Exhibit 10 (j)
ASSET PURCHASE AGREEMENT
by and between
Interphase Corporation, a Texas corporation, and
Cisco Systems, Inc., a California corporation,
Dated as of June 3, 1996
TABLE OF CONTENTS
Page
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ARTICLE I
PURCHASE AND SALE OF ASSETS 1
Section 1.1 Description of Assets to be Acquired 1
Section 1.2 Excluded Assets 2
ARTICLE II
ASSUMED LIABILITIES 2
Section 2.1 Assumed Liabilities 2
Section 2.2 Liabilities Not Assumed 3
ARTICLE III
PURCHASE PRICE 3
Section 3.1 Consideration 3
Section 3.2 Payment of Purchase Price 3
Section 3.3 Allocation of Purchase Price 4
ARTICLE IV
REPRESENTAITONS AND WARRANTIES 5
Section 4.1 Representations and Warranties of Seller 5
(a) Organization of Seller 5
(b) Authorization of Seller 5
(c) Governmental Consents 6
(d) Proprietary Rights 6
(e) Contracts and Commitments 6
(f) Title to the Assets 7
(g) Litigation 7
(h) No Conflict or Default 7
(i) Brokers' and Finders' Fees 7
(0) Customers 7
(k) Complete Disclosure 8
(1) Inventory 8
(m) Suppliers 8
(n) Limitation 8
Section 4.2 Representations and Warranties of Purchaser 8
(a) Organization of Purchaser 8
(b) Authorization of Purchaser 8
(c) Governmental Consents 9
(d) Litigation 9
(e) No Conflict or Default 9
(f) Brokers' and Finders' Fees 9
ARTICLE V
COVENANT'S 10
Section 5.1 Covenants Against Disclosure 10
Section 5.2 Maintenance of Business 10
Section 5.3 Access to Information 10
Section 5.4 Notations 10
Section 5.5 Closing Conditions 11
Section 5.6 Post Closing Transactions 11
Section 5.7 Sales and Transfer Taxes 11
Section 5.8 Tax Returns 11
Section 5.9 Transfer of FDDI Adapter Products Business
Goodwill to Purchaser 11
Section 5.10 Training and Consultation by Seller 12
ARTICLE VI
CLOSING 13
Section 6.1 Time of Closing 13
Section 6.2 Deliveries by Seller 13
Section 6.3 Deliveries by Purchaser 14
Section 6.4 Further Assurances 14
ARTICLE VII
CONDITIONS PRECEDENT TO OBLIGATIONS 14
Section 7.1 Conditions to Obligations of Purchaser 14
(a) Representations and Warranties 14
(b) Performance of Agreement 15
(c) No Material Adverse Change 15
(d) Absence of Governmental or Other Objection 15
(e) Approval of Documentation 15
Section 7.2 Conditions to Obligations of Seller 15
(a) Representations and Warranties 15
(b) Performance of Agreement 15
(c) Absence of Governmental or Other
(d) Approval of Documentation 16
(e) Purchase Price 16
ARTICLE VIII
MISCELLANEOUS PROVISIONS 16
Section 8.1 Notice 16
Section 8.2 Entire Agreement 16
Section 8.3 Binding Effect; Assignment 16
Section 8.4 Expenses of Transaction; Taxes 17
Section 8.5 Waiver; Consent 17
Section 8.6 Counterparts 17
Section 8.7 Severability 17
Section 8.8 Absence of Third Party Beneficiary Rights 17
Section 8.9 Attorneys' Fees 18
Section 8.10 Cooperation and Records Retention 18
Section 8.11 Termination 18
Section 8.12 Mediation 19
SCHEDULES
1.1(a) List of Related Property
1.1(b) List of Inventory
1.1(c) List of Contracts
1.1(d) List of Permits
1.1(e) List of Proprietary Rights
1.1(g) List of Other Assets
1.2 List of Excluded Assets
1.3 FDDI Adapter Products
4.1(f) List of Encumbered Assets
4.1(g) List of Litigation
4.10 List of Customers
ASSET PURCHASE AGREEMENT
THIS AGREEMENT is dated as of June 3, 1996 by Interphase Corporation, a
Texas corporation ("Purchaser"), and Cisco Systems, Inc., a California
corporation ("Seller").
WHEREAS, Seller is engaged in the business of designing, manufacturing and
selling EISA and Sbus FDDI adapter products (the "Business"); and
WHEREAS, Purchaser desires to acquire from Seller and Seller desires to
transfer to Purchaser, all or substantially all of the properties, assets, and
rights of Seller related to the Business, and to assume certain specified
liabilities of Seller, all upon the terms and conditions set forth in this
Agreement.
NOW, THEREFORE, in consideration of the mutual promises and covenants set
forth herein, the parties hereby agree as follows:
ARTICLE I
PURCHASE AND SALE OF ASSETS
SECTION 1.1 DESCRIPTION OF ASSETS TO BE ACQUIRED. Upon the terms and
subject to the conditions set forth in this Agreement, at the Time of Closing
(as defined in Section 6.1 hereof), Seller agrees to convey, sell, transfer,
assign, and deliver to Purchaser, and Purchaser agrees to purchase from Seller,
all right, title, and interest of Seller at the Time of Closing in and to
certain assets, properties, and rights related to the Business, as follows:
(a) The machinery, equipment computer hardware, peripherals, operating
software, application software, quality assurance equipment and furniture and
fixtures (the "Related Property") listed on Schedule 1.1(a) hereto;
(b) The inventory owned by Seller related to the Business as listed on
Schedule 1.1(b) hereto (whether located on the premises of the facilities owned
by Seller in San Jose, CA, in transit to or from such pren3ises, in other
storage or warehouse facilities, or otherwise) including, without limitation,
finished goods and components, as listed on Schedule 1.1(b) hereto (the
"Inventory");
(c) All claims, rights and obligations (but, with respect to obligations,
only to the extent expressly assumed pursuant to Section 2.1 hereof) under
all agreements, contracts, contract rights, licenses, purchase and sale
orders, quotations, and other executory commitments associated with the
Business (collectively, the "Con-
tracts"), that are listed on Schedule 1.1(c) hereto including the "Contracts
Requiring Notation or Consents to Assignment" as such phrase is defined in
Section 4.1(e)(C) hereof;
(d) All claims and rights under all franchises, licenses, permits,
consents, authorizations, certificates and approvals (collectively referred to
herein as "Permits") of any federal, state, or local regulatory, administrative,
or other governmental agency or body issued to or held by Seller which are
necessary, related or incidental to the Business, that are listed on Schedule
1.1(d) hereto;
(e) All patent rights, copyright rights, trade secret rights, mask work
rights and other intellectual property and proprietary rights throughout the
world, together with the goodwill associated therewith (collectively, the
"Proprietary Rights"), that are listed on Schedule 1.1(e) hereto;
(f) All goodwill associated with the Business (the "Goodwill");
(g) Such other properties or assets ("Other Assets") that are listed on
Schedule 1.1(g) hereto;
(h) All rights, if any, under express or implied warranties from
suppliers and vendors of Seller which are related to the Business and the
Assets; and
(i) All of Seller's causes of action, judgments, and claims or demands of
whatever kind or description arising out of or relating to the Business and
the Assets other than those arising under this Agreement;
The assets, properties, and rights to be conveyed, sold, transferred,
assigned, and delivered to Purchaser pursuant to this Section 1.1 are sometimes
hereinafter collectively referred to as the "Assets".
SECTION 1.2 EXCLUDED ASSETS. Notwithstanding the provisions of Section 1.1
hereof, the Assets to be transferred to Purchaser pursuant to this Agreement
shall not include assets listed on Schedule 1.2 hereof and any other assets not
specifically identified on the Schedules set forth in Section 1.1 (collectively,
the "Excluded Assets").-
ARTICLE 11
ASSUMED LIABILITIES
SECTION 2.1 ASSUMED LIABILITIES. Subject to Section 2.2 hereof, Purchaser
hereby agrees at the Time of Closing to assume, satisfy or perform when due
those liabilities and obligations of Seller arising after the Time of Closing
under the Contracts
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and Permits. The liabilities assumed hereunder by the Purchaser are hereinafter
called the "Assumed Liabilities".
SECTION 2.2 LIABILITIES NOT ASSUMED. Other than the Assumed Liabilities,
Purchaser shall not assume, nor shall Purchaser or any affiliate of Purchaser,
be deemed to have assumed or guaranteed, any other liability or obligation of
any nature of Seller, or claims of such liability or obligation, whether
accrued, matured or unmatured, liquidated or unliquidated, fixed or contingent,
known or unknown arising out of (i) acts or occurrences, or related to any of
the Assets or the Business, prior to the Time of Closing or (ii) any other
liability or obligation of Seller (collectively, the "Unassumed Liabilities").
Seller shall indemnify Purchaser from and against all losses, including
reasonable costs and expenses, incurred by Purchaser directly relating to any
Unassumed Liabilities.
ARTICLE III
PURCHASE PRICE
SECTION 3.1 Consideration. Upon the terms and subject to the conditions
contained in this Agreement, in consideration for the Assets and the other
forms of consideration to be given by Seller and in fall payment therefor,
Purchaser will pay, or cause to be paid, the purchase price set forth in
Section 3.2 hereof to Seller, subject to adjustment in accordance with the
provisions set forth herein, and Purchaser will assume all of the Assumed
Liabilities.
SECTION 3.2 PAYMENT OF PURCHASE PRICE. The consideration ("Purchase
Price") to be paid or payable by Purchaser to Seller for the Business and the
other forms of consideration to be given by Seller shall be:
(a)
(i) At the Time of Closing, Purchaser shall pay to Seller, by cash, check
or wire transfer, the sum of $2,500,000.
(ii) Within ten (10) days after receipt of each delivery of inventory as
set forth on Schedule 1.1(b), Purchaser shall pay to Seller, by cash, check or
wire transfer, the purchase price for any such delivered inventory as set forth
on Schedule 1.1(b) hereto, it being understood that there may be multiple
deliveries of inventory and a payment will be due pursuant to this section after
each delivery.
(b) Additional installment payments shall be made as follows:
At such time as Net Sales (as defined below) of FDDI Adapter Products,
(as defined below) by Purchaser after the Time of Closing exceed $6,000,000,
Purchaser shall make quarterly payments to Seller within 30 days of the end
of each fiscal quarter of Purchaser, in an amount equal to 10% of Net Sales
in excess of such $6,000,000. Beginning on the date cumulative Net Sales of
FDDI Adapter Products by
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Purchaser after the Time of Closing exceed $16,000,000, the percentage of Net
Sales payable to Seller pursuant to this Section shall be reduced to 5%.
Beginning on the date cumulative Net Sales of FDDI Adapter Products by
Purchaser after the Time of Closing exceed $26,000,000, the percentage of Net
Sales payable to Seller shall be reduced to 0% and no further payments shall
be due Seller except payments which have accrued prior to net sales exceeding
$26,000,000. For purposes of this Agreement, FDDI Adapter Products shall
mean the products set forth in Schedule 1.3 hereto, and improvements,
modifications and derivative works thereof produced by Purchaser. For
purposes of this Agreement, Net Sales shall mean the gross sales amount
actually received from the sale of FDDI Adapter Products, less commissions,
freight, insurance, duties and any applicable sales, value added or similar
taxes, less any amount for returned goods for which a credit or refund is
given, and not including support and maintenance revenues related to FDDI
Adapter Products and not normally included in the selling price of such FDDI
Adapter Products.
(c) AUDIT AND INSPECTION RIGHTS. Purchaser shall keep accurate books and
records with respect to its sales activities of FDDI Adapter Products. Such
books and records shall be preserved for at least three (3) years after
termination of payment obligations under this Agreement and shall be open to
inspection and audit by a representative of Seller or an independent certified
public accountant retained by Seller (and reasonably acceptable to Purchaser) at
reasonable times during Purchaser's normal business hours, upon reasonable prior
notice and no more than once per year. Such representative or independent
certified public accountant shall be bound to hold all information in confidence
except as necessary to communicate to Seller Purchaser's breach of this
Agreement or misrepresentation or error regarding net sales under this
Agreement. The fees and expenses of such inspection and audit shall be borne by
Seller; however, if an error in Net Sales reporting is discovered in excess of
5% for the 12 month period being audited, then such fees and expenses related to
the audit for such period shall be borne by Purchaser. Seller may not audit the
same period twice, except with reasonable cause. Any sums found to be owing to
either party as a result of such inspection and audit shall be immediately paid
to the other party, including interest at a rate of 8% from the date such sums
should have been paid.
