AMENDMENT NO. 1 TO SETTLEMENT
AND LICENSE AGREEMENT
AMONG RAMBUS INC. AND QIMONDA AG
This AMENDMENT
NO. 1 TO PATENT LICENSE AGREEMENT (“Amendment
No. 1”) is effective as of this 8th of July 2008
(“Amendment No. 1 Effective Date”) and entered
into by and between Rambus Inc., a corporation duly organized and
existing under the laws of Delaware, U.S.A., having its principal
place of business at 4440 El Camino Real, Los Altos, California
94022, U.S.A., (hereinafter “Rambus”) and Qimonda AG, a
German corporation, having a principal place of business at
Gustav-Heinemann-Ring 212, 81739 Munich, Germany (hereinafter
“Qimonda”).
WHEREAS, on
March 18, 2005, Rambus entered into that certain Settlement
and License Agreement with Infineon Technologies AG, Infineon
Technologies North America Corp., and Infineon Technologies Holding
North America Inc. (collectively, “Infineon”) (the
“Patent License Agreement”) pursuant to which Rambus
and Infineon agreed to settle certain disputes and court actions
relating to certain memory products and memory interface
technologies, to grant mutual releases with respect to past
activities giving rise to such disputes and court actions and to
grant the other licenses under certain patents with respect to
memory products and memory interface technologies;
WHEREAS, on or
about October 10, 2006, pursuant to Section 9.1 of the
Patent License Agreement, Rambus received notice of and consented
to the assignment by Infineon Technologies AG, on behalf of itself
and Infineon Technologies North America Corp. and Infineon
Technologies Holding North America Inc. of the Patent License
Agreement to Qimonda AG; and
WHEREAS, Rambus
and Qimonda now desire to amend and clarify certain provisions of
the Patent License Agreement for the mutual benefit of each of the
parties;
NOW, THEREFORE,
in consideration of the mutual covenants and promises made between
the parties and other valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree as
follows:
Except as
otherwise defined in this Amendment No. 1, all initially
capitalized terms used herein shall have the respective meanings
assigned to such terms in the Patent License Agreement.
2.
Amendments to Patent License
Agreement
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2.1
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References to Infineon
. Effective as of
May 1, 2006, and except as specifically set forth herein, all
references to “Infineon” in the Patent License
Agreement (other than as set forth under Section 1.2 and
Section 3.3 of the
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[***]
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Confidential
treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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Agreement as amended by this
Amendment No.1 ) are hereby replaced with
“Qimonda.”
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2.2
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Section 1.1
. Effective as of the
Amendment No. 1 Effective Date, the terms of Section 1.1
are hereby replaced in their entirety with the
following:
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“ Affiliate . The term
“Affiliate” means any entity controlling, under common
control with, or controlled by, a party. The term
“control” means the possession, directly or indirectly,
of the power to direct or cause the direction of management or
policies (whether through ownership of securities, partnership or
other ownership interests, by contract or otherwise), provided
that, in any event, any entity that owns or holds, directly or
indirectly, more than fifty percent (50%) of the voting securities,
partnership or other equity interests of any other entity (or is a
general partner or managing member of any other entity), will be
deemed to control such other entity. An entity shall only be deemed
to be an Affiliate of any other entity for so long as such
“control” exists.”
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2.3
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Section 1.4
. Effective as of the
Amendment No. 1 Effective Date, the terms of Section 1.4
are hereby replaced in their entirety with the
following:
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“Licensed Rambus
Patents . The
term “Licensed Rambus Patents” means all patents,
utility models, and patent applications, in all countries of the
world having a first effective filing date, in any country in the
world, prior to March 18, 2005 including, without limitation,
all reissuances, continuations, continuations-in-part, revisions,
extensions and reexaminations thereof, and any patents and patent
applications related thereto, filed or issued in any country of the
world, that were owned or controlled by Rambus or any of its
Affiliates on March 18, 2005 (and patents that may issue
thereon) to the extent Rambus or its Affiliates was entitled to
grant licenses thereunder without the payment of fees to any third
party (other than to current or former employees for inventions
made by such employees while employed by (i) Rambus or
(ii) the third party from whom Rambus acquired the respective
patent).”
