AMENDED AND RESTATED AMD-SPANSION PATENT CROSS-LICENSE AGREEMENT

Exhibit 10.2

 

AMENDED AND RESTATED

AMD-SPANSION PATENT CROSS-LICENSE AGREEMENT

 

THIS AMENDED AND RESTATED AMD-SPANSION PATENT CROSS-LICENSE AGREEMENT (this “ Agreement ”) is made and entered into as of December 21, 2005 (the “ Amendment Date ”), by and between Advanced Micro Devices, Inc., a Delaware corporation (“ Parent ” or “ AMD ”) and Spansion Inc., a Delaware corporation (“ Spansion ”). Parent and Spansion are hereinafter also referred to, collectively, as the “ Parties ” and individually as a “ Party .”

 

RECITALS

 

WHEREAS , as of June 30, 2003 (the “ Effective Date ”), Parent and Spansion LLC, a Delaware limited liability company (“ LLC ”), entered into that certain AMD-Spansion Patent Cross-License Agreement (the “ AMD-Spansion PXL ”);

 

WHEREAS , the Parties hereto hereby desire to amend and restate the AMD-Spansion PXL, including substituting Spansion for LLC as a Party hereto, and LLC consents to such substitution as set forth below;

 

NOW , THEREFORE , in consideration of the mutual representations, warranties, covenants and other terms and conditions contained herein, Parent and Spansion agree as follows:

 

AGREEMENT

 

1. D EFINITIONS ; I NTERPRETATION

 

1.1 Terms Defined in this Agreement . The following terms when used in this Agreement shall have the following definitions:

 

1.1.1 “ Acquired Party ” means a Party or the Semiconductor Group of a Party that has undergone a Change of Control.

 

1.1.2 “ Acquired Party Covered Product ” has the meaning set forth in Section 9.3.3(a).

 

1.1.3 “ Acquirer ” means a Third Party that, through a Change of Control of an Acquired Party, either (a) acquires, through any transaction or series of related transactions, ownership of securities representing more than fifty percent (50%) of the power to elect Acquired Party’s board of directors or other managing authority, or in the case Acquired Party is a non-corporate Person, equivalent interests, (b) consolidates with or merges with or into Acquired Party, or has Acquired Party merged into it, or (c) purchases or otherwise receives transfer of all or a substantially all of the assets or business of Acquired Party.

 

1.1.4 “ Acquirer Competitive Product ” has the meaning set forth in Section 9.3.3(b).

1.1.5 “ Acquirer Licensed Patents, ” with respect to an Acquirer to which this Agreement is assigned pursuant to Section 10.6, means all Patents that, as of the effective date of such assignment or thereafter during the Term, are wholly owned by Acquirer, or as to which, and only to the extent and subject to the conditions under which, Acquirer has the right, as of the effective date of such assignment or thereafter during the Term, to grant licenses or sublicenses without such grant resulting in the payment of royalties or other consideration to third parties (unless the non-assigning Party undertakes to pay directly or to reimburse Acquirer for any such royalties or other consideration, in which case such Patents shall be included within the Acquirer Licensed Patents), except for payments to a Subsidiary of Acquirer sublicensed hereunder or payments to Persons for inventions made by such Persons while employees or contractors of Acquirer or any Subsidiary of Acquirer sublicensed hereunder.

 

1.1.6 “ Aggregate Ownership Interest ” has the meaning set forth in the Certificate of Incorporation.

 

1.1.7 “ AMD ” has the meaning set forth in the first paragraph of this Agreement.

 

1.1.8 “ AMD Investments ” means AMD Investments, Inc., a Delaware corporation and an indirect wholly-owned subsidiary of AMD.

 

1.1.9 “ AMD-Spansion PXL ” has the meaning set forth in the recitals of this Agreement.

 

1.1.10 “ Assigned Patent Rights ” has the meaning set forth in the Intellectual Property Contribution and Ancillary Matters Agreement.