SECTION 3.3 ALLOCATION OF PURCHASE PRICE. The Purchase Price shall be
allocated among the Assets as set forth in a statement of allocation of the
Purchase Price (plus Assumed Liabilities), such statement to be prepared by
Purchaser at the Time of Closing, and acceptable to Seller. If Purchaser and
Seller cannot agree on such allocation statement within ten days of the Time
of Closing, the allocation statement shall be determined by a partner of one
of the six largest international accounting firms mutually acceptable to both
parties, and having due regard for the rights and interests of both parties.
The statement of the allocation prepared in accordance with this Section 3.3
shall be binding upon the parties hereto and shall be prepared using the
allocation
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methods and principles required by Section 1060 of the Internal Revenue Code of
1986, as amended (the "Code") and the Treasury Regulations promulgated
thereunder. Neither Purchaser nor Seller shall take any position inconsistent
with such allocation, and any and all filings with and reports made to any
taxing authority will be consistent with that allocation, except in each case to
the extent that Purchaser or Seller reasonably believes, after discussion with
the others, that the foregoing will result in a violation of applicable law.
ARTICLE IV
REPRESENTATIONS AND WARRANTIES
SECTION 4.1 REPRESENTATIONS AND WARRANTIES OF SELLER. In this Agreement,
any reference to "Seller's knowledge" means Seller's actual knowledge after
reasonable inquiry of the former officer and director level employees of
Crescendo Communications, Inc. who are employed by Seller as of the date hereof.
Seller hereby represents and warrants to Purchaser that as of the date hereof
and as of the Time of Closing (which representations and warranties will
terminate one year from the Time of Closing and therefore any claims by
Purchaser for a breach of such representations and warranties must be brought
prior to the expiration of one year from the Time of Closing):
(a) ORGANIZATION OF SELLER. Seller is a corporation duly organized,
validly existing and in good standing under the laws of the state of California,
and has all requisite power and authority to own and operate the Business in the
places where the Business is now conducted and to directly own, lease, and
operate the Assets. Seller is duly qualified or licensed to do business as a
corporation in each of the jurisdictions in which the nature of the Business or
location of properties related to the Business requires such qualification or
licensing and where the failure to be so qualified would have a material adverse
effect on the Business.
(b) AUTHORIZATION OF SELLER. Seller has fall power and authority to enter
into this Agreement, to perform its obligations hereunder, and to consummate the
transactions contemplated hereby, including, without Stations the execution and
delivery of this Agreement, bills of sale, assignments and assumptions,
novations and other instruments evidencing the conveyance of the Assets or
delivered in accordance with Section 6.2 hereunder (the "Closing Documents").
Seller has taken all necessary and appropriate corporate action, including
obtaining all necessary board and shareholder consents, with respect to the
execution and delivery of this Agreement and the Closing Documents. This
Agreement constitutes the valid and binding obligation of Seller enforceable in
accordance with its terms, subject to bankruptcy, insolvency, reorganization,
moratorium, and other similar laws affecting the rights and remedies of
creditors and subject to the general principles of equity.
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(c) GOVERNMENTAL CONSENTS. No consent, approval, order, or authorization
of, or registration, qualification, designation, declaration, or filing with
any federal, state, local, or provincial governmental authority on the part
of Seller is required in connection with the consummation of the transactions
contemplated hereunder.
(d) PROPRIETARY RIGHTS. To Seller's knowledge, Seller owns, has the right
to use, or has the right to practice under all Proprietary Rights set forth in
Schedule 1.1(e) hereto, as qualified by such Schedule 1.1(e), without any
conflict with or infringement of the rights of others.
(e) CONTRACTS AND COMMITMENTS.
(A) There is set forth on Schedule 1.1(c) a list of all outstanding
contracts, setting forth the parties and the dates, including expiration
dates, thereto which relate to the Business, and which are being purchased by
Purchaser pursuant hereto, and, to which Seller is a party or to which any of
the Assets are subject.
(B) Seller, and to Seller's knowledge, each other party thereto, has
performed all of its obligations under the terms of each Contract and is not
in default thereunder. No event or omission has occurred which but for the
giving of notice or lapse of time or both would constitute a default by any
party thereto under any such Contract, where such default by any party could
have a material adverse effect on the Business or the Assets. Each such
Contract is valid and binding on all parties thereto and in full force and
effect. Seller has received no notice of default, cancellation, or
termination in connection with any such Contract. Seller has not accepted
any material prepayments with respect to any of the Contracts, nor has
Seller entered into any written modifications, waivers, releases or
amendments to any of the Contracts not previously disclosed to Purchaser and
which written modifications, waivers, releases or amendments would have a
material adverse effect on the Business or the Assets.
(C) Schedule 1.1(c) lists all Contracts, under the heading "Contracts
Requiring Notation or Consent to Assignment," that require a notation or
consent to assignment, as the case may be, prior to, the Time of Closing so
that Purchaser shall be made a party in place of Seller or as assignee (the
"Contracts Requiring Novation or Consent to Assignment"). Such list is
complete, accurate and includes every Contract which, if no novation occurs
to make Purchaser a party thereto or if no consent to assignment is obtained,
would have a material adverse effect on Purchaser's ability to operate the
Business in the same manner as the Business was operated by Seller prior to
the Time of Closing.
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(f) TITLE TO THE ASSETS.
(A) Except as set forth on Schedule 4.1(f) attached hereto and except
for Permitted Encumbrances, Seller has good and marketable title to the
Assets free and clear of any pledges, liens, encumbrances, security
interests, equities, charges, and restrictions of any nature whatsoever
(collectively, the "Liens"). The term "Permitted Encumbrances" shall mean
Liens for current taxes not due and payable. Any and all Liens set forth on
Schedule 4.1(f), with the exception of Permitted Encumbrances, shall be
terminated as of the Time of Closing, and Seller shall transfer the Assets to
Purchaser free and clear of all such Liens.
(B) By virtue of the deliveries made at the Time of
Closing, Purchaser will obtain good and marketable title to the Assets,
free and clear of all Liens except for Permitted Encumbrances.
(g) LITIGATION. Except as set forth on Schedule 4.1(g), there is no
claim, litigation, action, suit, or proceeding, administrative or judicial,
pending or, to Seller's knowledge, threatened against or by Seller, nor to
Seller's knowledge is there any reasonable basis for any such claim,
litigation, action, suit, or proceeding against or by SELLER, relating to the
Business, or involving the Assets, or this Agreement or the transactions
contemplated hereunder, at law or in equity, before any federal, state,
local, or foreign court, or regulatory agency, or other governmental
authority, including, without limitation, any unfair labor practice or
grievance proceedings or otherwise, which claim, litigation, action, suit or
proceeding would have a material adverse effect on the Assets.
(h) NO CONFLICT OR DEFAULT. Neither the execution and delivery of this
Agreement nor compliance with the terms and provisions hereof, including
without limitation, the consummation of the transactions contemplated hereby,
win violate any statute, regulation, or ordinance of any governmental
authority, or conflict with or result in the breach of any term, condition,
or provision of Seller's Articles of Incorporation or Bylaws, or, subject to
obtaining the consents described in Section 5.4 below, of any agreement deed,
contract, mortgage, indenture, writ, order, decree, legal obligation, or
instrument to which Seller is a party or by which it or any of the Assets are
or may be bound, or constitute a default (or an event which, with the lapse
of time or the giving of notice, or both, would constitute a default)
thereunder.
(i) BROKERS' AND FINDERS' FEES. Seller is not obligated to pay any
fees or expenses of any broker or finder in connection with the origin,
negotiation, or execution of this Agreement or in connection with any
transactions contemplated hereby.
(j) CUSTOMERS. Schedule 4.16) (which will be provided at the Time of
Closing) attached hereto lists all customers of the Business who purchased
7
FDDI Adapter Products from Seller at any time from the beginning of Seller's
1995 fiscal year through the Time of Closing.
(k) COMPLETE DISCLOSURE. No representation or warranty by Seller in
this Agreement, and no exhibit, schedule, statement, certificate, or other
writing furnished to Purchaser pursuant to this Agreement or in connection
with the transactions contemplated hereby, contains or will contain any
untrue statement of a material fact or omits or will omit to state a material
fact necessary to make the statements contained herein and therein in the
context in which they were made not misleading.
(l) INVENTORY To Seller's knowledge, all of the Inventory consists or
will consist of items of a quality usable and saleable in the ordinary and
usual course of the Business.
(m) SUPPLIERS. Seller is not aware of any event or fact which would
reasonably be expected to have a material adverse effect on Seller's
relationship with its suppliers of the Business.
(n) LIMITATION. EXCEPT FOR THE EXPRESS REPRESENTATIONS AND WARRANTIES SET
FORTH IN THIS ARTICLE IV, NO REPRESENTATION OR WARRANTY WHATSOEVER IS MADE BY
SELLER AND SELLER HEREBY DISCLAIMS ANY REPRESENTATIONS OR WARRANTIES IMPLIED AS
TO THE CONDITION, VALUE OR QUALITY OF THE ASSETS AND SPECIFICALLY DISCLAIMS
WITH RESPECT TO THE ASSETS ANY REPRESENTATIONS AND WARRANTIES OF
MERCHANTABILITY, USAGE OR FITNESS FOR ANY PARTICULAR PURPOSE.
SECTION 4.2 REPRESENTATIONS AND WARRANTIES OF PURCHASER. In this
Agreement, any reference to "Purchaser's knowledge" means Purchaser's actual
knowledge after reasonable inquiry of officers and director-level employees.
Purchaser hereby represents and warrants to Seller that as of the date hereof
and as of the Time of Closing (which representations and warranties will
terminate one year from the Time of Closing and therefore any claims by
Seller for a breach of such representations and warranties must be brought
prior to the expiration of one year from the Time of Closing):
(a) ORGANIZATION OF PURCHASER. Purchaser is a corporation duly
organized, validly existing and in good standing under the laws of the State
of Texas, and has all requisite power and authority to own and operate its
business.
(b) AUTHORIZATION OF PURCHASER. Purchaser has full power and authority
to enter into this Agreement, to perform its obligations hereunder and to
consummate the transactions contemplated hereby, including, without
limitation, the execution and delivery of this Agreement. Purchaser has
taken all necessary and
8
appropriate corporate action, including obtaining all necessary board
consents, with respect to the execution and delivery of this Agreement and
the consummation of the transactions contemplated hereby. This Agreement
constitutes the valid and binding obligation of Purchaser enforceable in
accordance with its terms, subject to bankruptcy, insolvency, reorganization,
moratorium and other similar laws affecting the rights and remedies of
creditors and subject to general principles of equity.
(c) GOVERNMENTAL CONSENTS. No consent, approval, order, or
authorization of, or registration, qualification, designation, declaration,
or filing with any federal, state, local or provincial governmental authority
on the part of Purchaser is required in connection with the consummation of
the transactions contemplated hereunder.
(d) LITIGATION. There is no claim litigation, action, suit or
proceeding, administrative or judicial, pending or, to Purchaser's knowledge,
threatened against or by Purchaser, nor to Purchaser's knowledge is there any
reasonable basis for any such claim litigation action, suit or proceeding
against or by Purchaser, relating to this Agreement or the transactions
contemplated hereunder, at law or in equity, before any federal, state, local
or foreign court, or regulatory agency, or other governmental authority,
which could result in the institution of legal proceedings to prohibit or
restrain the consummation or performance of this Agreement or the
transactions contemplated hereby or claim damages as a result of this
Agreement or the transactions contemplated hereby.
