contributions or Improvements to HIP6L developed
solely by Motorola will be deemed Motorola
Technology, subject to AMD's rights in HIP6L.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Page 15
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(b) Motorola hereby grants to AMD under Motorola
Intellectual Property a non-exclusive,
non-transferable, worldwide, royalty-free (except as
provided in Sections 6.5 and 6.6) license to:
(i) practice the methods and processes of HIP6L
and Motorola Improvements to HIP6L,
(ii) make, have made, use, import and sell
devices manufactured using HIP6L and
Motorola Improvements to HIP6L,
(iii) make Improvements to HIP6L and Derivative
Processes using HIP6L technology,
(iv) only with Motorola approval, such approval
not to be unreasonably withheld, undertake
***** within ***** after the first
commercial shipment of a product
manufactured using HIP6L and without
approval, undertake ***** HIP6L *****
thereafter with respect to HIP6L and
sublicense the rights granted in Section 5.5
(b)(i), (ii) and (iii) only as part of such
*****,
(v) only with Motorola approval, such approval
not to be unreasonably withheld, undertake
***** with respect to HIP6L and sublicense
the rights granted in Section 5.5 (b)(i),
(ii) and (iii) only as part of such *****,
(vi) only with Motorola approval, such approval
not to be unreasonably withheld, undertake
***** with respect to HIP6L and sublicense
the rights granted in Section 5.5 (b)(i),
(ii) and (iii) only as a part of such *****,
and
(vii) only with Motorola approval, such approval
not to be unreasonably withheld, undertake
***** within ***** after the first
commercial shipment of a product
manufactured using HIP6L and without
approval, undertake ***** thereafter with
respect to HIP6L and sublicense the rights
granted in Section 5.5 (b)(i), (ii) and
(iii) only as a part of such *****.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Page 16
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(c) AMD hereby grants to Motorola under AMD Intellectual
Property, a non-exclusive, non-transferable,
worldwide, royalty-free license to:
(i) practice the methods and processes of HIP6L
and AMD Improvements to HIP6L,
(ii) make, have made, use, import and sell
devices manufactured using HIP6L and AMD
Improvements to HIP6L,
(iii) make Improvements to HIP6L and Derivative
Processes using HIP6L technology,
(iv) undertake ***** with respect to HIP6L and
sublicense the rights granted in Section 5.5
(c)(i), (ii) and (iii) only as part of such
*****,
(v) undertake ***** with respect to HIP6L and
sublicense the rights granted in Section 5.5
(c)(i), (ii) and (iii) only as part of such
*****. Notwithstanding, Motorola agrees to
license *****, with whom Motorola is having
products made pursuant to Section
5.5(c)(ii), to manufacture and sell only
engineering and prototype sample quantities
of products manufactured using HIP6L to
parties other than Motorola, AMD, *****
within ***** after the first commercial
shipment of a product manufactured using
HIP6L. Upon the approval of AMD, such
approval not to be unreasonably withheld,
Motorola may undertake further ***** with
respect to HIP6L within the ***** period.
Motorola may undertake ***** period,
(vi) upon prior written approval of AMD, such
approval not to be unreasonably withheld,
undertake ***** within ***** after the first
commercial shipment of a product
manufactured using HIP6L and without written
approval, undertake ***** HIP6L *****
thereafter with respect to HIP6L and
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Page 17
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
sublicense the rights granted in Section 5.5
(c)(i), (ii) and (iii) only as a part of
such *****, and
(vii) undertake ***** within ***** after the first
commercial shipment of a product
manufactured using HIP6L and ***** HIP6L
***** thereafter and sublicense the rights
granted in Section 5.5 (c)(i), (ii) and
(iii) only as a part of such *****. Upon the
approval of AMD, such approval not to be
unreasonably withheld, Motorola may
undertake further ***** with respect to
HIP6L within the ***** period.
(d) In the event that AMD exercises its rights granted by
Motorola in Section 5.5(b) (iv)-(vii) Motorola will
negotiate in good faith with such ***** for a license
under Motorola patents essential to utilize HIP6L and
Improvements thereto on reasonable terms, or, at
Motorola's option, will represent and warrant to AMD
that it will not assert it's patents essential to
utilize HIP6L against the *****. In the event that
Motorola enters into a patent license with, or
covenants not to assert its patents against, *****
who received a ***** under HIP6L as described in this
Section, AMD will ***** such *****, *****.