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2.4
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Section 1.5
. Effective as of the
Amendment No. 1 Effective Date, the terms of Section 1.5
are hereby replaced in their entirety with the
following:
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“Qimonda Patents
. The term
“Qimonda Patents” means (i) all patents, utility
models, and patent applications, in all countries of the world
having a first effective filing date, in any country in the world,
prior to March 18, 2005, including, without limitation, all
reissuances, continuations, continuations-in-part, revisions,
extensions and reexaminations thereof, and any patents and patent
applications related thereto, filed or issued in any country of the
world, that were owned or controlled by Infineon or any of its
Affiliates on March 18, 2005 (and patents that may issue
thereon, and irrespective whether Infineon or Qimonda continues to
own such patents) to the extent Infineon or its Affiliates was
entitled to grant licenses thereunder without the payment
of
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[***]
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Confidential
treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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fees to any third party (other than
to current or former employees for inventions made by such
employees while employed by (i) Infineon or (ii) the
third party from whom Infineon acquired the respective patent).
Qimonda Patents shall not include any patents, utility models, and
patent applications, in all countries of the world, pertaining to
semiconductor manufacturing or testing
technology.”
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2.5
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Section 1.8
. Effective as of the
Amendment No. 1 Effective Date, the terms of Section 1.8
are hereby replaced in their entirety with the
following:
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“ Memory IC . The term
“Memory IC” means any semiconductor memory device, or
equivalent, having information storage as its primary function and
that is not capable of performing any substantial data processing
that is not related to information storage, retrieval, or error
correction, including but not limited to SDR SDRAM, DDR SDRAM, DDR2
SDRAM, DDR3 SDRAM, GDDR2 DRAM, GDDR3 DRAM, RLDRAM, RLDRAM2, RDRAM,
XDR DRAM, Cellular RAM, low power DRAM, SRAM, Non-Volatile Memory
and any subsequent generation of any such
products.”
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2.6
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Section 1.14
. Effective as of the
Amendment No. 1 Effective Date, the terms of Section 1.14
are hereby replaced in their entirety with the
following:
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“ Change of Control .
The term “Change of Control of Qimonda means a transaction or
a series of related transactions:
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(i)
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(1) in which any individual,
entity or “group” (as described in Rule 13d-5(b)
promulgated under the Securities and Exchange Act of 1934, as
amended) (“Acquirer”) acquires “control” of
Qimonda (where control has the meaning set forth in the definition
of the term “Affiliate”), unless such Acquirer already
had control of Qimonda immediately before such transaction(s);
or
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(2) in which Qimonda is merged
or consolidated with or into another entity, including by way of
triangular merger, where, the holders of Qimonda’s voting
securities (or other similar ownership interest granting the power
to direct or cause the direction of management or policies) prior
to such transaction do not hold more than 50% of the voting
securities (or other ownership interest granting the power to
direct or cause the direction of management or policies) of the
surviving entity or any entity that controls the surviving entity,
or
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(3) resulting in the transfer
or sale, either directly or indirectly, of all or substantially all
of the assets of the DRAM business of Qimonda to any entity that,
immediately before such transaction(s), is not an Affiliate of
Qimonda and does not simultaneously upon such transfer or sale
become a Subsidiary of Qimonda, and where Qimonda is not merged or
consolidated with or into another entity as described under
Section 1.14(i)(2) above; or
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[***]
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Confidential
treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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(4) the “execution”
of any binding agreement which provides for any of the foregoing
described in Section 1.14(i)(1) through (3) where
“execution” means (i) the Change of Control
unconditionally occurs upon the full execution of such binding
agreement, or (ii) where the Change of Control does not occur
as described in the preceding subsection (i), the fulfillment, or
waiver, of the conditions that are required for the Change of
Control to occur or otherwise come into effect; or
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(ii)
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in
which Qimonda or any of its Affiliates acquires ownership or
“control” (where control has the meaning set forth in
the definition of the term “Affiliate”) of, by merger,
acquisition of securities or assets, joint venture, business
combination or otherwise, all or substantially all the business or
assets of a Memory Unit (as defined hereinbelow). For this purpose,
a “Memory Unit” means (A) any entity that
manufactures (or has manufactured) and sells Memory ICs, or
(B) any division (or other business unit) of an entity, which
division (or other business unit) manufactures (or has
manufactured) and sells Memory ICs and is responsible for all or
substantially all of such Memory IC manufacturing (or having
manufactured) and sales of the entity.
