EXHIBIT 10.15
Amendment to the PATENT LICENSE AGREEMENT between
Motorola, Inc. and Applied Micro Circuits Corporation Effective
January 1, 1988
Motorola, Inc., having an office at 0000 Xxxx Xxxxxxxxx Xxxx, Xxxxxxxxxx,
Xxxxxxxx 00000 and Applied Micro Circuits Corporation, having an office at 0000
Xxxx Xxxxxxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 hereby agree to amend the above-
identified agreement as follows.
1. Section 4.1, line 3; delete "1992" and insert "[ * ]."
2. Directly after Section 4.1.3, insert new Section 4.1.4 as follows.
"For 1993, [ * ] U.S. Dollars [ * ]."
3. Section 4.2.2, line 1; after "1988," insert "with the exception of
1993."
4. Section 4.3, line 3; after "made" insert "with the exception of 1993
for which the payment is due May 15, 1994".
5. Section 4.5, line 2; delete the account number and insert "00000000."
6. Section 5.1, line 2; delete "1992" and insert "[ * ]."
7. All other terms and conditions of the Agreement remain the same.
Indicating their agreement to the forgoing, the parties hereto have
executed this Amendment in duplicate.
Motorola, Inc. Applied Micro Circuits Corporation
By: /s/ [signature] By: /s/ [signature]
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Title: Vice President and Title: V.P., Finance & Admin.
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Intellectual Property
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Licensing Counsel
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Date: April 7, 1994 Date: April 20, 1994
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[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
PATENT LICENSE AGREEMENT
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THIS AGREEMENT is effective as of the 1st day of January, 1988 by and
between MOTOROLA, INC., a Delaware corporation having an office at 0000 Xxxx
XxXxxxxx Xxxx, Xxxxxxx, Xxxxxxx 00000 (hereinafter called "MOTOROLA"), and
APPLIED MICRO CIRCUITS CORPORATION, a corporation of California having an office
at 0000 Xxxx Xxxxxxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter called "AMCC").
WHEREAS, MOTOROLA owns and has, or may have, rights in various patents
issued, and applications for patents pending, in various countries of the world
as to which AMCC desires to acquire licenses as hereinafter provided, and
WHEREAS, AMCC owns and has, or may have, rights in various patents issued,
and applications for patents pending, in various countries of the world as to
which MOTOROLA desires to acquire licenses as hereinafter provided, and
WHEREAS, AMCC and MOTOROLA are engaged in continuing research, development
and engineering in regard to LICENSED PRODUCTS (as hereinafter defined) and have
programs for the patenting of inventions resulting therefrom,
NOW THEREFORE, in consideration of the mutual covenants and conditions
hereinafter set forth, it is agreed as follows:
Section 1 - DEFINITIONS
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1.1 SUBSIDIARY(IES) means a corporation, company, or other entity
more than fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other managing
authority) are, now or hereafter, owned or controlled, directly or indirectly by
a party hereto, but such corporation, company, or other entity shall be deemed
to be a SUBSIDIARY only so long as such ownership or control exists.
1.2 SEMICONDUCTIVE MATERIAL means any material whose conductivity is
intermediate to that of metals and insulators at room temperature and whose
conductivity, over some temperature range, increases with increases in
temperature. Such material shall include but not be limited to refined
products, reaction products, reduced products, mixtures and compounds.
1.3 INTEGRATED CIRCUIT STRUCTURE means an integral unit consisting
primarily of a plurality of active and/or passive circuit elements associated
on, or in, a unitary body of SEMICONDUCTIVE MATERIAL for performing electrical
or electronic functions and, if provided therewith, such unit includes housing
and/or supporting means therefor.
1.4 SEMICONDUCTOR ELEMENT means a device other than an INTEGRATED
CIRCUIT STRUCTURE 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, 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 therewith, such device includes housing
and/or supporting means therefor.
1.5 MANUFACTURING APPARATUS means as to each party hereto, any
instrumentality or aggregate of instrumentalities primarily designed for use in
the fabrication of that party's LICENSED PRODUCTS (as hereinafter defined).