 

1.1.11 “ Auxiliary Part ” means input/output means, supporting means, terminal members, conductors or equivalent interconnecting members, housing means, any environmental controlling means included within such housing means or unitary with such housing means and active and/or passive elements unitarily or separately combined with a Semiconductor Product and any other parts, primarily useable in or for manufacturing, assembling or packaging Semiconductor Products.

 

1.1.12 “ Certificate of Incorporation ” means the Certificate of Incorporation of Spansion Inc., as of the Amendment Date.

 

1.1.13 “ Change of Control ” shall be deemed to have occurred, with respect to a Person (which, for purposes of this Section 1.1.13 also includes the Semiconductor Group of either Party), when: (a) any “person” or “group” (as such terms are used in Sections 13(d) of the Exchange Act) is or becomes the “beneficial owner” (as defined in Rules 13d-3 and 13d-5 under the Exchange Act) of shares representing more than fifty percent (50%) of the combined voting power of the then-outstanding securities entitled to vote generally in elections of directors of such Person, or in the case such Person is a non-corporate Person, equivalent interests; (b) such Person consolidates with or merges with or into any other Person, or any other Person merges into such Person, unless immediately after such consolidation or merger, the Persons that, prior to such consolidation or merger, owned the then-outstanding securities of such Person entitled to vote generally in elections of directors, or in the case such Person is a non-corporate Person, equivalent interests, own in the aggregate at least fifty percent (50%) of such securities or equivalent interests of the surviving entity; or (c) such Person sells or otherwise transfers all or substantially all of the assets or business of such Person.

 

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1.1.14 “ Change of Control Date ” means, with respect to the Change of Control of a Person, the effective date of such Change of Control.

 

1.1.15 “Circuit Patents ” means those Licensed Patents that claim a plurality of active and/or passive elements for generating, receiving, transmitting, storing, transforming or acting in response to electrical signal(s) to achieve a particular function, provided that Circuit Patents shall not include Process Patents.

 

1.1.16 “ Conversion Date ” means the date that the Class D Common Stock of Spansion is converted into Class A Common Stock in accordance with the Certificate of Incorporation.

 

1.1.17 “ Contribution Agreement ” means that certain Contribution Agreement, dated as of June 30, 2003, by and among, AMD, AMD Investments, Fujitsu, FMH and FASL LLC (now Spansion LLC), as amended.

 

1.1.18 “ Control ” (including “ Controlled ,” “ Controlling ” and other forms thereof), with respect to a Person, means beneficial ownership, directly or indirectly, of securities representing more than fifty percent (50%) of the power to elect such Person’s board of directors or other managing authority, or in the case of a non-corporate Person, equivalent interests.

 

1.1.19 “ Exchange Act ” means the Securities Exchange Act of 1934, as amended.

 

1.1.20 “ Exchange Rate ” means, with respect to any payment by Spansion to Parent, the exchange rate for bank cable transfers from the applicable currency to United States dollars as quoted by Bloomberg, L.P.

 

1.1.21 “ Effective Date ” has the meaning set forth in the recitals of this Agreement.

 

1.1.22 “ Existing Product ” of a Person, as of a certain date, means a Licensed Product developed by or for such Person and being made (or have made) and offered for sale by such Person on or prior to such date.

 

1.1.23 “ FMH ” means Fujitsu Microelectronics Holding, Inc., a Delaware corporation and wholly owned subsidiary of Fujitsu.

 

1.1.24 “ Fujitsu ” means Fujitsu Limited, a Japanese corporation.

 

1.1.25 “ Intellectual Property Contribution and Ancillary Matters Agreement ” means that certain Amended and Restated Intellectual Property Contribution and Ancillary Matters Agreement entered into as of December 21, 2005 by and among Fujitsu, Spansion, STI, AMD Investments and AMD.

 

1.1.26 “ Licensed Patents ” means, collectively, the Spansion Licensed Patents, the Parent Licensed Patents, and the Subsidiary Licensed Patents of each Subsidiary of Parent that, pursuant to Section 5.1, is granted sublicenses of the rights, licenses and immunities granted to Parent under Sections 2, 3 and 4.