(e) NO CONFLICT OR DEFAULT. Neither the execution and delivery of this
Agreement nor compliance with the terms and provisions hereof including,
without limitation, the consummation of the transactions contemplated hereby,
will violate any statute, regulation, or ordinance of any GOVERNMENTAL
authority, or conflict with or result in the breach of any term, condition,
or provision of Purchaser's Articles of Incorporation or Bylaws, or of any
material agreement, deed, contract, mortgage, indenture, writ, order, decree,
legal obligation, or instrument to which Purchaser is a party or by which it
is or may be bound, or constitute a default (or an event which, with the
lapse of time or the giving or notice, or both, would constitute a default)
thereunder.
(f) BROKERS' AND FINDERS' FEES. Purchaser is not obligated to pay any
fees or expenses of any broker or finder in connection with the origin,
negotiation, or execution of this Agreement or in connection with any
transactions contemplated hereby.
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ARTICLE V
COVENANTS
SECTION 5.1 COVENANTS AGAINST DISCLOSURE. Until the Time of Closing,
no party or its affiliates shall disseminate any press release or
announcement or otherwise make any disclosure to third parties, other than on
a need to know basis to its legal and financial representatives who have a
fiduciary obligation to maintain confidentiality of such disclosure,
concerning the transactions contemplated by this Agreement and Purchaser will
not make any disclosures to third parties, excluding the announcement of this
Agreement, that could be reasonably expected to damage the Business or
products of Seller without the prior consent of Seller and Purchaser, except
as, in the reasonable opinion of a party, required by law.
SECTION 5.2 MAINTENANCE OF BUSINESS. Except as otherwise required to
perform its obligations under this Agreement during the period from the date
hereof through the Time of Closing, Seller shall carry on and use its reasonable
efforts to preserve the Business, Goodwill, and relationships with customers,
suppliers, officers, employees, agents, licensees and others with respect to the
Business in substantially the same manner as Seller did prior to the date where
Seller will use its reasonable efforts to keep and maintain the existing
favorable Business relationship with each of its respective customers,
suppliers, officers, employees, licensees and agents with respect to the
Business.
SECTION 5.3 ACCESS TO INFORMATION. Seller shall give Purchaser and its
Representatives (as such term is defined below) full access, during normal
Business hours, to all of the properties, books, contracts, commitments, and
records relating to the Business and the Assets, provided that such access
shall not unreasonably interfere with the normal operations of the Business,
and Seller will furnish to Purchaser and its officers, directors, employees,
agents or representatives (collectively, "Representatives") during such
period all such information concerning the Business or the Assets as
Purchaser may reasonably request; provided, that any furnishing of such
information pursuant hereto or any investigation by Purchaser shall not
affect Purchaser's right to rely on the representations, warranties,
agreements and covenants made by Seller in this Agreement. All requests for
permissions under this Section 5.3 shall be made by Purchaser through an
individual designated for the purpose by Seller.
SECTION 5.4 NOVATIONS. Seller agrees to use reasonable efforts to obtain
contract novations or consents to assignment as necessary, for all Contracts
requiring Novation or Consent to Assignment prior to or as soon as
practicable after the Time of Closing.
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SECTION 5.5 CLOSING CONDITIONS. Both parties agree to use their reasonable
efforts to cause the conditions of closing to be fulfilled.
SECTION 5.6 POST CLOSING -- TRANSACTIONS.
(a) Seller shall retain all collections by it under the Contracts,
novated or otherwise, for all sales made by Seller prior to the Time of
Closing and during the Transition Period.
(b) Subject to any approvals required by Seller's customers, Seller shall
subcontract the rights and obligations of any Contracts not novated to
Purchaser on the same terms and conditions provided in such Contracts.
SECTION 5.7 SALES AND TRANSFER TAXES. Seller agrees to take all
actions reasonably requested by Purchaser to minimize any sales, use and
other transfer taxes and fees incurred in connection with the assignment,
conveyance, transfer and/or delivery of the Assets hereunder, including,
without limitation the transfer via means of electronic transmission of all
assets capable of being so transmitted. Seller further agrees to deliver
all certificates reasonably requested by Purchaser to verify the fact of
such electronic transmissions or other actions.
SECTION 5.8 TAX RETURNS. Seller shall properly file all returns,
statements, reports, forms or other documents (collectively, "Tax Returns")
that Seller is required by any applicable law to file with respect to taxes
arising in or related to periods ending on or prior to the Time of Closing
or related to transactions or events occurring prior to the Time of Closing
and shall pay all such taxes when due. If the closing occurs prior to July
19, 1996, state and local ad valorem taxes for the current tax year shall be
prorated at the Closing effective as of the Closing Time, with Purchaser's
pro rated portion being paid to Seller at the Closing. If the closing
occurs on or after July 1, 1996, state and local ad valorem taxes for the
current tax year shall be prorated at the Closing effective as of the
Closing Time, with Seller's pro rated portion being paid to Purchaser at
the Closing. Purchaser shall be responsible for payment of the current
year ad valorem tax bins. If the Closing shall occur before the tax rate
is fixed for the current tax year, the apportionment of taxes shall be upon
the basis of the tax rate for the preceding year applied to the latest
assessed valuation, but any difference in estimated and actual taxes paid
for the current tax year shall be adjusted between the parties upon receipt
by Seller of written evidence of Purchaser's payment thereof. Any
supplemental property taxes or assessments which arise out of a revaluation
of an Asset which revaluation would not have occurred except for the change
in ownership of the Asset shall be borne by Purchaser.
SECTION 5.9 TRANSFER OF FDDI ADAPTER PRODUCTS BUSINESS GOODWILL TO
PURCHASER. Seller will endeavor to achieve a smooth transition in connection
with the
11
transfer to Purchaser of Seller's business related to the FDDI Adapter Products.
Accordingly, Seller agrees to:
(i) for a period of twelve (12) months after the Closing Date, publicize
Purchaser's acquisition of Seller's FDDI Adapter Products business on a Seller
Web page in a place and manner to be determined by Seller in its sole
discretion, (after having previously provided a copy for review to Purchaser)
and, to the extent consistent with Seller's current Web page policy, include a
hot link to Purchaser's Web page in Seller's Web Page;
(ii) provide Purchaser information, current as of the Closing Date,
pertaining to FDDI Adapter Products purchased from Seller during Seller's 1995
and 1996 fiscal years, including (a) customer names, shipping addresses, billing
addresses, model numbers and unit quantity of such FDDI Adapter Products, (b)
unit quantity and revenue sales information for such FDDI Adapter Products,
generated on a fiscal quarter basis, and (c) the summary gross margin for each
such FDDI Adapter Product; and
(iii) provide Purchaser, at or before the Closing, with the FDDI
Documentation (as defined below) and the FDDI Software (as defined below); and
(iv) provide its reasonable assistance, as mutually agreed on a case by
case basis, in introducing Purchaser as a supplier of the FDDI Adapter Products
to key customers.
For purposes of this Agreement, "FDDI Documentation" shall mean (i) the
hardware designs and design information, (ii) software designs and design
information, including source code and a list of software tools, (iii)
manufacturing information, including bills of materials, assembly drawings,
Gerber files for printed circuit boards and manufacturing test software designs,
(iv) product manuals, (v) release notes and (vi) a list of outstanding bugs for
the FDDI Adapter Products; "FDDI Software" shall mean the software and firmware
contained in the FDDI Adapter Products including FDDI Software Upgrades but
excluding The Cisco Technology, "FDDI Software Upgrade" shall mean any upgrade,
enhancement, update, new version of or bug fix for the FDDI Software; and "Cisco
Technology" shall have the meaning set forth on Schedule 1.2 hereof
SECTION 5.10 TRAINING AND CONSULTATION BY SELLER. Seller shall provide
Purchaser with training and technical consultation as set forth below.
(i) TRAINING. Seller shall provide Purchaser two (2) person-days of
on-site technical training to Purchaser's engineering personnel pertaining to
the design and manufacture of the FDDI Adapter Products. Such technical
training will be provided promptly upon request at Purchaser's facilities at
no cost to Purchaser. In
12
addition, Seller shall provide, at no cost to Purchaser, one (1) person-day of
training to Purchaser's support personnel pertaining to the support, repair and
maintenance of the FDDI Adapter Products at a time and location to be mutually
agreed.
(ii) TECHNICAL CONSULTATION. Seller shall provide Purchaser, without
charge, forty (40) person-hours of technical consultation comprising telephone,
voicemail, electronic mail and laboratory assistance during normal business
hours. Seller agrees to use commercially reasonable efforts to provide
Purchaser, for a period of ninety (90) days following the end of the Transition
Period and thereafter subject to availability of Seller's resources, additional
technical consultation required by Purchaser at a rate of $200 per hour. For
purposes of this Agreement "Transition Period" means the period from the Time of
Closing through July 28, 1996.
ARTICLE VI
CLOSING
SECTION 6.1 TIME OF CLOSING. The transactions contemplated by this
Agreement shall be completed on the first Business day on which the last of
the conditions contained in Article VII hereof is fulfilled or waived (the
"Time of Closing"), with the expectation that the Closing shall occur on June
10, 1996 at 12:00 P.M., P.D.T., unless otherwise agreed to by Purchaser and
Seller. The Closing shall take place at the offices of Xxxxxxx, Xxxxxxx &
Xxxxxxxx, Two Embarcadero Place, 2200 Geng Road, Palo Alto, CA, or at such
other place or date as may be agreed to by Purchaser and Seller. The
"Closing" shall mean the deliveries to be made by the parties hereto at the
Time of Closing in accordance with this Agreement.
SECTION 6.2 DELIVERIES BY SELLER. At the Closing, Seller shall deliver, or
cause to be delivered, to Purchaser the following:
(a) A good and sufficient Xxxx of Sale and an Assignment and Assumption
of Liabilities Agreement for the Assets in the form mutually agreed to by
Purchaser and Seller, selling, delivering, transferring, and assigning to
Purchaser title to all of Seller's right, tide, and interest to the Assets,
free and clear of all mortgages, pledges, liens, encumbrances, security
interests, equities, charges, and restrictions of any nature whatsoever
except as otherwise provided herein and except with respect to delivery of
inventory as set forth on Schedule 1.1(b) hereto, which delivery shall be
made in accordance with Schedule 1.1(b).
(b) An affidavit of Seller, substantially in the form mutually agreed to
by Purchaser and Seller, stating, under penalty of perjury, Seller's United
States taxpayer identification number and that Seller is not a foreign person,
pursuant to Section 1445(b)(2) of the Code.
13
(c) Good and sufficient assumptions and assignments of the Proprietary
Rights and Contracts, which shall be in form and substance reasonably
satisfactory to Purchaser and shall include the written consents of all
parties necessary in order to transfer all of Seller's rights thereunder to
Purchaser.
(d) An Officers' Certificate executed by an executive officer of Seller
certifying that the conditions specified in subsections (a)-(d) of Section 7.1
have been satisfied.
SECTION 6.3 DELIVERIES BY PURCHASER. At the Closing, Purchaser shall
deliver, or cause to be delivered, to Seller:
(a) The payment of that portion of the Purchase Price set forth in
Section 3.2(a)(i) hereof, together with applicable taxes arising from the
transaction which Purchaser is required to pay pursuant to Section 8.4 hereof;
(b) A good and sufficient Xxxx of Sale and an Assignment and Assumption
of Liabilities Agreement in the form mutually agreed to by Purchaser and
Seller, covering those liabilities of Seller assumed by Purchaser pursuant to
Section 2.1 hereof;
(c) An Officer's Certificate executed by an executive officer of
Purchaser certifying that the conditions specified in subsections (a) - (c)
of Section 7.2 have been satisfied; and
SECTION 6.4 FURTHER ASSURANCES. At or after the Time of Closing, each
party shall prepare, execute, and deliver, such further instruments of
conveyance, sale, assignment, or transfer, and shall take or cause to be
taken such other or farther action, as any party shall reasonably request of
any other party at any time or from time to time in order to perfect,
confirm, or evidence in Purchaser title to all or any part of the Assets or
to consummate, in any other manner, the terms and provisions of this
Agreement.
