Common use of Sale of Part of the Business Clause in Contracts

Sale of Part of the Business. (a) If any Party (the “Transferring Party”), after the Effective Date either (i) transfers, disposes of or otherwise divests a going business (but not all or substantially all of such Party’s business or assets) and such transfer includes at least one (1) marketable product and tangible assets having a net value of at least twenty-five million U.S. dollars ($25,000,000) to a Third Party and (ii) assigns, sublicenses or transfers any of the Intellectual Property Rights licenses granted pursuant to this Agreement to a Third Party, in any case other than in connection with a Change of Control (the Third Party in any of the foregoing transactions referred to as the “Transferee” and any such transaction referred to as the “Transfer”), then, upon the joint written request of the Transferring Party and the Transferee to the other Party (the “Non-Transferring Party”) not later than sixty (60) days following the closing of the Transfer, the Non-Transferring Party shall grant a royalty-free license to the Transferee under the same terms as the license granted to the Transferring Party under this Agreement subject to all of the following conditions and restrictions: (i) the effective date of such license shall be the closing date of the Transfer; (ii) the products, services and processes of the Transferee that are subject to such license shall be limited to the products, services and processes that are commercially released or for which substantial steps have been taken to commercialize as of the closing date of the Transfer by the Transferring Party, and for new extensions and versions of such products, services and processes; (iii) the Intellectual Property Rights of the Non-Transferring Party that are subject to the license to be granted to the Transferee shall be limited to Intellectual Property Rights licensed to the Transferring Party pursuant to Articles III or IV above, as the case may be; and (iv) the license to the Transferee shall terminate in the event that during the term of the license the Transferee (A) becomes engaged with the Non-Transferring Party in litigation, arbitration or other formal dispute resolution proceedings involving assertion of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights (pending in any court, tribunal, or administrative agency or before any appointed or agreed upon arbitrator in any jurisdiction worldwide) (any of the foregoing proceedings referred to as “Formal IP Proceedings”) or (B)(1) makes a written allegation of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights against the Non-Transferring Party, (2) makes a written request that the Non-Transferring Party license or otherwise offer to the Non-Transferring Party a license to Intellectual Property Rights in connection with an allegation of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights, or (3) engages in discussions or negotiations with the Non-Transferring Party for the settlement or compromise of any actual or alleged infringement, misappropriation, or other violation or impairment of Intellectual Property Rights (any of the foregoing in (1), (2) and (3) referred to as “Informal IP Discussions”), in each case involving Intellectual Property Rights under which the Transferee has ownership or control without any ongoing obligation to pay royalties or other consideration to Third Parties. (b) Notwithstanding anything to the contrary herein, the Non-Transferring Party, shall have no obligation to enter into a license with any Transferee under this Section 8.3 in the event that (i) at the time that the Transferring Party and Transferee make a joint request for a license from the Non-Transferring Party pursuant to this Section 8.3, the Non-Transferring Party and the Transferee are engaged in Formal IP Proceedings or (ii) at any time in the twelve (12) months prior to the date of the joint request that the Transferee has engaged in Informal IP Discussions with the Non-Transferring Party, in each case involving Intellectual Property Rights under which the Transferee has ownership or control without any ongoing obligation to pay royalties or other consideration to Third Parties. (c) There shall be no more than eight (8) license granted to a Transferee pursuant to this Section 8.3 as a result of a request by Seller and its Affiliates on the one hand, and Buyer and its Affiliates on the other hand, as the Transferring Party; provided, however, that if the Transferring Party elects to relinquish its license under this Agreement in the field of use covered by the license granted by a Non-Transferring Party to the Transferee under this Section 8.3, then the license to the Transferee shall not count toward the above limit. In making such election, the Transferring Party shall promptly notify the Non-Transferring Party, and the Transferring Party and the Non-Transferring Party shall enter into a written amendment to this Agreement to reflect the relinquishment of its license in that field of use.