1.6 FUNCTIONAL ASSEMBLY(IES) means a plurality of active and/or
passive elements for generating, receiving, transmitting, storing, transforming
or acting in response to an electrical signal.
1.7 MICROPROCESSOR(S) means one or more INTEGRATED CIRCUIT STRUCTURES
containing functional elements including registers, control logic, decision
logic, and input-output circuitry appropriately coupled to interconnections
which may include internal buses such as data buses, address buses, or control
buses and having a capability of executing temporarily or permanently stored
program instructions or microinstructions; and which may also have included on
said INTEGRATED CIRCUIT STRUCTURES, memory, clocks, input-output interface
circuitry, or other electronic functions ordinarily associated with or connected
to central processing units.
1.8 INPUT-OUTPUT ADAPTOR(S) means one or more INTEGRATED CIRCUIT
STRUCTURES which are adapted to provide an interface between a MICROPROCESSOR
and any instrumentality or aggregate of instrumentalities adapted to compute,
classify, process, transmit, receive, retrieve, originate, switch, store,
display, manifest, measure, detect, record, reproduce, handle, or utilize any
form of information, intelligence or data for business, scientific, control or
other purposes, but shall not include such instrumentality or aggregate of
instrumentalities, per se.
1.9 VARISTOR MATERIALS AND DEVICES means a non-linear electrical
device comprising dispersed mixtures of insulating and conducting phases and
materials therefor and, if provided therewith, such device includes housing
and/or supporting means therefor. VARISTOR MATERIALS AND DEVICES does not
include materials or devices primarily for use with voltage magnitudes
substantially higher than voltage magnitudes customarily employed with the other
items listed within the definition of LICENSED PRODUCTS.
1.10 CIRCUIT OR SYSTEM means one or more FUNCTIONAL ASSEMBLY(IES)
whether or not combined with one or more active and/or passive elements for
performing electrical or electronic functions, whether or not a housing and/or
supporting means for said circuitry is included.
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1.11 ELECTRICAL METHOD means a method or steps for using FUNCTIONAL
ASSEMBLY(IES) whether or not combined with one or more active and/or passive
element(s), for performing electrical or electronic function(s).
1.12 MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR means a MOTOROLA existing
business unit now consisting of an International Semiconductor Group, a
Microprocessor Products Group, a MOS Memory Products Group, a Standard Logic and
Analog Integrated Circuits Group, an Application Specific Integrated Circuits
Division and a Discrete and Special Technologies Group having major
manufacturing facilities located in Phoenix, Arizona; Mesa, Arizona; and Austin,
Texas; Toulouse, France; Aizu and Sendai, Japan; and East Kilbride, Scotland;
making and/or developing products falling within the definition of LICENSED
PRODUCTS (as hereinafter defined). This definition of the MOTOROLA
SEMICONDUCTOR PRODUCTS SECTOR also includes the predecessor MOTOROLA business
unit of said Groups taken singularly or in combination and/or said Division and
any MOTOROLA future business unit acquired or derived from, by separation or
merger, irrespective of appellation, said Groups taken singularly or in
combination and/or said Division.
1.13 MOTOROLA PATENTS means all classes or types of patents, utility
models, design patents and applications for the aforementioned of all countries
of the world, which are issued, published or filed prior to the date of
expiration or termination of this Agreement, and which arise out of inventions
made solely by one or more employees of the MOTOROLA SEMICONDUCTOR PRODUCTS
SECTOR and under which and to the extent to which and subject to the conditions
under which the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR may have, as of the
EFFECTIVE DATE of this Agreement, or may thereafter during the term of this
Agreement acquire the right to grant licenses or rights of the scope granted
herein without the payment of royalties or other consideration to third persons,
except for payments to third persons for inventions made by said third persons
while engaged by MOTOROLA. In no event shall the term MOTOROLA PATENTS include
or encompass patents on inventions made by employees of MOTOROLA while in the
employ of groups or operations of MOTOROLA other than the MOTOROLA SEMICONDUCTOR
PRODUCTS SECTOR, except in accordance with Section 3.6; and in no event shall
MOTOROLA PATENTS include (i) any one or more of the following three patents of
MOTOROLA which relate to circuitry for electronic organs: 3,535,430; 3,546,355;
and 3,610,803.
