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EXHIBIT 4.6
CONFIDENTIAL TREATMENT REQUESTED -- EDITED COPY
PATENT LICENSE AGREEMENT
This is a Patent License Agreement ("Agreement") between General Magic,
Inc., a Delaware corporation having a principal place of business at 000 X. Xxxx
Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000 ("General Magic"), and Microsoft
Corporation, a Washington corporation having a principal place of business at
Xxx Xxxxxxxxx Xxx, Xxxxxxx, Xxxxxxxxxx 00000-0000 ("Microsoft").
RECITALS
WHEREAS General Magic owns all right, title and interest in and to the
Licensed Patents.
WHEREAS Microsoft and its Subsidiaries desire a license under the
Licensed Patents to develop, manufacture, use, sell, and exercise other rights
with respect to Licensed Product(s) as defined below.
NOW, THEREFORE, in view of the good and valuable consideration provided in this
Agreement, the receipt and sufficiency of which are hereby acknowledged, the
parties agree as follows:
1. Definitions.
1.1 "Licensed Patents" means [* ]
1.2 "Microsoft Product" means any product developed,
manufactured, offered or distributed by or for Microsoft or its current or
future Subsidiaries, including without limitation operating systems, platforms,
development tools and languages.
1.3 "Licensed Product" means any product, including
redistributable portions thereof, which implements in whole or part an invention
of the Licensed Patents and which is either (a) a Microsoft Product, (b) a
product that executes on a Microsoft Product, or (c) a product created by a
Microsoft Product. "Licensed Products" includes products which may or may not
provide additional functionality beyond that claimed in the Licensed Patents.
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1.4 "Subsidiary" means a corporation, company or other entity:
(i) at least 50% of whose outstanding shares or securities (representing the
right to vote for the election of directors or other such managing authority)
are, now or hereafter, owned or controlled directly or indirectly by a party
hereto, but such corporation, company, or other entity shall be considered to be
a Subsidiary only so long as such ownership or control exists; or (ii) which
does not have outstanding shares or securities, as may be the case with a
partnership, joint venture, or unincorporated association, but at least 50% of
whose ownership interest representing the right to make decisions for such
corporation, company, or other entity is, now or hereafter, owned or controlled,
directly or indirectly by a party hereto, but such corporation, company, or
other entity shall be considered to be a Subsidiary only so long as such
ownership or control exists.
1.5 "Effective Date" shall mean the date on which Microsoft pays
General Magic the License Fee set forth in Section 4.1.
2. License Grants.
2.1 General Magic hereby grants to Microsoft and its current and
future Subsidiaries a [*] license under the Licensed Patents to exercise any and
all legal rights with respect to Licensed Products, including without limitation
the right and license to make, have made, modify, improve, use, sell, offer to
sell, import, distribute, have distributed, or otherwise transfer Licensed
Products and products incorporating Licensed Products, and to practice any
method in the manufacture or use of such Licensed Products, and to provide
services and allow third parties to use those services.
2.2 Microsoft and its current and future Subsidiaries may grant
any third party a [*] license under the Licensed Patents to exercise any and all
legal rights with respect to Licensed Products, including without limitation the
right and license to make, have made, modify, improve, use, sell, offer to sell,
import, distribute, have distributed, or otherwise transfer Licensed Products
and products incorporating Licensed Products, and to practice any method in the
manufacture or use of such Licensed Products, and to provide services and allow
others to use those services. Microsoft and its current and future Subsidiaries
may grant any third party the right under the Licensed Patents to sublicense
others through multiple tiers of manufacture and distribution to exercise any
rights granted to that third party hereunder.
2.3 For a period of [*] after the Effective Date of this
Agreement, the license granted under Section 2.1 and 2.2 shall not permit
Microsoft and its current and future Subsidiaries to grant any third party the
right under the Licensed Patents to provide a product that exposes any
programming interfaces to any functionality of any invention of the Licensed
Patents for use by a product of another third party, except programming
interfaces to any original such functionality implemented by or for Microsoft or
its Subsidiaries in a Licensed Product. In any event, Microsoft and its
Subsidiaries may grant third parties the right to provide a product that
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exposes programming interfaces to modified or improved existing functionality of
Licensed Products that are already released or available through beta release
prior to the Effective Date of this Agreement.
