LINKBIT INC. LIMITED LICENSE AGREEMENT
Exhibit 10.41
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Linkbit, Inc. 0000 Xx Xx Xxxx Xxxx., Xxxxx 000 Xxxxx Xxxxx, XX 00000 Ph.: 0.000.000.0000, Fax:0.000.000.0000 xxx.xxxxxxx.xxx |
LINKBIT INC. LIMITED LICENSE AGREEMENT
This LIMITED LICENSED MATERIALS LICENSE AGREEMENT represents a single document (referred to as the
“Agreement”), and is entered into on this 14th day of December, 2007 (“Signing Date”), is
entered into by and between Linkbit Inc. ( “Linkbit”), a California corporation having its
principal place of business at 0000 Xx Xx Xxxx Xxxx., Xxxxx 000 Xxxxx Xxxxx, Xxxxxxxxxx 00000
U.S.A., and SonicWALL, Inc. ( “Licensee”), a California Company having its principal place of
business at 0000 Xxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000.
RECITALS
WHEREAS, Linkbit is a Communications Technology and Licensed Materials Developer; and
WHEREAS, Linkbit is the owner of all rights, including intellectual property rights, in and to the
Licensed Materials (as such term is defined herein);
WHEREAS, “Licensee” desires to license said Licensed Materials for incorporation into its products,
Licensed Materials and service offerings; and
WHEREAS, Licensee is in need of certain and specific services offered by Linkbit; and
WHEREAS, Licensor desires to license said Licensed Materials to Licensee on the terms set forth
herein.
NOW THEREFORE, in consideration of the mutual covenants and agreements herein contained, and for
other good and valuable consideration, the receipt of which is hereby acknowledged, Licensee and
Linkbit covenant and agree as follows:
AGREEMENT
(Operative Terms)
(Operative Terms)
1. DEFINITIONS. All defined terms in this Agreement not otherwise defined in this Section
shall have the meanings assigned to them in that part of this Agreement in which they are defined,
and shall apply throughout the entire course of this document, including other Exhibits.
“Delivery Date” means the date that Linkbit delivers the Licensed Materials to
Licensee.
“Intellectual Property Rights” means all intellectual property rights, including
copyrights, patents, trademarks, trade secrets, and other proprietary rights that are
embodied in or used in connection with the Licensed Materials.
“Licensee Products” means all network security products, software and services of
Licensee now and hereafter offered by Licensee, directly or indirectly, to distributors,
resellers, OEM’s, systems integrators and end users.
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“Party” refers to Linkbit Inc. or Licensee individually, and “Parties” refers to
them collectively.
“Licensed Materials” means the materials described in Exhibit A hereto including,
without limitation, any and all source code and object code encompassing the entirety of
the code, associated schematic layout and xxxx of materials, data, and executable files and
associated firmware, digital signal processing code, and driver code. The Licensed Materials
contains copyrighted material, trade secrets and other proprietary material of Linkbit.
“Technology” means any and all algorithms, concepts, data, designs, developments,
documentation, discoveries inventions, know-how, methods, object code, procedures, programs,
source code, and techniques.
2. LICENSE TO USE
2.1 Terms and Conditions of Grant of License.
(a) License Grant. Subject to the obligation to make complete payment of the fees due
hereunder, Linkbit hereby grants to Licensee, and Licensee accepts from Linkbit, a world-wide,
nonexclusive, non-assignable (except as set forth in Section 9.9), perpetual , license (the
“License”) to use the Linkbit Licensed Materials, to create derivative works based upon the
Licensed Materials, to modify and enhance the Licensed Materials and to manufacture or have
manufactured, and license, sell, lease or otherwise use or distribute directly or indirectly to
distributors, resellers, OEM’s, systems integrators and end users Licensee Products which
incorporate all or part of the Licensed Materials, it being expressly understood that such
Licensee Products may be incorporated into a solution offered by such distributors, resellers,
OEM’s, and system integrators to end users. Licensee may sublicense the object code of Licensed
Materials only as permitted in Section 2.1(b). Subject to the licenses granted to Licensee herein,
Linkbit shall retain all rights, title and interests in the Licensed Materials and to all Linkbit
trademarks. Linkbit grants no other rights to Licensee for Licensed Materials under this Agreement.
Failure to make complete payment of the fees due under the terms of this Agreement shall render
this License null and void.