1.14 AMCC SEMICONDUCTOR PRODUCTS SECTOR means AMCC's existing
semiconductor business now consisting of a Gate Array Group having a
manufacturing facility in San Diego, California; making and/or developing
products falling within the definition of LICENSED PRODUCTS (as hereinafter
defined). This definition of the AMCC SEMICONDUCTOR PRODUCTS SECTOR also
includes any AMCC future semiconductor business whether or not derived from, by
separation or merger, irrespective of appellation, said Gate Array Group.
1.15 AMCC PATENTS means all classes or types of patents, utility
models, design patents and applications for the aforementioned of all countries
of the world, which are issued, published or filed prior to the date of
expiration or termination of this Agreement, and
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which arise out of inventions made by one or more employees of AMCC
SEMICONDUCTOR PRODUCTS SECTOR and under which and to the extent to which and
subject to the conditions under which the AMCC SEMICONDUCTOR PRODUCTS SECTOR may
have, as of the EFFECTIVE DATE of this Agreement, or may thereafter during the
term of this Agreement acquire the right to grant licenses or rights of the
scope granted herein without the payment of royalties or other consideration to
third persons, except for payments to third persons for inventions made by said
third persons while engaged by AMCC. In no event shall the term AMCC PATENTS
include or encompass patents on inventions made by employees of AMCC while in
the employ of groups of operations of AMCC other than the AMCC SEMICONDUCTOR
PRODUCTS SECTOR, except in accordance with Section 3.7.
1.16 The term MOTOROLA PATENTS and AMCC PATENTS does not include any
patent, utility model, or design patent on an invention which is an
instrumentality or aggregate of instrumentalities for the purpose of converting
solar energy to electricity, to heat, or to reactable chemical products, nor
shall such term include any patent, utility model, or design patent for an
invention on a method or material used for or in such an instrumentality or
aggregate of instrumentalities.
1.17 LICENSED MOTOROLA PRODUCT(S) or LICENSED AMCC PRODUCT(S), as the
case may be, means any one or more of the following items, whether or not an
item is incorporated in more comprehensive equipment:
1.17.1 SEMICONDUCTIVE MATERIAL(S);
1.17.2 INTEGRATED CIRCUIT STRUCTURE(S);
1.17.3 SEMICONDUCTOR ELEMENT(S);
1.17.4 FUNCTIONAL ASSEMBLY(IES);
1.17.5 VARISTOR MATERIAL(S) AND DEVICE(S);
1.17.6 CIRCUIT(S) and SYSTEM(S);
1.17.7 CIRCUIT(S) and SYSTEM(S) employing an ELECTRICAL
METHOD(S);
1.17.8 MICROPROCESSOR(S); and
1.17.9 INPUT-OUTPUT ADAPTORS.
1.18 EFFECTIVE DATE means the date entered on Page 1 hereof.
1.19 NET SEMICONDUCTOR SALES of AMCC means internal transfers or
sales of finished semiconductor products and the total of all prices at which
all the customers of AMCC were billed in the usual course of business including
all packing material, boxes, cartons,
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crates, and all contents thereof, and less sales taxes, excise taxes and similar
taxes levied in respect to such sales.
Section 2 - MUTUAL RELEASES
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2.1 MOTOROLA hereby releases, acquits and forever discharges AMCC for
any time prior to the EFFECTIVE DATE, from any and all claims or liability for
infringement or alleged infringement of any MOTOROLA PATENTS, under which a
license or a right is herein granted by MOTOROLA to or for AMCC.
2.2 AMCC hereby releases, acquits and forever discharges MOTOROLA for
any time prior to the EFFECTIVE DATE, from any and all claims or liability for
infringement or alleged infringement of any AMCC PATENTS under which a license
or a right is herein granted by AMCC to or for MOTOROLA.
