LICENSE AGREEMENT
Exhibit
10.2
This
License Agreement (this “Agreement”), effective as of the
Closing Date, is made and entered into by and between AIP Acquisition LLC, a
limited liability company organized under the laws of Delaware (“Licensor”),
and Arbinet Corporation, a Delaware corporation (“Licensee”). Licensor
and Licensee are at times collectively referred to herein as “Parties” and
individually as a “Party.”
RECITALS
A.
The Parties entered into an Asset Purchase
Agreement dated as of February 11, 2011 (the “Asset Purchase
Agreement”) by which Licensor purchased from Licensee, among other
things, a portfolio of patents and patent applications set forth in Schedule A
(the “Patent
Portfolio”).
B.
The Parties are entering into this Agreement to
set forth the terms and conditions pursuant to which Licensor will license to
Licensee certain non-exclusive rights to the Licensed Patent Rights (defined
below).
C.
Capitalized terms not defined herein
shall have the meanings ascribed to them in the Asset Purchase
Agreement.
NOW,
THEREFORE, in consideration of the mutual representations, warranties, covenants
and agreements contained herein, and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, and subject to the
terms and conditions hereof, the Parties, intending to be legally bound, hereby
agree as follows:
1.
DEFINITIONS
1.1 “Licensed Field of
Use” means all uses anywhere in the world in connection with products and
services provided by Licensee and its Affiliates, whether directly or through
distributors.
1.2 “Licensed Patent
Rights” means (i) the patents and patent applications within the Patent
Portfolio, (ii) all substitutions, continuations, continuations-in-part,
divisionals, supplementary protection certificates, renewals, all letters patent
granted thereon, and all reissues, reexaminations, extensions, confirmations,
revalidations, registrations, and patents of addition thereof, (iii) all foreign
equivalents to any of the foregoing, and (iv) the associated rights to use any
of the foregoing since the creation thereof.
1.3 “Licensed
Product” means any product (or part thereof) or service provided by
Licensee and its Affiliates, whether directly or through distributors, for which
the making, using, practicing, selling, or performing would, absent the license
granted hereunder, infringe one or more claims of patents of the Licensed Patent
Rights.
2.
LICENSE GRANT
2.1 License to the
Licensed Patent Rights. Subject to the
terms and conditions of this Agreement, Licensor hereby grants to Licensee and
to Licensee’s Affiliates a perpetual, irrevocable, world-wide, royalty-free,
non-exclusive, non-transferable (except in accordance with Section 8.5 hereof),
non-sub-licensable right and license, to the Licensed Patent Rights, to make,
have made, use, sell, offer to sell, lease, import, export, and market Licensed
Products in the Licensed Field of Use.
2.2 Exhaustion of
Rights. Licensee and its Affiliates may not grant sub-licenses
under the license granted above to any third party in connection with the
Licensed Field of Use. Notwithstanding the above, for the avoidance
of doubt, third parties who purchase a Licensed Product from Licensee, its
Affiliates, or their distributors, shall automatically retain a non-exclusive
license to use the Licensed Product to the same extent as the Licensee,
Affiliate, or distributor from which it purchased the Licensed
Product.
2.3 Release.
Licensor and its Affiliates hereby release and forever discharge Licensee, its
Affiliates, and its respective directors, officers, employees, predecessors,
successors, assigns and other transferees and any suppliers, and customers from
any known or unknown claim based on any prior acts of patent infringement and/or
alleged patent infringement relating to the Licensee or its Affiliates’ products
and services arising under the Licensed Patent Rights, whether such claims are
now in existence or arise hereafter.
2.4 Covenant Not to
Assert. Licensor, and its Affiliates, successors or assigns,
directly or indirectly hereby covenant not to xxx Licensee, its Affiliates, or
its respective directors, officers, employees, predecessors, successors, assigns
and other transferees for any claims under the Licensed Patent Rights resulting
from making, having made, using, practicing, offering to sell, selling, leasing,
importing, exporting, or marketing Licensee’s or its Affiliates’ Licensed
Products.