ARTICLE VII
CONDITIONS PRECEDENT TO OBLIGATIONS
SECTION 7.1 CONDITIONS TO OBLIGATIONS OF PURCHASER. Each and every
obligation of Purchaser to be performed at the Closing shall be subject to
the satisfaction as of or before the Time of Closing of the following
conditions (unless waived in writing by Purchaser):
(a) REPRESENTATIONS AND WARRANTIES. The representations and warranties
of Seller set forth in Section 4.1 of this Agreement shall have been true and
14
correct when made and shall be true and correct at and as of the Time of
Closing as if such representations and warranties were made as of such date
and time.
(b) PERFORMANCE OF AGREEMENT. All covenants, conditions, and other
obligations under this Agreement which are to be performed or complied with
by Seller shall have been fully performed and complied with at or prior to
the Time of Closing, including the delivery of the instruments and documents
in accordance with Section 6.2 hereof.
(c) NO MATERIAL ADVERSE CHANGE. There shall have been no material
adverse change in the financial condition, Business, Proprietary Rights or
properties of Seller which materially adversely affects the Assets or the
conduct of the Business as currently being conducted.
(d) ABSENCE OF GOVERNMENTAL OR OTHER OBJECTION. There shall be no
pending or threatened lawsuit challenging the transaction by any body or
agency of the federal, state or local government or by any third party, and
the consummation of the transaction shall not have been enjoined by a court
of competent jurisdiction as of the Time of Closing.
(e) APPROVAL OF DOCUMENTATION. The form and substance of all
certificates, instruments, opinions and other documents delivered or to be
delivered to Purchaser under this Agreement shall be reasonably satisfactory
to Purchaser and its counsel in all respects.
SECTION 7.2 CONDITIONS TO OBLIGATIONS OF SELLER. Each and every
obligation of Seller to be performed at the Time of Closing shall be subject
to the satisfaction as of or before such time of the following conditions
(unless waived in writing by Seller):
(a) REPRESENTATIONS AND WARRANTIES. The representations and warranties of
Purchaser set forth in Section 4.2 of this Agreement shall have been true and
correct when made and shall be true and correct at and as of the Time of Closing
as ff such representations and warranties were made as of such date and time.
(b) PERFORMANCE OF AGREEMENT. All covenants, conditions, and other
obligations under this Agreement which are to be performed or complied with by
Purchaser shall have been fully performed and complied with at or prior to the
Time of Closing, including the delivery of the instruments and documents in
accordance with Section 6.3 hereof
(c) ABSENCE OF GOVERNMENTAL OR OTHER OBJECTION. There shall be no pending
or threatened lawsuit challenging the transaction by any body or agency of the
federal, state, or local government or by any third party, and the consummation
of
15
the transaction shall not have been enjoined by a court of competent
jurisdiction as of the Time of Closing.
(d) APPROVAL OF DOCUMENTATION. The form and substance of all
certificates, instruments, opinions, and other documents delivered or to be
delivered to Seller under this Agreement shall be reasonably satisfactory to
Seller and its counsel in all respects.
(e) PURCHASE PRICE. Purchaser shall have delivered to Seller that portion
of the Purchase Price set forth in Section 3.2(a)(i) hereof.
ARTICLE VIII
MISCELLANEOUS PROVISIONS
SECTION 8.1 Notice. All notices and other communications required or
permitted under this Agreement shall be delivered to the parties at the address
set forth below their respective signature blocks, or at such other address that
they designate by notice to all other parties in accordance with this Section
8.1. Any party delivering notice to Purchaser shall deliver a copy to Gardere &
Xxxxx, 0000 Xxxxxxxxxxxx Xxxxx, Xxxxxx, Xxxxx 00000, Attn: Xxxxx X. Xxxxxxx,
Esq., and any party delivering notice to Seller shall deliver a copy to:
Xxxxxxx, Xxxxxxx & Xxxxxxxx LLP, Two Embarcadero Place, 0000 Xxxx Xxxx, Xxxx
Xxxx, XX 00000, Attn: Xxxxxx X. Xxxxxxx, Esq. All notices and communications
shall be deemed to have been received unless otherwise set forth herein: (i) in
the case of personal delivery, on the date of such delivery; (ii) in the case of
telex or facsimile transmission, on the date on which the sender receives
confirmation by telex or facsimile transmission that such notice was received by
the addressee, provided that a copy of such transmission is additionally sent by
mail as set forth in (iv) below; (iii) in the case of overnight air courier, on
the second Business day following the day sent, with receipt confirmed by the
courier; and (iv) in the case of mailing by first class certified or registered
mail, postage prepaid, return receipt requested, on the fifth business day
following such mailing.
SECTION 8.2 ENTIRE AGREEMENT. This Agreement, the exhibits and schedules
hereto, the documents referred to herein and the documents executed
contemporaneously hereto at the Time of Closing, embody the entire agreement and
understanding of the parties hereto with respect to the subject matter hereof,
and supersede all prior and contemporaneous agreements and understandings, oral
or written, relative to such subject matter.
SECTION 8.3 BINDING EFFECT, ASSIGNMENT. This Agreement and the various
rights and obligations arising hereunder shall inure to the benefit of and be
binding upon Seller, its successors and permitted assigns, and Purchaser and
its successors and permitted assigns. Neither this Agreement nor any of the
rights, interests, or obligations
16
hereunder shall be transferred or assigned (by operation of law or otherwise)
by either of the parties hereto without the prior written consent of the
other party, except that (i) either party may assign this Agreement without
the other party's consent to a parent corporation or a wholly-owned
subsidiary of the assigning party, (ii) either party may assign this
Agreement without the other party's consent beginning one year from the Time
of Closing provided the maximum of all payments payable as set forth in
Section 3.2(b) hereof ($1,500,000) have been made prior to any proposed
assignment or (iii) either party may assign this Agreement without the other
party's consent at any time after the expiration of three years from the Time
of Closing.
SECTION 8.4 EXPENSES OF TRANSACTION: TAXES. Except as set forth in
Section 8.12, each party shall bear its own costs and expenses in connection
with this Agreement and the transactions contemplated hereby. Purchaser shall
pay all applicable sales, use, excise, transfer, documentary and any other
similar taxes arising out of the purchase and sale of the Assets.
SECTION 8.5 WAIVER -- CONSENT. This Agreement may not be changed,
amended, terminated, augmented, rescinded, or discharged (other than by
performance), in whole or in part, except by a writing executed by the
parties hereto, and no waiver of any of the provisions or conditions of
this Agreement or any of the rights of a party hereto shall be effective or
binding unless such waiver shall be in writing and signed by the party
claimed to have given or consented thereto. Except to the extent that a
party hereto may have otherwise agreed in writing, no waiver by that party
of any condition of this Agreement or breach by the other party of any of
its obligations or representations hereunder or thereunder shall be deemed
to be a waiver of any other condition or subsequent or prior breach of the
same or any other obligation or representation by the other party, nor
shall any forbearance by the first party to seek a remedy for any
noncompliance or breach by the other party be deemed to be a waiver by the
first party of its rights and remedies with respect to such noncompliance
or breach.
SECTION 8.6 COUNTERPARTS. This Agreement may be executed
simultaneously in multiple counterparts, each of which shall be deemed an
original, but all of which taken together shall constitute one and the same
instrument.
SECTION 8.7 SEVERABILITY. If one or more provisions of this Agreement
are held to be unenforceable under applicable law, such provision shall be
excluded from this Agreement and the balance of the Agreement shall be
interpreted as if such provision were so excluded and shall be enforceable
in accordance with its terms.
SECTION 8.8 ABSENCE OF THIRD PARTY BENEFICIARY RIGHTS. No provisions
of this Agreement are intended, nor will be interpreted, to provide or
create any third party beneficiary rights or any other rights of any kind
in any client, customer, affiliate, stockholder, partner or employee of any
party hereto or any other person or entity unless
17
specifically provided otherwise herein, and, except as so provided, all
provisions hereof will be personal solely between the parties to this
Agreement.
SECTION 8.9 ATTORNEYS' FEES. In any action or proceeding to enforce rights
under this Agreement, the prevailing party shall be entitled to recover
reasonable costs and attorneys' fees.
SECTION 8.10 COOPERATION AND RECORDS RETENTION. Seller and Purchaser shall
(i) each provide the other with such assistance as may reasonably be requested
by them in connection with the preparation of any Tax Returns, or in connection
with any audit or other examination by any taxing authority or any judicial or
administrative proceedings relating to liability for Taxes, (ii) each retain and
provide the other, with any records or other information which may be relevant
to any such Tax Return, audit or examination, proceeding or determination, and
(iii) each provide the other with any final determination of any such audit or
examination, proceeding or determination that affects any amount required to be
shown on any Tax Return of the other for any period. Without limiting the
generality of the foregoing, Seller and Purchaser shall use reasonable efforts
to retain, until the applicable statute of limitations (including any
extensions) have expired, copies of all Tax Returns, supporting work schedules
and other records or information which may be relevant to such Tax Returns for
all tax periods or portions thereof ending before or including the Time of
Closing and shall not destroy or otherwise dispose of any such records without
first providing the other party with a reasonable opportunity to review and copy
the same. Seller shall keep the original copies of the records at its
facilities in California and elsewhere, if applicable, and, at Purchaser's
expense, shall provide copies of the Records to Purchaser upon Purchaser's
request.
SECTION 8.11 TERMINATION. This Agreement may be terminated and the
transactions herein contemplated may be abandoned at any time, but not later
than the Time of Closing:
(a) By mutual consent of the respective Boards of Directors of Purchaser
and Seller; or
(b) By the Board of Directors of Purchaser (i) if, on or after June 28,
1996, any of the conditions provided for in Section 7.1 of this Agreement shall
not have been met or shall not have been waived in writing by Purchaser prior to
such date or (ii) the Board of Directors of Purchaser determines in the exercise
of its reasonable judgment that the pendency of any lawsuit or the institution
or threat of any governmental or administrative action, investigation or inquiry
which questions the validity or the legality of the transactions contemplated
hereby or which seeks to prevent restrain, change or obtain damages in respect
of such transactions, makes it inadvisable to consummate the transactions
contemplated hereby, notwithstanding that such lawsuit, action, investigation or
inquiry may be deemed to be without merit; or
18
(c) By the Board of Directors of Seller if, on or after June 28, 1996,
any of the conditions provided for in Section 7.2 of this Agreement shall not
have been met or shall not have been waived in writing by the Seller prior to
such date.
(d) In the event of termination and abandonment by the Board of Directors
of Purchaser or by the Board of Directors of Seller, or both, pursuant to
Section 8.11 hereof, written notice thereof shall forthwith be given to the
other party and this Agreement shall terminate and the transactions contemplated
hereby shall be abandoned without further action by Purchaser or Seller. If
this Agreement is terminated as provided herein:
(i) Each party will redeliver all documents, work papers and other
material of any other party relating to the transactions contemplated
hereby, whether so obtained before or after the execution hereof, to the
party furnishing the same;
(ii) All parties hereto shall bear their own costs associated with
this Agreement and all transactions described herein and the parties hereto
shall have no further obligation or liability to the other parties except
as stated in this Section 8.11.
SECTION 8.12 MEDIATION. Prior to commencing any lawsuit arising from a
party's material breach or termination of this Agreement due to the other
party's material breach, the parties shall submit the dispute to a corporate
officer of each party, having actual authority to act on behalf of and bind such
party under this Agreement, for resolution. If the parties are unable to
resolve the dispute within ten (10) days thereafter, the parties shall then
attempt in good faith to resolve it by mediation in accordance with the rules of
the Judicial Arbitration and Mediation Service ("JAMS"). If mediation is
unsuccessful within a reasonable time after commencement of proceedings, but not
less than thirty (30) days thereafter, the mediator shall so certify and the
parties shall be entitled to seek whatever remedies may be available in law or
equity. Notwithstanding the foregoing, either party may seek equitable or
similar relief from a court in connection with any dispute within the scope of
this Section 8.12 (Mediation).
19.
IN WNNESS WHEREOF, the parties hereto have caused this Agreement to be executed
as of the day and year first above written.
INTERPHASE CORPORATION
By: \x\ R. Xxxxxxx Xxxxxx
Name: R. Xxxxxxx Xxxxxx
Title: Chairman, CEO and President
Address: 00000 Xxxxxx, Xxxxxx XX 00000
CISCO SYSTEMS, INC.
a California corporation
By: \x\ Xxxxx X. Xxxxxx
Name: Xxxxx X. Xxxxxx
Title: VP & CFO
Address: 000 X. Xxxxxx Xxx Xxxx, XX 00000
20.
