Joint Venture License Agreement

EXHIBIT 10.27(e)


JOINT VENTURE LICENSE AGREEMENT


Confidential portions of this document have been deleted and
filed separately with the Securities and Exchange Commission
pursuant to a request for confidential treatment.


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JOINT VENTURE LICENSE AGREEMENT


This Joint Venture License Agreement (this "Agreement"), dated as of April 16, 1993, is among ADVANCED MICRO DEVICES, INC. ("AMD"), a Delaware corporation having its principal office at 901 Thompson Place, Sunnyvale, California 94088-3453, U.S.A., FUJITSU LIMITED ("Fujitsu"), a Japanese corporation having its registered office at 1015 Kamikodanaka, Nakahara-ku, Kawasaki 211, Japan, and FUJITSU AMD SEMICONDUCTOR LIMITED ("JV"), a Japanese corporation having its registered office at 1263 Kamikodanaka, Nakahara-ku, Kawasaki 211, Japan.


INTRODUCTION


A. Fujitsu and AMD have entered into a joint venture agreement dated March 30, 1993 (the "Joint Venture Agreement"), and other related agreements to establish JV to manufacture and supply certain integrated circuits.


B. Fujitsu is, among other things, in the business of designing, developing, manufacturing and selling semiconductor products.


C. AMD is, among other things, in the business of designing, developing, manufacturing and selling semiconductor products.


D. JV desires Fujitsu and AMD to grant to JV, and Fujitsu and AMD are willing to grant to JV, a limited license to use their respective intellectual property rights for manufacturing and supplying certain JV Products (as defined in the Joint Development Agreement), subject to the terms and conditions as hereinafter set forth.


E. JV desires to obtain from Fujitsu and AMD, and Fujitsu and AMD are willing to supply JV, certain relevant technology, technical training and support for such JV Products.


F. Fujitsu and AMD desire JV to grant to Fujitsu and AMD, and JV is willing to grant to Fujitsu and AMD, a license to use JV's intellectual property rights to make, use or sell products, subject to the terms and conditions as hereinafter set forth.


ACCORDINGLY, in consideration of the mutual covenants and promises contained herein, Fujitsu, AMD and JV agree as follows:


Article 1. DEFINITIONS.


As used in this Agreement, the following terms shall have the following meanings:


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Section 1.1 The following words as used herein have the meanings defined in the Technology Cross-License Agreement between AMD and Fujitsu ("Technology Cross-License") dated as of March 1993 (except that, for purposes of this Agreement, references in Sections 1.9 and 1.25 of the Technology Cross-License to "this Agreement" shall mean this Agreement).


Technology Cross-
Definition License Section
---------- -----------------

"Affiliate" 1.1.
"Applicable Law" 1.2.
"Confidential Information" 1.4.
"EPROM" or "Electrically Programmable
Read Only Memory" 1.7.
"Flash Memory" 1.8.
"Governmental Approvals" 1.9.
"Governmental Authority" 1.10.
"Incorporated Product" 1.11.
"Joint Development Agreement" 1.13.
"Memory Card" 1.20.
"Nondisclosure Agreements" 1.21.
"NVM" or "Non-Volatile Memory" 1.23.
"Other IPR" 1.24.
"Patents" 1.25.
"Pilot Product" 1.26.
"Proprietary Information" 1.28.
"Subsidiary" 1.33.
"Transitional Event" 1.34.


Section 1.2. "AMD/Fujitsu Technology" shall mean the front-end manufacturing process technology for manufacturing JV Products and the product design data for JV Products owned or developed by Fujitsu and/or AMD and provided or transferred to JV by AMD or Fujitsu in accordance with this Agreement. The major elements of AMD/Fujitsu Technology to be provided are currently anticipated as set forth in Attachment D hereto.


Section 1.3. "Effective Date" shall mean the later to occur of (a) the date of this Agreement or (b) the date on which all required Governmental Approvals have been obtained.


Section 1.4. "IPR" or "Intellectual Property Rights", (a) with respect to Fujitsu or AMD, shall have the meaning set forth in the Technology Cross-License, and (b) with respect to JV, shall mean all Patents of JV and all copyrights, mask works, trade secrets, know-how, data, formula, processes, confidential information, or other information, tangible or otherwise, that are wholly owned by JV or as to which, and only to the extent and subject to the conditions under which, JV has the right, as of the Effective Date or thereafter during the term of this Agreement, to grant licenses or sublicenses of the scope granted herein, without such grant resulting in the payment of royalties or other consideration to third parties (unless and until JV is reimbursed for any payments so made, in which case such information shall be included within IPR for any license or sublicense to the party providing the


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4 reimbursement) except for payments to a Subsidiary of JV, if any, or payments to third parties for IPR developed or created by such third parties while employed by JV or any Subsidiary thereof.


