EXHIBIT 10.44
PATENT ASSIGNMENT AND CROSS-LICENSE AGREEMENT
This Patent Assignment and Cross-License Agreement ("Agreement") is
entered into effective as of this 2nd day of October, 1998 ("Effective Date"),
by and between Synopsys, Inc., a Delaware corporation having a principal place
of business at 000 X. Xxxxxxxxxxx Xxxx, Xxxxxxxx Xxxx, XX 00000 ("Synopsys"),
and Viewlogic Systems, Inc., a Delaware corporation having a principal place of
business at 000 Xxxxxx Xxxx Xxxx Xxxx, Xxxxxxxx, XX 00000 ("Viewlogic").
WITNESSETH
WHEREAS, Synopsys is willing to assign certain of its patents and patent
applications to Viewlogic subject to the grant back of licenses thereunder;
WHEREAS, Synopsys is willing to grant licenses to Viewlogic under certain of its
patents; and
WHEREAS, Viewlogic wishes to obtain such assignments and licenses and is willing
to grant back licenses under the Assigned Patents to Synopsys.
NOW THEREFORE
In view of the foregoing premises and the mutual covenants set forth herein, the
parties agree as follows:
1. Definitions
AFFILIATE: A corporation, company, or other legal entity now or hereinafter
controlling, controlled by or under common control with a party hereto, for so
long as such ownership or control exists. For the purposes of this definition,
control shall refer to a greater than 50% interest in the right to make
decisions for such entity, e.g., greater than 50% ownership of the voting shares
or securities of such entity.
ASSIGNED PATENTS: The patent and patent applications, including any divisional,
continuation, continuation-in-part, reissue, extension or re-examination
application, renewals or patents issuing therefrom (and further including any
foreign counterpart patents and applications corresponding thereto), as more
particularly set forth in Exhibit A hereto.
LICENSED PATENTS: The patent and patent applications, including any divisional,
continuation, continuation-in-part, reissue, extension or re-examination
application, renewals or patents issuing therefrom (and further including any
foreign counterpart patents and applications corresponding thereto), as more
particularly set forth in Exhibit B hereto.
2. Assignment
2.1 ASSIGNMENT. Synopsys agrees to sell, transfer and assign and does hereby
assign the Assigned Patents to Viewlogic pursuant to the Patent Assignment
attached hereto as Exhibit A, free and clear of all liens, mortgages, pledges,
security interests, prior assignments and encumbrances of any kind or nature
whatsoever.
2.2 FURTHER ASSURANCES. At any time and from time to time after the date
hereof, at Viewlogic's request and expense, Synopsys promptly shall execute and
deliver, and shall cause its Affiliates and
employees to execute and deliver, such instruments of sale, transfer,
conveyance, assignment and confirmation, and take such other action, as
Viewlogic may reasonably request to more effectively transfer, convey and
assign to Viewlogic, and to confirm Viewlogic's title to, all of the Assigned
Patents, to assist Viewlogic in exercising all rights with respect thereto
and to carry out the purpose and intent of this Agreement.
2.3 FURTHER ASSURANCES BY VIEWLOGIC. At any time and from time to time after
the date hereof, at Synopsys' request and expense, Viewlogic promptly shall
execute and deliver, and shall cause its Affiliates and employees to execute and
deliver, such instruments of sale, transfer, conveyance, assignment and
confirmation, and take such other action, as Synopsys may reasonably request to
more effectively transfer, convey and assign to Synopsys, and to confirm
Synopsys title to, all of the Licensed Patents, to assist Synopsys in exercising
all rights with respect thereto and to carry out the purpose and intent of this
Agreement.
3.0 License Grant
Synopsys hereby grants to Viewlogic and its Affiliates a non-exclusive,
irrevocable, perpetual, worldwide, royalty-free, fully-paid up, license to make,
have made, use, have used, sell, or have sold products and perform and have
performed processes under the Licensed Patents.
4.0 Grant Back
Viewlogic hereby grants to Synopsys and its Affiliates a non-exclusive,
irrevocable, perpetual, worldwide, royalty-free, fully-paid up, license to make,
have made, use, have used, sell, or have sold products and perform and have
performed processes under the Assigned Patents.
