exv10w1






Exhibit 10.1




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:



1. Definitions




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





	 	2.1	 	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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	 	 	 	Agreement as
amended by this Amendment No.1 ) are hereby replaced with “Qimonda.”






	 	2.2	 	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:
	 
	 	 	 	“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.”
	 
	 	2.3	 	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:
	 
	 	 	 	“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).”
	 
	 	2.4	 	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:
	 
	 	 	 	“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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	 	 	 	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.”






	 	2.5	 	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:
	 
	 	 	 	“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.”
	 
	 	2.6	 	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:
	 
	 	 	 	“Change of Control. The term “Change of Control of Qimonda means a transaction
or a series of related transactions:






	 	(i)	 	(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
	 
	 	 	 	(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
	 
	 	 	 	(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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	 	 	 	(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
	 
	 	(ii)	 	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.






	 	 	 	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.”






	 	2.7	 	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:
	 
	 	 	 	“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.”
	 
	 	2.8	 	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:
	 
	 	 	 	“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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	 	 	 	semiconductor memory device to other devices and/or (iii)
packaging for such semiconductor memory device.”
	 
	 	2.9	 	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:
	 
	 	 	 	“Rambus Proprietary Semiconductor Memory Design. The term “Rambus Proprietary
Semiconductor Memory Design” means a Semiconductor Memory Design:






     (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.




	 	 	 	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.
	 
	 	2.10	 	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:
	 
	 	 	 	“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).”
	 
	 	2.11	 	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:
	 
	 	 	 	“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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	 	2.12	 	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:
	 
	 	 	 	“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.”
	 
	 	2.13	 	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:






	 	 	 	“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 [***].
	 
	 	 	 	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.
	 
	 	 	 	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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	 	 	 	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 [***].
	 
	 	 	 	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 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 is 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), for [***] at the then applicable most favored
licensee terms and conditions. Pursuant to Infineon Technologies AG’s notice of
assignment of this Agreement to Qimonda AG effective as of March 18, 2006, Infineon has
retained the foregoing right for itself and the foregoing right shall not apply to
Qimonda AG or any successor in interest to Qimonda AG.”
	 
	 	2.14	 	Section 6.3. Effective as of the Amendment No. 1 Effective Date, the terms
of Sections 6.3 of the Patent License Agreement are hereby amended by adding the following
clause as the last sentence of Section 6.3:
	 
	 	 	 	“Notwithstanding the foregoing, the release of any Excluded Entity from any patent
infringement claims under patents other than Licensed Rambus Patents (“Term License
Patents”) as described above shall apply solely to the making, having made, using,
selling, offering to sell, importing or otherwise transferring of Licensed Products
after the date of the Change of Control pursuant to which such Excluded Entity became
subject to the terms and conditions of this Agreement. In addition, if, in connection
with any such Change of Control, Rambus opts [***], any release under the Term License
Patents shall apply solely to that portion of products made, have made, used, sold,
offered for sale, imported or otherwise transferred equal to the [***]. For example,
if (1)(i) there is a Change of Control pursuant to Section 1.14(i) where any of the
Prior Entities is an Excluded Entity, (ii) Rambus opts [***],









 




			
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	 	 	 	(iii) the [***], and (iv)
subsequent to such Change of Control the Successor Entity and its Affiliates [***] that
would otherwise meet the definition of
licensed products under Section 1.6, then only [***] of such products would be subject
to the release described in this Section 6.3.
	 
