Exhibit 10.2
EXECUTION VERSION
AMD AND BROADCOM CONFIDENTIAL
INTELLECTUAL PROPERTY
CROSS-LICENSE AGREEMENT
This I NTELLECTUAL P ROPERTY C ROSS -L ICENSE A GREEMENT (this “ Agreement ”)
effective as of the Effective Date, is by and between
A DVANCED M ICRO D EVICES , I NC ., a
corporation organized under the laws of Delaware and having its
corporate head office located at One AMD Place, Sunnyvale,
California 94088 (“ AMD ”) and
B ROADCOM
C ORPORATION , a corporation organized under the laws of
California and having its principal place of business at 5300
California Ave., Irvine, California 92617 ( “
Broadcom ”).
WHEREAS, Broadcom, AMD and Broadcom
International Limited, a Cayman Islands entity, have entered into
that certain Asset Purchase Agreement dated August 25, 2008
(“ APA ”), pursuant to which Broadcom and
Broadcom International Limited purchased and assumed, and AMD sold,
transferred and assigned to Broadcom and Broadcom International
Limited, certain assets and liabilities of the Business;
WHEREAS, AMD desires to license to
Broadcom certain intellectual property rights and technology
retained by AMD and currently used by the Business to enable
Broadcom to conduct the Business and exploit the Purchased Assets
after the Effective Date on the terms set forth herein;
WHEREAS, Broadcom desires to license
such intellectual property rights and technology from AMD to
conduct the Business and exploit the Purchased Assets on the terms
set forth herein;
WHEREAS, Broadcom desires to license
back to AMD the intellectual property rights and technology
acquired by Broadcom under the APA to enable AMD to continue,
subject to AMD’s non-competition obligations under the APA,
to conduct certain businesses retained by AMD after the Effective
Date on the terms set forth herein; and
WHEREAS, AMD desires to license such
intellectual property rights and technology from Broadcom to
conduct certain businesses on the terms set forth
herein;
NOW, THEREFORE, in consideration of
the mutual promises of the parties, and of good and valuable
consideration, it is agreed by and between the parties as
follows:
For the purpose of this Agreement
the following capitalized terms are defined in this Section 1
and shall have the meaning specified herein. Other terms that are
capitalized but not specifically defined in this Section 1 or
in the body of the Agreement shall have the meaning set forth in
the APA.
1
[****] = Certain confidential information
contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended. Confidential treatment has been requested with respect to
the omitted portions.
EXECUTION VERSION
AMD AND BROADCOM CONFIDENTIAL
1.1 “AMD Exclusive
Field” means the design, development, distribution,
marketing, manufacture, use, import, license and/or sale of any IP
core, processor, integrated circuit or chipset, and Software
operating thereon or in connection therewith, to the extent that
any such IP core, processor, integrated circuit, chipset or
Software (i) operates as [****] for use in [****]); or
(ii) (A) is able to execute the object code of any AMD
Processor, (B) substantially utilizes the instruction set of
any AMD Processor, or (C) has a programmer’s model that
is substantially compatible with the programmer’s model of
any AMD Processor. Notwithstanding the foregoing, the “AMD
Exclusive Field” does not include the design, development,
distribution, marketing, manufacture, use, import, license and/or
sale of any of the following: (1) Current Business Products,
Past Products or Roadmap Products, (2) the other products
described in the first sentence of the “Broadcom Exclusive
Field” definition, (3) products [****], or
(4) products [****].
1.2 “AMD
Technology” has the meaning ascribed to it in the IP
Core License Agreement.
1.3 “Broadcom Exclusive
Field” means the design, development, distribution,
marketing, manufacture, use, import, license and/or sale of any of
the following, and the Software operating thereon or in connection
therewith: (a) Current Business Products; (b) Past
Products; (c) Roadmap Products; (d) products that are
included in digital television devices; (e) products that are
included in [****] devices; (f) products that are included in
[****] devices such as [****] devices; or (g) products [****]
devices, [****] devices, and other [****] (other than [****]).