(b) Limitations on Sublicensing. Licensee may sublicense: (a) the object code of
Licensed Materials only as incorporated in Licensee Products, directly or indirectly, to end users
pursuant to commercially reasonable end user license agreements not inconsistent with the terms and
conditions of this Agreement; and (b) sublicense the Licensed Materials to third parties to make,
have made, market, offer for sale, sell, lease, license, distribute, support, and provide service
with respect to Licensee Products; provided, that in no event may Licensee sublicense Licensed
Materials on a stand-alone basis in competition with Linkbit’s telecommunication and data
communication test equipment software business. Any sublicenses permitted hereunder shall be made
pursuant to commercially reasonable license agreements not inconsistent with the terms and
conditions of this Agreement.
(c) Limitations of License Grant. Licensee expressly recognizes that title to and
ownership of the Licensed Materials and any Technology, delivered or utilized pursuant to this
Agreement and the documentation, therefore constitute the valuable “intellectual property” of
Linkbit or its licensors, and any infringement of such “intellectual property” rights shall result
in substantial harm to Linkbit.
(d) Linkbit Property. As between Linkbit and Licensee, Linkbit owns all worldwide
rights, title and interest in the Licensed Materials,
(e) Licensee Property. As between Linkbit and Licensee, Licensee owns all worldwide
rights, title and interest in any derivative works created by Licensee, subject to Linkbit’s
ownership of the underlying Licensed Materials.
2.2 Delivery. Linkbit shall be obligated to deliver the Licensed Materials to Licensee within
four business days of receipt of payment of the implementation fee. Such delivery shall be made via
electronic mail, and Licensee shall confirm receipt of such e-mail.
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2.3 Acceptance. Licensee is deemed to have accepted the Licensed Materials upon receipt of
the Licensed Materials by e-mail and confirmation of such receipt.
3. PAYMENT & FEES
Licensee shall be obligated to pay a one-time license fee of $1,800,000.00 (One Million Eight
Hundred Thousand Dollars) to Linkbit (the “License Fee”). $900,000 (Nine Hundred Thousand Dollars)
of the License Fee shall due and payable immediately upon the signing of this Agreement. The
remaining balance License Fee balance of $900,000 (Nine Hundred Thousand Dollars) shall due and
payable immediately on or before January 15, 2008.
4. LICENSE IN PERPETUITY
This License shall remain in effect in perpetuity.
5. WARRANTIES
5.1 Power and Authority. Linkbit represents and warrants to Licensee that Linkbit has
full power, right and authority to enter into this Agreement, to carry out its obligations under
this Agreement, and to grant and assign the rights granted and assigned to Licensee under this
Agreement. Licensee represents and warrants to Linkbit that Licensee has full power, right and
authority to enter into this Agreement and to carry out its obligations under this Agreement.
5.2 Proprietary Rights. Linkbit further represents and warrants to Licensee that:
(a) Linkbit has not previously granted or assigned and will not grant or assign any rights in
the Licensed Materials to any third party which are inconsistent with the rights granted and
assigned herein to Licensee;
(b) The Licensed Materials are the original works of Linkbit, and that, to the best of
Linkbit’s knowledge, Licensee’s exercise of the rights granted and assigned by Linkbit hereunder
will not infringe, misappropriate or violate the Intellectual Property rights of any third party.
5.3 Disclaimer of Other Warranties. Licensee expressly acknowledges and aggress that use of
the Licensed Materials is at Licensee’s sole risk. EXCEPT AS SET FORTH IN SECTIONS 5.1 AND 5.2,
LINKBIT DISCLAIMS AND MAKES NO WARRANTIES, WHETHER EXPRESS, IMPLIED, OR STATUTORY, REGARDING OR
RELATING TO THE LICENSED MATERIALS AND SERVICES WHICH IS PROVIDED ON AN “AS IS” BASIS. CLIENT’S
USE OF THE LICENSED MATERIALS AND SERVICES IS AT ITS OWN RISK. WITHOUT LIMITATION OF THE
FOREGOING, LINKBIT SPECIFICALLY DISCLAIMS ALL IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, NON-INFRINGEMENT, NON-INTERRUPTION OF USE, AND ANY WARRANTIES ARISING FROM A
COURSE OF DEALING, USAGE, OR TRADE PRACTICE WITH RESPECT TO THE LINKBIT LICENSED MATERIALS OR ANY
OTHER SERVICES.