	 	2.15	 	Section 6.4. Effective as of the Amendment No. 1 Effective Date, the terms
of Sections 6.4 of the Patent License Agreement are hereby amended by adding the following
clause as the last sentence of Section 6.4:
	 
	 	 	 	“Notwithstanding the foregoing, the release of any Excluded Entity from any patent
infringement claims under patents other than Licensed Rambus Patents (“Term License
Patents”) as described above shall apply solely to the making, having made, using,
selling, offering to sell, importing or otherwise transferring of Licensed Products
after the date of the Change of Control pursuant to which such Excluded Entity became
subject to the terms and conditions of this Agreement. In addition, if, in connection
with any such Change of Control, Rambus opts [***], any release under the Term License
Patents shall apply solely to that portion of products made, have made, used, sold,
offered for sale, imported or otherwise transferred equal to the [***]. For example,
if (1)(i) there is a Change of Control pursuant to Section 1.14(i) where any of the
Prior Entities is an Excluded Entity, (ii) Rambus opts [***], (iii) the [***], and (iv)
subsequent to such Change of Control the Successor Entity and its Affiliates [***] that
would otherwise meet the definition of licensed products under Section 1.6, then only
[***] of such products would be subject to the release described in this Section 6.4.
	 
	 	2.16	 	Article 8. Effective as of the Amendment No. 1 Effective Date, the terms of
Article 8 of the Patent License Agreement are hereby replaced in their entirety with the
following:
	 
	 	 	 	“Any notice or other communication required or permitted to be made or given to either
party pursuant to this Agreement shall be sufficiently made or given within fifteen
(15) days of the date of mailing if sent to such party by registered first class mail
or internationally accepted courier service, postage prepaid, addressed to such party
at the address set forth below, or to such other address as a party shall designate by
written notice given to the other party:








 




			
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In the case of Qimonda:



Qimonda AG

Legal Department

Gustav-Heinemann-Ring 123

81739 Munich

Germany



(with a copy, which shall not constitute notice, to the following:)



Qimonda AG

Alliances (SBD AL)

Gustav-Heinemann-Ring 212

81739 Munich

Germany



In the case of Rambus:



Rambus Inc.

General Counsel, Legal Department

4440 El Camino Real

Los Altos, CA 94022

U.S.A.



(with a copy, which shall not constitute notice, to the following:)



Rambus Inc.

S.V.P, Sales, Licensing and Marketing

4440 El Camino Real

Los Altos, CA 94022

U.S.A





	 	2.17	 	Section 9.1. Effective as of the Amendment No. 1 Effective Date, the terms of
Section 9.1 of the Patent License Agreement are hereby replaced in their entirety with the
following:
	 
	 	 	 	“Assignment by Qimonda. Except as provided in this Section 9.1 and as provided
in Section 9.4 below, Qimonda may [***], it being understood that [***] (as defined
below) shall be deemed to be reasonable. Notwithstanding the foregoing, and subject to
Section 9.4, [***]:






	 	(a)	 	to any entity that is [***]; and
	 
	 	(b)	 	to any entity that is [***] in connection with the [***]; upon any
such [***], and








 




			
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	 	(c)	 	to a [***], and [***] hereby agrees to [***], in a transaction
entered into [***].






	 	 	 	As a condition to any such assignment under this Section 9.1, the assignee of the
Agreement shall agree in writing to be bound by all the terms and conditions of this
Agreement, including, without limitation, all of Qimonda’s payment obligations pursuant
to this Agreement. Further, if any such assignment is made by virtue of a Change of
Control of Qimonda (1) as defined in Section 1.14(i), then [***], and (2) as defined in
Section 1.14(ii),
then [***]. For the avoidance of any doubt, any permitted assignment under [***],
unless simultaneously [***], in which case such [***].
	 
	 	 	 	The [***] set forth in [***] shall be granted, extended and/or transferred to the
assignee only in compliance with the provisions of [***].
	 
	 	 	 	It is understood and agreed that, subject to the terms of this Agreement, upon any
assignment of this Agreement by Qimonda, all references to “Qimonda” in the body of
this Agreement (except Section 1.2 and Section 3.3) shall be deemed to be references to
the successor and/or assignee to this Agreement, including without limitation the
references to “Qimonda” in Sections 1.6 and 1.7.
	 
	 	 	 	For purposes of this Section, [***] means any legal entity [***].”
	 