TECHNOLOGY LICENSE AND GRANT-BACK AGREEMENT
This Technology License and Grant-Back Agreement ("Agreement") is made and
entered into as of June 3, 1996 by and between Cisco Systems, Inc., a California
corporation, having principal offices at 000 Xxxx Xxxxxx Xxxxx, Xxx Xxxx,
Xxxxxxxxxx 00000-0000 ("Cisco") and Interphase Corporation, a Texas corporation,
having principal offices at 13800 Senlac, Xxxxxx, Xxxxx 00000-0000
("Interphase").
RECITALS
WHEREAS, Cisco is a supplier of FDDI EISA and Sbus adapter products and
Interphase desires to expand its FDDI EISA and Sbus adapter product offering;
WHEREAS, Interphase requires licenses to certain Cisco technology to
develop, manufacture and sell FDDI EISA and Sbus adapter products and Cisco
desires to grant such rights to Interphase; and
WHEREAS, Cisco and Interphase intend to together support the FDDI EISA and
Sbus adapter products through ongoing product support services and
interoperability testing of new FDDI adapter products.
NOW, THEREFORE, the parties agree as follows:
AGREEMENT
1. DEFINITIONS. For purposes of this Agreement, the following terms
shall have the following meanings:
1.1 "Cisco ASICS" shall mean the Cisco proprietary BIGA and MEGA
ASICS.
1.2 "Cisco Patent" shall mean United States Patent No. 5,280,500
(issued January 18, 1994) (titled "Method and Apparatus for Multilevel
Encoding for a Local Area Network"), the underlying invention, any and all
Letters Patent whether U.S. or foreign that are or may be granted from
improvements of the underlying invention and all reissues, reexaminations,
extensions, continuations, continuations-in-part, divisions, substitutions
and renewals thereof or equivalents thereof
1.3 "Cisco Technology' shall mean the Cisco ASICS, designs of the
Cisco ASICS, software that drives the Cisco ASICs and all patent rights,
copyright
rights, trade secret rights and all other intellectual property and proprietary
rights throughout the world relating to all of the foregoing.
1.4 "Effective Date" shall mean June 10, 1996.
1.5 "FDDI Adapter Products" shall mean the products set forth in
Attachment A (FDDI Adapter Products) hereto and improvements, modifications and
derivative works thereof produced by Interphase solely for use in Sbus and EISA
applications.
1.6 "FDDI Documentation" shall mean (i) the hardware designs and
design information, (ii) software designs and design information, including
source code and a list of software tools, (iii) manufacturing information,
including bills of materials, assembly drawings, Gerber files for printed
circuit boards and manufacturing test software designs, (iv) product manuals,
(v) release notes and (vi) a list of outstanding bugs for the FDDI Adapter
Products.
1.7 "FDDI Software" shall mean the software and firmware contained
in the FDDI Adapter Products, including FDDI Software Upgrades, but excluding
the Cisco Technology.
1.8 "FDDI Software Upgrade" shall mean any upgrade, enhancement,
update, new version of or bug fix for the FDDI Software.
1.9 "FDDI Technology" shall mean the FDDI Adapter Products
(including the FDDI Software) and the FDDI Documentation, but excluding the
Cisco Technology.
1.10 "Interphase Technology" shall mean all patent rights, copyright
rights, trade secret rights, mask work rights and other intellectual property
and proprietary rights throughout the world in the FDDI Technology, but
excluding the Cisco Technology.
1.11 "Restricted Products" shall mean products which are identical
to, or have substantially the same functionality as, the FDDI Adapter
Products (as such FDDI Adapter Products exist on the Effective Date) intended
for use in host end-station environments including, without limitation,
server and/or client station environments. Restricted Products do not
include products intended for use in non-host end-station environments
including, without limitation, routers, switches and hubs.
1.12 "Transition Period" shall mean the period commencing on the
Effective Date and ending on July 28, 1996.
2
2. LICENSE GRANTS.
2.1 LICENSE BY CISCO' Subject to all the terms and conditions of this
Agreement including, without limitation, the restriction on Cisco's design,
manufacture and sale of the Restricted Products set forth in Section 2.1.4
below, Cisco grants to Interphase a non-exclusive, non-transferable (except as
permitted in Section 21 (Assignment)), non-sublicensable, royalty-free,
worldwide license:
(i) under the Cisco Patent to make, have made, use, sell,
offer for sale and import the FDDI Adapter Products;
(ii) under the Cisco Technology (as such Cisco Technology
exists as of the Effective Date) and any improvements, modifications and
derivative works of the Cisco Technology made by or for Interphase to (a)
use, reproduce (except the Cisco ASICS), modify, create and have created
derivative works of the Cisco Technology (in source code and object code
forms), (b) distribute such Cisco Technology and improvements, modifications
and derivative works thereof created by or for Interphase (in object code
only, but excluding the designs of the Cisco ASICS), but only as all of the
foregoing in this Section 2.1(ii)(b) are incorporated in the FDDI Adapter
Products and (c) distribute to customers the software that drives the Cisco
ASICs (in source code and object code) solely for the purposes of customizing
the FDDI Software drivers for use in a customer's environment and providing
maintenance and support of the FDDI Software drivers; and
(iii) sublicense the distribution rights granted in
subparagraph (ii)(b) above to third parties. Interphase may use
sub-distributors, original equipment manufacturers, value-added resellers and
other resellers (collectively, "Resellers"), provided any such Reseller shall
be bound in writing to all the restrictions of this Agreement.
2.1.1 No distribution of the FDDI Adapter Products containing
Cisco Technology or any improvement, modification or derivative work thereof
made by or for Interphase shall be made except pursuant to a written end-user
license agreement that is at least as protective of Cisco and its rights as
the end-user agreement typically used by Interphase in connection with the
distribution of substantially similar products. Further, distribution of the
source code (or any portion thereof) for the software that drives the Cisco
ASICs shall be made pursuant to Interphase's standard source code
distribution policy.
3
2.1.2 The license granted above in this Section 2.1 (License
by Cisco) is non-exclusive. Except as otherwise provided herein, (including,
but not limited to, Section 2.1.4 below) Cisco is not limited in any manner
from exploiting the Cisco Patent or the Cisco Technology including, but not
limited to, marketing, distribution or licensing activities by Cisco or its
dealers, distributors, licensees or agents.
2.1.3 Interphase shall have sole responsibility for obtaining
any and all third party rights (including, without limitation, third party
intellectual property rights licensed under the agreements listed in Schedule
I (Excluded Third Party Intellectual Property Rights)) and for the payment of
fees, royalties or other amounts and for all liabilities arising from the
exercise by Interphase of the rights granted under this Section 2.1 (License
by Cisco).
2.1.4 Until the earlier of (a) three (3) years after the
conclusion of the Transition Period or (b) termination of this Agreement by
Cisco pursuant to Section 18.2 (Termination), Cisco shall not design,
manufacture, have manufactured or sell the Restricted Products to any third
party for any purpose other than in connection with support and maintenance
of the FDDI Adapter Products or directly assist or authorize any third party
to do any of the foregoing; provided, however, Cisco shall have the right to
promote, market, sell and distribute the FDDI Adapter Products during the
Transition Period. Interphase acknowledges and agrees that Cisco's
acquisition, while the restrictions under this Section 2.1.4 are in effect,
of more than fifty percent (50%) of the outstanding voting interests or
substantially all of the assets of any entity having operations related to
FDDI adapter products, where such operations do not comprise such entity's
primary business, shall be permitted hereunder; provided, Cisco will use its
reasonable efforts to divest its ownership or control of such FDDI adapter
products operations of the acquired entity within fifteen (15) months of such
acquisition. If the FDDI adapter products operations acquired by Cisco are
not divested within such fifteen (15) month period, then Cisco shall (i)
negotiate in good faith the terms of the sale of such FDDI adapter products
operations to Interphase or (ii) completely terminate or discontinue such
FDDI adapter products operations.
2.2 LiCENSE BY INTERPHASE. Subject to all the terms and conditions of
this Agreement (including, without limitation, Section 2.1.4 above), Interphase
grants to Cisco a non-exclusive, royalty-free, sublicensable worldwide license
under the Interphase Technology (as such Interphase Technology exists as of the
Effective Date) and any improvements, modifications and derivative works of the
Interphase Technology made by or for Cisco to use, reproduce, modify, create
derivative works of, make, have made, distribute, sell, offer for sale and
import the FDDI Technology.
4
3. FDDI ADAPTER PRODUCT LABELING. No right or license with respect to any
trademark, service xxxx, logo, tradename or other designation of Cisco is
granted to Interphase under this Agreement. Until December 31, 1996, Interphase
shall be entitled to resell FDDI Adapter Products purchased from Cisco and its
suppliers bearing original unaltered Cisco notices and labels designating Cisco
as the source of such FDDI Adapter Products; provided, however, Interphase shall
use its diligent efforts during this period to remove all Cisco marks, notices,
labels or other designations of Cisco and to implement the use of labels
including, without limitation, packaging stickers, notices or other means of
designating Interphase as the source of the FDDI Adapter Products. After
December 31) 1996, neither party shall sell any FDDI Adapter Products bearing
the other party's name, marks, notices, labels or any other designations without
the prior written consent of the other party, which consent shall not be
unreasonably withheld, except to the minimum extent necessary to comply with the
requirements of any government contract with the United States or any agency
thereof. Notwithstanding the foregoing, Interphase shall have no obligation
under this Section 3 (FDDI Adapter Product Labeling) to remove Cisco marks or
other designations from the Cisco ASICS.
4. PURCHASE OF CISCO ASICS. Cisco agrees to provide Interphase with a
Letter of Authorization to purchase the Cisco ASICs from Cisco's manufacturer of
the Cisco ASICs only for use with the FDDI Adapter Products. Interphase shall
have sole responsibility for negotiating the terms and conditions of its
purchases of the Cisco ASICs and for all liabilities including, without
limitation, payment arising from such purchases.
5. PURCHASE OF FDDI ADAPTER PRODUCTS BY CISCO. Interphase agrees to sell
to Cisco the FDDI Adapter Products which Cisco may order from Interphase in
connection with Cisco's resale and support of the FDDI Adapter Products during
the Transition Period and Cisco's warranty and support obligations following the
Transition Period. Such sale to Cisco of the FDDI Adapter Products shall be
pursuant to the terms and conditions of purchase of the FDDI Adapter Products
set forth in Attachment B (Terms and Conditions for Cisco's Purchase of the FDDI
Adapter Products) hereto. FDDI Adapter Products shall be manufactured by
Interphase according to the functional, technical and other specifications for
each FDDI Adapter Product set forth in the Cisco Product Catalog as of the
Effective Date or as may be modified from time to time with written notice to
Cisco thirty (30) days prior to implementation of a specification modification.
5.1 FDDI ADAPTER PRODUCT CONTACTS. Xx Xxxxxx from Cisco and Xxxx
Xxxxxxx from Interphase will be the initial contact persons ("FDDI Adapter
Product Contact") for the FDDI Adapter Products. The FDDI Adapter Product
Contacts will act as liaisons between the parties to exchange information
regarding new and changed FDDI Adapter Products and FDDI Software Upgrades
and shall provide
5
the parties from time to time with the names and telephone numbers of
additional specific contact persons when such direct contact is preferable
and appropriate. In the event that either party appoints a new FDDI Adapter
Product Contact, such party will promptly notify the other in writing.
Neither party's FDDI Adapter Product Contact is authorized to amend, alter or
extend this Agreement in any manner or waive any obligation or breach
hereunder.