6. INDEMNIFICATION
Linkbit shall defend, indemnify and hold harmless the Licensee against any loss, expense or
liability arising out of (i) any claim that the Licensed Materials infringe a copyright, trade
secret or other intellectual property right of a third party, excluding patent rights, (ii) any
claim filed by a third party within one(1) year after the execution that of this Agreement that the
Licensed Materials as used by SonicWALL in the network security, continuous data protection and
email security business infringe any patent of said third party, or (iii) any breach of the
representations and warranties of Linkbit pursuant to Sections 5.1 and 5.2. The Licensee shall
notify Linkbit promptly of any such claim and shall provide Linkbit (at Linkbit’s expense)
reasonable information and assistance in defending the suit, and that Linkbit shall be given by
Licensee complete control of any such lawsuit.
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7. LIMITATION OF LIABILITY
7.1 LIMITATION OF LIABILITY. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR
ANY OTHER PARTY FOR ANY INCIDENTAL, INDIRECT, CONSEQUENTIAL, PUNITIVE, OR SPECIAL DAMAGES,
INCLUDING, WITHOUT LIMITATION, LOST PROFITS, EVEN IF INFORMED IN ADVANCE OF THE POSSIBILITY OF SUCH
DAMAGES. EXCEPT FOR ITS OBLIGATIONS PURSUANT TO SECTION 6, LINKBIT’S AGGREGATE LIABILITY TO
LICENSEE UNDER THIS AGREEMENT UNDER ANY THEORY OF RECOVERY SHALL NOT EXCEED THE AMOUNT OF LICENSE
FEES PAID TO LINKBIT WITH RESPECT TO THE LICENSED MATERIALS GIVING RISE TO THE CLAIM. EXCEPT FOR
ANY LIABILITY ARISING FROM A BREACH OF SECTIONS 2 OR 8, LICENSEE’S AGGREGATE LIABILITY TO LINKBIT
UNDER THIS AGREEMENT UNDER ANY THEORY OF RECOVERY SHALL NOT EXCEED THE AMOUNT OF UNPAID LICENSE
FEES, AND OTHER PAYMENTS PAYABLE TO LINKBIT PURSUANT TO THIS AGREEEMNT.
7.2 Reliance on Disclaimer, Liability Limitations. Licensee acknowledges that (i) the
Licensed Materials, Technology, and any services provided by Linkbit to Licensee hereunder are
provided on an “as is” basis, and Licensee expressly waives any claims against Linkbit for any
claims arising from the use of the Licensed Materials, Technology, or any services provided by
Linkbit. Licensee’s sole remedy is detailed in Section 6 above; and (ii) that the parties
have set prices and entered into this Agreement in reliance upon the limitations and exclusions of
liability, the disclaimers of warranties and damages and indemnity obligations set forth herein,
and that the same form an essential basis of the bargain between the parties. The parties agree
that the limitations and exclusions of liability and disclaimers specified in this Agreement will
survive and apply even if found to have failed of their essential purpose.
8. CONFIDENTIALITY AND EFFECTS OF TERMINATION
8.1 Confidential Information.
(a) Non-Disclosure Obligations. The term “Confidential Information” shall mean this
Agreement and all data, trade secrets, business information and other information of any kind
whatsoever that a Party (“Disclosing Party”) discloses, in writing, orally, visually or in any
other medium to the other Party (“Receiving party”) or to which the Receiving Party obtains access
and which relates to (i) the Disclosing Party or to (ii) Third Party Vendors, Suppliers, or
Licensors of either Party or their affiliates. A “writing” for purposes of this Agreement shall
include an electronic transfer of information by e-mail, over the Internet or otherwise. The
Recipient Party shall protect the Disclosing Party’s Confidential Information with the same degree
of care that it regularly uses to protect its own Confidential Information from unauthorized use or
disclosure, but in no event less than reasonable care. Confidential Information may be provided or
disclosed only to Recipient Party employees or contractors with a need to know and who have agreed
in writing not to disclose the confidential information of others. Each Party agrees that it will
not use any Confidential Information either disclosed to it or to which it obtains access, in any
way, for its own account or the account of any Third Party, except as reasonably necessary in
furtherance of the rights granted to Licensee under Section 2 and as otherwise expressly permitted
by this Agreement, nor disclose to any Third Party except as required by law or to that Party’s
attorneys, accountants and other advisors as reasonably necessary, any of the other Party’s
Confidential Information and will take reasonable precautions to protect the confidentiality of
such information. Licensor specifically acknowledges that Licensee may be required to file the
Agreement with the Securities and Exchange Commission as part of its obligations of disclosure as a
publicly traded company.