(e) In the event that Motorola exercises its rights
granted by AMD in Section 5.5(c) (iv)-(vii) AMD will
negotiate in good faith with such ***** for a license
under AMD patents essential to utilize HIP6L and
Improvements thereto on reasonable terms, or, at
AMD's option, will represent and warrant to Motorola
that it will not assert it's patents essential to
utilize HIP6L against the *****. In the event that
AMD enters into a patent license with, or covenants
not to assert its patents against, a ***** who
received a ***** under HIP6L as described in this
Section, Motorola will *****.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Page 18
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(f) AMD will assign engineers to work in Motorola's
Advanced Process Research & Development Lab ("APRDL")
facility and other facilities as set forth in the
HIP6L Statement of Work.
(g) Motorola may assign engineers to AMD facilities in
order to participate in the development of HIP6L.
(h) AMD will install a production process for HIP6L into
AMD's Dresden Fab30 facility. Motorola will train and
support the AMD engineers with respect to the design
and manufacturing processes related to HIP6L as set
forth in Appendix E.
5.6. HIP7L Licenses.
(a) The parties intend to create Statements of Work on
HIP7L and SGLPT and to collaborate on the development
of those technologies. It is anticipated that each
party will make substantial contributions to the
development of those technologies. Any contributions
or Improvements to HIP7L and SGLPT developed solely
by AMD will be deemed AMD Technology, subject to
Motorola's rights in HIP7L and SGLPT. Any
contributions or Improvements to HIP7L and SGLPT
developed solely by Motorola will be deemed Motorola
Technology, subject to AMD's rights in HIP7L and
SGLPT.
(b) Motorola hereby grants to AMD under Motorola
Intellectual Property, a non-exclusive,
non-transferable, worldwide, royalty-free (except as
provided in Sections 6.5 and 6.6) license to:
(i) practice the methods and processes of HIP7L
and SGLPT and Motorola Improvements to HIP7L
and SGLPT,
(ii) make, have made, use, import and sell
devices manufactured using HIP7L and SGLPT
and Motorola Improvements to HIP7L and
SGLPT,
(iii) make Improvements to HIP7L and SGLPT and
Derivative Processes using HIP7L and SGLPT
technology,
(iv) undertake ***** with respect to HIP7L and
SGLPT and sublicense the rights granted in
Section 5.6 (b)(i), (ii) and (iii) only as
part of such *****,
(v) undertake ***** with respect to HIP7L and
SGLPT and sublicense the rights granted in
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Page 19
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
Section 5.6(b)(i), (ii) and (iii) only as
part of such *****. Notwithstanding, AMD
agrees to license *****, with whom AMD is
having products made pursuant to Section
5.6(b)(ii), to manufacture and sell only
engineering and prototype sample quantities
of products manufactured using a particular
HIP7L or SGLPT to parties other than
Motorola, AMD, ***** within ***** after the
first commercial shipment of a product
manufactured using the particular HIP7L or
SGLPT. Upon the approval of Motorola, such
approval not to be unreasonably withheld,
AMD may undertake further ***** with respect
to the particular HIP7L or SGLPT within the
***** period. AMD may undertake ***** after
the ***** period,
(vi) ***** after the first commercial shipment of
a product utilizing a particular HIP7L or
SGLPT, undertake ***** with respect to the
particular HIP7L or SGLPT and sublicense the
rights granted in Section 5.6 (b)(i), (ii)
and (iii) only as a part of such *****, and
(vii) undertake one HIP7L or SGLPT ***** within
***** after the first commercial shipment of
a product manufactured using a particular
HIP7L or SGLPT and ***** HIP7L or SGLPT
***** thereafter and sublicense the rights
granted in Section 5.6 (b)(i), (ii) and
(iii) only as a part of such *****. Upon
mutual agreement of the parties, such
approval not to be unreasonably withheld,
AMD may undertake further ***** with respect
to HIP7L within the ***** period.