2.5 License Extended
to Primus. Licensor and Licensee acknowledge and agree that,
immediately upon the consummation of the Merger, Primus and each of its
Affiliates shall automatically be entitled to the same rights and benefits as
Licensee under this Agreement without any further action by Licensor, Licensee
or Primus or any of their respective Affiliates. In furtherance of
the foregoing, and without limiting the foregoing, between the date of this
Agreement and the earlier of (a) consummation of the Merger and (b) termination
of the Merger Agreement, Licensor agrees that the provisions of Section 2.4
shall apply with respect to Primus and its Affiliates as though they were
Licensee and its Affiliates, respectively. For purposes of clarity, following
consummation of the Merger, if Licensee is no longer an Affiliate of Primus,
Primus and its Affiliates shall nevertheless have and retain the same rights and
benefits of Licensee under this Agreement as in effect on the date of this
Agreement.
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2.6 Covenant not to
Challenge. Licensee and its Affiliates hereby covenant not to
challenge the validity of any claim in the Patent Portfolio before any
Governmental Entity, nor participate in any proceeding or otherwise cooperate
with any Person in attempting to do so. In the event that Licensee,
one of its Affiliates, or any assignee of Licensee (as set forth in Section
8.5), breach this Section 2.6, Licensee, such Affiliate, or such
assignee, as the case may be, shall be liable to Licensor for actual damages
plus reasonable attorneys’ fees.
2.7 Marking.
Licensee shall use commercially reasonable efforts to affix and cause its
Affiliates to affix on the Licensed Products (to the extent reasonably
possible), and the Licensed Products’ user-accessible and viewable software, a
label or statement indicating that the Licensed Products are manufactured, sold,
or provided under license from Licensor and any of the Licensed Patents that may
be designated from time to time by Licensor, or any other reasonable marking
requirements consistent with the then-current law on patent
marking.
3.
PATENT PROSECUTION AND RIGHTS
3.1 Patent
Prosecution and Rights. Licensor shall have the right to
control the prosecution and maintenance of the Patent Portfolio in its sole
discretion and at its cost.
4.
CONFIDENTIALITY
4.1 Confidential
Information. All information relating to this Agreement or the
Asset Purchase Agreement, that is disclosed by one Party to the other Party
during the term of this Agreement (excluding the copies provided under Section
2.1(a)(ii) of the Asset Purchase Agreement), is confidential information except
to the extent that such information:
(a) was
known or used by the receiving Party prior to its date of disclosure by the
disclosing Party to the receiving Party;
(b) either
before or after the date of the disclosure to the receiving Party is lawfully
disclosed to the receiving Party by sources other than the disclosing Party
rightfully in possession of such information;
(c) either
before or after the date of the disclosure to the receiving Party becomes
published or generally known to the public through no fault or omission on the
part of the receiving Party; or
(d) is
required to be disclosed by the receiving Party to comply with applicable laws
or regulations, to defend or prosecute litigation or to comply with legal
process, provided that the receiving Party provides prior written notice of such
disclosure to the disclosing Party with reasonably sufficient time to enable the
disclosing Party to take action to prevent such disclosure; and only discloses
such information of the other Party to the extent necessary for such legal
compliance or litigation purpose.
Confidential
information shall not be used by the receiving Party except in connection with
the activities contemplated by this Agreement, shall be kept secret and
maintained in the strictest confidence by the receiving Party, and shall not,
except with the express prior written consent of the disclosing Party, or as
otherwise permitted herein, directly or indirectly disclose, communicate or
divulge to any other person, firm, or agency, governmental or private, or use
for the benefit of any third party, or use for the benefit of itself otherwise
than in connection with the activities contemplated hereunder. Each
Party shall be entitled to share confidential information with its Affiliates,
and the Party’s and its Affiliates’ respective assigns. Each Party
shall remain responsible for any failure by its and its Affiliates’ and assigns’
respective employees, consultants and advisors to treat confidential information
as required herein.
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5.