 

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1.1.27 “ Licensed Product ” means any of the items described in the following clauses (a) through (d) and/or parts thereof:

 

(a) Semiconductive Material;

 

(b) Auxiliary Part;

 

(c) Semiconductor Product; or

 

(d) Manufacturing Apparatus.

 

1.1.28 “ LLC ” has the meaning set forth in the first paragraph of this Agreement.

 

1.1.29 “ Manufacturing Apparatus ” means any instrumentality or aggregate of instrumentalities primarily designated for use in the making of any of the items set forth in clauses (a) through (c) of Section 1.1.27 and/or parts thereof.

 

1.1.30 “ Net Sales ” with respect to a product, means the gross amounts invoiced by Spansion and its Subsidiaries for the sale or other distribution of the product within any country, less (a) separately stated charges for sales and use taxes, excise taxes, customs duties and other similar taxes, and (b) any amounts that Spansion and its Subsidiaries actually paid for the non-Spansion Content, if any, of such product.

 

1.1.31 “ Non-Semiconductor Group ,” with respect to a Party, means any of such Party’s internal groups or other organizations that is not the Semiconductor Group of such Party.

 

1.1.32 “ Offering Documents ” has the meaning set forth in the Intellectual Property Contribution and Ancillary Matters Agreement.

 

1.1.33 “ Parent ” has the meaning set forth in the first paragraph of this Agreement.

 

1.1.34 “ Parent Licensed Patents ” means all Patents that, as of the Effective Date or thereafter during the Term, are wholly owned by Parent, or as to which, and only to the extent and subject to the conditions under which, Parent has the right, as of the Effective Date or thereafter during the Term, to grant licenses or sublicenses without such grant resulting in the payment of royalties or other consideration to third parties (unless Spansion undertakes to pay directly or to reimburse Parent for any such royalties or other consideration, in which case such Patents shall be included within the Parent Licensed Patents), except for payments to a Subsidiary of Parent sublicensed hereunder or payments to Persons for inventions made by such Persons while employees or contractors of Parent or any Subsidiary of Parent sublicensed hereunder.

 

1.1.35 “ Party ” and “ Parties ” have the respective meanings set forth in the first paragraph of this Agreement.

 

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1.1.36 “ Patents ” means all classes or types of patents (including design patents) and utility models of all countries of the world issued or issuing on patent or utility model applications entitled to an effective filing date that is on or before the end of the Term, and respective applications therefor, together with any divisions, continuations and continuations-in-part and reissues and results of re-examinations thereof.

 

1.1.37 “ Pending Product ” of a Person, as of a certain date, means a Licensed Product developed by or for such Person that such Person reasonably expects to tapeout within eighteen (18) months of such date (as specified in a then-current written product roadmap as of such date) and that such Person reasonably expects to make (or have made) and sell commencing reasonably promptly thereafter.

 

1.1.38 “Person” means any person or entity, whether an individual, trustee, corporation, partnership, limited partnership, limited liability company, trust, unincorporated organization, business association, firm, joint venture, other legal entity or governmental authority.

 

1.1.39 “ Process Patents ” means those Licensed Patents that claim (a) a process for designing and/or making Licensed Products, including equipment used therefor, (b) materials comprising or used in the manufacturing of Licensed Products, or (c) a structure for the arrangement or interrelationship of regions, layers, electrodes or contacts of Licensed Products.

 

1.1.40 “ Royalty Payment ” has the meaning set forth in Section 6.1.

 

1.1.41 “ Semi-Annual Period ” means each half of Spansion’s fiscal year; provided , however , that the last Semi-Annual Period shall end on the effective date of any termination of this Agreement.

 

1.1.42 “ Semiconductive Element ” means an element consisting primarily of a body of Semiconductive Material having a plurality of electrodes associated therewith, whether or not said body consists of a single Semiconductive Material or of a multiplicity of such materials, whether or not said body has, therein and/or thereon, one or more junctions and whether or not said body includes one or more layers or other regions (constituting substantially less than the whole of said body) of a material or materials which are of a type other than Semiconductive Material, and if provided as a part thereof, said element includes passivating means thereof.