(c) AMD hereby grants to Motorola under AMD Intellectual
Property, a non-exclusive, non-transferable,
worldwide, royalty-free license to:
(i) practice the methods and processes of HIP7L
and SGLPT and AMD Improvements to HIP7L and
SGLPT,
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(ii) make, have made, use, import and sell
devices manufactured using HIP7L and SGLPT
and AMD Improvements to HIP7L and SGLPT,
(iii) make Improvements to HIP7L and SGLPT and
Derivative Processes using HIP7L and SGLPT
technology,
(iv) undertake ***** with respect to HIP7L and
SGLPT and sublicense the rights granted in
Section 5.6 (c)(i), (ii) and (iii) only as
part of such *****,
(v) undertake ***** with respect to HIP7L and
SGLPT and sublicense the rights granted in
Section 5.6 (c)(i), (ii) and (iii) only as
part of such *****. Notwithstanding,
Motorola agrees to license *****, with whom
Motorola is having products made pursuant to
Section 5.6(c)(ii), to manufacture and sell
only engineering and prototype sample
quantities of products manufactured using a
particular HIP7L or SGLPT to parties other
than Motorola, AMD, ***** within ***** after
the first commercial shipment of a product
manufactured using the particular HIP7L or
SGLPT. Upon the approval of AMD, such
approval not to be unreasonably withheld,
Motorola may undertake further ***** with
respect to the particular HIP7L or SGLPT
within the ***** period. Motorola may
undertake ***** after the ***** period,
(vi) upon prior written approval of AMD, such
approval not to be unreasonably withheld,
undertake ***** within ***** of the first
commercial shipment of a product
manufactured using a particular HIP7L or
SGLPT and without written approval,
undertake ***** HIP7L or SGLPT *****
thereafter with respect to a particular
HIP7L or SGLPT and sublicense the rights
granted in Section 5.6 (c)(i), (ii) and
(iii) only as a part of such *****, and
(vii) undertake one HIP7L or SGLPT ***** within
***** after the first commercial shipment of
a product manufactured using a particular
HIP7L or SGLPT
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
and ***** HIP7L or SGLPT ***** thereafter
and sublicense the rights granted in Section
5.6 (c)(i), (ii) and (iii) only as a part of
such *****. Upon mutual agreement of
the parties, such approval not to be
unreasonably withheld, Motorola may
undertake further ***** with respect to
HIP7L within the ***** period.
(d) In the event that AMD exercises its rights granted by
Motorola in Section 5.6(b)(iv)-(vii), Motorola will
negotiate in good faith with such ***** for a license
under Motorola patents essential to utilize HIP7L and
SGLPT and Improvements thereto on reasonable terms,
or, at Motorola's option, will represent and warrant
to AMD that it will not assert it's patents essential
to utilize HIP7L against the *****. In the event that
Motorola enters into a patent license with, or
covenants not to assert its patents against, a *****
who received a ***** under a particular HIP7L or
SGLPT as described in this Section, AMD will *****
such ***** for the particular HIP7L or SGPLT.
(e) In the event that Motorola exercises its rights
granted by AMD in Section 5.6(c)(iv)-(vii), AMD will
negotiate in good faith with such ***** for a license
under AMD patents essential to utilize HIP7L and
SGLPT and Improvements thereto on reasonable terms,
or, at AMD's option, will represent and warrant to
Motorola that it will not assert it's patents
essential to utilize HIP7L and SGLPT against the
*****. In the event that AMD enters into a patent
license with, or covenants not to assert its patents
against a ***** who received a ***** under a
particular HIP7L or SGLPT as described in this
Section, Motorola will *****
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Page 22
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
such ***** for the particular HIP7L or SGLPT.
(f) AMD may assign engineers to Motorola facilities in
order to participate in the development of HIP7L and
SGLPT, as defined in the HIP7L and SGLPT Statements
of Work. Motorola may assign engineers to AMD
facilities in order to participate in the development
of HIP7L and SGLPT.
(g) In the event that either AMD or Motorola initially
contacts, or is initially contacted by, a ***** for a
***** pursuant to Sections 5.6(b)(vi) or 5.6(c)(vi)
respectively, that party will provide notice of the
contact to the other party and have primary
responsibility for concluding negotiations with the
***** for the *****. In the event that the
negotiating party does not enter into an agreement
for a ***** with a particular ***** in a reasonable
period of time or negotiations are ceased by the
negotiating party or the *****, the non-negotiating
party will then have the right to continue the
negotiation with the *****. Notwithstanding, Motorola
and AMD intend to cooperate with respect to licensing
***** in order to obtain the maximum benefit for both
parties.
5.7. Foundry Support.
(a) In the event that Motorola has the HIP5L or HIP6L
process in production earlier than AMD, providing AMD
is in good faith attempting to qualify such process
in its Dresden Fab 30 facility, at AMD's request,
Motorola will manufacture utilizing HIP5L or HIP6L,
up to *****, or such greater amount as the parties
may agree to, until AMD's Dresden Fab 30 facility is
prepared to provide production volume using those
processes. The parties will negotiate and execute a
separate foundry services agreement which shall
include commercially reasonable terms and conditions,
including pricing, in connection with the sale of
such wafers.