Section 3 - GRANTS
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3.1 AMCC hereby grants for the term of this Agreement to MOTOROLA a
[ * ] license throughout the world under AMCC PATENTS without the right to sub-
license:
3.1.1 to import, make, use, lease, sell, or otherwise dispose
of LICENSED MOTOROLA PRODUCTS and to practice any process or method involved in
the manufacture or use thereof, and
3.1.2 to make, use and have made MANUFACTURING APPARATUS and to
practice any process or method involved in the use thereof.
3.2 MOTOROLA hereby grants for the term of this Agreement to AMCC a
[*] license throughout the world under MOTOROLA PATENTS without the right to
sub-license:
3.2.1 to import, make, use, lease, sell or otherwise dispose of
LICENSED AMCC PRODUCTS and to practice any process or method involved in the
manufacture or use thereof, and
3.2.2 to make, use and have made MANUFACTURING APPARATUS and to
practice any process or method involved in the use thereof.
3.3 Notwithstanding the provisions of Section 3.2, in no event shall
the license granted to AMCC include the right to make, use, or sell any product
which substantially utilizes the instruction set of, or is substantially
compatible with the programmer's model of, any MICROPROCESSOR product designed
and sold by MOTOROLA; or which is substantially compatible with the register set
of any INPUT-OUTPUT ADAPTOR sold by MOTOROLA, including but not limited to the
products of the M68XX, M68XXX, M1468XX or M68HCXX families of MICROPROCESSORS
and INPUT-OUTPUT ADAPTOR, or which incorporate
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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such MICROPROCESSOR or INPUT-OUTPUT ADAPTOR products as elements of their
structure. However, AMCC shall have the right, subject to all copyright and mask
work rights owned or controlled by MOTOROLA and subject to the above limitations
of this Section, to develop and manufacture original designs of products
performing substantially the same functions as any MOTOROLA MICROPROCESSOR or
INPUT-OUTPUT ADAPTOR products.
3.4 AMCC grants to the users of LICENSED MOTOROLA PRODUCTS which are
imported, sold, leased or otherwise disposed of by MOTOROLA not in contravention
of the license herein granted to MOTOROLA, a worldwide, non-exclusive and
royalty-free immunity from suit under AMCC PATENTS, covering the use, whether
direct or contributory, during the term of this Agreement of such LICENSED
MOTOROLA PRODUCTS, provided that such royalty-free immunity for the user shall
extend only under those AMCC PATENTS licensed hereunder and only to the use or
sale of those particular LICENSED MOTOROLA PRODUCTS which the user obtained from
MOTOROLA.
3.5 MOTOROLA grants to the users of LICENSED AMCC PRODUCTS which are
imported, sold, leased or otherwise disposed of by AMCC not in contravention of
the license herein granted to AMCC, a worldwide, non-exclusive and royalty-free
immunity from suit under MOTOROLA PATENTS, covering the use, whether direct or
contributory, during the term of this Agreement of such LICENSED AMCC PRODUCTS,
provided that such royalty-free immunity for the user shall extend only under
those MOTOROLA PATENTS licensed hereunder and only to the use or sale of those
particular LICENSED AMCC PRODUCTS which the user obtained from AMCC.
3.6 MOTOROLA shall have the right to extend the release and grants of
Sections 2.2, 3.1 and 3.4, respectively, to any MOTOROLA SUBSIDIARY(IES) if such
SUBSIDIARY(IES) consents to extend the definition of MOTOROLA PATENTS in Section
1.13 to include inventions made solely by employees of that SUBSIDIARY(IES).
3.7 AMCC shall have the right to extend the release and grants of
Sections 2.1, 3.2 and 3.5, respectively, to any AMCC SUBSIDIARY(IES) if such
SUBSIDIARY(IES) consents to extend the definition of AMCC PATENTS in Section
1.15 to include inventions made by employees of that SUBSIDIARY(IES).
3.8 No licenses under any copyrights or mask work rights of either
MOTOROLA or AMCC are granted under this Agreement.