(b) Exceptions. Information will not be deemed Confidential Information pursuant to
Section 8.1(a) herein if either Party can prove with written documentation, that such information;
(i) was rightfully known to the receiving Party prior to receipt of such Information by the
disclosing Party, (ii) became known (independently of the disclosure by the disclosing Party) to
the receiving Party directly or indirectly from a source other than one having an obligation to
maintain the confidentiality of the information disclosed to it by the disclosing Party, (iii)
becomes part of the public domain, or otherwise ceases to be secret and confidential through no
conduct of the receiving Party, including, without limitation, the disclosure by Disclosing Party
of the Confidential Information to others without restriction on disclosure, or (v) is
independently developed by the receiving Party. The receiving Party may disclose Confidential
Information pursuant to the requirements of a governmental agency acting pursuant to Federal or
State law, provided that the receiving Party provides the
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disclosing Party with notice of the subpoena, or document requesting the disclosure, as early
as possible so that the disclosing Party can contest the request for disclosure.
8.2 Return of Confidential Information. Upon thirty (30) days written notice from Disclosing
Party, the Receiving Party will return or supply a Certificate of Destruction of all Confidential
Information of the other Party in its possession at the time of expiration or termination and will
not make or retain any copies of such Confidential Information except (i) as required to comply
with any applicable legal or accounting record keeping requirement and (ii) in any computer back-up
files that are not normally accessible. The obligations of this provision do not apply to return of
the Licensed Materials.
9. MISCELLANEOUS PROVISIONS
9.1 Relationship of Parties. Linkbit and Licensee are independent contractors and this
Agreement will not establish any relationship of partnership, joint venture, franchise or agency
between Linkbit and Licensee. Neither Linkbit nor Licensee will have the power to bind the other
or incur obligations on the other’s behalf without the other’s prior written consent, except as
otherwise expressly provided herein.
9.2 Severability. If any provision of the Agreement is held to be invalid or unenforceable
for any reason whatsoever, the remaining provisions shall remain valid and unimpaired, and shall
continue in full force.
9.3 Headings. Headings contained in this Agreement are for reference purposes only, and are
not intended to be substantive parts of this Agreement, and shall not be construed as such by
either Party.
9.4 No Waiver of Rights. The failure of either Party to seek relief for the other Party’s
breach of any duty under this Agreement shall not waive any right of the non-breaching Party to
seek relief for any subsequent breach.
9.5 Drafting. The parties hereto agree that this Agreement has been jointly negotiated and
drafted, that the order of the paragraphs has no significance, and that the language hereof shall
be construed as a whole according to its fair meaning and interpretation, and not strictly for or
against any of the parties.
9.6 Export Law Assurances. Licensee agrees and certifies that neither the Licensed Materials
nor any other technical data received from Linkbit, nor the direct product thereof, will be
exported outside the United States except as authorized and as permitted by the laws and
regulations of the United States.
9.7 Force Majeure. No failure, delay or default in performance of any obligation of either
Party to this Agreement shall constitute an event of default or breach of the Agreement to the
extent that that such failure to perform, delay, or default arises out of a cause, existing or
future, that is beyond the control and without negligence of such Party including, but not limited
to: action or inaction of governmental, civil or military authority; fire; strike; flood; war;
riot; theft; earthquake and other natural disaster. The Party affected by such cause shall take all
commercially reasonable measures to minimize the consequences of any such cause, but if
such Party is either unable to substantially perform, or anticipates that it shall be unable to
substantially perform, then such Party shall be obligated to give notice as soon as commercially
reasonable to the other Party of such facts, in a writing. As soon as the cause ceases to exists,
then such Party that relied on that cause to excuse the delay in its performance shall be obligated
to provide the other Party with prompt notice in writing of such facts, and immediately resume
performance.
9.8 Amendment. This Agreement may not be amended except by a written agreement signed by
authorized signatories of both parties.