	 	2.18	 	Section 9.4. Effective as of the Amendment No. 1 Effective Date, the terms of
Section 9.4 of the Patent License Agreement are hereby replaced in their entirety with the
following:
	 
	 	 	 	“Change of Control of Qimonda. For the purpose of this Section 9.4:
	 
	 	 	 	“[***] Sales” shall mean the worldwide value in U.S. dollars of sales, transfers and
other distributions of [***].
	 
	 	 	 	“Qimonda” means Qimonda and its Affiliates.
	 
	 	 	 	“[***]” means the type of [***], during the last [***] preceding the effective date of
the [***], had the [***] as published by Gartner-Dataquest (or its successor) [***] for
the last period of at least [***] for which such statistic was so published by
Gartner-Dataquest (or its successor).
	 
	 	 	 	“Successor Entity” means the entity resulting from a Change of Control.
	 
	 	 	 	“Prior Entities” means all of the entities (including without limitation companies and
business units of companies) that, (i) after the Change of Control, comprise the
Successor Entity, and their Affiliates, as such entities and their Affiliates existed
immediately preceding the Change of Control, but excluding Qimonda as they existed
immediately preceding the Change of







 




			
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	 	 	 	Control or (ii) are otherwise acquired by Qimonda
during the term of this Agreement.
	 
	 	 	 	“Prior Entities License Agreement” means an agreement, if any, pursuant to which, as of
the effective moment of the Change of Control, any of the Prior Entities is licensed by
Rambus to make, use, and sell one or more types of [***] (“Prior Entities Licensed
DRAMs”), provided that one of the Prior Entities Licensed DRAMs is the [***].
	 
	 	 	 	“Memory Product” means any (i) Memory IC, (ii) Memory Module, (iii) Memory
Portion; and/or (iv) any component of a Memory Module other than a Memory IC, provided
such component is marketed by such legal entity and its Affiliates solely to facilitate
the functions of a Memory Module.






	 	(a)	 	Change of Control of Qimonda pursuant to Section 1.14(i).






	 	(i)	 	No Prior Entities License Agreement.






	 	a.	 	Non-Excluded Entities. If there is
no [***] with respect to any [***], then, subject to [***] below,
upon a [***], the payment obligations under this Agreement shall be
[***] immediately preceding [***] immediately preceding [***].
	 
	 	 	 	For example [***] prior to [***] and [***] had already paid [***],
then the payment obligations prior to the [***] as per (1) above [***]
as per (2) above [***], then the following adjustment shall apply: the
[***] following the [***] shall be [***].
	 
	 	b.	 	Excluded Entities. If in a Change
of Control of Qimonda pursuant to Section 1.14(i) any of the Prior
Entities is an Excluded Entity that does not have a Prior Entities
License Agreement, Rambus shall have the option [***]. If Rambus
opts [***], (i) then following such Change of Control, the rights and
licenses granted hereunder shall apply solely, on a forward going
basis, to that percentage (the “Licensed Product Percentage”) of the
Successor Entity’s (and its Affiliates’) Memory Products equal to the
ratio between (1) [***] (as defined below) [***] in the last [***]
immediately preceding such Change of Control (“Qimonda Revenue”) and
(2) the [***] (as defined below) in the last [***] immediately
preceding such Change of Control attributable to [***].
	 
	 	 	 	For example, if the [***] during the [***] preceding such Change of
Control was [***] and the [***] during the [***] preceding such Change
of Control was [***], the Licensed Product Percentage would be equal
to [***].






 




			
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	 	 	 	For purposes of calculating the Licensed Product Percentage, the term
[***] means the [***], or if not available, the [***] as listed by
[***].
	 
	 	c.	 	Licensed Product Percentage. The
Licensed Product Percentage referred to above shall be equally spread
and applied on a product-by-product and country-by-country basis, and
any relief sought by Rambus with respect to any Successor
Entity’s (or its Affiliates’) Memory Product that meets the definition
of a licensed product under Section 1.6 above shall [***]; provided
that on a world wide basis Rambus shall not be entitled to [***] if
such [***] on a world-wide basis.
	 