Section 4 - PAYMENTS
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4.1 In partial consideration of the rights granted by MOTOROLA under
Section 3, for the period beginning on the EFFECTIVE DATE and extending to
December 31, 1992, AMCC agrees to pay MOTOROLA the following payments:
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4.1.1 For 1988, [ * ] U.S. Dollars [ * ] plus whichever of the
following is the least, but in no event shall the following be less than zero:
4.1.2 [ * ] percent of [ * ] U.S. Dollars [ * ]; or
4.1.3 the percentage (%) increase in the NET SEMICONDUCTOR
SALES OF AMCC for 1988 with respect to 1987 multiplied by [ * ] U.S. Dollars
[ * ].
4.2.2 For each year subsequent to 1988, the amount of payment
is equal to the payment for the year immediately preceding the year for which
payment is being made plus whichever of the following is the least, but in no
event shall the following be less than zero:
4.2.2.1 [ * ] percent of the payment for the year
immediately preceding the year for which payment is being made; or
4.2.2.2 the [ * ] in the NET SEMICONDUCTOR SALES of
AMCC for the year for which payment is being made with respect to the
immediately preceding year, multiplied by the payment for such immediately
preceding year.
4.2.3 For example, the amount of payment for 1989 equals the
amount of payment for 1988 plus the lesser of either [ * ] of the amount
of payment for 1988, or the percentage increase in the NET SEMICONDUCTOR SALES
(NSS) of AMCC for 1989 with respect to 1988, i.e. (1989 NSS) - (1988 NSS),
----------------------
(1988 NSS)
multiplied by the amount of payment for 1988.
4.3 The payment for 1988 is due on January 31, 1989. Each yearly
payment for each year subsequent to 1988 is due by January 31 of the year
following the year for which payment is being made with the exception of 1993
for which the payment is due May 15, 1994.
4.3.1 For example, the payment for 1989 is due on January 31,
1990.
4.4 Any payment hereunder which shall be delayed for more than thirty
(30) days beyond the due date shall be subject to an interest charge of [ * ]
on the unpaid balance payable in United States currency until paid. The
foregoing payment of interest shall not affect MOTOROLA's right to terminate in
accordance with Section 5.
4.5 Payments hereunder made to MOTOROLA's New York City account at
CITIBANK #00000000 Citicorp Center, 000 X. 00xx Xxxxxx, Xxx Xxxx, Xxx Xxxx
00000. Notice of payments shall be sent by AMCC to MOTOROLA's address in
Section 6.10.
4.6 In the event and at such time that AMCC or a SUBSIDIARY of AMCC
sublicensed hereunder acquires or is acquired by, directly or indirectly, at any
time during the
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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term of this Agreement, another existing operation or operations or a part or
parts thereof which manufactures products within the definition of LICENSED
PRODUCTS but not previously licensed under the MOTOROLA PATENTS, where such
operation or operations together with all previous acquisitions of nonlicensed
production after the date of this Agreement have, as measured in fair market
value at the times of acquisition, an aggregate annual gross production of
LICENSED PRODUCTS used, sold, or otherwise put into use totaling not more than
[ * ] of covered sales under this Agreement, then AMCC agrees to
notify MOTOROLA promptly of any such acquisitions and it is agreed and
understood that the production resulting from such acquisitions up to such
[ * ] will be deemed to be licensed under this Agreement and
subject to all of its terms and conditions without payment of further
consideration than provided for herein. To the extent that the annual aggregate
gross production of LICENSED PRODUCTS used, sold or otherwise put into use
exceeds such [ * ] for such existing operation or operations not
previously licensed under MOTOROLA PATENTS, the parties hereto will consider
extending this license to cover said annual aggregate gross production of
LICENSED PRODUCTS in excess of [ * ] produced by such unlicensed
operation, operations, or parts thereof and will negotiate the terms of such an
extension of this license; provided, however, that if an acquiror of AMCC is
unable, despite good faith negotiations, to reach agreement with MOTOROLA with
respect to said extension of this license, the rights of AMCC and its successors
under this agreement shall not be adversely affected. By virtue of the
acquisition of AMCC and AMCC's rights under this license agreement an acquiror
is not being granted a license from MOTOROLA for any of its other products, and
the acquiror is not granting any license rights to MOTOROLA.