(b) AMD represents and warrants that it has "have made"
rights from any necessary third parties for products
to be manufactured under Section 5.7(a) to enable
Motorola to undertake such manufacturing. In the
event a claim is asserted against Motorola relating
to AMD's "have made" rights, AMD will indemnify and
defend Motorola from and against any such
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Page 23
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
claim, provided that Motorola promptly informs AMD of
any such claim, permits AMD with counsel of its
choosing to control the defense of the action, and
provides reasonable cooperation and assistance in
connection with the action. ***** Section 5.7(a), AMD
will not be liable for any damages resulting from any
manufacturing by Motorola occurring after such
notice. In the event of a *******, Motorola will
have no obligation to reserve any further wafer
manufacturing capacity for AMD under this Section and
AMD shall pay Motorola reasonable cancellation
charges for any reserved capacity.
6. Cooperation on Embedded Flash Technology.
6.1. CDR1 Support. AMD will provide assistance and support to
Motorola to assist Motorola in its efforts to meet the current
CDR1 qualification schedule. Such assistance and support will
consist of: (a) providing information and support in the areas
of silicon processing, test flow, and design to support test
flow; (b) assigning engineers as appropriate to work at
Motorola's facilities as necessary to accomplish the
foregoing; and (c) allowing Motorola engineers to perform
appropriate tasks at AMD's facilities as necessary to
accomplish the foregoing.
6.2. AMD CDR1 Flash Technology License.
(a) AMD hereby grants to Motorola under AMD Intellectual
Property, a non-exclusive, non-transferable license
to any design, process, and test technology disclosed
and provided to Motorola in connection with the
support provided pursuant to Section 6.1 or that is
incorporated into CDR1, to:
(i) practice the methods and processes of CDR1
and AMD Improvements to CDR1,
(ii) make, have made, use, import, and sell
devices manufactured using CDR1 and AMD
Improvements to CDR1,
(iii) make Improvements to CDR1 and Derivative
Processes using CDR1 technology,
(iv) undertake ***** with respect to CDR1 and
sublicense the rights granted in Section
6.2(a)(i)-(iii) only as part of such *****.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(v) to undertake ***** with respect to CDR1 and
sublicense the rights granted in Section
6.2(a)(i)-(iii) only as part of such *****.
(vi) to undertake ***** with respect to CDR1 and
sublicense the rights granted in Section
6.2(a)(i)-(iii) only as part of such *****.
(vii) to undertake ***** with respect to CDR1 and
sublicense the rights granted in Section
6.2(a)(i)-(iii) only as part of such *****.
(viii) Notwithstanding the licenses set forth in
this Section, Motorola may transfer AMD's
Test Technology Know How only to *****
pursuant to Sections 6.2(b)(iv) and
6.2(b)(vii), respectively.
(b) Any AMD Improvements to the AMD flash technology will
be owned exclusively by AMD, and are hereby licensed
to Motorola on the same terms as the AMD flash
technology.
(c) In the event that Motorola exercises its rights
granted by AMD in Section 6.2(a)(iv)-(vii), AMD will
negotiate in good faith with such ***** for a license
under AMD patents essential to utilize CDR1 and
Improvements thereto on reasonable terms, or, at
AMD's option, will represent and warrant to Motorola
that it will not assert it's patents essential to
utilize CDR1 against the *****.
6.3. CDR3 Project. The parties will undertake a CDR3 Project and
intend to complete a Statement of Work for such Project within
***** of the Effective Date or as otherwise agreed by the
parties. Such Statement of Work will be consistent with the
CDR3 Program Plan-Rev 3.0, attached hereto as Exhibit F.