Section 1.5. [Intentionally omitted]


Section 1.6. "JV Product" shall have the meaning set forth in Section 1.4 of the Joint Development Agreement.


Section 1.7. [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]


Section 1.8. "Subject Technology IPR" shall have the meaning set forth in Section 1.6 of the Joint Development Agreement.


Section 1.9. "Tripartite IPR" shall mean IPR which, during the term of this Agreement, all of AMD, Fujitsu, and JV jointly own and/or control as a result of the joint development and design work done by all three parties hereunder.


Article 2. GRANTS OF LICENSE.


Section 2.1. Fujitsu hereby grants to JV a non-exclusive, non- transferable license under Fujitsu IPR, with no right to sublicense:


(a) to make, have made (it being understood that for purposes of this Agreement the terms "make" and "have made" shall include the acts of assembling and/or testing) and use JV Products and to use Pilot Products anywhere in the world; and


(b) to sell, lease or otherwise dispose of JV Products and Pilot Products solely in the countries specified in Attachment A.


Section 2.2. AMD hereby grants to JV a non-exclusive, non- transferable license under AMD IPR, with no right to sublicense:


(a) to make, have made and use JV Products and to use Pilot Products anywhere in the world; and


(b) to sell, lease and otherwise dispose of JV Products and Pilot Products solely in the countries specified in Attachment B.


Section 2.3. JV hereby grants to AMD and Fujitsu a non- exclusive, non-transferable, perpetual, irrevocable, [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION], worldwide license, with the right to sublicense freely, under JV IPR to make, have made, use, sell, lease or otherwise dispose of any processes, manufacturing apparatus, or products anywhere in the world.


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Section 2.4. JV agrees that it shall notify AMD and Fujitsu of any significant modifications to AMD/Fujitsu Technology or JV technology.


Article 3. SUPPORT AND TRAINING.


Section 3.1. AMD and Fujitsu shall use their best efforts to provide AMD/Fujitsu Technology to JV in accordance with the schedule set forth in Attachment C hereto, as such schedule may be modified from time to time upon mutual agreement of the parties.


Section 3.2. AMD and Fujitsu agree to cooperate with each other and with JV in providing to JV the AMD/Fujitsu Technology.


Section 3.3. Either AMD or Fujitsu may, upon the consent of AMD in the case of Fujitsu or Fujitsu in the case of AMD, provide JV with new AMD/Fujitsu Technology as a replacement for previously provided AMD/Fujitsu Technology.


Section 3.4. Each of Fujitsu and AMD shall use best efforts to provide to JV without charge initial technical training or support as required in connection with the delivery of AMD/Fujitsu Technology. Such technical training shall be provided in accordance with a schedule to be mutually agreed upon by the JV and the party responsible for providing such Technology, but in any event such training or support shall last no longer than ninety (90) days from the date of the first delivery of the relevant Technology.


Section 3.5. From time to time after the provision of technical training or support contemplated by Section 3.4, JV may request and Fujitsu and/or AMD, as the case may be, may provide, additional technical training or support upon terms and conditions as agreed between or among Fujitsu and/or AMD and the JV. The responsible party as set forth in Section 3.4 above shall be responsible for such additional technical training or support.


Section 3.6. JV shall assign one or more of its employees to be responsible for receiving and managing AMD/Fujitsu Technology, and shall notify AMD and Fujitsu of the name of such employee(s) prior to the delivery of any AMD/Fujitsu Technology. When JV changes such responsible employee(s), JV shall notify Fujitsu and AMD of such change in writing without delay.


Article 4. CONSIDERATION.


Section 4.1. [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION].


Section 4.2. [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION].


Section 4.3. [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] shall be payable semi-annually within sixty (60) days after the end of each half of JV's fiscal year.


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6 On or before the date of such payment JV shall send to Fujitsu and AMD a report describing the basis for its [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] calculation. Notwithstanding Sections 4.1 and 4.2 and any other provisions hereof, no [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] shall be payable by JV to a party on JV Products if such JV Products do not embody, do not incorporate or are not otherwise subject to (or are not manufactured through processes or methods that embody, incorporate or are otherwise subject to) the IPR of such party, Subject Technology IPR, or Tripartite IPR.