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To
the extent any Change of Control under Section 1.14(ii) above
results in any of the outcomes of a Change of Control under
Section 1.14(i) above, such Change of Control shall be deemed
to be Change of Control under Section 1.14(i)
above.”
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2.7
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Section 1.15
. Effective as of the
Amendment No. 1 Effective Date, Article 1 of the Patent
License Agreement is hereby amended to include the following new
definition as Section 1.15:
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“ Non-Volatile Memory .
The term “Non-Volatile Memory” means any semiconductor
memory device, or equivalent, having information storage as its
primary function and that is not capable of performing any
substantial data processing that is not related to information
storage, retrieval, or error correction that can retain information
stored on such memory device, or equivalent, without electrical
power to such device, including, but not limited to, flash, MRAM,
FRAM, ROM, PROM, EPROM, EEPROM and any subsequent generation of any
such products.”
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2.8
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Section 1.16
. Effective as of the
Amendment No. 1 Effective Date, Article 1 of the Patent
License Agreement is hereby amended to include the following new
definition as Section 1.16:
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“ Semiconductor Memory
Design . The term “Semiconductor Memory Design”
means any form of human or machine readable representation (e.g.,
circuit reference design, design databases, etc.) for, all or
substantially all of, any entire (i) semiconductor memory
device, (ii) mechanical, optical, electronic or other form of
interconnect designed to connect such
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[***]
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Confidential
treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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semiconductor memory device to other
devices and/or (iii) packaging for such semiconductor memory
device.”
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2.9
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Section 1.17
. Effective as of the
Amendment No. 1 Effective Date, Article 1 of the Patent
License Agreement is hereby amended to include the following new
definition as Section 1.17:
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“ Rambus Proprietary
Semiconductor Memory Design . The term “Rambus
Proprietary Semiconductor Memory Design” means a
Semiconductor Memory Design:
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(A) (1) first
disclosed, designed and implemented by or for Rambus or
(2) acquired by Rambus from a third party (e.g. as part a
merger or an acquisition of some or all of the assets and/or
business of such third party) and first disclosed, designed and
implemented (i) by or for Rambus or (ii) by or for such
third party, and
(B) where Rambus
licenses such Semiconductor Memory Design for a separate fee as
part of its general technology licensing business and where such
licenses include documentation, know-how and technical support and
further, where the products implementing such Semiconductor Memory
Design are generally excluded from the scope Rambus’ patent
license agreements.
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Examples of Rambus Proprietary
Semiconductor Memory Designs are RDRAM, XDR, XDR2 and Rambus’
low power memory interface currently marketed as
“Velora”. Whether a Semiconductor Memory Design
constitutes a Rambus Proprietary Semiconductor Memory Design shall
be based, in addition to the criteria above, on whether the level
of contribution by Rambus, or, if acquired by Rambus from a third
party, by such third party, is comparable to RDRAM, XDR, XDR2
and/or Velora.
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2.10
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Section 1.18
. Effective as of the
Amendment No. 1 Effective Date, Article 1 of the Patent
License Agreement is hereby amended to include the following new
definition as Section 1.18:
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“ Excluded Entity . The
term “Excluded Entity” means [***], and any and all
Affiliates of the foregoing (or a successor to all or substantially
all of the assets and liabilities of any such entity or its
Affiliates).”
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2.11
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Section 1.19
. Effective as of the
Amendment No. 1 Effective Date, Article 1 of the Patent
License Agreement is hereby amended to include the following new
definition as Section 1.19:
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“ Subsidiary . The term
“Subsidiary” means any entity that is controlled by
another entity (where control has the meaning set forth in the
definition of the term “Affiliate”).”