6.4. CDR3 License.
(a) Motorola hereby grants to AMD under Motorola
Intellectual Property, a non-exclusive,
non-transferable, worldwide, royalty-free (except as
provided in Sections 6.5 and 6.6) license to:
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(i) practice the methods and processes of CDR3
and Motorola Improvements to CDR3,
(ii) make, have made, use, import and sell
embedded flash devices manufactured using
CDR3 and Motorola Improvements to CDR3 but
only for the Personal Computing Environment,
(iii) make, have made, use, import and sell
embedded flash devices manufactured using
CDR3 and Motorola Improvements to CDR3, but
only ***** for applications other than the
Personal Computing Environment,
(b) AMD hereby grants to Motorola under AMD Intellectual
Property, a non-exclusive, non-transferable,
worldwide, royalty-free license to:
(i) practice the methods and processes of CDR3
and future CDR processes and AMD
Improvements to CDR3 and future CDR
processes,
(ii) make, have made, use, import and sell
devices manufactured using CDR3 and future
CDR processes and AMD Improvements to CDR3
and future CDR processes,
(iii) make Improvements to CDR3 and future CDR
processes and Derivative Processes using
CDR3 technology,
(iv) undertake ***** with respect to CDR3 and
future CDR processes and sublicense the
rights granted in Section 6.4 (b)(i), (ii)
and (iii) only as part of such *****,
(v) ***** after the first commercial shipment of
a product manufactured by a particular CDR3
or future CDR process, undertake ***** with
respect to CDR3 and future CDR processes and
sublicense the rights granted in Section 6.4
(b)(i), (ii) and (iii) only as part of such
*****,
(vi) ***** after the first commercial shipment of
a product manufactured by a particular CDR3
or future CDR process, undertake ***** with
respect to CDR3 and future CDR processes and
sublicense the rights
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
granted in Section 6.4 (b)(i), (ii) and
(iii) only as a part of such *****,
(vii) undertake one CDR3 or future CDR process
***** within ***** after the first
commercial shipment of a product
manufactured using a particular CDR3 or
future CDR process and ***** CDR3 or future
CDR process ***** thereafter and sublicense
the rights granted in Section 6.4 (b)(i),
(ii) and (iii) only as a part of such *****.
Upon mutual agreement of the parties, such
approval not to be unreasonably withheld,
Motorola may undertake further ***** with
respect to CDR3 or future CDR processes
within the ***** period, and
(viii) Notwithstanding the licenses set forth in
this Section, Motorola may transfer AMD's
Test Technology Know How only to *****
pursuant to Sections 6.4(b)(iv) and
6.4(b)(vii), respectively.
(c) In the event that Motorola exercises its rights
granted by AMD in Section 6.4(b)(iv)-(vii), AMD will
negotiate in good faith with such ***** for a license
under AMD patents essential to utilize CDR3 and
future CDR processes and Improvements thereto on
reasonable terms, or, at AMD's option, will represent
and warrant to Motorola that it will not assert it's
patents essential to utilize CDR3 or future CDR
processes against the *****.
(d) In connection with the license grant in Section
6.4(b), AMD will indemnify and defend Motorola from
and against any claim ***** that any technology
provided by AMD with regard to the CDR3 project
and/or the license granted to Motorola under Section
6.4(b) violates *****, provided that Motorola
promptly informs AMD of any such claim, permits AMD
with counsel of its choosing to control the defense
of the action, and provides reasonable cooperation
and assistance in connection with the action. If AMD
is not able to procure the rights necessary for
Motorola to maintain its license on reasonable terms,
or to modify AMD Flash Technology after reasonable
efforts so that it is no longer infringing without
substantially impairing its function or performance,
then AMD may send a notice of such inability to
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
Motorola and AMD will not be liable for any damages
resulting from infringing activity occurring after
such notice. In the event that AMD *****. The
indemnity provided in this Section will not apply in
the event the infringement claim is attributable to
the combination of CDR3 or AMD Improvements thereto
in combination with other technology or processes
implemented solely by Motorola or others
Notwithstanding, upon the request of AMD, Motorola
will be required to assist AMD in developing and
implementing a mutually agreeable substitute for any
AMD Flash Technology that is infringing. *****
6.5. CDR3 Schedule. The parties' goal is to complete CDR3 product
qualification by *****. The parties current schedule is to
complete CDR3 flash module tape out by *****. In the event the
parties are unable to deliver a complete flash module by
***** in substantial compliance with the acceptance
criteria specified in the Statement of Work for the CDR3
Project, then (i) further work on the CRD3 Project will cease,
unless the parties agree to continue the Project; *****.
6.6. Royalties. This Section 6.6 applies only in the event the
parties are unable to deliver a complete flash module by
*****, in substantial compliance with the program plan
set forth in Exhibit F.
(a) Definitions. These definitions apply only to this
Section 6.6.
(i) "Net Revenue" means the gross receipts
received by AMD from the sale of Royalty
Bearing Devices less any taxes, freight
charges, insurance, discounts, credits,
commissions paid to third parties, and
returns.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(ii) "Royalty Bearing Device" means a
semiconductor product manufactured using a
Logic Process Technology or other logic
process utilizing copper metallization and
sold by AMD as a production unit ***** of
the first commercial shipment of any product
using that specific process technology
(*****). Royalty Bearing Device will not
include any samples, prototypes or other
devices distributed for marketing, testing
or promotional purposes.