Notwithstanding the foregoing, the “Broadcom Exclusive
Field” does not include the design, development,
distribution, marketing, manufacture, use, import, license and/or
sale of any of the following: (A) all products made, sold, or
marketed by AMD or its Subsidiaries as of the Effective Date, other
than the Current Business Products, Past Products or Roadmap
Products, (B) future products designed by AMD or its
Subsidiaries (other than Current Business Products, Past Products
and Roadmap Products) primarily for use in [****] (and not designed
primarily for the products listed in (a) through
(g) above), or for use as [****], (C) products for use in
[****], or (D) products for use as [****].
1.4 “Confidential
Information” means any and all technical and
non-technical information a party provides to another party
hereunder that is marked or otherwise identified at the time of
disclosure as confidential or proprietary or is material that
should be readily recognized as confidential by the recipient,
which information may include trade secrets, know-how, firmware,
designs, schematics, techniques, software code, technical
documentation, specifications, Books and Records, plans or any
other information relating to any research project, work in
process, future development, scientific, engineering,
manufacturing, marketing or business plan or financial, business or
personnel matter relating to a party, its present or future
products, sales, suppliers, customers, employees, investors or
business, whether in written, oral, graphic or electronic form.
Notwithstanding the foregoing, after the Effective Date, all
Transferred Technology shall be the Confidential Information of
Broadcom, Broadcom shall be deemed to be the disclosing party of
such Confidential Information and AMD shall be deemed to be the
recipient of such Confidential Information. All Retained Technology
shall be the Confidential Information of AMD.
2
[****] = Certain confidential information
contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended. Confidential treatment has been requested with respect to
the omitted portions.
EXECUTION VERSION
AMD AND BROADCOM CONFIDENTIAL
1.5
“Derivative” means a modified version of
a Functional Block or of an integrated circuit comprised of a
Current Business Product, Past Product or Roadmap
Product.
1.6 “ Effective Date
” shall be the same date as the Closing Date.
1.7 “Excluded
Technology” means the Technology listed on Exhibit
C .
1.8 “First Effective
Filing Date ” means the earliest effective filing
date in the particular country for any Patent or any application
for any Patent. By way of example, it is understood that the First
Effective Filing Date for a United States Patent is the earlier of
(a) the actual filing date of the United States Patent
application which issued into such Patent, (b) the priority
date under 35 U.S.C. § 119 for such Patent, or (c) the
priority date under 35 U.S.C. § 120 for such
Patent.
1.9 “Functional
Block ” means an IP core or similar functional block
or other component or element within, or Software in or for, a
Current Business Product or Past Product or developed as of the
Effective Date for incorporation in a Roadmap Product.
1.10 “Game
Consoles” means consumer electronic devices that
attach to a television and are primarily marketed for the playing
of electronic games, such as, or similar to, Microsoft’s Xbox
360, Sony’s PlayStation 3 or Nintendo’s Wii, and
including portable devices that are primarily marketed for the
playing of electronic games, such as Nintendo DS. “Game
Console” excludes [****].
1.11 “ Improvements
” means any improvements, enhancements, discoveries,
developments, inventions, modifications or derivative works,
whether or not patentable.
1.12 “IP Core License
Agreement” means the certain IP Core License
Agreement between the parties of even date herewith.
1.13 “ Licensable
” means that, as of the Effective Date, AMD or any of its
Affiliates has the right to grant to Broadcom a license or other
rights within the scope of the rights granted to Broadcom under
this Agreement, subject to the scope of permissible sublicense
rights granted to AMD, without such grant (a) resulting in any
breach or other violation of any obligation of AMD or any of its
Affiliates to any Third Party, or (b) resulting in any payment
obligations of AMD to any Third Party.