	 	 	 	For example, if the Licensed Product Percentage was [***], and if,
following such Change of Control, [***] of a particular Successor
Entity’s (or its Affiliates’) Memory Product that meets the definition
of a licensed product under Section 1.6 above were [***] would be
licensed pursuant to this Agreement in the United States, and Rambus
shall be free to exercise any and all rights and remedies it may have
at law, equity or otherwise with respect to the [***] of such Memory
Products, provided that Rambus may [***], for example in the [***] but
not for the [***].
	 
	 	d.	 	Reservation of Rights. The parties
understand and agree that the foregoing license in Section
9.4(a)(i)b. and c. above to each and every Successor Entity (and its
Affiliates) with respect to Memory Products following a Change of
Control pursuant to Section 1.14(i) is based on [***], after such
Change of Control. In no case shall the existence of such license
constitute, be construed as, or otherwise raised or relied on as
Rambus’ intent or desire to grant a license to any products other
than the Licensed Product Percentage of a Successor Entity’s (and its
Affiliates’) Memory Products that meet the definition of licensed
products under Section 1.6 of this Agreement. No sales of any
products made by any Excluded Entities that is a Prior Entity in any
Change of Control of Qimonda as defined under Section 1.14(i) prior
to such Change of Control shall be deemed to be licensed under this
Agreement or subject to any of the releases or dismissals granted
under Sections 4.1(a) and 4.1(b). Any and all Memory Products of
each Successor Entity (and its Affiliates) that do not constitute the
Licensed Product Percentage are expressly excluded from this
Agreement and Rambus retains all of its rights and remedies under
law, in equity or otherwise with respect to any and all products (i)
sold by any Excluded Entity prior to any such Change of Control






 




			
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	 	 	 	and/or (ii) that do not constitute the Licensed Product Percentage
sold by the Successor Entity (and its Affiliates) after such Change
of Control.
	 
	 	 	 	Without limiting the generality of the foregoing, and for the
avoidance of any doubt, Rambus opting not to adjust the payment
obligations as described above, shall not constitute, be construed or
otherwise argued as a waiver or compromise by
Rambus with respect to any remedies available at law, in equity or
otherwise with respect to any and all products (i) sold by any
Excluded Entity prior to any such Change of Control and/or (ii) that
do not constitute the Licensed Product Percentage sold by the
Successor Entity (and its Affiliates) after such Change of Control.






	 	(ii)	 	Existing Prior Entities License Agreement.






	 	a.	 	Negotiated Adjustment. If there is
a [***], then upon a Change of Control of Qimonda pursuant to Section
1.14(i), Rambus and the Successor Entity shall negotiate, diligently
and in good faith, an appropriate [***] under this Agreement
resulting from such Change of Control pursuant to Section 1.14(i).
If within [***] after the [***].
	 
	 	b.	 	Arbitrated Adjustment Principles.
The parties shall negotiate, and the arbitrator shall render his
decision, considering that it is the intent of the parties that:






	 	i.	 	Distribution of a [***] should
not obligate the [***] to [***] under both [***] above and
under the terms of the [***].
	 
	 	ii.	 	If, after the effective date of
the Change of Control, no [***] is the [***] then,
prospectively, [***] shall apply to [***].
	 
	 	iii.	 	Rambus should be able to [***],
with respect [***], to the extent such [***] that would be
payable if there were no [***]. The extent of such benefits
shall be determined, according to the [***]
	 
	 	iv.	 	Rambus should not receive [***]
than if there were no [***].
	 
	 	 	 	(For example, [***] provided for payment to Rambus of [***] for
the right to make and sell up to [***], then Rambus would retain
this [***], but there would be [***]







 




			
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	 	 	 	of the [***]. By way of
further example, if [***] contained [***].






	 	(b)	 	Change of Control of Qimonda pursuant to Section 1.14(ii).