5.0 Consideration
In consideration of the rights granted hereunder, Viewlogic shall pay to
Synopsys on the date hereof the sum of One Million Two Hundred Thousand Dollars
($1,200,000).
6.0 Prosecution, Maintenance and Enforcement
Neither party hereto shall owe any obligation hereunder to the other party to
prosecute, maintain, or enforce, either domestically or abroad, any patent or
patent application corresponding to a Licensed Patent or an Assigned Patent.
7.0 Warranties and Disclaimers
7.1 LICENSES. Synopsys represents and warrants to Viewlogic that, except as
set forth in Exhibit B hereto, Synopsys has not granted any license, right or
authority under any Assigned Patent to any third party, nor has Synopsys
extended any covenant not to xxx under the Assigned Patents to any third party.
Synopsys agrees and acknowledges that Viewlogic is not, and shall not be, bound
by the terms of any covenant not to xxx extended by Synopsys.
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7.2 OWNERSHIP. Synopsys represents and warrants that it is the sole,
exclusive, true and lawful owner of the Assigned Patents, and that it has the
right to sell and transfer to Viewlogic good, clear record and marketable title
to the Assigned Patents as contemplated hereby.
7.3 FILES. Synopsys has used its best reasonable efforts to provide to
Viewlogic all existing files and records pertaining to the Assigned Patents,
including, but not limited to, all office actions, drafts, receipts, drawings,
correspondence, disclosures, models, copies, prototypes, diagnostic reports,
test results, opinions, prior art (including search results, publications and
copies of patents) and analyses (collectively, the "Patent Files"). To the
extent that any Patent Files have not been provided to Viewlogic as of the date
hereof, Synopsys shall, upon the first to occur of the request of Viewlogic or
discovery that such Patent Files have not been provided, provide such Patent
Files to Viewlogic, at no charge to Viewlogic.
7.4 Neither party warrants or represents that the rights granted hereunder
will result in commercially acceptable product lines.
7.5 This Agreement does not confer by implication, estoppel, laches or by any
other means any license or any right other than those expressly granted herein.
8.0 Confidentiality
8.1 The Patent Files for the Assigned Patents shall be treated as
"Confidential Information" of Viewlogic by Synopsys. The Patent Files for the
Licensed Patents shall be treated by Viewlogic as "Confidential Information" of
Synopsys.
8.2 Each party agrees that it will not disclose, publish, or disseminate
Confidential Information of the other to anyone other than those of its
employees with a demonstrated need to know, and further agrees to take
reasonable precautions to prevent any unauthorized use, disclosure, publication,
or dissemination of Confidential Information. The parties agree to use the
Confidential Information solely for the purposes contemplated by this Agreement
and not otherwise for their own or any third party's benefit.
8.3 The obligations of confidentiality contained in this Section will not
apply to the extent that it can be established by the recipient of "Confidential
Information" hereunder that such Confidential Information was: a) was generally
available to the public or otherwise part of the public domain at the time of
its disclosure to the recipient; b) became generally available to the public or
otherwise part of the public domain after its disclosure and other than through
any act or omission of the recipient in breach of this Agreement; or c) was
rightfully disclosed to recipient by a third party without restriction after the
date hereof.
8.4 The provisions of this Section 8 will survive any termination or
expiration of this Agreement.
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9.0 General Provisions
CHOICE OF LAW. This Agreement will be governed by and construed in accordance
with the laws of the United States and the Commonwealth of Massachusetts
excepting that body of Massachusetts law governing conflicts of law.
ASSIGNMENT. Neither this Agreement nor the licenses granted hereunder may be
assigned by either party without the prior written consent of the other party,
except that upon a merger, or acquisition of all or substantially all of the
capital stock or assets of a party, such consent shall not be required.
NO WAIVER. Failure by either party to enforce any provision of this Agreement
will not be deemed a waiver of future enforcement of that or any other
provision.
INDEPENDENT CONTRACTORS. The relationship of Synopsys and Viewlogic established
by this Agreement is that of independent contractors, and nothing contained in
this Agreement shall be construed (i) to give either party the power to direct
or control the day-to-day activities of the other or (ii) to constitute the
parties as partners, joint venturers, co-owners or otherwise as participants in
a joint or common undertaking.
SECTION HEADINGS. The section headings contained herein are for reference
purposes only and shall not affect in any way the meaning or interpretation of
this Agreement.