 

1.1.43 “ Semiconductive Material ” means any material whose conductivity is intermediate to that of metals and insulators at room temperature and whose conductivity increases with increasing temperature over some temperature range.

 

1.1.44 “ Semiconductor Group ,” with respect to a Party, means the internal group or other organization of such Party having as its primary activities the research and development and making of Semiconductor Products for, and selling of Semiconductor Products to, the semiconductor merchant market. The Spansion Semiconductor Group currently consists of Spansion in its entirety. The Parent Semiconductor Group currently consists of Parent in its entirety.

 

1.1.45 “ Semiconductor Product ” means:

 

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(a) a Semiconductive Element; or

 

(b) a Semiconductive Element and one or more films of conductive, semiconductive or insulating materials formed on a surface or surfaces of such Semiconductive Element, said film or films comprising one or more conductors, active or passive electrical circuit elements or any combination thereof; or

 

(c) a unitary assembly consisting of one or more of the elements described in clauses (a) and/or (b) of this Section 1.1.45 having a fixed permanent physical relationship established therebetween; or

 

(d) a unitary assembly consisting primarily of (i) one or more of the elements described in clauses (a), (b) and/or (c) of this Section 1.1.45, and (ii) one or more film devices having a fixed permanent physical relationship established therebetween.

 

Semiconductor Product includes, if provided therewith as a part thereof, (A) Auxiliary Parts and (B) additional electrical circuits constituted thereby and integrally included therein, provided that such Auxiliary Parts and additional electrical circuits are incidental to the functionality of such Semiconductor Products.

 

1.1.46 “ Spansion ” has the meaning set forth in the first paragraph of this Agreement.

 

1.1.47 “ Spansion Content ” means components or products manufactured by Spansion or a Spansion Subsidiary, or components or products specifically manufactured by any other Entity, including AMD or Fujitsu or any third party subcontractor or foundry, on behalf of Spansion or a Spansion Subsidiary at Spansion’s or the Spansion Subsidiary’s direction and based on (a) technology or intellectual property owned by Spansion, or which Spansion otherwise has the right to use, or (b) designs provided by Spansion, which designs are proprietary to Spansion or a third party licensor of Spansion.

 

1.1.48 “ Spansion Japan ” means Spansion Japan Limited, a Japanese corporation.

 

1.1.49 “ Spansion Licensed Patents ” means all Patents that, as of the Effective Date or thereafter during the Term, are wholly owned by Spansion or any of its Subsidiaries that are subject to control by the Spansion Semiconductor Group, or as to which, and only to the extent and subject to the conditions under which, Spansion or any of its Subsidiaries that are subject to control by the Spansion Semiconductor Group has the right, as of the Effective Date or thereafter during the Term, to grant licenses or sublicenses without such grant resulting in the payment of royalties or other consideration to third parties (unless Parent undertakes to pay directly or to reimburse Spansion and/or its Subsidiaries, as applicable, for any such royalties or other consideration, in which case such Patents shall be included within the Spansion Licensed Patents), except for payments to Spansion or any of its Subsidiaries that are subject to control by the Spansion Semiconductor Group or payments to Persons for inventions made by such Persons while employees or contractors of Spansion or any of its Subsidiaries that are subject to control by the Spansion Semiconductor Group. Notwithstanding any of the foregoing, Spansion Licensed Patents do not include any Assigned Patent Rights.

 

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1.1.50 “ STI ” means Spansion Technology Inc., a Delaware corporation, a wholly owned subsidiary of Spansion.

 

1.1.51 “ Subsidiary ” of a Party means any other Person that is Controlled by such Party, but such other Person shall be deemed to be a Subsidiary only so long as such Control exists. Notwithstanding the foregoing, neither Spansion nor any Subsidiaries of Spansion shall be deemed a Subsidiary of Parent.