	 	(i)	 	[***] Agreement.
	 
	 	 	 	If there is [***] Agreement with respect to [***], then upon a
Change of Control of Qimonda pursuant to Section 1.14(ii), the [***] shall
[***] of (1) the [***] in the last [***] preceding such Change of Control
and (2) [***] in the [***] immediately preceding such Change of Control.
	 
	 	 	 	For example if [***] prior to such Change of Control was [***] and the
[***] was [***] and [***] had already [***], then the [***] prior to such
Change of Control was [***]. If further, [***] as per (1) above were
[***], and the [***] as per (2) above were [***], then the following
[***].
	 
	 	(ii)	 	[***] Agreement.






	 	a.	 	[***]. If there is [***]
Agreement, then upon a Change of Control of Qimonda pursuant to
Section 1.14(ii), Rambus and the Successor Entity shall negotiate,
diligently and in good faith, an appropriate [***] under this
Agreement resulting from such Change of Control pursuant to Section
1.14(ii). If within [***] after the [***].
	 
	 	b.	 	Arbitrated Adjustment Principles.
The parties shall negotiate, and the arbitrator shall render his
decision, considering that it is the intent of the parties that:






	 	i.	 	Distribution of a [***] should
not obligate the [***] to [***] under both [***] above and
under the terms of the [***].
	 
	 	ii.	 	If, after the effective date of
the Change of Control, no [***] is the [***] then,
prospectively, [***] shall apply to determine the proper
adjustment.
	 
	 	iii.	 	Rambus should be able to [***],
with respect [***], to the extent such [***] that would be
payable if there were no [***]. The extent of such benefits
shall be determined, according to the [***].
	 
	 	iv.	 	Rambus should not receive a
[***] than if there were no [***].







 




			
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	 	 	 	(For example, if the [***] provided for payment to Rambus of [***]
for the right to make and sell up to [***], then Rambus would
retain [***], but there would be [***] of the [***]. By way of
further example, if [***] contained [***].






	 	(c)	 	Excluded [***]. Notwithstanding the terms of [***] above, no
[***]
under such section shall be made with respect to the [***] (as defined below)
acquired by Qimonda pursuant to a Change of Control of Qimonda as defined in
Section 1.14(ii) [***] shall mean [***].






	 	(i)	 	Conditions. The [***] shall apply solely to [***].
The [***] shall not apply to [***]. For the avoidance of doubt, the [***]
used in the [***] shall [***]. If (X) [***], (Y) such [***], and (Z) the
right [***], then upon Qimonda’s request therefor, Rambus agrees to discuss in
good faith with Qimonda, for a period of [***] after receipt of such request,
whether any [***] of this Agreement should be made based on the [***].
	 
	 	(ii)	 	[***]. To the extent any [***] include any [***] (as
defined below), the provisions of [***] shall apply to such [***] based on
such [***], provided that with respect to [***], such [***] shall apply solely
to [***]. For purposes of this Section 9.4(c)(ii), the term [***]. For
example, if [***] during the [***] preceding the date of [***].
	 
	 	(iii)	 	[***]. Upon the [***] eligible for the [***] to any
Excluded Entity [***] by such Excluded Entities shall [***].
	 
	 	 	 	For the avoidance of doubt, [***] an Excluded Entity of a [***] as part of
or in connection with a [***] by such Excluded Entity, including, but not
limited to, the [***], shall not be deemed to be a [***].
	 
	 	(iv)	 	[***]. If [***], Rambus agrees to [***], and Qimonda
and Rambus shall negotiate in good faith the terms of, [***] during the [***]
(as defined below) that [***]. For purposes of this Section 9.4(c)(iv), the
term [***] means the [***]. The [***] shall provide that Rambus shall [***]
with respect to [***] with respect to [***], provided further, that [***] at
all with respect to [***], Rambus must have [***]. The [***] shall also
provide that (i) Rambus shall [***],(ii) pursuit of [***], and (iii) Rambus
shall [***].
	 