1.14 “Mobile
Devices” means battery-operated, handheld electronic
personal communication devices, such as, or similar to, cellular
telephones, smart phones, PDAs, or pagers, including such devices
that are primarily marketed for purposes other than playing
electronic games, even if such devices incorporate game-playing
functionality, such as, or similar to, Apple’s iPhone or
Research In Motion’s Blackberry.
1.15 “PCs”
means x86 desktop, notebook or ultra-mobile personal
computers.
3
[****] = Certain confidential information
contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended. Confidential treatment has been requested with respect to
the omitted portions.
EXECUTION VERSION
AMD AND BROADCOM CONFIDENTIAL
1.16 “PCTV
Devices” means (a) computer cards and products
that both (i) tune, demodulate, process (including encoding,
decoding and enhancing audio and video data), record and/or display
digital and analog broadcast television signals, and provide
related services such as electronic program guides, and
(ii) are included in a PC, or require a PC for operation, and
(b) Software operating on such computer cards and integrated
circuits to the extent necessary to provide the functionality
described in clause (a)(i).
1.17 “Retained
Intellectual Property Rights” means the Intellectual
Property Rights (other than trademarks and Patents) owned or
Licensable by AMD or any of its Affiliates, that are not included
in the Transferred Intellectual Property Rights, and that
(a) are used in, necessary for or primarily related to the
Business or (b) cover any of the Retained Technology.
“Retained Intellectual Property Rights” do not include
any of AMD’s Intellectual Property Rights in or to its
semiconductor manufacturing Technology.
1.18 “Retained
Patents” means the claims of Patents owned or
Licensable by AMD or any of its Affiliates (other than the
Transferred Patents) that (a) without a license, would be
infringed (or, with respect to patent applications, would be
infringed if such patent application were to issue as a patent) by
the design, development, use, manufacture, import, offer for sale,
sale, maintenance, support or other disposal of any Current
Business Product, Past Product or Roadmap Product or any Functional
Block, including those Patents listed on Exhibit A , or
(b) cover any of the Retained Technology; provided that, such
Patents have a First Effective Filing Date on or before the
Effective Date (including, for clarity, all continuations,
continuations-in-part, divisionals, substitutions, reissues,
reexaminations, and foreign counterparts that claim priority to any
such Patents, regardless of when filed or issued).
1.19 “Retained
Technology” means all Technology owned or Licensable
by AMD or any of its Affiliates (other than the Transferred
Technology) that is used in, necessary for or primarily related to
the Business or the Past Products, any Current Business Product,
Roadmap Product or any Functional Block. “Retained
Technology” includes the Technology specifically listed on
Exhibit B . For the avoidance of doubt, “Retained
Technology” does not include, except as specifically listed
on Exhibit B , (w) any of AMD’s proprietary
semiconductor manufacturing Technology; (x) any of the AMD
Technology licensed under the IP Core License Agreement;
(y) except as licensed under the IP Core License Agreement,
any IP core, processor or product that operates as a [****] for use
in [****]; or (z) any processor core or product that
(A) is able to execute the object code of any AMD Processor,
(B) substantially utilizes the instruction set of any AMD
Processor, (C) has a programmer’s model that is
substantially compatible with the programmer’s model of any
AMD Processor, or (D) is a chipset (Northbridge/Southbridge)
for use with any AMD Processor.
1.20 “ Third Party
” means any person or entity other than AMD or Broadcom
or any Affiliate of AMD or Broadcom.
1.21 “Transferred
Intellectual Property Rights” means the Intellectual
Property Rights (other than trademarks and Patents) transferred by
AMD or its Subsidiaries to Broadcom or its Subsidiaries pursuant to
the APA.
4
[****] = Certain confidential information
contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended. Confidential treatment has been requested with respect to
the omitted portions.
EXECUTION VERSION
AMD AND BROADCOM CONFIDENTIAL
1.22 “ Transferred
Patents” means those Patents transferred by AMD or
its Subsidiaries to Broadcom or its Subsidiaries pursuant to the
APA.