Sale of Part of the Business. (a) If any Party (the “Transferring Party”), after the Effective Date either (i) transfers, disposes of or otherwise divests a going business (but not all or substantially all of such Party’s business or assets) and such transfer includes at least one (1) marketable product and tangible assets having a net value of at least twenty-five million U.S. dollars ($25,000,000) to a Third Party and (ii) assigns, sublicenses or transfers any of the Intellectual Property Rights licenses granted pursuant to this Agreement to a Third Party, in any case other than in connection with a Change of Control (the Third Party in any of the foregoing transactions referred to as the “Transferee” and any such transaction referred to as the “Transfer”), then, upon the joint written request of the Transferring Party and the Transferee to the other Party (the “Non-Transferring Party”) not later than sixty (60) days following the closing of the Transfer, the Non-Transferring Party shall grant a royalty-free license to the Transferee under the same terms as the license granted to the Transferring Party under this Agreement subject to all of the following conditions and restrictions: (i) the effective date of such license shall be the closing date of the Transfer; (ii) the products, services and processes of the Transferee that are subject to such license shall be limited to the products, services and processes that are commercially released or for which substantial steps have been taken to commercialize as of the closing date of the Transfer by the Transferring Party, and for new extensions and versions of such products, services and processes; (iii) the Intellectual Property Rights of the Non-Transferring Party that are subject to the license to be granted to the Transferee shall be limited to Intellectual Property Rights licensed to the Transferring Party pursuant to Articles III or IV above, as the case may be; and (iv) the license to the Transferee shall terminate in the event that during the term of the license the Transferee (A) becomes engaged with the Non-Transferring Party in litigation, arbitration or other formal dispute resolution proceedings involving assertion of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights (pending in any court, tribunal, or administrative agency or before any appointed or agreed upon arbitrator in any jurisdiction worldwide) (any of the foregoing proceedings referred to as “Formal IP Proceedings”) or (B)(1) makes a written allegation of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights against the Non-Transferring Party, (2) makes a written request that the Non-Transferring Party license or otherwise offer to the Non-Transferring Party a license to Intellectual Property Rights in connection with an allegation of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights, or (3) engages in discussions or negotiations with the Non-Transferring Party for the settlement or compromise of any actual or alleged infringement, misappropriation, or other violation or impairment of Intellectual Property Rights (any of the foregoing in (1), (2) and (3) referred to as “Informal IP Discussions”), in each case involving Intellectual Property Rights under which the Transferee has ownership or control without any ongoing obligation to pay royalties or other consideration to Third Parties. (b) Notwithstanding anything to the contrary herein, the Non-Transferring Party, shall have no obligation to enter into a license with any Transferee under this Section 8.3 in the event that (i) at the time that the Transferring Party and Transferee make a joint request for a license from the Non-Transferring Party pursuant to this Section 8.3, the Non-Transferring Party and the Transferee are engaged in Formal IP Proceedings or (ii) at any time in the twelve (12) months prior to the date of the joint request that the Transferee has engaged in Informal IP Discussions with the Non-Transferring Party, in each case involving Intellectual Property Rights under which the Transferee has ownership or control without any ongoing obligation to pay royalties or other consideration to Third Parties. (c) There shall be no more than eight (8) license granted to a Transferee pursuant to this Section 8.3 as a result of a request by Seller and its Affiliates Subsidiaries on the one hand, and Buyer and its Affiliates Subsidiaries on the other hand, as the Transferring Party; provided, however, that if the Transferring Party elects to relinquish its license under this Agreement in the field of use covered by the license granted by a Non-Transferring Party to the Transferee under this Section 8.3, then the license to the Transferee shall not count toward the above limit. In making such election, the Transferring Party shall promptly notify the Non-Transferring Party, and the Transferring Party and the Non-Transferring Party shall enter into a written amendment to this Agreement to reflect the relinquishment of its license in that field of use.