INTERPRETATION. The parties agree that this Agreement shall be fairly
interpreted in accordance with its terms without any strict construction in
favor of or against either party and that ambiguities shall not be interpreted
against the drafting party.
SEVERABILITY. If for any reason a court of competent jurisdiction finds any
provision of this Agreement, or portion thereof, to be unenforceable, that
provision of the Agreement will be enforced to the maximum extent permissible so
as to effect the intent of the parties, and the remainder of this Agreement will
continue in full force and effect.
ATTORNEYS' FEES. The prevailing party in any action to enforce the Agreement
shall be entitled to recover costs and expenses including, without limitation,
reasonable attorneys' fees.
INJUNCTIVE RELIEF. The parties agree that a material default of the provisions
of this Agreement by a party hereto could cause irreparable injury to the other
party for which monetary damages would not be an adequate remedy and such other
party shall be entitled to seek equitable relief, including injunctive relief
and specific performance, in addition to any remedies it may have hereunder or
at law.
ENTIRE AGREEMENT. This Agreement, including any Exhibits attached hereto, which
are hereby incorporated by reference, constitutes the entire understanding of
the parties with respect to the subject matter hereof, and supersedes all prior
agreements or representations, oral or written, regarding such subject matter.
This Agreement may not be modified or amended except in a writing signed by a
duly authorized representative of both parties.
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[SIGNATURE BLOCK FOLLOWS IMMEDIATELY HEREAFTER.]
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives:
SYNOPSYS, INC. VIEWLOGIC SYSTEMS, INC.
By: Xxxxxx X. Xxxxxxx By: Xxxxxxx X. Xxxxxx
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Name: Xxxxxx X. Xxxxxxx Name: Xxxxxxx X. Xxxxxx
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Title: Vice President and General Counsel Title: President
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EXHIBIT A
PATENT ASSIGNMENT
For good and valuable consideration, the receipt of which is hereby
acknowledged, Synopsys, Inc. ("ASSIGNOR"), hereby sells, assigns, transfers, and
sets over its entire right, title, and interest in and to the Assigned Patents
(as set forth below), any patent or reissues of any patent that may be granted
thereon, and any extensions and applications which are continuations,
continuations-in-part, substitutes, divisions, renewals or reissues of said
Assigned Patents to Viewlogic Systems, Inc. ("ASSIGNEE") and its successors and
assigns.
Assigned Patents:
U.S. Patent Application Serial No. 08/644,618 filed 5/1/96
U.S. Patent Application Serial No. 08/868,289 filed 6/3/97
U.S. Patent Application Serial No. 08/988,658 filed 12/11/97
U.S. Patent Application Serial No. 09/027950 filed 2/23/98
U.S. Patent Application Serial No. 09/050671 filed 3/20/98
ASSIGNOR hereby further sells, assigns, transfers, and sets over unto
ASSIGNEE ASSIGNOR's entire right, title, and interest in and to the aforesaid
inventions in the United States and each and every country foreign to the United
States; and ASSIGNOR further conveys to ASSIGNEE all priority rights resulting
from the Assigned Patents, and all causes of action for infringement arising
prior to and after the date of this Assignment.
At any time and from time to time after the date hereof, at ASSIGNEE's
request and expense, ASSIGNOR promptly shall execute and deliver, and shall
cause its Affiliates and employees to execute and deliver, such instruments of
sale, transfer, conveyance, assignment and confirmation, and take such other
action, as ASSIGNEE may reasonably request to more effectively transfer, convey
and assign to ASSIGNEE, and to confirm ASSIGNEE's title to, all of the Assigned
Patents.
IN WITNESS WHEREOF, ASSIGNOR has hereunto set its hand and seal on the date
below.
SYNOPSYS, INC.
By
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Xxxx Xxxxxx
Assistant Secretary
Date:
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State of California )
) ss
County of Santa Xxxxx )
Subscribed and sworn to before me
this ___ day of _____________, 1998
---------------------------------
Notary Public
My commission expires:
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EXHIBIT B
LICENSED PATENTS
U.S. Patent No. 5,625,567 issued 4/29/97
U.S. Patent Application Serial No. 09/053,140 filed 3/31/98
U.S. Patent Application Serial No. 09/053,327 filed 3/31/98
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