1.23 “Transferred
Technology” means the Technology transferred by AMD
or its Subsidiaries to Broadcom or its Subsidiaries in accordance
with the APA.
2.1 Licenses to
Broadcom.
(a) AMD and its Affiliates hereby
grant to Broadcom and its Subsidiaries a perpetual, irrevocable,
non-exclusive, worldwide, fully-paid, royalty-free,
non-transferable (except for certain assignments as provided in
Section 9.3 (Assignment)) license under the Retained Patents,
without right of sublicense, to design, develop, use, make, have
made, import, export, offer to sell, sell, support, maintain and
otherwise dispose of:
(i) any Current Business Product,
Past Product, Roadmap Product, Functional Block or Derivative,
or
(ii) any combination of the items
described in clause (i) with each other or with new or
additional technology, but only to the extent of the items
described in clause (i) and not to any new or additional
functionality added to such items (other than Technology which
Broadcom is permitted to use or develop pursuant to the IP Core
License Agreement; provided, however, that use or development of
such Technology is done in accordance with and
remains subject to the restrictions set forth in the IP Core
License Agreement) or to the remainder of any device or product in
which such items may be incorporated.
For the avoidance of doubt, the
restriction on sublicensing set forth above shall not be
interpreted to limit the sublicense rights granted under
Section 2.1(b) below; i.e. , if a permitted
sublicensee’s exercise of its permitted sublicensed rights
with respect to the Retained Technology would necessarily infringe
a Retained Patent(s), then Broadcom is permitted to grant a
sublicense under such Retained Patents solely to the extent
necessary to enable such sublicensee of such Retained Technology to
exercise its permitted sublicense rights in accordance with
Section 2.1(b).
(b) AMD and its Affiliates hereby
grant to Broadcom and its Subsidiaries (i) under the Retained
Intellectual Property Rights, and (ii) to the Retained
Technology, a perpetual, irrevocable, worldwide, fully-paid,
royalty-free, non-transferable (except for certain assignments as
provided in Section 9.3 (Assignment)) license, with right of
sublicense (but without further right of sublicense by such
sublicensee except to end users of products, solely as necessary
for such end users to use such products), to use, reproduce,
modify, make derivative works of, distribute and otherwise exploit
the Retained Technology, to design, develop, use, make, have made,
import, export, offer to sell, sell, support, maintain and
otherwise dispose of products and to provide services. Such license
shall be (A) exclusive within the Broadcom Exclusive Field
(even as to AMD and its Affiliates), effective as of the Effective
Date and for three (3) years thereafter, and non-exclusive
within the Broadcom Exclusive Field effective after the third
(3rd)
5
[****] = Certain confidential information
contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended. Confidential treatment has been requested with respect to
the omitted portions.
EXECUTION VERSION
AMD AND BROADCOM CONFIDENTIAL
anniversary of the Effective Date,
(B) non-exclusive within the AMD Exclusive Field, effective
only after the third (3rd) anniversary of the Effective Date,
and (C) non-exclusive in all fields, other than the Broadcom
Exclusive Field and the AMD Exclusive Field, effective as of the
Effective Date.
(c) The “have made”
rights refer only to third party manufacturers or other service
providers solely for purposes of having products designed and/or
made on Broadcom’s or its Subsidiaries’ behalf and not
to design and/or make products of their own design or products made
based upon the designs of Third Parties.
(d) Broadcom shall have the
exclusive right, but not the obligation, to enforce and protect the
Retained Intellectual Property Rights and Retained Technology
against infringement or misappropriation in the Broadcom Exclusive
Field arising during the three (3) year period after the
Effective Date and may bring and pursue an action to so enforce and
protect such rights during or after such three (3) year
period. AMD, or its Affiliate, shall join as a party to any action
brought by Broadcom pursuant to such right, at Broadcom’s
request and at Broadcom’s expense (including for all
reasonable attorneys’ fees and costs of AMD or AMD’s
Affiliates), in the event that an adverse party asserts, the court
rules or other laws then applicable provide, or Broadcom determines
in good faith, that a court lacks jurisdiction based on such
AMD’s or such Affiliate’s absence as a party in such
action. If Broadcom lacks standing to bring such an action in any
jurisdiction, Broadcom shall have the right to direct AMD or its
Affiliate to initiate legal action to enforce the Retained
Intellectual Property Rights and Retained Technology, in accordance
with Broadcom’s reasonable instructions and AMD or such
Affiliate, as applicable, shall initiate and pursue such action in
accordance with Broadcom’s instructions and at
Broadcom’s expense (including for all reasonable
attorneys’ fees and costs of AMD or AMD’s Affiliates).