(b) Royalty Payments and Statements. Within thirty (30)
days after the close of each quarter during which Net
Revenue was received by AMD, AMD will pay to Motorola
royalty payments based on the ***** reflected in the
table set forth below.
*****
*****
*****
*****
*****
*****
Each payment will be accompanied by a statement
reflecting the Net Revenue received during the
quarter from Royalty Bearing Devices manufactured
under each Logic Process Technology or Derivative
Process of a Logic Process Technology.
(c) Audit. AMD will maintain appropriate books and
records necessary to verify the information contained
in the royalty statements. Motorola may upon
reasonable notice and at its expense during normal
business hours and not more than once each year have
a Big 6 certified public accounting firm review AMD's
books and records to verify the information contained
in the royalty statements. If the audit reveals a
deficiency in any royalty payment, AMD will promptly
pay the amount of that deficiency. If the audit
reveals that payments were made in excess of the
amounts due, AMD will be entitled to, at AMD's
election, either a prompt refund of the excess
payment or a credit towards future royalty
obligations. If the audit reveals a deficiency in
excess of ***** of the amount of the
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
royalty payments being audited, AMD will pay the
reasonable costs of such audit.
6.7. HIP6F.
(a) The parties intend to create a Statement of Work on
HIP6F and SGEFT and to collaborate on the development
of those technologies. It is anticipated that each
party will make substantial contributions to the
development of those technologies. Any contributions
or Improvements to HIP6F and SGEFT developed solely
by AMD will be deemed AMD Technology, subject to
Motorola's rights in HIP6F and SGEFT. Any
contributions or Improvements to HIP6F and SGEFT
developed solely by Motorola will be deemed Motorola
Technology, subject to AMD's rights in HIP6F and
SGEFT.
(b) Motorola hereby grants to AMD under Motorola
Intellectual Property, a non-exclusive,
non-transferable, worldwide, royalty-free license to:
(i) practice the methods and processes of HIP6F
and SGEFT and Motorola Improvements to HIP6F
and SGEFT,
(ii) make, have made, use, import and sell
devices manufactured using HIP6F and SGEFT
and Motorola Improvements to HIP6F and
SGEFT,
(iii) make Improvements to HIP6F and SGEFT and
Derivative Processes using HIP6F and SGEFT
technology,
(iv) undertake ***** with respect to HIP6F and
SGEFT and sublicense the rights granted in
Section 6.7 (b)(i), (ii) and (iii) only as
part of such *****, and
(v) undertake ***** with respect to HIP6F and
SGEFT and sublicense the rights granted in
Section 6.7 (b)(i), (ii) and (iii) only as
part of such *****. Notwithstanding, AMD
agrees to license *****, with whom AMD is
having products made pursuant to Section
6.7(b)(ii), to manufacture and sell only
engineering and prototype sample quantities
of products manufactured using a particular
HIP6F or SGEFT to parties other than
Motorola, AMD, *****
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
within ***** after the first commercial
shipment of a product manufactured using the
particular HIP6F or SGEFT. Upon the approval
of Motorola, such approval not to be
unreasonably withheld, AMD may undertake
further ***** with respect to the particular
HIP6F or SGEFT within the ***** period. AMD
may undertake ***** after the ***** period.
(vi) ***** after the first commercial shipment of
a product utilizing a particular HIP6F or
SGEFT, undertake ***** with respect to the
particular HIP6F or SGEFT and sublicense the
rights granted in Section 6.7 (b)(i), (ii)
and (iii) only as a part of such *****.
(vii) undertake one ***** within ***** after the
first commercial shipment of a product
manufactured using a particular HIP6F and
SGEFT and unlimited HIP6F or SGEFT *****
thereafter and sublicense the rights granted
in Section 6.7 (b)(i), (ii) and (iii) only
as a part of such *****. Upon mutual
agreement of the parties, such approval not
to be unreasonably withheld, AMD may
undertake further ***** with respect to
HIP6F and SGEFT within the ***** period.