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[***]
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Confidential
treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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2.12
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Section 2.4
. Effective as of the
Amendment No. 1 Effective Date, the terms of Section 2.4
of the Patent License Agreement are hereby replaced in their
entirety with the following:
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“During and for each calendar
quarter that Rambus receives payments from Qimonda towards the
First Cap, Second Cap and/or Final Cap (as such terms are defined
in Sections 6.2, 6.3 and 6.4, respectively), but in any event,
at least for the period of [***], Rambus and its Affiliates hereby
grant to Qimonda and its Affiliates a nonexclusive, world-wide,
irrevocable license (without the right to grant sublicenses), of
the same scope as per Section 2.2, under all patents and
patent applications, other than Licensed Rambus Patents, including,
without limitation, all reissuances, continuations,
continuations-in-part, revisions, extensions and reexaminations
thereof, filed or issued in any country of the world, that are
owned or controlled by Rambus or any of its Affiliates now or
hereafter (and patents that may issue thereon) to the extent Rambus
or its Affiliates are entitled to grant licenses thereunder without
the payment of fees to any third party (other than to current or
former employees for inventions made by such employees while
employed by (i) Rambus or (ii) the third party from whom
Rambus acquired the respective patent) (“Term
License”). At the expiration of each Term License Period set
forth in this Section 2.4, and subject to Article 3, the
Term License granted under this Section 2.4 shall
automatically terminate.”
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2.13
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Article 3
. Effective as of the
Amendment No. 1 Effective Date, the provisions of
Article 3 are hereby replaced in their entirety with the
following:
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“3.1 Most Favored
Licensee . Upon request by Qimonda, Qimonda and its Affiliates
shall be entitled to obtain and Rambus shall grant an additional
license of the same scope as per Section 2.4, at the then
applicable most favored license terms and conditions (“Most
Favored Term License”). Qimonda may request such Most Favored
Term License within [***] (the “MFL Option Period’). If
Qimonda does not request such Most Favored Term License within the
MFL Option Period, Rambus shall have no further obligation under
this Section 3.1. To the extent there [***], all amounts paid
under the Most Favored Term License [***].
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The
terms of this Section 3.1 shall automatically and immediately
terminate upon any Change of Control of Qimonda as defined under
Section 1.14(i) where any of the Prior Entities (as defined in
Section 9.4, per alternative (i) of such definition) is
an Excluded Entity, provided that if the Most Favored Term
License is in full force and effect at the time of such Change of
Control, such Most Favored Term License shall survive such Change
of Control.
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3.2
Supplemental Term License . Notwithstanding the terms of
Section 2.4 above, provided Qimonda is not in breach of its
payment obligations under this Agreement, if during any period
[***], the Term License under Section 2.4 above, according to
its terms, has terminated (each such period referred to
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[***]
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Confidential
treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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as
a “Supplemental Term License Period”), whether due to
[***], Rambus and its Affiliates agree to grant, and do hereby
grant, Qimonda and its Affiliates, a license of the same scope as
per Section 2.4 during any period that constitutes a
Supplemental Term License Period, provided that such license
shall (i) subject to the last sentence of this paragraph,
[***] and (ii) automatically and immediately terminate upon a
Change of Control of Qimonda as defined in Section 1.14(i)
where any of the Prior Entities (as defined in Section 9.4,
per alternative (i) of such definition) is an Excluded Entity
that does not have a Prior Entities License Agreement (as defined
in Section 9.4) and [***]. The [***] acquired from a third
party shall apply (i) only if [***] and (ii) solely to
those [***].
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3.3. Additional License to
Non-Infineon Licensed Products . Further, upon request of
Infineon, Infineon and its Affiliates shall be entitled to obtain
and Rambus shall grant to Infineon and its Affiliates a license
under any patents, utility models, and patent applications,
including, without limitation, all reissuances, continuations,
continuations-in-part, revisions, extensions and reexaminations
thereof, filed or issued in any country of the world, that
are
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