Section 5 - TERM AND TERMINATION AND ASSIGNABILITY
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5.1 The term of this Agreement shall be from the EFFECTIVE DATE until
[ * ] unless earlier terminated as elsewhere provided in this Agreement.
5.2 In the event of any breach of this Agreement by either party
hereto (including AMCC's obligation to make payments under Section 4), if such
breach is not corrected within forty-five (45) days after written notice
describing such breach, this Agreement may be terminated forthwith by further
written notice to that effect from the party noticing the breach.
5.3 Either party hereto shall also have the right to terminate this
Agreement forthwith by giving written notice of termination to the other party
at any time, upon or after:
5.3.1 the filing by such other party of a petition in bankruptcy
or insolvency; or
5.3.2 any adjudication that such other party is bankrupt or
insolvent; or
5.3.3 the filing by such other party of any legal action or
document seeking reorganization, readjustment or arrangement of its business
under any law relating to bankruptcy or insolvency; or
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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5.3.4 the appointment of a receiver for all or substantially all
of the property of such other party; or
5.3.5 the making by such other party of any assignment for the
benefit of creditors; or
5.3.6 the institution of any proceedings for the liquidation or
winding up of such other party's business or for the termination of its
corporate charter.
5.4 In the event of termination of this Agreement by one party
pursuant to Section 5.2, the licenses and rights granted to or for the benefit
of that one party hereto and its SUBSIDIARIES under MOTOROLA PATENTS or AMCC
PATENTS, as the case may be, depending upon who is the party doing the
terminating, shall survive such termination and shall extend for the full term
of this Agreement, but the licenses and rights granted to or for the benefit of
the other party shall terminate as of the date termination takes effect.
5.5 At such time as is mutually agreeable, at the written request of
either party hereto to the other party hereto, but in no event less than six (6)
months prior to the expiration of this Agreement, the parties hereto shall
discuss the possible extension of or the renewal of the term of this Agreement,
including the possible amendment of the provisions thereof.
5.6 The rights or privileges provided for in this Agreement may be
assigned or transferred by either party only with the prior written consent of
the other party and with the authorization or approval of any governmental
authority as then may be required, except to a successor in ownership of all or
substantially all of the assets of the assigning party but such successor,
before such assignment or transfer is effective, shall expressly assume in
writing to the other party the performance of all of the terms and conditions of
this Agreement to be performed by the assigning party.
Section 6 - MISCELLANEOUS PROVISIONS
------------------------------------
6.1 Each of the parties hereto represents and warrants that it has
the right to grant to or for the benefit of the other the rights and licenses
granted hereunder in Sections 2 and 3.
6.2 Nothing contained in this Agreement shall be construed as:
6.2.1 restricting the right of MOTOROLA or any of its
SUBSIDIARIES to make, use, sell, lease or otherwise dispose of any particular
product or products not herein licensed;
6.2.2 restricting the right of AMCC or any of its SUBSIDIARIES
to make, use, sell, lease or otherwise dispose of any particular product or
products not herein licensed;
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6.2.3 an admission by AMCC of, or a warranty or representation
by MOTOROLA as to, the validity and/or scope of the MOTOROLA PATENTS, or a
limitation on AMCC to contest, in any proceeding, the validity and/or scope
thereof;
6.2.4 an admission by MOTOROLA of, or a warranty or
representation by AMCC as to, the validity and/or scope of the AMCC PATENTS, or
a limitation on MOTOROLA to contest, in any proceeding, the validity and/or
scope thereof;
6.2.5 conferring any license or other right, by implication,
estoppel or otherwise, under any patent application, patent or patent right,
except as herein expressly granted under the MOTOROLA PATENTS, and the AMCC
PATENTS;
6.2.6 conferring any license or right with respect to any
trademark, trade or brand name, a corporate name of either party or any of their
respective SUBSIDIARIES, or any other name or xxxx, or contraction, abbreviation
or simulation thereof;
6.2.7 imposing on MOTOROLA any obligation to institute any suit
or action for infringement of any MOTOROLA PATENTS, or to defend any suit or
action brought by a third party which challenges or concerns the validity of any
MOTOROLA PATENTS licensed under this Agreement;
6.2.8 imposing upon AMCC any obligation to institute any suit or
action for infringement of any AMCC PATENTS, or to defend any suit or action
brought by a third party which challenges or concerns the validity of any AMCC
PATENTS licensed under this Agreement;
6.2.9 a warranty or representation by MOTOROLA that any
manufacture, use, sale, lease or other disposition of LICENSED AMCC PRODUCTS
will be free from infringement of any patent other than the MOTOROLA PATENTS
licensed herein;
6.2.10 a warranty or representation by AMCC that any
manufacture, use, sale, lease or other disposition of LICENSED MOTOROLA PRODUCTS
will be free from infringement of any patent other than the AMCC PATENTS
licensed herein;
6.2.11 imposing on either party any obligation to file any
patent application or to secure any patent or maintain any patent in force; or
6.2.12 an obligation on either party to furnish any
manufacturing or technical information under this Agreement except as the same
is specifically provided for herein.