REPRESENTATIONS AND WARRANTIES OF
LICENSEE
Licensee
hereby represents and warrants to Licensor as follows:
5.1 Existence, Good
Standing and Power. Licensee is a corporation validly existing
and in good standing under the laws of the State of
Delaware. Licensee has all requisite power and authority to execute
and deliver this Agreement and the other documents and instruments to be
executed and delivered by such Licensee and to perform its obligations hereunder
and thereunder.
5.2 Authority. The
execution, delivery and performance of this Agreement and the consummation by
Licensee of the transactions contemplated hereby have been duly authorized by
all necessary corporate action on the part of Licensee.
5.3 Execution and
Binding Effect. This Agreement has been duly and validly
executed and delivered by Licensee, and constitutes a valid and legally binding
obligation of Licensee and enforceable against it in accordance with its
respective terms, subject, however, to the effects of bankruptcy, insolvency,
reorganization, moratorium and other similar laws affecting creditors’ rights
generally and to general principles of equity (regardless of whether such
enforceability is considered in a proceeding in equity or at law).
5.4 Third Party
Approvals. The execution, delivery and performance by Licensee
of this Agreement and the transactions contemplated hereby do not require any
consents, waivers, authorizations or approvals of, or filings with, any third
person or party, which have not been obtained by Licensee.
6.
REPRESENTATION AND WARRANTIES OF LICENSOR
Licensor
hereby represents and warrants to Licensee as follows:
6.1 Existence, Good
Standing and Power. Licensor is a limited liability company
validly existing and in good standing under the laws of the State of Delaware
and has all requisite power and authority to conduct its business as presently
conducted, to execute and deliver this Agreement and the other documents and
instruments to be executed and delivered by Licensor pursuant hereto and to
perform its obligations hereunder and thereunder.
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6.2 Authority. The
execution, delivery and performance of this Agreement and the consummation by
Licensor of the transactions contemplated hereby have been duly authorized by
all necessary corporate or company action on the part of Licensor.
6.3 Execution and
Binding Effect. This Agreement has been duly and validly
executed and delivered by Licensor and constitutes a valid and legally binding
obligation of Licensor, enforceable against Licensor in accordance with its
terms, subject, however, to the effects of bankruptcy, insolvency,
reorganization, moratorium and other similar laws affecting creditors’ rights
generally and to general principles of equity (regardless of whether such
enforceability is considered in a proceeding in equity or at law).
6.4 Third Party
Approvals. The execution, delivery and performance by Licensor
of this Agreement and the transactions contemplated hereby do not require any
consents, waivers, authorizations or approvals of, or filings with, any third
person or party, which have not been obtained by the Licensor.
7.
TERM
7.1 Term. This
Agreement shall terminate on, but not before, the last expiration or abandonment
of the last claim of any issued patent or patent application within the Licensed
Patent Rights.
8.
GENERAL
8.1 Recitals. The
recitals set forth in this Agreement are an integral part of this Agreement, and
are incorporated herein by reference as a substantive portion of this
Agreement.
8.2 Expenses. Except
as set forth in this Agreement and whether or not the transactions contemplated
hereby are consummated, each Party shall bear all costs and expenses incurred or
to be incurred by such Party in connection with this Agreement and the
consummation of the transactions contemplated hereby.
8.3 Notices. Unless
otherwise provided herein, any notice, request, instruction or other document to
be given hereunder by any Party to any other Party shall be in writing and shall
be delivered in person or by courier, or by a PDF attachment to an e-mail
communication or by a facsimile transmission (with such a PDF attachment or
facsimile transmission of a notice confirmed by sending a copy of such notice,
request, instruction or other document by certified mail, return receipt
requested) or mailed by certified mail, postage prepaid, return receipt
requested (such mailed notice to be effective on the date such receipt is
acknowledged), as follows:
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If
to Licensee:
Arbinet
Corporation
000 Xxxxxxx Xxxxxxx,
Xxxxx 000
Xxxxxxx, Xxxxxxxx 00000
Attention: General
Counsel
Telephone: (000) 000-0000
Fax: (000)
000-0000
E-mail:
xxxxx@xxxxxxx.xxx
with a copy, which
shall not constitute notice, to:
Mintz, Levin, Cohn,
Ferris, Glovsky and Popeo, P.C.