(c) AMD hereby grants to Motorola under AMD Intellectual
Property, a non-exclusive, non-transferable,
worldwide, royalty-free license to:
(i) practice the methods and processes of HIP6F
and SGEFT and AMD Improvements to HIP6F and
SGEFT,
(ii) make, have made, use, import and sell
devices manufactured using HIP6F and SGEFT
and AMD Improvements to HIP6F and SGEFT,
(iii) make Improvements to HIP6F and SGEFT and
Derivative Processes using HIP6F and SGEFT
technology,
(iv) undertake ***** with respect to HIP6F and
SGEFT and sublicense the rights granted in
Section 6.7
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(c)(i), (ii) and (iii) only as part of such
*****,
(v) undertake ***** with respect to HIP6F and
SGEFT and sublicense the rights granted in
Section 6.7 (c)(i), (ii) and (iii) only as
part of such *****. Notwithstanding,
Motorola agrees to license *****, with whom
Motorola is having products made pursuant to
Section 6.7(c)(ii), to manufacture and sell
only engineering and prototype sample
quantities of products manufactured using a
particular HIP6F or SGEFT to parties other
than Motorola, AMD, ***** within ***** after
the first commercial shipment of a product
manufactured using the particular HIP6F or
SGEFT. Upon the approval of AMD, such
approval not to be unreasonably withheld,
Motorola may undertake further ***** with
respect to the particular HIP6F or SGEFT
within the ***** period. Motorola may
undertake ***** after the ***** period,
(vi) upon written approval of AMD, such approval
not to be unreasonably withheld, undertake
***** within ***** of the first commercial
shipment of a product manufactured using a
particular HIP6F or SGEFT and without
written approval, undertake ***** HIP6F or
SGEFT ***** thereafter with respect to a
particular HIP6F or SGEFT and sublicense the
rights granted in Section 6.7 (c)(i), (ii)
and (iii) only as a part of such *****.
(vii) undertake one ***** within ***** after the
first commercial shipment of a product
manufactured using a particular HIP6F and
SGEFT and ***** HIP6F or SGEFT *****
thereafter and sublicense the rights granted
in Section 6.7 (c)(i), (ii) and (iii) only
as a part of such *****. Upon mutual
agreement of the parties, such approval not
to be unreasonably withheld, Motorola may
undertake further ***** with respect to
HIP6F and SGEFT within the ***** period.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(d) In the event that AMD exercises its rights granted by
Motorola in Section 6.7(b)(iv)-(vii), Motorola will
negotiate in good faith with such ***** for a license
under Motorola patents essential to utilize HIP6F and
SGEFT and Improvements thereto on reasonable terms,
or, at Motorola's option, will represent and warrant
to AMD that it will not assert it's patents essential
to utilize HIP7L against the *****. In the event that
Motorola enters into a patent license with, or
covenants not to assert its patents against a *****
who received a ***** under a particular HIP6F or
SGEFT as described in this Section, AMD will *****
for the particular HIP6F or SGEFT.
(e) In the event that Motorola exercises its rights
granted by AMD in Section 6.7 (c)(iv)-(vii), AMD will
negotiate in good faith with such ***** for a license
under AMD patents essential to utilize HIP6F and
SGEFT and Improvements thereto on reasonable terms,
or, at AMD's option, will represent and warrant to
Motorola that it will not assert it's patents
essential to utilize HIP6F and SGEFT against the
*****. In the event that AMD enters into a patent
license with, or covenants not to assert its patents
against, a ***** who received ***** under a
particular HIP6F or SGEFT as described in this
Section, Motorola will ***** such ***** for the
particular HIP6F or SGEFT.
(f) The development of HIP6F and SGEFT may be done in AMD
or Motorola facilities, as agreed by the parties, and
shall be staffed appropriately as determined by the
Executive Board of Directors and/or the Steering
Committee.
(g) In connection with the license grant in Section
6.7(c), AMD represents and warrants that it will
remove from HIP6F any
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
technology subject to a claim of ownership by
*********. AMD will indemnify and defend Motorola
from and against any claim ***** that any technology
provided by AMD with regard to HIP6F and/or the
license granted to Motorola under Section 6.7(c)
violates *********, provided that Motorola promptly
informs AMD of any such claim, permits AMD with
counsel of its choosing to control the defense of the
action, and provides reasonable cooperation and
assistance in connection with the action. If AMD is
not able to procure the rights necessary for Motorola
to maintain its license on reasonable terms, or to
modify HIP6F after reasonable efforts so that it is
no longer infringing without substantially impairing
its function or performance, then AMD may send a
notice of such inability to Motorola and AMD will not
be liable for any damages resulting from infringing
activity occurring after such notice. *****.
