EXHIBIT 10.12
PATENT LICENSE AGREEMENT
THIS PATENT LICENSE AGREEMENT (the "Agreement"), dated as of April 3, 2000,
is entered into between Cellco Partnership, a Delaware general partnership
("Licensor"), and AirTouch Communications, Inc., a Delaware corporation
(collectively with its Affiliates "Licensee").
W I T N E S S E T H:
WHEREAS, Licensee desires to obtain a license under certain U.S. patents
and patent applications of Licensor identified in Schedule A attached hereto,
together with any continuations, continuations-in-part and divisional
applications thereof and all patents issuing thereon (including reissues,
renewals and reexaminations of the foregoing) under the laws of United States of
America (the "Licensed Patents"), subject to the terms, conditions, rights,
restrictions and obligations of this Agreement.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties, intending to be
legally bound hereby, agree as follows:
1. Definitions.
A. Affiliates. As used in this Agreement, a person, association,
partnership, corporation or joint-stock company, trust, or other business
entity, however organized, is an "Affiliate" of the person or entity which
directly or indirectly, through one or more intermediaries, controls, is
controlled by, or is under common control with, such person. Control shall
be defined as (i) ownership of 20% or more of the voting power of all
classes of voting stock of an entity; (ii) ownership of 20% or more of the
beneficial interests in income and capital of an entity other than a
corporation; or (iii) management control over an entity.
B. Territory. The "Territory" shall be worldwide.
2. Grant of License. Licensor hereby grants to Licensee a perpetual,
irrevocable, non-exclusive, non-transferable (except as otherwise provided
herein), royalty-free license: (i) under the Licensed Patents to make, have
made, use, sell, have sold, offer for sale and import wireless
telecommunications goods and services (the "Goods and Services") in the
Territory; and (ii) to otherwise practice and use any method or invention
claimed in or covered by the Licensed Patents, as well as any associated know-
how of Licensee's employees (the "Know-How"), for the purpose of making, having
made, using, selling, having sold, offering for sale and importing the Goods and
Services in the Territory. Licensee shall have the right to grant sublicenses of
its license rights hereunder to resellers, vendors, agents, distributors,
exclusive dealers and similar persons and entities solely in connection with the
manufacture, sale and provision of the Goods
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and Services of Licensee in the Territory. Licensee shall not grant any other
sublicense without the prior written approval of Licensor.
3. Notice of Infringements. In the event that either party becomes aware of
any potential or actual infringement of the Licensed Patents in the Territory
(each, an "Infringement"), such party shall promptly provide the other with
written notice thereof.
4. Term. This Agreement shall continue from the date hereof until the date
of expiration or invalidation of the last to expire or be invalidated of the
Licensed Patents (or if any Licensed Patent has not issued at that time, upon
the abandonment of such unissued Licensed Patent). Licensee may terminate this
Agreement at any time on thirty (30) days' prior written notice to Licensor.
5. Representations and Warranties.
A. Licensor hereby represents and warrants to Licensee that it has the
full right and power to enter into and perform according to the terms of
this Agreement.
B. Licensee hereby represents and warrants to Licensor that it has the
full right and power to enter into and perform according to the terms of
this Agreement.
C. Nothing in this Agreement shall be construed as:
(i) a warranty or representation by Licensor as to the validity of the
Licensed Patents; or
(ii) a warranty or representation that anything provided, made, used, sold
or otherwise disposed of under the license granted in this Agreement is or will
be free from infringement of patents of third parties; or
(iii) a requirement that Licensor shall file or prosecute any patent
application, secure any patent or maintain any patent in force and effect; or
(iv) an obligation on the part of Licensor to take any legal action against
any party with respect to the unlawful or unlicensed use of any subject matter
covered by the Licensed Patents; or
(v) an obligation on the part of Licensor to furnish any manufacturing or
technical information, or any information concerning the Licensed Patents; or
(vi) granting by implication, estoppel, or otherwise any licenses,
warranties (implied in fact or law) or rights other than those expressly granted
herein, or creating any obligation other than those expressly created hereunder;
or
(vii) a representation or agreement by Licensor to assume any
responsibility whatsoever with respect to use, sale or installation of any
products or services of Licensee.
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6. Amendment. This Agreement may be amended, modified, or supplemented
only by a written agreement signed by the parties hereto.
7. Governing Law. Except for patent matters governed by the Federal laws
of the United States of America, this Agreement shall be governed by and
construed in accordance with, the laws of the State of Delaware, without
reference to choice of law principles, including matters of construction,
validity and performance.
8. Notices. All notices and other communications under this Agreement
shall be in writing and shall be deemed to have been duly given when delivered
personally, delivery charges prepaid, or three (3) business days after being
sent by registered or certified mail (return receipt requested), postage
prepaid, or one (1) business day after being sent by a nationally recognized
express courier service, postage or delivery charges prepaid, to the parties at
their respective addresses stated below. Notices may also be given by prepaid
telegram or facsimile and shall be effective on the date transmitted if
confirmed within twenty-four (24) hours thereafter by a signed original sent in
the manner provided in the preceding sentence. Any party may change its address
for notice and the address to which copies must be sent by giving notice of the
new address to the other parties in accordance with this Section 8, except that
any notice of such change of address shall not be effective unless and until
received.