000 Xxxxxxxxxxxx Xxx.,
XX, Xxxxx 000
Xxxxxxxxxx, XX 00000
Attention: Kemal
Hawa
Telephone: (000)
000-0000
Fax: (000)
000-0000
E-mail:
XXxxx@xxxxx.xxx
Primus
Telecommunications Group, Incorporated
0000 Xxxxx Xxxxx Xxxxx,
Xxxxx 000
XxXxxx, Xxxxxxxx 00000
Attention: General
Counsel
Telephone: (000) 000-0000
E-mail: xxxxxxxx@xxxxxxxxx.xxx
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If
to Licensor:
AIP Acquisition
LLC
c/o Remus Holdings,
LLC
0000 Xxxxxxxx
Xxxxxx
0xx
Xxxxx
Xxxx Xxx, XX 00000
Telephone: (000)
000-0000
e-mail:
xxxxx@xxxx0.xxx
with a copy, which
shall not constitute notice, to:
Xxxxx Xxxxx Zedek
Xxxxxx LLP
0000 Xxxxxxxx,
00xx
Xxxxx
Xxx Xxxx, XX 00000
Attention: Guy
Yonay
Telephone: (000)
000-0000
Email:
XxxX@xxxxxx.xxx
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or to
such other place and with such other copies as either Party may designate as to
itself by written notice to the other Party. Rejection, any refusal
to accept or the inability to deliver because of changed address of which no
notice was given shall be deemed to be receipt of the notice as of the date of
such rejection, refusal or inability to deliver.
8.4 Choice of Law;
Governing Law;
Jurisdiction and Venue. This
Agreement shall be governed by, and construed in accordance with, the laws of
the State of Delaware applicable to contracts executed in and to be performed in
that state. All actions and proceedings arising out of or relating to this
Agreement shall be heard and determined by the Delaware Court of Chancery or a
federal district court located in Delaware. Each of the Parties hereby
irrevocably and unconditionally consents to submit to the exclusive jurisdiction
of the Delaware Court of Chancery or a federal district court located in
Delaware for any litigation arising out of or relating to this Agreement and the
transactions contemplated hereby (and agrees not to commence any litigation
relating thereto except in such court), waives any objection to the laying of
venue of any such litigation in the Delaware Court of Chancery or a federal
district court located in Delaware, agrees not to plead or claim that such
litigation brought therein has been brought in any inconvenient forum and
consents to service of process in such action being given in accordance with the
notice provisions hereof.
8.5 Assignment; the
Agreement.
(a) Licensee
may not assign or transfer this Agreement in whole or in part without the
express written consent of the Licensor and any such assignment or transfer (or
attempt to so assign or transfer) shall be null and void, except as otherwise
expressly set forth in Section 8.5(b) below.
(b) Licensee
and Primus (as to Primus, once the Merger has been consummated) may assign and
transfer the rights and obligations under Article 2 of this Agreement (other
than Section 2.5), to accomplish the following, but only as
follows:
(i) In
the event that Primus sells all or substantially all of the stock or assets of
its Canadian business operations (“Primus Canada”), whether through merger,
consolidation, or otherwise, then such Article 2 rights and obligations shall
only with respect to those patents of Licensor issued under the laws of Canada
(as identified in Schedule A), 1) continue to apply to the products and services
of Primus Canada and such sold assets, both prospectively and retroactively; and
2) apply to the entity that acquires Primus Canada or such assets, and such
entity’s Affiliates, both prospectively and retroactively;
(ii) In
the event that Primus sells all or substantially all of the stock or assets of
its Australian business operations (“Primus Australia”), whether through merger,
consolidation, or otherwise, then such Article 2 rights and obligations shall
only with respect to those patents of Licensor issued under the laws of
Australia (as identified in Schedule A), 1) continue to apply to the products
and services of Primus Australia and such sold assets, both prospectively and
retroactively; and 2) apply to the entity that acquires Primus Australia or such
assets, and such entity’s Affiliates, both prospectively and
retroactively;
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(iii) In
the event of a sale of all or substantially all of the stock or assets of
Primus, whether through merger, consolidation, or otherwise, then such Article 2
rights and obligations shall continue to apply to the products and services of
Primus and such sold assets, both prospectively and retroactively, but shall not