2.4 General Magic also grants to Microsoft and its current and
future Subsidiaries a [*] license under the Licensed Patents for any product of
a third party to execute instructions on or otherwise interact with any Licensed
Product, including without limitation exchanging data or executable instructions
with that Licensed Product.
2.5 General Magic has no obligation to further provide to
Microsoft and its Subsidiaries any source code, know-how, technical information
or technical assistance beyond that already provided and disclosed in the
Licensed Patents.
3. [* ]
4. License Fee.
4.1 Microsoft agrees to pay to General Magic a nonrefundable
(except as set
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forth in Sections 4.2, 4.3, 5.1, and 5.2), prepaid license fee of One Million
Five Hundred Thousand Dollars ($1,500,000) (the "License Fee"). The License Fee
shall be paid within 30 days of the execution of this Agreement.
[*]
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5. [*]
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6. Representations and Warranties. As of the Effective Date of this
Agreement, General Magic represents and warrants to Microsoft as follows:
6.1 General Magic is the owner of the entire right, title, and
interest in and to the Licensed Patents;
6.2 General Magic has the right and power to grant the licenses
granted herein;
6.3 General Magic has not entered into any agreement with any
third parties, and is under no other obligations, that conflict with or
limit its ability to provide the licenses granted herein;
6.4 General Magic knows of no prior art or other grounds that
present a reasonable risk that one or more claims of the Licensed
Patents would be found invalid or unenforceable by a court or
administrative body of competent jurisdiction; and
6.5 General Magic has no knowledge of any actions for or
allegations of infringement against General Magic, its licensees or
customers with respect to products it manufactures and sells embodying
any inventions disclosed or claimed in the Licensed Patents anywhere in
the world.
7. Disclaimer of Warranties.
EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, GENERAL MAGIC MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY, OR
FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER IMPLIED WARRANTIES.
8. [*]
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9. [*]
10. No Trademark License
Nothing in this Agreement or its performance shall grant either party any right,
title, interest, or license in or to the other's names, logos, logotypes, trade
dress, designs, or other trademarks.
11. Confidentiality and Public Disclosure.
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11.1 The parties each expressly undertake to retain in confidence
all Confidential Information disclosed by one party to the other hereunder
pursuant to the terms and conditions set forth in that certain Non-Disclosure
Agreement entered into between Microsoft and General Magic on January 9, 1997,
which is incorporated herein by this reference. The parties agree that the terms
and conditions of this Agreement constitute Confidential Information. The timing
as to the disclosure of the existence of this Agreement shall be mutually agreed
upon between the parties. Under no circumstances shall the parties disclose the
financial terms of this Agreement unless required by law or in conjunction with
a judicial proceeding, in which case reasonable care will be taken to limit
disclosure and dissemination of terms. General Magic may, however, disclose the
Agreement and its terms to third parties which request such disclosure pursuant
to due diligence regarding the acquisition of General Magic or all or
substantially all of its assets or the acquisition of securities of General
Magic, provided that such third parties enter into written agreements to keep
the information in confidence and to use it only with respect to the transaction
contemplated by such diligence request. If either party is subsequently required
to make such disclosure or a filing with the Securities and Exchange Commission
("SEC Documents"), it shall advise the other party in advance of such
disclosure, and shall otherwise minimize the dissemination of information
disclosed, for example, by redacting to the fullest extent permissible the terms
and conditions of this Agreement, including payment information. This
confidentiality provision shall in all other respects continue to be in force
for both parties even if such disclosure is required.
11.2 The parties shall mutually agree upon the timing and exact
wording of a joint press release. Unless otherwise agreed to in writing, the
parties comments on this Agreement in the joint press release shall be limited
to substantially the following: "General Magic and Microsoft have entered into a
patent license agreement, the terms and conditions of which are confidential."
12. Term and Termination.
12.1 The term of this Agreement and the license granted hereunder
shall extend from the earliest filing date of the Licensed Patents to the
expiration of the enforceability of the last to expire of the Licensed Patents
or the termination of this agreement pursuant to Section 5.1, 5.2 or 12.2,
whichever occurs first.
12.2 Microsoft may terminate this Agreement if General Magic is
in material breach of any provision hereof and fails to remedy any such breach
within thirty (30) days after written notice thereof by Microsoft.
12.3 The following provisions survive any termination of this
Agreement: [*]
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13. General.