Broadcom shall retain or receive all recoveries obtained by either
party or their Affiliates from any action or settlement of any
claim or action, brought pursuant to this Section 2.1(d).
Broadcom shall indemnify and hold AMD and AMD’s Affiliates
harmless from and against any liabilities, losses, damages, costs
and expenses, including reasonable attorneys’ fees and costs,
incurred by AMD and its Affiliates, and to promptly reimburse AMD
and its Affiliates for any such liabilities, losses, damages, costs
and expenses, which are incurred by AMD and its Affiliates,
resulting from any actions undertaken by AMD and its Affiliates
requested by Broadcom pursuant to this Section 2.1(d);
provided , however , that Broadcom’s
indemnification obligation hereunder (i) shall be subject to,
and shall not supersede in any way, AMD’s obligation to
indemnify Broadcom pursuant to the APA and Broadcom shall have no
obligation to indemnify AMD hereunder for any liability, loss,
damage, cost or expense which is subject to AMD’s obligation
to indemnify Broadcom pursuant to the APA; and (ii) is
conditioned upon: (A) AMD providing Broadcom with prompt
written notice of any such liabilities, losses, damages, costs and
expenses, or any Third Party claim which could give rise to such
liabilities, losses, damages, costs and expenses; (B) Broadcom
having sole control and authority with respect to the defense and
settlement of any such claim; and (C) AMD reasonably
cooperating with Broadcom in the defense of any such
claim.
6
[****] = Certain confidential information
contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended. Confidential treatment has been requested with respect to
the omitted portions.
EXECUTION VERSION
AMD AND BROADCOM CONFIDENTIAL
(e) Broadcom shall not use or hire
others to use or analyze any Retained Technology that is not
otherwise publicly available for the purposes of determining if any
features, functions or processes provided by the Retained
Technology are covered by any patents or patent applications owned
by Broadcom and then use that analysis to assert patent
infringement claims against AMD.
2.2 License to AMD
.
(a) Subject to the non-competition
terms in Section 5.10(a) of the APA, Broadcom and its
Affiliates grant to AMD and AMD’s Subsidiaries under the
Transferred Patents, a perpetual, irrevocable, non-exclusive,
worldwide, fully-paid, royalty-free, non-transferable (except for
certain assignments as provided in Section 9.3 (Assignment))
license, without right of sublicense, to use, make, have made,
import, support, maintain, offer to sell, sell, and otherwise
dispose of products (other than Current Business Products, Past
Products and the Roadmap Products). For the avoidance of doubt, the
restriction on sublicensing set forth above shall not be
interpreted to limit the sublicense rights granted under
Section 2.2(b) below; i.e. , if a permitted
sublicensee’s exercise of its permitted sublicensed rights
with respect to the Transferred Technology would necessarily
infringe a Transferred Patent(s), then AMD is permitted to grant a
sublicense under such Transferred Patents solely to the extent
necessary to enable such sublicensee of such Transferred Technology
to exercise its permitted sublicense rights in accordance with
Section 2.2(b).
(b) Subject to the non-competition
terms in Section 5.10(a) of the APA, Broadcom and its
Affiliates grant to AMD and AMD’s Subsidiaries (i) under
the Transferred Intellectual Property Rights (other than any
Transferred Intellectual Property Rights covering the Excluded
Technology), and