apply to the entity and its Affiliates that acquires Primus; provided, however,
that Licensor hereby covenants and agrees that, upon request, Licensor shall
enter into good faith negotiations with the acquirer of Primus or such assets to
enter into a royalty-bearing license agreement with such acquirer pertaining to
such unlicensed products and services;
(iv) In
the event of a sale of all or substantially all of the stock or assets of
Arbinet, as a wholly owned subsidiary of Primus subsequent to the consummation
of the Merger, whether through merger, consolidation, or otherwise, then such
Article 2 rights and obligations shall continue to apply to the products and
services of Arbinet and such sold assets, both prospectively and retroactively,
but shall not apply to the entity and its Affiliates that acquires Arbinet;
provided, however, that Licensor hereby covenants and agrees that, upon request,
Licensor shall enter into good faith negotiations with the acquirer of Arbinet
or such assets, to enter into a royalty-bearing license agreement with such
acquirer pertaining to such unlicensed products and services;
(v) In
the event of a sale of 1) Primus’ wholesale line of business, 2) Primus’ retail
line of business, or 3) Primus’ Lingo line of business (each individually
referred to herein as a “Substantial Business Line”), then such Article 2 rights
and obligations shall continue to apply to the products and services of the
applicable Substantial Business Line, but shall not apply to the entity and its
Affiliates that acquires the Substantial Business Line; provided, however, that
Licensor hereby covenants and agrees that, upon request, Licensor shall enter
into good faith negotiations with the acquirer of the Substantial Business Line
to enter into a royalty-bearing license agreement with such acquirer pertaining
to such unlicensed products and services;
(c) Notwithstanding
any of the foregoing, any acquirer that is an assignee of this Agreement shall
not be able, in turn, to further assign this Agreement or any rights
hereunder.
(d) Within
30 days after any assignment is made pursuant to this Section 8.5, Licensee or
Primus, as the case may be, shall notify Licensor of such
assignment. Subject to the foregoing, the terms and conditions of
this Agreement shall be binding upon and inure to the benefit of the successors
and assigns of the Parties.
(e) Licensor
acknowledges and agrees that, in the event of a sale of all or substantially all
of the stock or assets of Primus Canada, Primus Australia, or Arbinet, or of a
Substantial Business Line, the provisions of Article 2 shall continue to apply
to the business and operations of Primus and its Affiliates being
retained.
(f) Licensor,
in its sole discretion, shall have the right to assign this Agreement as a
matter of right; provided, however, that Licensor, prior to any such assignment,
shall enter into an agreement with such assignee, pursuant to which such
assignee agrees to be bound by the terms of this Agreement, and Licensor shall
provide to Licensee and Primus prompt notice of such assignment.
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8.6 Waiver of Jury
Trial. EACH
OF THE PARTIES HEREBY IRREVOCABLY WAIVES, TO THE FULLEST EXTENT PERMITTED BY
LAW, ALL RIGHTS OF TRIAL BY JURY IN ANY ACTION, PROCEEDING, OR COUNTERCLAIM
(WHETHER BASED UPON CONTRACT, TORT OR OTHERWISE) ARISING OUT OF OR RELATING TO
THIS AGREEMENT OR ANY OF THE OTHER TRANSACTIONS CONTEMPLATED
HEREBY.
8.7 Entire
Agreement: Amendments and Waivers. This Agreement
constitutes the entire agreement between the Parties pertaining to the subject
matter hereof and supersedes all prior agreements, understandings, negotiations,
and discussions, whether oral or written, of the Parties. Except as
set forth herein or in any certificate delivered pursuant hereto, no Party (or
any employee or agent thereof) makes any representation or warranty, express or
implied, to any other Party with respect to this Agreement or the transactions
contemplated hereby. No supplement, modification or waiver of this
Agreement (including, without limitation, any schedule hereto) shall be binding
unless the same is executed in writing by all Parties. No waiver of
any of the provisions of this Agreement shall be deemed or shall constitute a
waiver of any other provision hereof (whether or not similar), and no such
waiver shall constitute a continuing waiver unless otherwise expressly
provided.