6.3 No express or implied waiver by either of the party to this
Agreement of any breach of any term, condition or obligation of this Agreement
by the other party shall be construed as a waiver of any subsequent breach of
that term, condition or obligation or of any other term, condition or obligation
of this Agreement of the same or of a different nature.
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6.4 Anything contained in this Agreement to the contrary
notwithstanding, the obligations of the parties hereto shall be subject to all
laws, both present and future, of any Government having jurisdiction over either
party hereto, and to orders or regulations of any such Government, or any
department, agency, or court thereof, and acts of war, acts of public enemies,
strikes, or other labor disturbances, fires, floods, acts of God, or any causes
of like or different kind beyond the control of the parties, and the parties
hereto shall be excused from any failure to perform any obligation hereunder to
the extent such failure is caused by any such law, order, regulation, or
contingency but only so long as said law, order, regulation or contingency
continues.
6.5 The captions used in this Agreement are for convenience only, and
are not to be used in interpreting the obligations of the parties under this
Agreement.
6.6 This Agreement and the performance of the parties hereunder shall
be construed in accordance with and governed by the laws of the State of
Illinois.
6.7 If any term, clause, or provision of this Agreement shall be
judged to be invalid, the validity of any other term, clause, or provision shall
not be affected; and such invalid term, clause, or provision shall be deemed
deleted from this Agreement.
6.8 This Agreement sets forth the entire Agreement and understanding
between the parties as to the subject matter hereof and merges all prior
discussions between them, and neither of the parties shall be bound by any
conditions, definitions, warranties, understandings or representations with
respect to such subject matter other than as expressly provided herein or as
duly set forth on or subsequent to the date hereof in writing and signed by a
proper and duly authorized officer or representative of the party to be bound
thereby.
6.9 The parties hereto shall keep this Agreement confidential and
shall not now or hereafter divulge this Agreement or any part thereof to any
third party except:
6.9.1 with the prior written consent of the other party; or
6.9.2 to any governmental body having jurisdiction to request
and to read the same; or
6.9.3 as otherwise may be required by law or legal processes; or
6.9.4 to legal counsel representing either party.
6.10 All notices required or permitted to be given hereunder shall be
in writing and shall be valid and sufficient if dispatched by registered
airmail, postage prepaid, in any post office in the United States, addressed as
follows:
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6.10.1 If to MOTOROLA:
Motorola Inc.
0000 Xxxx Xxxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Vice President for Patents,
Trademarks & Licensing
6.10.2 If to AMCC:
Applied Micro Circuits Corporation
0000 Xxxx Xxxxxxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attention: Director of Corporate Planning
6.10.3 The date of receipt of such a notice shall be the date for the
commencement of the running of the period provided for in such notice, or the
date at which such notice takes effect, as the case may be.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate.
MOTOROLA, INC. APPLIED MICRO CIRCUITS CORPORATION
By /s/ [signature] By /s/ [signature]
------------------------------------- --------------------------------
Title Vice President Title V.P.
---------------------------------- -----------------------------
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