 

1.1.52 “ Subsidiary Licensed Patents,” with respect to a Subsidiary of Parent that, pursuant to Section 5.1, is granted sublicenses of the rights, licenses and immunities granted to Parent under Sections 2, 3 and 4, means all Patents that, as of the date of sublicense or thereafter during the Term, are wholly owned by such Subsidiary, or as to which, and only to the extent and subject to the conditions under which, such Subsidiary has the right, as of the date of sublicense or thereafter during the Term, to grant licenses or sublicenses, without such grant resulting in the payment of royalties or other consideration to third parties (unless Spansion undertakes to pay directly or to reimburse such Subsidiary for any such royalties or other consideration, in which case such Patents shall be included within the Subsidiary Licensed Patents), except for payments to Parent or any other Subsidiary of Parent sublicensed hereunder or payments to Persons for inventions made by such Persons while employees or contractors of such Subsidiary or any other Subsidiary of Parent sublicensed hereunder.

 

1.1.53 “ Successor Product ” means a subsequent or follow-on version of an Acquired Party Covered Product or Acquirer Competitive Product that is based on substantially the same technology (including “process shrinks” of such products and other incremental improvements thereto) as such Acquired Party Covered Product or Acquirer Competitive Product without the benefit of fundamental advances in design, and that is intended to replace such Acquired Party Covered Product or Acquirer Competitive Product and to be used in the same type of application (e.g., personal computer, mobile phone, etc.).

 

1.1.54 “ Term ” means the period commencing on the Effective Date and ending on the effective date of the termination of this Agreement pursuant to Section 9.

 

1.1.55 “ Termination Agreement ” means that certain Termination Agreement entered into as of June 30, 2003 by and among Parent, Fujitsu, and Fujitsu AMD Semiconductor Limited (now Spansion Japan).

 

1.1.56 “ Third Party ” means any Person other than the Parties and other than any Person Controlling, Controlled by or under common Control with either Party.

 

1.1.57 “ Transaction Document ” has the meaning set forth in the Contribution Agreement.

 

1.2 Interpretation .

 

1.2.1 Certain Terms . The words “hereof,” “herein,” “hereunder” and similar words refer to this Agreement as a whole and not to any particular provision of this Agreement. The term “including” is not limited and means “including without limitation.” The words “make” and “have made” include the acts of developing, assembling, packaging and/or testing.

 

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1.2.2 Section References; Titles and Subtitles . Unless otherwise noted, all references to Sections herein are to Sections of this Agreement. The titles, captions and headings of this Agreement are inserted for convenience of reference only and are not intended to be a part of or to affect the meaning or interpretation of this Agreement.

 

1.2.3 Reference to Persons, Agreements, Statutes . Unless otherwise expressly provided herein, (a) references to a Person include its successors and permitted assigns, (b) references to agreements (including this Agreement) and other contractual instruments shall be deemed to include all subsequent amendments, restatements and other modifications thereto or supplements thereof and (c) references to any statute or regulation are to be construed as including all statutory and regulatory provisions consolidating, amending, replacing, supplementing or interpreting such statute or regulation.

 

2. M UTUAL R ELEASE

 

2.1 Release by Spansion . Spansion hereby releases, acquits and forever discharges Parent hereunder from any and all claims or liability for infringement or alleged infringement of any Spansion Licensed Patent by performance of acts prior to the date on which such Patent becomes a Spansion Licensed Patent that, if performed on or after such date, would be acts licensed, sublicensed or immunized hereunder.

 

2.2 Release by Parent . Parent hereby releases, acquits and forever discharges Spansion hereunder from any and all claims or liability for infringement or alleged infringement of any Parent Licensed Patent by performance of acts prior to the date on which such Patent becomes a Parent Licensed Patent that, if performed on or after such date, would be acts licensed, sublicensed or immunized hereunder.

 

3. G RANTS O F L ICENSE

 

3.1 Grant by Spansion . Subject to the terms and conditions of this Agreement, Spansion hereby grants to Parent a non-exclusive and non-transferable (except pursuant to Section 10.6) license under Spansion Licensed Patents:

 

3.1.1 to make, have made, use, sell, offer to sell, lease, import or