	 	(v)	 	Termination. The [***] shall automatically and
immediately terminate upon (1) a Change of Control of Qimonda as defined in
Section 1.14(i) where any Prior Entities is an Excluded Entity or







 




			
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	 	 	 	Other Entity
or (2) upon assignment of this Agreement pursuant to Section 9.1(b) where the
transaction is treated as a Change of Control of Qimonda under Section 1.14(i)
and the assignee or any Affiliate of the assignee is an Excluded Entity or
Other Entity [***]. For the avoidance of doubt, the [***], if Qimonda has
[***].






	 	(d)	 	Interest on Late Payments.  Any late payments resulting from
negotiations pursuant to Section 9.4(a)(ii) or 9.4(b)(ii) and/or arbitration
pursuant to
Section 9.7 shall bear interest at the rate of twelve per cent (12%) (or, if less,
the maximum allowed by applicable law) per year, from the date that such payment
would otherwise have been due.
	 
	 	(e)	 	Successor Entity and Agreement. It is understood and agreed
that, subject to the terms of this Agreement, upon any [***] in which [***] is
merged into a successor, all references to [***] in the body of this Agreement
[***] shall be deemed to be references to the [***], including without limitation
the references to [***] in [***]. For the avoidance of any doubt, this Agreement
shall be [***] upon a [***], provided that this Agreement shall be deemed to be
[***].
	 
	 	(f)	 	Use of Agreement. Upon any Change of Control of Qimonda
where any of the Prior Entities is an Excluded Entity, each and every Successor
Entity from any such Change of Control shall not, and irrevocably waives as a
condition to its assumption, or the assignment, of this Agreement the right to
raise, rely, enter into evidence, make reference to or otherwise use the terms or
the existence of this Agreement to the prejudice of Rambus, whether in support of
an affirmative defense, claim, counterclaim or otherwise, in any legal or
equitable action, investigation, proceeding, settlement discussions, arbitration,
mediation or any other form of dispute resolution, with respect to (i) [***] or
(ii) the determination, calculation or basis for [***] or (z) any products [***].
For the avoidance of any doubt, the restrictions set forth in this Section shall
apply to any and all Affiliates of each and every Successor Entity. For the
avoidance of any doubt, except as expressly set forth above, nothing in this
Section 9.4(f) shall be argued, deemed to be or construed as a restriction on the
right of Qimonda or any Successor Entity (or any of its Affiliates) to otherwise
raise, rely, enter into evidence, make reference to or otherwise use the terms or
the existence of this Agreement, whether in support of an affirmative defense,
claim, counterclaim or otherwise, in any legal or equitable action, investigation,
proceeding, settlement discussions, arbitration, mediation or any other form of
dispute resolution, including, without limitation, in order to prove a license
defense with respect to any product or activity that is licensed or permitted
under this Agreement or the [***].






	 	2.19	 	Section 9.6. Effective as of the Amendment No. 1 Effective Date, the terms
of Section 9.6 of the Patent License Agreement are hereby replaced in their entirety with
the following:






 




			
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	 	 	 	“Limited Extension of Releases. Notwithstanding anything to the contrary
contained in this Agreement, the [***] set forth in [***] shall be granted, extended
and/or transferred to [***].
	 
	 	 	 	For purposes of this Section 9.6, [***] shall have the meaning ascribed to them in
[***] above, and further:
	 
	 	 	 	“Financial Entity” means any legal entity, the primary business of which is to
engage in financial or investment transactions (including, without limitation, banks,
investment companies, private equity companies, venture capital companies, insurance
companies and pensions trusts), where such legal entity and its Affiliates do not
constitute an Other Entity or an Excluded Entity.
	 
	 	 	 	“Other Entity” means any legal entity where such legal entity and its
Affiliates do not constitute an Excluded Entity or a Financial Entity.