If to Licensor to: Cellco Partnership
000 Xxxxxxxxxx Xxxxxx Xxxx
Xxxxxxxxxx, XX 00000
Attention: General Counsel
If to Licensee to: AirTouch Communications, Inc.
Legal Department
0 Xxxxxxxxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxxxxxxx, XX 00000
With a copy to: Gates & Xxxxxx
Xxxxxx Xxxxxx Center
Suite 1050
0000 Xxxxxx Xxxxx Xxxx
Xxx Xxxxxxx, XX 00000
9. Headings; References. The section and paragraph headings contained in
this Agreement are for reference purposes only and shall not affect in any way
the meaning or interpretation of this Agreement.
10. Counterparts. This Agreement may be executed in one or more
counterparts and each counterpart shall be deemed to be an original, but all of
which shall constitute one and the same original.
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11. Parties in Interest; Assignment; Successor. This Agreement shall be
binding upon and inure to the benefit of the parties hereto and their respective
permitted successors and assigns. Except as otherwise provided herein, this
Agreement and the license rights granted to Licensee hereunder shall not be
assigned, sublicensed, transferred, conveyed or pledged by Licensee without the
prior written consent of Licensor, and any attempt by Licensee to do so without
such consent shall be void and of no force or effect. Notwithstanding the
foregoing sentence, Licensee may assign or transfer this Agreement in its
entirety to an entity that purchases or otherwise receives or succeeds to all or
substantially all of Licensee's assets. This Agreement shall be freely
assignable and transferable by Licensor, subject to the express rights and
licenses granted herein. Except as expressly stated herein, nothing in this
Agreement, express or implied, is intended to confer upon any other person any
rights or remedies under or by reason of this Agreement.
12. Severability; Enforcement. The invalidity of any portion hereof shall
not affect the validity, force or effect of the remaining portions hereof. If it
is ever held that any restriction hereunder is too broad to permit enforcement
of such restriction to its fullest extent, each party agrees that a court of
competent jurisdiction may enforce such restriction to the maximum extent
permitted by law, and each party hereby consents and agrees that such scope may
be judicially modified accordingly in any proceeding brought to enforce such
restriction.
13. Use of Parties' Names. Nothing herein shall be construed as granting
either party the right to use the other party's name in publicizing anything
used under this Agreement.
14. Waiver. The failure of either party at any time to require performance
by the other party of any provision hereof shall in no way affect the full right
to require such performance at any time thereafter. Nor shall the waiver by
either party of a breach of any provision hereof be a waiver of any succeeding
breach of the same or any other such provisions or be a waiver of the provision
itself.
15. Alliance Agreement; Entire Agreement. This Agreement is subject to the
provision of the U.S. Wireless Alliance Agreement, dated as of September 21,
1999 (the "Alliance Agreement") between Vodafone AirTouch Plc and Xxxx Atlantic
Corporation. Neither the making nor the acceptance of this Agreement, nor any
provision hereof, shall enlarge, restrict or otherwise modify the provisions of
the Alliance Agreement or the rights and obligations of the parties thereunder,
or constitute a waiver or release by any of the parties to the Alliance
Agreement of any liabilities, duties or obligations imposed upon any party
thereunder, including, without limitation, the representations and warranties,
indemnities and other provisions that, pursuant to the Alliance Agreement,
survive the Closing (as defined therein) thereof. This Agreement, together with
the Alliance Agreement and all other agreements entered into by Vodafone
AirTouch Plc and Xxxx Atlantic Corporation in connection therewith, contain the
entire agreement of the parties hereto with respect to the subject matter hereof
and thereof and supersede all prior understandings and agreements of the parties
with respect thereto.
16. No Agency. Nothing herein shall be construed as creating any agency,
partnership or other form of joint enterprise between Licensor and Licensee.
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17. Survival. The provisions of Sections 5, 7, 8, 15 and 18 shall survive
the expiration of the term of this Agreement, as shall Licensee's right and
license to practice and use in the Territory any method or invention claimed in
or covered by the Licensed Patents, as well as any associated Know-How.
18. Dispute Resolution. Resolution of any and all disputes arising under
or in connection with this Agreement, whether based on contract, tort, statute
or otherwise, including, but not limited to, disputes over arbitrability and
disputes in connection with claims by third parties, shall be exclusively
governed by and settled in accordance with the provisions of the Alliance
Agreement.
IN WITNESS WHEREOF, the parties hereto have duly executed and delivered
this Agreement as of the Effective Date.
LICENSOR:
Cellco Partnership
By: NYNEX PCS Inc., its
managing general partner
By: /s/ S. Xxxx Xxxxxx
----------------------------------
Name: S. Xxxx Xxxxxx
Title:
LICENSEE:
AirTouch Communications, Inc.
By: /s/ Xxxx Xxxxx
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Name: Xxxx Xxxxx
Title: Chief Executive Officer
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