The indemnity provided in this Section will
not apply in the event the infringement claim is
attributable to the combination of HIP6F or AMD
Improvements thereto in combination with other
technology or processes implemented solely by
Motorola or others. Notwithstanding, upon the request
of AMD, Motorola will be required to assist AMD in
developing and implementing a mutually agreeable
substitute for any AMD Flash Technology that is
infringing. *****.
(h) In the event that either AMD or Motorola *****
pursuant to Sections 6.7(b)(vi) or 6.7(c)(vi)
respectively, that party will provide ***** to the
other party and have ***** with the *****. In the
event that the ***** with a particular ***** in a
reasonable period of time or *****
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
*****, the ***** will then have the right *****.
Notwithstanding, Motorola and AMD intend to cooperate
with respect to *****.
6.8. Foundry Support.
(a) In the event that AMD has the HIP6F process in
production earlier than Motorola who is in good faith
attempting to qualify such process, at Motorola's
request, AMD will manufacture for Motorola up to
*****, or such greater amount as the parties may
agree to, until Motorola's facility is prepared to
provide production volume using that process. The
parties will negotiate and execute a separate foundry
services agreement which shall include commercially
reasonable terms and conditions, including pricing,
in connection with the sale of such wafers. At
Motorola's request, AMD will manufacture utilizing
future processes (including SGEFT), similar low
volume and prototype products for Motorola until the
Motorola is prepared to manufacture products
utilizing such processes at its own facilities.
(b) In the event Motorola requests foundry support as
provided in Section 6.8(a) it must represent as a
condition of receiving such support that it has
obtained the necessary "have made" rights from any
third parties involved in the products to be
manufactured under Section 6.8(a) to enable AMD to
undertake such manufacturing. In the event a claim is
asserted against AMD as a result of Motorola's
failure to obtain such rights, Motorola will
indemnify and defend AMD from and against any such
claim, provided that AMD promptly informs Motorola of
any such claim, permits Motorola with counsel of its
choosing to control the defense of the action, and
provides reasonable cooperation and assistance in
connection with the action. If Motorola provides AMD
with written notice to stop manufacturing pursuant to
Section 6.8(a), Motorola will not be liable for any
damages resulting from any manufacturing by AMD
occurring after such notice. In the event of a stop
notice, AMD will have no obligation to reserve any
further wafer manufacturing capacity for Motorola
under this Section and Motorola shall pay AMD
reasonable cancellation charges for any reserved
capacity.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
6.9. In exercising the rights provided hereunder, AMD will *****
the Embedded Flash Technology to produce Power PC
Microprocessors or Motorola proprietary processor
architectures and Motorola will ***** the Embedded Flash
Technology to produce X86 Microprocessors or AMD proprietary
processor architectures.
7. Stand-Alone Flash Technology Rights.
7.1. For CDR3 and later CDR technologies, AMD hereby grants to
Motorola, under AMD Technology and AMD Intellectual Property,
a non-exclusive, non-transferable, paid-up license to ***** to
purchase such product, in accordance with the ***** will
notify AMD within ninety (90) days of notice *****, AMD or AMD
***** will be responsible for the distribution of *****,
directly or indirectly, to end user customers. If *****, AMD
agrees that Motorola will then have the right to *****.
8. Data Networking Products.
8.1. AMD License. AMD hereby grants to Motorola under AMD
Intellectual Property, a non-exclusive, non-transferable,
worldwide license to make, have made, use, import, and sell
Data Networking Products, to develop Derivative Products
thereto, and to make, have made, use, import and sell such
Derivative Products.
8.2. Motorola License. Motorola hereby grants to AMD under Motorola
Intellectual Property, a non-exclusive, non-transferable,
worldwide license to make, have made, use, import, and sell
Motorola Derivative Products to Data Networking Products;
provided, however, that such license is limited to Motorola
modifications to the functional blocks contained in the Data
Networking Products, and not to separate blocks providing new
functionality.
8.3. Royalties.
(a) Definitions. These definitions apply only to this
Section 8.3.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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AMD/Motorola Technology Development and License Agreement
December 3, 1998 - Execution Document
(i) "AMD Content" means the percent of the die
size of a Royalty Bearing Device that
consists of a Data Networking Product or an
Improvement thereto.
(ii) "Net Revenue" means the gross receipts
received by Motorola from the sale of
Royalty Bearing Devices less any taxes,
freight charges, insurance, discounts,
credits, commissions paid to third parties,
and returns.
(iii) "Royalty Bearing Device" means a device that
incorporates, in whole or in part, a Data