6. INTERPHASE SUPPORT OBLIGATIONS.
6.1 FDDI ADAPTER PRODUCTS SOLD BY INTERPHASE OR CISCO. Interphase
shall use its commercially best efforts to provide (i) first, second and
third level support to customers, who request support, of the FDDI Adapter
Products in a manner comparable to or better than the support standards
established by Cisco as described in Attachment C (Cisco Support Standards)
hereto and at Interphase's published rates then in effect, and (ii) second
and third level support to Cisco in a manner as described in Attachment D
(Support Terms and Conditions). For three (3) years commencing after the
Transition Period, Interphase shall conduct a customer satisfaction survey on
an annual basis to determine the level of customer satisfaction in connection
with support of the FDDI Adapter Products by Interphase under (i) of this
Section 6.1 (FDDI Adapter Products Sold by Interphase or Cisco) and shall
promptly provide Cisco the complete and accurate results of each such survey.
6.2 FAILURE TO PROVIDE SATISFACTORY SUPPORT. Subject to the cure
provisions of Section 18.2(d) (Termination) below, failure by Interphase to
provide satisfactory customer support for the FDDI Adapter Products or
satisfactory support to Cisco pursuant to Section 6.1 (FDDI Adapter Products
Sold by Interphase or Cisco) shall be deemed a material breach of this
Agreement; provided, however, that prior to Cisco's termination of the
Agreement, Cisco and Interphase shall work together in good faith to develop
a written plan for Interphase to correct such failure and to provide
satisfactory support going forward. In the event of a dispute as to whether
a failure to provide satisfactory support has occurred or failure to agree
upon a plan to correct such a failure, Cisco and Interphase shall resolve the
dispute by mediation pursuant to Section 19 (Mediation) below. If such
mediation is unsuccessful within a reasonable time after commencement of
proceedings, but not less than thirty (30) days thereafter, Cisco may elect
to immediately terminate this Agreement and the parties shall be entitled to
seek whatever remedies may be available in law or equity.
6.2.1 Notwithstanding the provisions of Section 6.2 (Failure
to Provide Satisfactory Support) above and Section 18.2(d) (Termination)
below, if Cisco and Interphase jointly agree on a written plan for Interphase
to correct a failure to provide satisfactory support and to provide
satisfactory support going forward, the material breach shall be considered
cured and Cisco shall not have the right to terminate
6
this Agreement on the basis of such material breach so long as Interphase is
diligently performing in accordance with such plan.
6.3 DISCONTINUED FDDI ADAPTER PRODUCTS. Subject to the
obligations set forth in Section 9.2 (Interphase's Obligations) below,
Interphase shall have the right, in its sole discretion, to discontinue any
FDDI Adapter Product; provided, however, that Interphase shall continue to
provide support for any discontinued FDDI Adapter Product for a period of
five (5) years after the date of such discontinuance.
7. SUPPORT OF FDDI ADAPTER PRODUCTS BY CISCO. Interphase acknowledges
and agrees that Cisco shall be entitled to provide support services to customers
of the FDDI Adapter Products (whether sold by or on behalf of Interphase or
Cisco) and FDDI adapters for the PCI interface manufactured and sold by or on
behalf of Interphase. In addition, Cisco may, upon mutual agreement of Cisco
and Interphase, provide support services to customers of other products
manufactured and sold by or on behalf of Interphase. Cisco shall have the right
to market, promote and provide such support services including, without
limitation, services under Cisco's "SMARTnet" program (and related and successor
programs) to customers of the FDDI Adapter Products, FDDI adapters for the PCI
interface and, subject to the mutual agreement of Interphase and Cisco, other
products manufactured and sold by or on behalf of Interphase.
8. INTERPHASE WARRANTY OBLIGATIONS.
8.1 FDDI ADAPTER PRODUCTS SOLD BY CISCO. Following the end of the
Transition Period, Interphase shall (at a customer's request and, except as
otherwise provided below, at no cost to the customer) replace and deliver to
the customer the replacement of any defective FDDI Adapter Product sold by or
on behalf of Cisco before or during the Transition Period, in accordance with
Cisco's standard warranty set forth in Attachment H (Cisco Standard
Warranty). Interphase shall pay all costs of shipping and insurance and
assume the risk of loss during shipping of replacement FDDI Adapter Products,
except such shipping and insurance costs associated with (i) the return to
Interphase of defective FDDI Adapter Products and (ii) delivery to a customer
of replacement FDDI Adapter Products where a shipment of FDDI Adapter
Products returned to Interphase as defective contained a high proportion of
properly functioning FDDI Adapter Products. Cisco shall pay Interphase for
replacement FDDI Adapter Products pursuant to this Section 8.1 (FDDI Adapter
Products Sold by Cisco) at the unit prices set forth in Attachment A (FDDI
Adapter Products) hereto, reasonable shipping and insurance costs of such
replacement FDDI Adapter Products and customs duties, if any, incurred by
Interphase from the return of defective FDDI Adapter Products; unless,
however, under Interphase policy or practice, payment for such FDDI Adapter
Products, shipping and insurance costs and duties are to be made by the
customer.
7
Notwithstanding the foregoing, Cisco shall be entitled to provide support
services in accordance with Section 7 (Support of FDDI Adapter Products by
Cisco) above.
8.2 FDDI ADAPTER PRODUCTS SOLD by INTERPHASE. During the
Transition Period and for a period of three (3) years following the end of
the Transition Period, Interphase shall warrant to end-users (including
Cisco) of the FDDI Adapter Products sold by or on behalf of Interphase that,
for a period of not less than ninety (90) days from the date of shipment by
or on behalf of Interphase or Interphase's standard warranty period,
whichever is longer (the "Warranty Period"), the FDDI Adapter Products will
be free from defects in materials, workmanship and will perform in accordance
with the applicable specifications and related documentation.
8.2.1 The terms of such warranty shall be no less favorable
than the terms of Cisco's standard warranty, attached hereto as Attachment H
(Cisco Standard Warranty), for the FDDI Adapter Products manufactured by
Cisco. During the Warranty Period, Interphase shall provide customers with
replacement FDDI Adapter Products in advance of the return of defective FDDI
Adapter Products which are covered by the warranty. During the initial
ninety (90) days of the Warranty Period, Interphase shall use commercially
reasonable efforts to ship replacement FDDI Adapter Products within one (1)
business day of receipt by Interphase of notice from the customer of the
defective FDDI Adapter Product and Interphase shall pay all costs of shipping
and insurance and assume the risk of loss during shipping of the replacement
FDDI Adapter Product covered under the warranty to such customers.
8.2.2 After expiration of the Warranty Period, Interphase
shall continue to provide repair for the FDDI Adapter Products and components
and Interphase shall perform a test analysis on all such FDDI Adapter
Products returned to Interphase for repair. The fee charged to Cisco for the
test analysis, if no trouble found, will be fifty dollars ($50.00) per unit
of such FDDI Adapter Products. If a FDDI Adapter Product tested by
Interphase requires repair, prices and charges to Cisco for repair of such
FDDI Adapter Product and components thereof will be two hundred fifty dollars
($250.00) per FDDI Adapter Product, inclusive of Interphase's test analysis
fee. Such prices and charges shall be effective for a period of two (2)
years following the Effective Date. Thereafter, repair shall be provided by
Interphase to Cisco on commercially reasonable terms and at prices and
charges that are not higher than those provided by Interphase to third
parties. Interphase will warrant repair of the FDDI Adapter Products for a
period of thirty (30) days from the date of repair or Interphase's standard
warranty period for repairs, whichever is longer.
8
9. MARKETING OF FDDI ADAPTER PRODUCTS BY INTERPHASE.
9.1 Cisco's OBLIGATIONS. For a period of three (3) years following
the end of the Transition Period, Cisco will use its reasonable efforts to
refer all sales inquiries for the FDDI Adapter Products to Interphase in
accordance with the procedure described in Attachment F (Sales Referral
Procedure) hereto;
9.2 INTERPHASE'S OBLIGATION. Interphase shall:
(i) use its best efforts to successfully market and distribute
the FDDI Adapter Products and, for A period of two (2) years following the
end of the Transition Period, continue to offer for sale the FDDI Adapter
Products under the same model numbers and without change, except for
modifications, enhancements and bug fixes necessary for Interphase to comply
with this subparagraph (i);
(ii) comply with good business practices and all laws and
regulations relevant to this Agreement or the subject matter hereof-,
(iii) offer to sell Cisco the FDDI Adapter Products on
reasonable commercial terms and keep Cisco informed of new FDDI Adapter
Products manufactured and sold by or on behalf of Interphase; and
(iv) use its commercially best efforts to perform any
maintenance and support including, but not limited to, modifications,
enhancements and bug fixes of the FDDI Adapter Products necessary for
Interphase to successfully market and distribute such FDDI Adapter Products.
10. INTEROPERABILITY TESTING BY INTERPHASE. On an ongoing basis, both
parties agree to make a good faith effort to cooperate in interoperability
testing to be conducted by Interphase in accordance with this Section 10
(Interoperability Testing by Interphase). Interphase shall perform
interoperability tests of the FDDI Adapter Products and other Cisco FDDI
router, switch and concentrator products and promptly provide Cisco with the
test results in accordance with the guidelines ("Interoperability Testing
Guidelines") set forth in Attachment G (Interoperability Testing Guidelines).
The general interoperability test guidelines specifying the types of tests
and the form on which to report test results are set forth in the
Interoperability Testing Guidelines. The interoperability test results and
other information contained in the Interoperability Testing Guidelines will
be used to verify interoperability of the FDDI Adapter Products and for no
other purpose. Test results will not be used as benchmarks or to report
product shortcomings or to illustrate competitive advantages or disadvantages
of products from different parties.
9
10.1 TEST PRODUCTS. Cisco agrees to provide to Interphase, as a
bailee, such Cisco router, switch and concentrator products with FDDI
interfaces, as determined by Cisco in its sole discretion, to perform the
interoperability testing in accordance with the Interoperability Testing
Guidelines. All products including, without limitation, designs and
materials, furnished by Cisco to Interphase under this Section 10.1 (Test
Products) ("Bailed Property") shall: (i) be clearly marked or tagged as
Cisco's property; (ii) be and remain personal property and not become a
fixture to real property; (iii) be subject to inspection by Cisco at any
time; (iv) be used only for interoperability testing among the FDDI Adapter
Products; (v) be kept free of liens and encumbrances; (vi) be kept separate
from other materials, tools, or property of or held by Interphase; (vii) not
be modified in any manner by Interphase; and (viii) shall be stored in a safe
place and environment. In the event Interphase uses the Bailed Property for
any purpose other than to conduct interoperability testing as specified
herein without Cisco's prior written consent, Interphase agrees to purchase
such Bailed Property at Cisco's list price for such Bailed Property.
Cisco shall retain all rights, title and interest in the Bailed
Property, and Interphase agrees to treat and maintain the Bailed Property
with at least the same degree of care as Interphase uses with respect to its
own valuable equipment. Interphase shall bear all risk of loss or damage to
the Bailed Property until it is returned to Cisco. Upon Cisco's request,
Interphase shall promptly return and deliver all Bailed Property to Cisco in
good condition, normal wear and tear excepted, without cost to Cisco
(exclusive of freight costs); Cisco shall determine the manner and procedure
for returning the Bailed Property and shall pay the corresponding freight
costs. Interphase waives any legal or equitable right it may have to
withhold the Bailed Property and Interphase agrees to execute all documents
or instruments evidencing Cisco's ownership of the Bailed Property as Cisco
may from time to time request.
11. OWNERSHIP.
11.1 CISCO. As between the parties, except as expressly and
unambiguously licensed herein, Cisco retains ownership of and shall own all
rights, title and interest (including all proprietary and intellectual
property rights throughout the world) in and to the Cisco Patent, the Cisco
Technology, all copies, improvements, modifications and derivative works (by
whomever produced) thereof.
11.1.1 ASSIGNMENT. Interphase agrees to assign and does
hereby assign to Cisco any and all rights, title and interest Interphase may
acquire in and to improvements, modifications or derivative works of the
Cisco Technology, subject to the restriction on Cisco's design, manufacture
and sale of the Restricted Products set forth in Section 2.1.4 above.
Interphase will execute any and all documents necessary to give effect to and
perfect such assignment. In the event that Cisco is unable for any
10
reason whatsoever to secure Interphase's signature to any such document,
Interphase hereby irrevocably designates and appoints Cisco and its duly
authorized officers as its attorneys-in-fact with FULL power of substitution to
act for and in behalf of and instead of Interphase to execute and file any such
document and to do all other lawfully permitted acts to further the purposes of
the foregoing with the same legal force and effect as if executed by Interphase.