13.1 All notices permitted or required under this Agreement shall
be in writing and shall be delivered as follows with notice deemed given as
indicated (i) by personal delivery when delivered personally, (ii) by overnight
courier upon written verification of receipt, (iii) by telecopy or facsimile
transmission when confirmed by telecopier or facsimile transmission, or (iv) by
certified or registered mail, return receipt requested, five (5) days after
deposit in the mail. All notices must be sent to the parties at the following
addresses:
If to General Magic:
GENERAL MAGIC, INC.
000 X. Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxx 00000
Attn: General Counsel
Fax No.: (000) 000-0000
Phone: (000) 000-0000
If to Microsoft:
MICROSOFT CORPORATION
Xxx Xxxxxxxxx Xxx
Xxxxxxx, Xxxxxxxxxx 00000-0000
Attn: Associate General Counsel
Fax No.: (000) 000-0000
Phone: (000) 000-0000
cc: Law and Corporate Affairs
Fax No.: (000) 000-0000
or to such other address that the receiving party may have
provided for the purpose of notice in accordance with this Section 13.1.
13.2 Neither party shall be liable hereunder by reason of any
failure or delay in the performance of its obligations hereunder (except for the
payment of money) 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.
13.3 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.
13.4 In the event that any provision of this Agreement shall be
unenforceable or
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invalid under any applicable law or be so held by applicable court decision,
such unenforceability or invalidity shall not render this Agreement
unenforceable or invalid as a whole, and, in such event, such provision shall be
changed and interpreted so as to best accomplish the objectives of such
provisions within the limits of applicable law or applicable court decisions.
13.5 This Agreement shall be governed by the laws of the State of
Washington. The parties hereby consent to and submit to the jurisdiction of the
federal and state courts located in the State of Washington. The parties will
not raise in connection with any action or suit hereunder, and hereby waive, any
defenses based upon the venue, the inconvenience of the forum, the lack of
personal jurisdiction or the like in any action or suit brought in the State of
Washington.
13.6 If either party employs attorneys to enforce any rights
arising out of or relating to this Agreement, the prevailing party shall be
entitled to recover reasonable attorneys' fees and costs, including expert
witness fees.
13.7 Nothing contained herein shall be construed as creating any
agency, partnership, or other form of joint enterprise between the parties.
13.8 The Section headings appearing in this Agreement are
inserted only as a matter of convenience and in no way define, limit, construe
or describe the scope or extent of such Section or in any way affect such
Section.
13.9 This Agreement may be executed simultaneously in two or more
counterparts, each of which will be considered an original, but all of which
together will constitute one and the same instrument.
13.10 The parties hereto agree that this Agreement and the
Non-Disclosure Agreement constitute the entire agreement between the parties
with respect to the subject matter hereof and supersede all prior and
contemporaneous communications. This Agreement shall not be modified except by a
written agreement dated subsequent hereto signed on behalf of each party by
their duly authorized representatives.
13.11 General Magic must assign this Agreement to any person to
whom it transfers all or substantially all of its proprietary assets, and
Microsoft may assign this Agreement to any subsidiary or affiliate in which
Microsoft owns a 50% or greater share of the equity interest. General Magic may
also assign this Agreement without Microsoft's consent in the context of any
merger or acquisition or other corporate reorganization in which General Magic
is not the surviving entity or which involves a change of control of General
Magic. Otherwise, neither party may assign, voluntarily, by operation of law, or
otherwise, any rights or delegate any duties under this Agreement (excluding the
sublicensing of license rights authorized under Section 2.2) without the other
party's prior written consent, which consent will not be unreasonably withheld,
and any attempt to do so without that consent will be void. In the event General
Magic assigns any of the Licensed Patents, all obligations under this Agreement
must be assumed by the assignee. This Agreement will bind and inure to the
benefit of the parties and their respective successors and permitted assigns.
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13.12 Notwithstanding anything in this Agreement to the contrary,
this Agreement shall not be effective until it has been approved by the Board of
Directors of General Magic. Notwithstanding anything in this Agreement to the
contrary, payment of the License Fee under Section 4.1 shall not be due before
30 days after this Agreement has been approved by the Board of Directors of
General Magic.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
General Magic, Inc. Microsoft Corporation
General Magic Microsoft
____________________________________ ____________________________________
Signature Signature
____________________________________ ____________________________________
Name Name
____________________________________ ____________________________________
Title Title
____________________________________ ____________________________________
Date Date
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