Sale of Part of the Business. (a) If any Party (the “Transferring Party”), after the Effective Closing Date either (i) transfers, disposes of or otherwise divests a going business (but not all or substantially all of such Party’s business or assets) and assets)and such transfer includes at least one (1) marketable product and tangible assets having a net value of at least twenty-five ten million U.S. dollars ($25,000,00010,000,000) to a Third Party and (ii) assigns, sublicenses or transfers any of the Intellectual Property Rights licenses granted pursuant to this Agreement to a Third Party, in any case other than in connection with a Change of Control (the Third Party in any of the foregoing transactions referred to as the “Transferee” and any such transaction referred to as the “Transfer”), then, then upon the joint written request of the Transferring Party and the Transferee to the other Party (the “Non-Transferring Party”) not later than sixty (60) 60 days following the closing of the Transfer, the Non-Transferring Party shall grant a royalty-free license to the Transferee under the same terms as the license granted to the Transferring Party under this Agreement subject to all of the following conditions and restrictions: (i) the effective date of such license shall be the closing date of the Transfer; (ii) the products, services and processes of the Transferee that are subject to such license shall be limited to the products, services and processes that are commercially released or for which substantial steps have been taken to commercialize as of the closing date of the Transfer by the Transferring Party, and for new extensions and versions of such products, services and processes; (iii) the Intellectual Property Rights of the Non-Transferring Party that are subject to the license to be granted to the Transferee shall be limited to Intellectual Property Rights licensed to the Transferring Party pursuant to Articles III or IV above, as the case may be; , and (iv) the license to the Transferee shall terminate in the event that during the term of the license the Transferee (A) becomes engaged with the Non-Transferring Party in litigation, arbitration or other formal dispute resolution proceedings involving assertion of infringement, misappropriation, or other violation or impairment of covering Intellectual Property Rights infringement (pending in any court, tribunal, or administrative agency or before any appointed or agreed upon arbitrator in any jurisdiction worldwide) EXECUTION COPY (any of the foregoing proceedings referred to as “Formal IP Proceedings”) or (B)(1) makes a written allegation of infringement, misappropriation, or other violation or impairment of Intellectual Property Rights infringement against the Non-Transferring Party, (2) makes a written request that the Non-Transferring Party license or otherwise offer to the Non-Transferring Party a license to Intellectual Property Rights in connection with an allegation of infringement, misappropriation, or other violation or impairment of Intellectual Property RightsRights infringement, or (3) engages in discussions or negotiations with the Non-Transferring Party for the settlement or compromise of any actual or alleged infringement, misappropriation, or other violation or impairment of Intellectual Property Rights infringement (any of the foregoing in (1), (2) and (3) referred to as “Informal IP Discussions”), in each case involving Intellectual Property Rights under which the Transferee has ownership or control without any ongoing obligation to pay royalties or other consideration to Third Parties. (b) Notwithstanding anything to the contrary herein, the Non-Transferring Party, shall have no obligation to enter into a license with any Transferee under this Section 8.3 in the event that (i) at the time that the Transferring Party and Transferee make a joint request for a license from the Non-Transferring Party pursuant to this Section 8.3, the Non-Transferring Party and the Transferee are engaged in Formal IP Proceedings or (ii) at any time in the twelve (12) months prior to the date of the joint request that the Transferee has engaged in Informal IP Discussions with the Non-Transferring Party, in each case involving Intellectual Property Rights under which the Transferee has ownership or control without any ongoing obligation to pay royalties or other consideration to Third Parties. (c) There shall be no more than eight one (8) 1) license granted to a Transferee pursuant to this Section 8.3 as a result of a request by Seller and its Affiliates Subsidiaries on the one hand, and Buyer and its Affiliates Subsidiaries on the other hand, as the Transferring Party without the Non-Transferring Party’s consent; provided, however, that if the Transferring Party elects to relinquish its license under this Agreement in the field of use covered by the license granted by a Non-Transferring Party to the Transferee under this Section 8.3, then the license to the Transferee shall not count toward the above limit. In making such election, the Transferring Party shall promptly notify the Non-Transferring Party, and the Transferring Party and the Non-Transferring Party shall enter into a written amendment to this Agreement to reflect the relinquishment of its license in that field of use.