8.8 Counterparts. This
Agreement may be executed in two or more counterparts, each of which shall be
deemed an original, but all of which together shall constitute one and the same
instrument. Delivery of an executed counterpart of a signature page
to this Agreement by telecopy or by an email attachment shall be as effective as
delivery of a manually executed counterpart of this Agreement. In
proving this Agreement, it shall not be necessary to produce or account for more
than one such counterpart signed by the Party against whom enforcement is
sought.
8.9 Invalidity. If
any one or more of the provisions contained in this Agreement, or in any other
instrument referred to herein, shall, for any reason, be held to be invalid,
illegal or unenforceable in any respect, the Parties shall use their reasonable
efforts, including, but not limited to, the amendment of this Agreement, to
ensure that this Agreement shall reflect as closely as practicable the intent of
the Parties on the date hereof.
8.10 Headings. The
headings of the Articles and Sections herein are inserted for convenience of
reference only and are not intended to be a part of, or to affect the meaning or
interpretation of, this Agreement.
8.11 Specific
Performance. Each of the Parties acknowledges that the other
Party would be irreparably damaged in the event any of the provisions of this
Agreement were not performed in accordance with its specific terms or were
otherwise breached. Accordingly, each of the Parties shall be
entitled to an injunction or injunctions to prevent breaches of the provisions
of this Agreement and to enforce specifically this Agreement and the terms and
provisions thereof in any action instituted in any court of the United States or
any state thereof having subject matter jurisdiction, in addition to any other
remedy to which the Parties may be entitled, at law, in equity or pursuant to
this Agreement.
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8.12 Counting. If
the due date for any action to be taken under this Agreement (including, without
limitation, the delivery of notices) is not a Business Day, then such action
shall be considered timely taken if performed on or prior to the next business
day following such due date.
8.13 Schedules. The
Schedules attached to, delivered with and identified in this Agreement are a
part of this Agreement the same as if fully set forth herein and all references
herein to any Section of this Agreement shall be deemed to include a reference
to any Schedule named therein.
8.14 Preparation of
this Agreement. Licensor and Licensee hereby acknowledge
that (a) Licensor and Licensee jointly and equally participated in
the drafting of this Agreement and all other agreements contemplated hereby, (b)
both Licensor and Licensee have been adequately represented and advised by legal
counsel with respect to this Agreement and the transactions contemplated hereby,
and (c) no presumption shall be made that any provision of this Agreement shall
be construed against either Party by reason of such role in the drafting of this
Agreement and any other agreement contemplated hereby.
8.15 Severability. If
any provision of this Agreement, or the application thereof, becomes or is
declared by a court of competent jurisdiction to be illegal, void or
unenforceable, the remainder of this Agreement shall continue in full force and
effect and shall be interpreted so as reasonably to effect the intent of the
Parties hereto. The Parties hereto shall use all reasonable efforts
to replace such void or unenforceable provision of this Agreement with a valid
and enforceable provision that shall achieve, to the extent possible, the
economic, business and other purposes of such void or unenforceable
provision.
8.16 Express
Third-Party Beneficiary. Licensor and Licensee acknowledge and
agree that Primus shall be an express third-party beneficiary of the provisions
of Section 2.5 of this Agreement.
[Signature Page
Follows]
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IN
WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed,
effective as of the Closing Date, by their duly authorized
representatives.
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LICENSOR: AIP
ACQUISITION LLC
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By:
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/s/ Xxxxx Xxxxxx
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Name:
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Xxxxx
Xxxxxx
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Title:
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Manager
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LICENSEE: ARBINET
CORPORATION
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By:
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/s/ Xxxxx X. X’Xxxxxxx
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Name:
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Xxxxx
X. X’Xxxxxxx
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Title:
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Chief
Executive Officer and President
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