Interphase shall promptly provide Cisco with a copy of all such improvements,
modifications or derivative works of the Cisco Technology, in source and object
code forms, and all documentation related thereto.
11.2 INTERPHASE. As between the parties, except as expressly and
unambiguously licensed herein, Interphase retains ownership of and shall own all
rights, title and interest (including all proprietary and intellectual property
rights throughout the world) in and to the Interphase Technology, all copies,
improvements, modifications and derivative works (by whomever produced) thereof.
11.2.1 ASSIGNMENT. Cisco agrees to assign and does hereby
assign to Interphase any and all rights, title and interest Cisco may acquire
in and to improvements, modifications or derivative works of the Interphase
Technology. Cisco will execute any and all documents necessary to give effect
to and perfect such assignment. In the event that Interphase is unable for
any reason whatsoever to secure Cisco's signature to any such document, Cisco
hereby irrevocably designates and appoints Interphase and its duly authorized
officers as its attorneys-in-fact with full power of substitution to act for
and in behalf of and instead of Cisco to execute and file any such document
and to do all other lawfully permitted acts to further the purposes of the
foregoing with the same legal force and effect as if executed by Cisco.
Cisco shall promptly provide Interphase with a copy of all such improvements,
modifications or derivative works of the Interphase Technology, in source and
object code forms, and all documentation related thereto.
12. WARRANTY DISCLAIMER. EXCEPT AS EXPRESSLY PROVIDED HEREIN, THE CISCO
PATENT, CISCO TECHNOLOGY, AND INTERPHASE TECHNOLOGY ARE LICENSED HEREUNDER
"AS IS" WITHOUT WARRANTY OF ANY KIND. EXCEPT AS EXPRESSLY PROVIDED HEREIN,
NEITHER CISCO NOR INTERPHASE MAKES ANY WARRANTY TO THE OTHER PARTY OR ANY
OTHER PERSON OR ENTITY WITH RESPECT TO ANY OF THE FOREGOING OR ANY LICENSES
OR SERVICES AND EACH PARTY HEREBY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE. FURTHER, CISCO DOES NOT WARRANT, GUARANTEE
OR MAKE ANY REPRESENTATION REGARDING THE USE, OR THE RESULTS OF THE USE, OF
THE CISCO PATENT, CISCO TECHNOLOGY OR RELATED DOCUMENTATION IN TERMS OF
CORRECTNESS, ACCURACY, RELIABILITY OR OTHERWISE AND INTERPHASE DOES NOT
WARRANT, GUARANTEE OR MAKE ANY REPRESENTATIONS REGARDING THE USE OR THE
11
RESULTS OF THE USE OF THE INTERPHASE TECHNOLOGY OR RELATED DOCUMENTATION IN
TERMS OF CORRECTNESS, ACCURACY, RELIABILITY OR OTHERWISE.
13. SUFFICIENCY OF ASSETS AND LICENSES. Except as set forth on Schedule I
(Excluded Third Party Intellectual Property Rights) hereto and as provided in
Section 2.1.3 above, to Cisco's knowledge, the assets being sold pursuant to
the Asset Purchase Agreement between Interphase and Cisco dated of even date
herewith and the licenses being granted pursuant to this Agreement are all
the intellectual property assets and rights both owned and required by Cisco
prior to the date hereof to produce, market and distribute the FDDI Adapter
Products. For purposes of this Agreement, any reference to "Cisco's
knowledge" means Cisco's actual knowledge after reasonable inquiry of the
former officer and director level employees of Crescendo Communications, Inc.
who are employed by Cisco as of the date hereof. Notwithstanding anything
contrary in this Agreement, the sole remedy to Interphase for Cisco's breach
of this Section 13 (Sufficiency of Assets and Licenses) shall be the right to
require Cisco to deliver or license any such intellectual property
asset(s)and/or right(s) both owned and required by Cisco prior to the date
hereof to produce, market and distribute the FDDI Adapter Products. The
representation in this Section 13 (Sufficiency of Assets and Licenses) will
terminate one (1) year following the Effective Date and, therefore, any claim
by Interphase for a breach of such representation must be brought prior to
the expiration of such one (1) year period.
14. CONFIDENTIALITY.
14.1 PROPRIETARY INFORMATION. Information of either party (the
"Disclosing Party") including, without limitation, designs, layouts, mask
works, design documentation, code, schematics, inventions, algorithms,
know-how, trade secrets, ideas, improvements, works of authorship, derivative
works, modifications, product development plans, forecasts, strategies,
techniques, processes, software, contracts, customer lists and all other
business, technical and financial information is the confidential property
("Proprietary Information") of the Disclosing Party.
14.2 CONFIDENTIALITY OBLIGATION. Except as expressly allowed
herein, each party (the "Receiving Party") will hold in confidence and not
use or disclose for five (5) years following termination of this Agreement
any Proprietary Information of the Disclosing Party other than as expressly
permitted under the terms of this Agreement and shall similarly bind its
employees, agents, consultants and advisors in writing. The parties further
agree that the terms of this Agreement are confidential and that neither
party may disclose the terms of this Agreement to any third party without the
prior
12
written consent of the other party, provided that Interphase has the right to
disclose the existence of this Agreement to its customers.
14.3 EXCEPTIONS TO PROPRIETARY INFORMATION. Without granting any
right or license, the Disclosing Party agrees that the obligations set forth
in Section 14.2 (Confidentiality Obligation) above shall not apply to the
extent that Proprietary Information includes information which the Receiving
Party can document:
(i) is or has become readily publicly available without
restriction through no fault of the Receiving Party or its employees or
agents; or
(ii) is received without restriction from a third party
lawfully in possession of such information and lawfully empowered to disclose
such information; or
(iii) was rightfully in the possession of the Receiving Party
without restriction prior to its disclosure by the other party; or
(iv) was independently developed by employees or consultants
of the Receiving Party.
Notwithstanding the foregoing, the Cisco Technology and any and all
improvements, modifications and derivative works of the Cisco Technology
produced by or on behalf of Interphase shall be deemed Proprietary
Information solely of Cisco and exceptions (iii) and (iv) above will not be
applicable to such improvements, modifications and derivative works of the
Cisco Technology. Notwithstanding the foregoing, the Interphase Technology
and any and all improvements, modifications and derivative works of the
Interphase Technology produced by or on behalf of Cisco shall be deemed
Proprietary Information solely of Interphase and exceptions (iii) and (iv)
above will not be applicable to such improvements, modifications and
derivative works of the Interphase Technology.
15. PRESS RELEASES; PUBLICITY. The parties agree to issue a joint press
release relating to matters contained herein, subject to the approval of both
parties, following execution of this Agreement. Each party shall obtain the
other party's prior written consent, which will not be unreasonably withheld,
prior to any disclosure of the existence or substance of the matters
contained herein through press releases or other publicity (including,
without limitation, marketing or promotional materials).
13
16. INFRINGEMENT.
16.1 INDEMNITY FROM CISCO. Subject to Section 16.1.1 (Exclusions to
Cisco's Indemnity) below, Cisco shall defend, indemnify and hold Interphase
and its officers, directors, employees, agents and wholly-owned subsidiaries
of Interphase harmless from all liability (including reasonable attorneys'
fees and costs) resulting solely from any claim, suit or proceeding relating
to the alleged or actual infringement of the Cisco Technology (as such Cisco
Technology exists as of the Effective Date) or an FDDI Adapter Product
(excluding any and all improvements, modifications and derivative works of
such FDDI Adapter Product produced by or on behalf of Interphase) whose
manufacture, use, sale, offer for sale or importation would infringe a claim
of the Cisco Patent of any U.S. patent issued as of the Effective Date or
U.S. copyright. Cisco's obligation under this Section 16.1 (Indemnity from
Cisco) shall be conditioned upon Cisco being promptly notified of any and all
threats, claims and proceedings related thereto, being given reasonable
assistance IN connection therewith and having sole control over the defense
and all negotiations for a settlement or compromise. Cisco will not be
responsible for any settlement, charges, costs or fees it does not approve in
writing.
16.1.1 EXCLUSIONS TO CISCO'S INDEMNITY. Cisco shall have no liability
or obligation to Interphase under Section 16.1 (Indemnity from Cisco) above
if Interphase is in breach of any material obligation or provision of this
Agreement or if any alleged patent or copyright infringement or claim thereof
is based upon (i) any portion of the Cisco Technology made in accordance with
Interphase's specifications, (ii) modifications or derivative works made by
or on behalf of Interphase to the Cisco Technology, (iii) use of the Cisco
Technology with other products, equipment, or software, if such infringement
would have been avoided by use of the Cisco Technology alone, (iv) use of the
Cisco Technology beyond the scope of the license granted in Section 2.1
(License by Cisco) above or (v) Interphase's continuing allegedly infringing
activity after being notified by Cisco of modifications that would have
avoided the infringement, provided that such modifications were made
available to Interphase; Interphase will indemnify Cisco and its officers,
directors, employees and agents from all damages, settlements, reasonable
attorneys' fees and expenses related to a claim of infringement excluded from
Cisco's indemnity obligation by this sentence. THE RIGHTS GRANTED TO
INTERPHASE UNDER THIS SECTION 16 (INFRINGEMENT) ARE IN LIEU OF ANY WARRANTIES
OF NONINFRINGEMENT, WHICH ARE HEREBY DISCLAIMED, AND SHALL BE INTERPHASE'S
SOLE AND EXCLUSIVE REMEDY FOR ANY ALLEGED INFRINGEMENT BY THE
CISCO TECHNOLOGY OF ANY PATENT, COPYRIGHT OR OTHER PROPRIETARY RIGHT.
14
16.2 INDEMNITY FROM INTERPHASE. Subject to Section 16.2.1 (Exclusions to
Interphase's Indemnity) below, Interphase shall defend, indemnify and hold
Cisco and its officers, directors, employees, agents and wholly-owned
subsidiaries of Cisco harmless from all liability (including reasonable
attorneys' fees and costs) resulting solely from any claim, suit or
proceeding relating to the alleged or actual infringement of any improvement,
modification or derivative work of the Interphase Technology produced by or
on behalf of Interphase of any U.S. patent issued as of the Effective Date or
U.S. copyright, provided Interphase is promptly notified of any and all
threats, claims and proceedings related thereto, given reasonable assistance
in connection therewith and has sole control over the defense and all
negotiations for a settlement or compromise. Interphase will not be
responsible for any settlement, charges, costs or fees it does not approve in
writing.
16.2.1 EXCLUSIONS TO INTERPHASE'S INDEMNITY. Interphase shall have no
liability or obligation to Cisco under Section 16.2 (Indemnity from
Interphase) above if Cisco is in breach of any material obligation or
provision of this Agreement or if any alleged patent or copyright
infringement or claim thereof is based upon (i) any portion of the Interphase
Technology made in accordance with Cisco's specifications, (ii) modifications
or derivative works made by or on behalf of Cisco to the Interphase
Technology, (iii) use of the Interphase Technology with other products,
equipment, or software, if such infringement would have been avoided by use
of the Interphase Technology alone, (iv) use of the Interphase Technology
beyond the scope of the license granted in Section 2.2 (License by
Interphase) above, or (v) Cisco's continuing allegedly infringing activity
after being notified by Interphase of modifications that would have avoided
the infringement, provided that such modifications were made available to
Cisco; Cisco will indemnify Interphase and its officers, directors, employees
and agents from all damages, settlements, reasonable attorneys' fees and
expenses related to a claim of infringement excluded from Interphase's
indemnity obligation by this sentence. THE RIGHTS GRANTED TO CISCO UNDER
THIS SECTION 16 (INFRINGEMENT) ARE IN LIEU OF ANY WARRANTIES OF
NONINFRINGEMENT, WHICH ARE HEREBY DISCLAIMED, AND SHALL BE CISCO'S SOLE AND
EXCLUSIVE REMEDY FOR ANY ALLEGED INFRINGEMENT BY THE INTERPHASE TECHNOLOGY OF
ANY PATENT, COPYRIGHT OR OTHER PROPRIETARY RIGHT.
