Exhibit 10.39
ADVANCED MICRO DEVICES
and
PATRIOT SCIENTIFIC CORPORATION
--------------------------------------------------------------------------------
PATENT PORTFOLIO LICENSE AGREEMENT
--------------------------------------------------------------------------------
1
<PAGE>
THIS AGREEMENT made and entered into this
February 21, 2005 (the Effective Date)
by and between Patriot Scientific Corp., a
Delaware corporation having an office
at 10989 Via Frontera, San Diego,
California 92127 (hereinafter "PTSC") and
Advanced Micro Devices Inc. a Delaware
corporation, having an office at 5204
East Ben White, Austin, Texas 78741
(hereinafter "Licensee") including Spansion
Inc. and all current Affiliates of AMD and
Affiliates formed by AMD over the
course of this Agreement for which AMD owns
or controls more than 50% of the
shares, board seats, or equity in the
entity. This Agreement shall apply to all
current AMD Affiliates, in the same manner
it applies to AMD, for the term of
this Agreement even if these legal entities
cease in the future to be an
"Affiliate" of AMD, as defined above.
WHEREAS,
PTSC owns certain U.S. patent rights, as defined herein,
relating
to high
performance, low cost microprocessors and has the right to
enter
into the
Agreement and grant the license granted herein;
WHEREAS,
PTSC is involved in litigation to enforce PTSC Patent Rights
(defined
herein) in the U.S. District Court for the Northern District of
California
(PTSC v. Fujitsu et al, No. C035787SBA and Intel v. PTSC, No.
C040439SBA) and to correct
inventorship of same (PTSC v. Moore et al, No.
C0400618JF) (the "Pending Litigations").
WHEREAS,
Licensee desires to obtain a license to PTSC Patent Rights to
avoid
litigation and has the right to enter into this Agreement; and
WHEREAS,
PTSC is willing to grant Licensee such an license upon the
terms
and
conditions set forth herein.
NOW,
THEREFORE, intending to be legally bound, the parties hereto agree
as
follows:
1.0 -- PTSC Patent Rights
1.1 "Other
Patents" shall mean all Patents, not including the patents
covered by
PTSC Patent Rights, in any country of the world including all
reissues,
divisions, renewals, reexaminations, extensions, provisionals,
continuations, continuing prosecution applications and
continuations-in-part thereof, in each case then owned (in whole or
in
part) or
otherwise controlled by PTSC. Other Patents shall include all
Patents to
which PTSC has the right to grant sublicenses at any time up
until five
years from the Effective Date of this Agreement, provided,
however,
that if such right to grant sublicenses is subject to payment
to
a third
party (other than a PTSC Subsidiary, agent, or an employee of
PTSC
or a PTSC
Subsidiary), such Patent or patentable invention will be deemed
to be a
Licensed Patent only if LICENSEE agrees to bear such payment or
otherwise
arranges terms with the third party that removes the obligation
of payment
on PTSC.
1.2 "PTSC
Patent Rights" shall mean: the U.S. Patents listed in Appendix
A
attached
hereto and made a part hereof and any continuation,
continuation-in-part or divisional of any such application, the
patents
issuing
thereon, and any reissue, reexamination or extension of any
such
patent,
and any patent application or patent corresponding to such
patents
which are
filed or hereinafter issued in any country;
2
<PAGE>
1.3 "Patents"
shall mean all classes and types of patents, design patents,
utility
models, invention disclosures, or like instruments conferring
similar
rights (filed or issued) and all applications therefore in all
countries
of the world.
2.0 -- Confidentiality
2.1
Confidential Information. For a period of seven (7) years
following
first
disclosure thereof, each party shall maintain in confidence the
confidential information of the other party (including samples)
disclosed
by the
other party and identified as, or acknowledged to be
confidential
(the
"Confidential Information") at the time of disclosure, and shall
not
use,
disclose or grant the use of the Confidential Information except
as
licensed
herein or on a need-to-know basis to those directors, officers,
affiliates, employees, permitted licensees, permitted assignees
and
agents,
consultants, clinical investigators, contractors, or other
people
or
entities reasonably needed in connection with such party's
activities
as
expressly authorized by the Agreement. To the extent that
disclosure is
authorized
by the Agreement, prior to disclosure, each party hereto shall
obtain
agreement of any such Persons to hold in confidence and not
make
use of the
Confidential Information for any purpose other than those
permitted
by the Agreement.
2.2
Permitted Disclosures. Except as otherwise set forth in Section
7.2
herein,
the confidentiality obligations contained in Section 2.1 above
shall not
apply to the extent that (a) any receiving party (the
"Recipient") is required (i) to disclose information by law, order
or
regulation
of a governmental agency or a court of competent jurisdiction,
or (ii) to
disclose information to any governmental agency for purposes of
obtaining
approval to test or market a product, provided in either case
that the
Recipient shall provide written notice thereof to the other
party
and
sufficient opportunity to object to any such disclosure or to
request
confidential treatment thereof; or (b) the Recipient can
demonstrate that
(i) the
disclosed information was public knowledge at the time of such
disclosure
to the Recipient, or thereafter became public knowledge, other
than as a
result of actions of the Recipient in violation hereof; (ii)
the
disclosed
information was rightfully known by the Recipient (as shown by
its
written records) prior to the d