Section 4.4. JV shall pay to Fujitsu and/or AMD, as the case may be, a fee for any technical training provided to JV by Fujitsu and/or AMD pursuant to Section 3.5 at a rate to be mutually agreed by the JV, Fujitsu and AMD, which shall include a fee for the services of any employees provided and all actual costs incurred by Fujitsu and/or AMD, as the case may be, in providing such training, including but not limited to, travel, hotel and per diem expenses of such employee(s) and any costs of translation and reproduction of written materials. JV shall pay such fee to Fujitsu and/or AMD, as the case may be, within thirty (30) days of the date of the invoice issued by Fujitsu or AMD.


Section 4.5. All payments made hereunder pursuant to Section 4.3 and 4.4 above shall be free and clear of all deductions, withholding taxes or other charges, except as provided in Article 5, and shall be made by JV in Japanese yen to Fujitsu or US dollars to AMD, by wire transfer to a bank account(s) designated by Fujitsu or AMD, as the case may be, unless otherwise mutually agreed upon. Any currency conversion required in connection with payment to Fujitsu or AMD, as the case may be, shall be at the rate received by JV at the time of such payment from the bank it utilizes to make such payment.


Section 4.6. Fujitsu and AMD shall each have the right, at its own expense, upon reasonable notice and at reasonable times, but not more than once each fiscal year for each party, to inspect, through an independent auditor or another person reasonably acceptable to JV, JV's records for the purpose of verifying the accuracy of JV's calculations of [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]. JV shall keep records showing the JV Products sold or otherwise disposed of under the licenses granted herein and the calculation of Net Sales in sufficient detail to enable the [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] payable to Fujitsu or AMD to be determined. Such records shall be maintained for a period of at least [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] after the date when payment is due by JV.


Section 4.7. In the event Fujitsu or AMD, as the case may be, is required to pay a fee to a third party pursuant to any license agreement or amendment to an existing license agreement for sublicensing such third party's intellectual property rights to JV, JV shall be responsible for such fee to the extent such fee is a separate [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] on sales by JV. Where such fee is part of a general lump sum payment, the sublicensing party and JV shall agree upon a mutually acceptable allocation of such payment.


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Section 4.8. The parties have established the [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] rates set forth in Sections 4.1 and 4.2 based on what they believe are commercially appropriate arm's-length [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] rates given the anticipated economic performance of JV. If the profits of JV exceed, or fall short of, those reasonably contemplated by the parties, the parties agree to make appropriate adjustments to the [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] rates.


Article 5. TAXATION.


Section 5.1. If required by applicable laws, JV may withhold income tax from any payment to AMD or Fujitsu, as the case may be. In the case of such withholding, JV shall, without delay, pay the withheld tax to the appropriate tax office and furnish Fujitsu or AMD, as the case may be, with appropriate evidence of the tax payment.


Section 5.2. JV shall bear all sales, use and other governmental taxes or transaction charges imposed in any jurisdiction which arise in connection with the delivery or use of AMD/Fujitsu Technology, or the manufacture or sale of JV Products by JV hereunder.


Section 5.3. The parties agree that the tangible portion of the property delivered and to be delivered by AMD to JV is valued at [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] and by Fujitsu to JV is valued at [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION].


Article 6. INTELLECTUAL PROPERTY RIGHTS.


Section 6.1. Except as provided in Section 6.2, all Tripartite IPR hereunder shall be jointly owned by JV, AMD and Fujitsu. None of the parties hereto may file an application for a Patent, with respect to such Tripartite IPR without the prior written consent of the other parties hereto. The parties agree to cooperate in applying for, prosecuting and maintaining any Patents as may be mutually agreed and in protecting such Tripartite IPR, and in each case, to equally divide the expenses thereof. Except for the [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] payments required by Sections 4.1 and 4.2, each of Fujitsu, AMD and JV shall have the right to make, have made, use and sell products and processes using the Tripartite IPR and to license (except in case of JV, any such license to be subject to appropriate Board of Directors approval) Tripartite IPR without accounting to the other parties unless otherwise mutually agreed upon in writing, except that neither Fujitsu, AMD nor JV shall assign its ownership interest in any Tripartite IPR to a third party without the prior written consent of the other parties.


Section 6.2. Where any technology related to JV Products is developed independently by any party hereto, or by JV jointly with either Fujitsu or AMD,


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8 without use of the Confidential Information of the other party(ies), in the course of development and design work in accordance with the terms of this Agreement, the ownership and the right to file for a Patent for such technology shall rest solely with the party(ies) developing such technology. All Other IPR and Proprietary Informat ...