9.9 Assignment. Neither Party may assign its rights or delegate its duties under this
Agreement either in whole or in part without the prior written consent of the other Party, except
to a Party that acquires substantially all of the assigning Party’s assets or a majority of its
stock as part of a corporate merger or acquisition. Any attempted assignment or delegation without
such consent will be void. This Agreement will bind and inure to the benefit of each Party’s
successors and permitted assigns.
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9.10 Notices. Any notice or communication required or permitted to be given hereunder
(“Notice”) may be delivered personally, deposited with an overnight courier, sent by confirmed
facsimile, sent by confirmed electronic mail or mailed by registered or certified mail, return
receipt requested, postage prepaid, in each case to the address of the receiving Party first
indicated below, or at such other address as either Party may provide to the other by written
notice. Such notice will be deemed to have been given as of the date it is delivered, or five (5)
days after mailed or sent, whichever is earlier.
9.11 Entire Agreement. This Agreement, together with the exhibits and documents referred to
herein represent the complete agreement and understanding of the parties with respect to the
subject matter herein, and supersede any other agreement or understanding, written or oral.
9.12 Priority in Case of Conflict. No term or provision in any purchase order, invoice or
other business form of Licensee will control the relationship of the parties or supersede any
conflicting term of this Agreement.
9.13 Governing Law and Jurisdiction. The construction, validity and performance of this
Agreement shall be governed by, and construed in accordance with any applicable federal laws and
the laws of the State of California, and the parties expressly waive its choice of law rules. The
parties agree that venue and jurisdiction for any litigation, including issues of Federal law,
arising out of, related to, or regarding the validity of, this Agreement shall reside in the County
of Santa Xxxxx, State of California.
9.14 Attorney’s Fees. If any legal action arises relating to this Agreement, the prevailing
party shall be entitled to recover all court costs, expenses and reasonable attorney fees.
9.15 Knowing Consent and Authority to Consent. The parties knowingly and expressly consent to
the foregoing terms and conditions. Each signatory warrants that he/she is authorized to enter
into this Agreement on behalf of its respective Party. Both parties represent and warrant that
they have full corporate power and authority to execute and deliver this Agreement and to perform
their obligations under this Agreement and that the person whose signature appears below is duly
authorized to enter into this Agreement on behalf of the respective Party.
IN WITNESS WHEREOF, each of the parties hereto has dully executed this Agreement effective as
of the day and year first above written.
| Sonicwall, Inc. |
Linkbit Inc. |
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By:
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/s/ Xxxx Xxxxxxxx | By: | /s/ Xxxxxxx Xxxxxx | |||||||
Name:
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Xxxx Xxxxxxxx | Name: | Xxxxxxx Xxxxxx | |||||||
Title:
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President and CEO | Title: | President | |||||||
Date:
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December 14, 2007 | Date: | December 14, 2007 | |||||||
End of Linkbit Limited Licensed Materials License Agreement
Rev. 11/27/07
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PROPRIETARY & CONFIDENTIAL | |
Rev. 12/11/07 |
Linkbit, Inc.
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Exhibit A:
Licensed Materials
The Licensed Materials include the design, source, build, manufacturing, libraries, and related
files for the hardware and software (Firmware, DSP, Driver) components of the “Linkbit AT1000 T1/E1
PCCard” solution.
Hardware:
- The “Linkbit AT1000 T1/E1 PCCard” hardware design files including schematics design files,
schematic source files, board design files, board source files, and all related libraries.
- The “Linkbit AT1000 T1/E1 PCCard” hardware manufacturing files including gerber files, pick and
place files, board netlist and BoM files, and all related libraries.
- The
“Linkbit AT1000 T1/E1 PCCard” PLD (programmable logic device) files including Xilinx project
source files and compiled programming files, and all related libraries.
Software (Firmware, DSP, Driver):
- The “Linkbit AT1000 T1/E1 PCCard” source code and build files for the Firmware and DSP components
including the files listed in the “\Source Code\Firmware” and “\Source Code\Firmware\DSP_6_00”
directories of the detail section below and all related libraries.
- The “Linkbit AT1000 T1/E1 PCCard” source code and build files for the Driver component
including the files listed in the “\Source Code\Driver” directory of the detail section below and
all related libraries.
Licensed Materials — Detail:
The PDF file contains a per file listing of all the design, source, build, manufacturing,
libraries, and related files for the “Linkbit AT1000 T1/E1 PCCard” solution (see attached)
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