EXHIBIT 10.4.1
AMENDMENT NO. 1 TO
SEMICONDUCTOR TECHNOLOGY LICENSE AGREEMENT
This Amendment No. 1 (the "Amendment") to the parties' Semiconductor
Technology License Agreement is entered into as of the date last entered below
by and between Rambus Inc., a Delaware corporation with principal offices at
0000 Xxxxxx Xxxxxx, Xxxxxxxx Xxxx, Xxxxxxxxxx 00000 ("Rambus") and Intel
Corporation, a Delaware corporation with a place of business at 0000 Xxxxxxx
Xxxxxxx Xxxxxxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000 ("Intel").
WHEREAS, on November 15, 1996 the parties entered into a Semiconductor
Technology License Agreement (the "License Agreement"); and
WHEREAS, the parties desire to amend the License Agreement to include
increased commitments from Intel and modification of the termination rights of
both parties;
NOW, THEREFORE, the parties agree that the License Agreement is amended to
include the following:
1. Capitalized terms used but not defined herein shall have the meaning
specified therefor in the License Agreement.
2. A new Section 4.9 is added to the License Agreement as follows:
"4.9 Additional Intel Obligations.
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(a) Intel will use its continuing best efforts in marketing, public
relations, and engineering to make the Rambus-D DRAM the primary
DRAM for PC main memory applications through December 31, 2002;
and
(b) Intel will communicate to the top (10) DRAM manufacturers,
Intel's intention to support the Rambus-D Interface Technology
in its integrated circuits for low end workstation, performance
desktop, and basic PC platforms."
3. A new Section 9.3(c)(i)-(iii) is added to the License Agreement as follows:
"(i) In the event that Rambus terminates this Agreement after
December 31, 2002 pursuant to Section 9.2(b)(iii), and
only if prior to January 1, 2003 Intel has Sold more than
ten million (10,000,000) units of Rambus Logic Chips
which directly control PC main memory, then, subject to
Section 9.3(c)(ii) below, Intel shall retain a Residuals
Patent License. Any integrated circuit where each RD-AC
is not primarily intended to communicate with Rambus
DRAMs is not considered an integrated circuit that
controls main memory for purposes of this Section
9.3(c)(i).
(ii) (A) If Intel fails to perform its obligations pursuant
to Section 4.9 above, then Rambus may notify Intel
(the "Notice") not later than December 31, 2002 of
such failure and upon such Notice, Intel's rights
pursuant to Section 9.3(c)(i) shall terminate. Upon
such Notice, Rambus shall notify and provide Intel,
via the disclosure process noted hereafter, a
confidential copy of all Rambus patent applications
filed and unissued as of such Notice date, within
ten (10) business days of such Notice; this shall
be limited to claims, of Rambus patents, which
pertain to Intel Residuals. The disclosure shall be
made to an agreed third party and the use of the
disclosure shall only be to facilitate Intel's
avoidance of infringement of patents issuing on
these applications.
(B) In the event of termination of Intel's rights
pursuant to Section 9.3(c)(ii)(A) and upon later
termination of this Agreement by Rambus pursuant to
Section 9.2(b)(iii), Intel shall retain a Residuals
Patent License for Other Logic Chips (as defined
in Section 4 of Amendment No. 1 to this
Agreement) which were taped out as of the date of
the Notice, provided that this license shall be
limited to those Rambus patents, within the
Rambus Intellectual Property Rights and the
Additional Rambus Rights, in existence as of the
date of such Notice. In such event, Rambus
covenants not to xxx Intel under any patent
issuing from any patent application not disclosed
to Intel as required under Section 9.3(c)(ii)(A)
above.
(iii) For the purposes of this section, "Residuals Patent
License" means a license, under Rambus patents within the
Rambus Intellectual Property Rights and the Additional
Rambus Rights, to use "Intel Residuals" to design, make,
have made (subject to Section 2.1 (b)), use, import,
offer to Sell, and Sell Other Logic Chips (as defined in
Section 4 of Amendment No. I to this Agreement), alone or
incorporated into modules, boards, and systems, provided,
however, that no license is granted pursuant to this
section with respect to any intellectual property rights
of Rambus licensees which are licensed to Rambus in
connection with the licensee's Rambus interface
technology license agreement with Rambus. In the event of
a dispute regarding the scope of Intel's rights pursuant
to any Residuals Patent License, Intel shall have the
burden of proving that the disputed item is an "Intel
Residual". For purposes of this section, the term "Intel
Residuals" means any information that is retained in the
unaided memories of Intel's employees as a
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result of access to Rambus Confidential Information
pursuant to the terms of this Agreement. An employee's
memory is unaided if the employee has not intentionally
memorized the Confidential Information for the purpose of
retaining and subsequently using or disclosing it."
4. For purposes only of Sections 9.3(c) (ii) and (iii) newly added to the
License Agreement under this Amendment, "Other Logic Chip" is further
defined with respect to Section 1.14 of the License Agreement not to
include, inter alia, any integrated circuit that either (A) includes a
memory interface, other than a Cache Memory Interface, that infringes any
Rambus patent or other Rambus intellectual property right; (B) includes
substantial portions of the RD-AC; or (C) can communicate with any
Compatible integrated circuit through such RD-AC.
5. Except for the termination of Intel's rights pursuant to Section 9.3(c)(i)
above, noted in Section 9.3(c)(ii) above, Rambus hereby waives any other
remedies it may have with respect to Intel's failure to perform Intel's
obligation pursuant to Section 4.9 above. This shall not, however, affect
any other rights Rambus may have for breach by Intel of any provision of
the License Agreement other than Section 4.9 thereof, notwithstanding that
such breach may also constitute a breach of said Section 4.9.
6. Except as set forth herein, the License Agreement shall remain unmodified
and in full force and effect in accordance with its terms.
RAMBUS INC. INTEL CORPORATION
By: /s/ Xxxxx Xxxx By: /s/ Xxxxxxx X. Xxxxxxxxx
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Print Name: Xxxxx Xxxx Print Name: Xxxxxxx X. Xxxxxxxxx
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Title: President Title: V.P., General Manager
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Date: 7/7/98 Date: 7/10/98
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