	 	(a)	 	[***] None of the [***] set forth in [***] shall be granted,
extended and/or transferred to any [***], except in any such Change of Control
where [***].
	 
	 	(b)	 	[***] The [***] set forth [***] shall be granted, extended
and/or transferred to [***] as follows:






	 	(i)	 	[***] If there has been [***] prior to a [***], then,
upon a [***], the [***] set forth in [***] shall be granted, extended and/or
transferred to the [***].
	 
	 	(ii)	 	[***] If there has been [***] prior to a [***] the
[***] set forth in [***] shall be granted, extended and/or transferred to
[***] as follows:






	 	a.	 	Financial Entity. If all [***]
occurring prior to a [***] as defined in [***] constituted Financial
Entities, then the [***] set forth in [***] shall be granted,
extended and/or transferred to the [***].
	 
	 	b.	 	Other Entity. Subject to [***]
below, if any [***] occurring prior to a [***] constituted an Other
Entity, then the [***] set forth in [***] shall be granted, extended
and/or transferred [***] and [***] shall be granted, extended and/or
transferred [***].
	 
	 	c.	 	Excluded Entities. If any [***]
occurring prior to a [***] constituted an Excluded Entity, then [***]
set forth under [***] shall be granted, extended and/or transferred
to [***].






	 	(iii)	 	The extension of the [***] as described in this Section
9.6(b) to any [***] shall [***] where (i) the primary purpose of such







 




			
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	 	 	 	transaction is to [***] and where such transaction is [***] or (ii) such
transaction is [***].






	 	(c)	 	Excluded Entities. If any [***], then the [***] set forth in
[***] may only be granted, extended and/or transferred pursuant to [***] only if,
[***] have been previously granted, extended and/or transferred under this
Agreement to any other [***]. For the avoidance of any doubt, the granting,
extension and/or transfer of any of the [***] set forth in [***] shall apply solely
to [***] and [***] to the extent [***].






	 	(d)	 	[***]. Upon a [***], to the extent any of the [***] granted
in [***] are extended to any such [***], such [***] shall include any activity
prior to such [***] of any such [***] related to any of the type of claims
referred to in [***], but shall [***].
	 
	 	 	 	Further, any such extension of the [***] granted in [***] pursuant to [***] shall
be conditioned on any such [***].





3. No Other Amendments




Except as set forth in Section 2 of this Amendment No. 1, all of the other provisions of the Patent
License Agreement shall remain in full force and effect without modification. The terms of Article
10, and Sections 12.1 up to and including 12.12, and Section 12.14 of the Patent License Agreement
are hereby incorporated in their entirety by this reference, provided that, all references therein
to “this Agreement” shall be deemed to be references to this Amendment No. 1. In the event of any
inconsistency or conflict, the provisions of this Amendment No. 1 shall control and govern over the
provisions of the Patent License Agreement. The Patent License Agreement, together with the
amendments made to the Patent License Agreement as set forth in this Amendment No. 1, shall
constitute a single, integrated agreement.



IN WITNESS WHEREOF, the parties hereto have caused this Amendment No. 1 to be signed by duly
authorized officers or representatives as of the date set forth below.



	 	 	 	 	 	 	 	 	 	 
	RAMBUS INC.	 	QIMONDA AG
	 
	 	 	 	 	 	 	 	 
	By:

	 	/s/ Sharon Holt
	 	 	 	By:
	 	/s/ Thomas Seifert
	 

	 	 
	 	 	 	 	 	 
	 

	 	Name: Sharon Holt

Title:   SVP, Sales, Licensing & Marketing

Date: July 8, 2008
	 	 	 	 	 	Name: Thomas Seifert

Title:   Chief Operating Officer

Date: July 10, 2008








 




			
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	 	QIMONDA AG

 	 
	 	By:  	/s/ Robert Feurle
 	 
	 	 	Name:  	Robert Feurle 	 
	 	 	Title: 	VP BU Specialty DRAM
	 
	 	 	Date:  July 9, 2008 





 




			
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