17. LIMITATION OF LIABILITY. EXCEPT AS EXPRESSLY PROVIDED BELOW IN THIS
SECTION 17 AND NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR OTHERWISE,
NEITHER PARTY WILL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS
AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR
EQUITABLE THEORY FOR (1) ANY INCIDENTAL OR CONSEQUENTIAL DAMAGES OR LOST DATA,
(11) COST OF PROCUREMENT OF SUBSTITUTE
15
GOODS, TECHNOLOGY OR SERVICES (III) ANY MATTER BEYOND A PARTY'S REASONABLE
CONTROL OR (IV) ANY AMOUNTS IN EXCESS OF FIVE HUNDRED THOUSAND DOLLARS
($500,000). THE LIMITATIONS IN THIS SECTION 17 (LIMITATION OF LIABILITY)
SHALL NOT APPLY TO BREACHES OF SECTION 2.1.4 (CISCO LICENSE RESTRICTION) OR
14.2 (CONFIDENTIAL OBLIGATION) OR TO ACTIONS OF INTERPHASE BEYOND THE SCOPE OF
THE LICENSE GRANTED IN SECTION 2.1 (LICENSE BY CISCO) OR ACTIONS BY CISCO
BEYOND THE SCOPE OF THE LICENSE GRANTED IN SECTION 2.2 (LICENSE BY
INTERPHASE).
18. TERM AND TERMINATION.
18.1 Term. This Agreement commences on the Effective Date and shall
remain in effect unless and until terminated as provided herein.
18.2 TERMINATION. Upon the occurrence of any of the following events,
this Agreement may be terminated for cause immediately by written notice:
(a) By Interphase, if Cisco assigns or transfers its rights or obligations
under this Agreement to a direct competitor of Interphase without Interphase's
prior written consent;
(b) By Cisco, if Interphase assigns or transfers its rights or obligations
under this Agreement to a direct competitor of Cisco without Cisco's prior
written consent including, without limitation, any transfer of all or
substantially all of Interphase's stock, assets or business relating to the FDDI
Adapter Products by sale, merger or otherwise;
(c) By a party if the other ceases to do business, or otherwise terminates
its business operations or by Cisco, if there is a change in control of
Interphase which results in ownership by a competitor of Cisco of more than
fifty percent (50%) of Interphase's assets, voting stock or business, unless
such change of control is approved by Cisco in writing;
(d) By a party if the other breaches any material provision of this
Agreement and fails to cure such breach within thirty (30) days (immediately in
the case of a breach of Section 14 (Confidentiality) of written notice
describing the breach; provided, however, that if within such thirty (30) day
period the party in breach has commenced all reasonable activities to cure such
breach (excluding a breach of Section 14 (Confidentiality) or actions of
Interphase beyond the scope of the license granted in Section 2.1 (License by
Cisco) or actions by Cisco beyond the scope of the license granted in Section
2.2 (License by Interphase)) and has continued diligently
16
to cure such breach but such breach is not cured at the end of the thirty
(30) day period, the non-breaching party's right of termination shall not
arise until the earlier of the date the breaching party abandons its diligent
efforts to cure or ninety (90) days after notice of the breach was first
given; or
(e) By a party if the other becomes insolvent or seeks protection under
any bankruptcy, receivership, trust deed, creditors arrangement, composition or
comparable proceeding, or if any such proceeding is instituted against the such
party (and not dismissed within ninety (90) days).
18.3 EFFECT OF TERMINATION.
18.3.1 Upon termination of this Agreement by either party pursuant to
Section 18.2 (Termination) above:
(a) All licenses granted by the terminating (nondefaulting) party
hereunder shall immediately terminate, except as necessary to carry out the
other party's warranty and support obligations hereunder; and
(b) All licenses granted to the non-defaulting party hereunder shall
continue without restriction; and
(c) In the event of an uncured default condition by Interphase, Interphase
shall sell to Cisco, upon Cisco's election to purchase, all or any part of
Interphase's inventory of the FDDI Adapter Products under the terms and
conditions set forth in Attachment B (Terms and Conditions of Cisco's Purchase
of FDDI Adapter Products).
(d) Should this Agreement be terminated for any reason, the rights of
end-users to use the Cisco Technology or the Interphase Technology licensed
prior to such termination shall not be affected.
18.3.2 Upon termination of this Agreement, each party shall, within
fifteen (15) days of the effective date of any termination of this Agreement,
return to the other or destroy all full or partial copies, in whatever media,
of all of the other party's Proprietary Information and any and all other
materials in such party's possession which had been furnished to it by the
other party pursuant to this Agreement.
18.4 SURVIVAL. Except as provided in Section 18.3 (Effect of
Termination) above, Sections 2.1 (License by Cisco), 2.2 (License by
Interphase), 3 (FDDI Adapter Product Labeling), 6 (Interphase Support
Obligations), 7 (Support of FDDI Adapter Products by Cisco), 8 (Interphase
Warranty Obligations), 11 (Ownership),
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12 (Warranty Disclaimer), 14 (Confidentiality), 16 (Infringement), 17
(Limitation of Liability), 18.3 (Effect of Termination), 18.4 (Survival),
18.5 (No Liability for Termination), 18.6 (No Effect on End-Users), 20
(Export Controls), 22 (Relationship of the Parties; No Agency), 23
(Injunctive Relief) and 24 (General) will survive termination of this
Agreement. Section 13 (Sufficiency of Assets and Licenses), in any event,
will terminate one (1) year following the Effective Date.
18.5 NO LIABILITY FOR TERMINATION. Each party understands that the
rights of termination hereunder are absolute. Neither party shall incur any
liability whatsoever for any damage, loss or expenses of any kind suffered or
incurred by the other (or for any compensation to the other) arising from or
incident to any termination of this Agreement by such party which complies
with the terms of this Agreement whether or not such party is aware of any
such damage, loss or expenses.
18.6 NO EFFECT ON END-USERS. Upon an end-user acquiring an FDDI Adapter
Product, the end-user shall be entitled to use any firmware or software
contained in that FDDI Adapter Product pursuant to the relevant end-user
documentation and end-user license agreement (if any). The rights of
end-users are independent of this Agreement and will survive any termination
of this Agreement for any reason whatsoever.
19. MEDIATION. Prior to commencing any lawsuit arising from a party's
material breach or termination of this Agreement due to the other party's
material breach, the parties shall submit the dispute to a corporate officer
of each party, having actual authority to act on behalf of and bind such
party under this Agreement, for resolution. If the parties are unable to
resolve the dispute within ten (10) days thereafter, the parties shall then
attempt in good faith to resolve it by mediation in accordance with the rules
of the Judicial Arbitration and Mediation Service ("JAMS"). If mediation is
unsuccessful within a reasonable time after commencement of proceedings, but
not less than thirty (30) days thereafter, the mediator shall so certify and
the parties shall be entitled to seek whatever remedies may be available in
law or equity. Notwithstanding the foregoing, either party may seek equitable
or similar relief from a court in connection with any dispute within the
scope of this Section 19 (Mediation).
20. EXPORT CONTROLS. Each party agrees at its sole cost and expense to
comply with all applicable export control laws, and restrictions and
regulations, as they exist from time to time, including those of the United
States Department of Commerce, and not to export or reexport any material
provided to it under this Agreement, including the FDDI Adapter Products and
any Proprietary Information of the other party, or any of the direct products
of the foregoing, in violation of any such laws or regulations, or to
Afghanistan, the People's Republic of China or any Group Q, S, Y or Z country
(as specified in Supplement No. 1 to Section 770 of the U.S. Export
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Administration Regulations, or any successor thereto) or otherwise except in
compliance with and with all licenses and approvals required under applicable
export laws and regulations.
21. ASSIGNMENT. Interphase may not assign or transfer this Agreement or
the rights and obligations hereunder by operation of law, merger, acquisition
or otherwise without the prior written consent of Cisco, which consent will
not be unreasonably withheld except as permitted under Section 18.2(b) above.
Notwithstanding the foregoing, Interphase shall have the right to assign or
transfer this Agreement to a parent corporation or wholly-owned subsidiary of
Interphase.
22. RELATIONSHIP OF THE PARTIES; NO AGENCY. Nothing contained herein
shall be construed as creating any agency, partnership, or other form of
joint enterprise between the parties. The parties' relationship will be that
of independent contractors. Neither party shall have any express or implied
right or authority to assume or create any obligations on behalf of or in the
name of the other party or to bind the other party to any other contract,
agreement or undertaking with any third party.
23. INJUNCTIVE RELIEF. In the event of a breach of this Agreement, the
non-breaching party shall, in addition to all other legal and equitable
remedies, be entitled to seek an injunction against such breach.
24. GENERAL.
24.1 GOVERNING- LAW. Any dispute in the meaning, effect or validity of
this Agreement will be resolved in accordance with the laws of the State of
California and the United States of America without regard to the conflict of
laws provisions thereof The parties hereby submit to the jurisdiction of, and
waive any venue objections against, the United States District Court for the
Northern District of California, San Xxxx Xxxxxx, and the Superior and
Municipal Courts of the State of California, Santa Xxxxx County, in any
litigation arising out of this Agreement. The parties agree that process may
be served in the manner provided herein for giving of notices or otherwise as
allowed by California or federal law.
24.2 ATTORNEYS' FEES. In any action or proceeding to enforce rights under
this Agreement, the prevailing party shall be entitled to recover reasonable
costs and attorneys' fees.
24.3 SEVERABILITY. If any provision of this Agreement is held to be
illegal or unenforceable, that provision will be limited or eliminated to the
minimum extent necessary so that this Agreement will otherwise remain in full
force and effect and enforceable.
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24.4 ENTIRE AGREEMENT: AMENDMENT. This Agreement and all attachments
hereto constitute the entire understanding of the parties with respect to the
subject matter hereof and supersede all prior or contemporaneous
communications, understandings and agreements with respect to the subject
matter hereof, whether oral or written, and can only be modified or amended
by a subsequent writing signed by both parties.
24.5 HEADINGS. All headings used in this Agreement are for convenience
only and shall not be used in interpreting this Agreement.
24.6 NOTICES. All notices required under this Agreement shall be in
writing and shall be deemed to be given when delivered by hand or dispatched
(with reasonable evidence of receipt) by telex, telegraph or other means of
electronic facsimile transmission, or twenty-four (24) hours after being
dispatched by commercial overnight courier service with tracking capabilities
with costs prepaid or five (5) days after deposit in the U.S. mails if mailed
by certified or registered mail, postage pre-paid, return receipt requested,
addressed to the party to whom the notice is intended to be given at the
address specified in the opening paragraph or such other address as either
party may designate by like notice.
24.7 FORCE MAJEURE. Neither party shall be liable hereunder by reason
of any failure or delay in the performance of its obligations hereunder on
account of strikes, shortages, riots, insurrection, fires, flood, storm,
explosions, acts of God, war, governmental action, labor conditions,
earthquakes or any other cause which is beyond the reasonable control of such
party only for the duration of the force majeure event.
24.8 WAIVER. The failure of either party to require performance by the
other party of any provision hereof shall not 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 taken or held to be a
waiver of the provision itself. A waiver of any portion of this Agreement
must be in writing and signed by both parties.
24.9 ALLOCATION OF RISK. The sections on limitation of liability,
indemnification, warranties and disclaimer of warranties allocate the risks
in the Agreement between the parties. This allocation is an essential
element of the basis of the bargain between the parties.
24.10 CONSTRUCTION OF AGREEMENT. This Agreement has been negotiated by
the respective parties hereto and their attorneys and the language hereof
shall not be construed for or against any party.
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24.11 COUNTERPARTS. This Agreement may be executed in two (2) or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto, by their authorized
representatives, have affixed their signatures as of the date first set forth
above.
CISCO SYSTEMS, INC. INTERPHASE CORPORATION
By: /s/ Xxxxx X. Xxxxxx By: R. Xxxxxxx Xxxxxx
Name: Xxxxx X. Xxxxxx Name: R. Xxxxxxx Xxxxxx
Title: VP and CFO Title: Chairman, CEO and President
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